• Comcast Cable Communications, LLC v. Touchstream Technologies, Inc.Rehearing granted
  PTAB · Oct 9, 2024 · IPR2024-00324 · APJ Michelle N Wormmeester · IPR · Rehearing

  Patent Owner’s rehearing request was granted; the Petition was denied and no trial instituted because the challenges did not meet the compelling-merits standard under Fintiv.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768.” slip op. at 3

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed board ownDecided for patent owner

    “Our reviewing court has explained that “[t]he prosecution history modifies the scope of a claim term if ‘the patentee distinguished that term from prior art on the basis of a particular embodiment, expressly disclaimed subject matter, or described a particular embodiment as important to the invention.’” Sentry Protection Prods., Inc. v. Eagle Mfg. Co., 400 F.3d 910, 915 (Fed. Cir. 2005) (quoting CCS Fitness, Inc. v. Brunswick Corp., 228 F.3d 1359, 1366–67 (Fed. Cir. 2002)).” slip op. at 8

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied

    “discretion to deny institution due to the advanced state of parallel litigation, taking into consideration the six factors identified in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential), as well as applying guidance set forth in a Memorandum regarding the “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” issued by the Director of the U.S. Patent and Trademark Office (hereinafter, “Guidance Memo”).5 Inst. Dec. 6–43. We determined that the first five Fintiv factors favor discretionary denial,6 and that the Petition presents compelling evidence of unpatentability as to independent claims 1, 12, and 17 under the sixth Fintiv factor. Id. at 15–16, 23–43. Because “the PTAB will not deny institution based on Fintiv if there is compelling evidence of unpatentability,” we declined to exercise our discretion to deny. Guidance Memo 5; Inst. Dec. 15–16.” slip op. at 4

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “those arguments. See Inst. Dec. 45–47. As to Petitioner’s arguments on the claimed first and second formats of limitation 1D in particular, we found the record provided “some support” for Petitioner’s position that “it would have been obvious to a [person of ordinary skill in the art] that one or more RTS Media Abstraction Modules could operate at a server, such as in [Aldrey’s] Service Provider Network 103,” even though Petitioner asserted that Mahajan teaches command conversion at the client. Id. at 45–46 (citing Pet. 66–67). Yet assuming Mahajan’s RTS Media Abstraction Module could have operated at a server, as Petitioner argued, it is not readily apparent why an ordinarily skilled artisan would have considered locating the RTS Media Abstraction Module at a server based on Mahajan’s disclosure of command conversion at a client. See also Pet. 66 (“[I]t would have been obvious to a [person of ordinary skill in the art] that the RTS Media Abstraction Module could be located on the client or server.” (emphasis added)). Nor did Petitioner adequately explain why an ordinarily skilled artisan would have considered locating Mahajan’s RTS Media Abstraction Module at a server. We note Petitioner further argued that combining Mahajan and Aldrey would have provided a system where “Aldrey’s end terminal would translate commands associated with a first type of media playing application to a command associated with a second type of media playing application on a STB.” Pet. 68; see also id. at 67 (“Mahajan’s server-command teachings could be implemented on Aldrey’s end terminal remote control.”). Arguing that Aldrey’s end terminal would translate commands seems inconsistent with Petitioner’s earlier argument for locating command conversion at Aldrey’s network service provider. See id. at 66–68. Moreover, it is not readily apparent how command translation by Aldrey’s end terminal––rather than Aldrey’s network service provider––teaches or suggests the format of a command sent from the end terminal to the network service provider is different from the format of a command sent from the network service provider to the STB. Petitioner did not close these logical gaps, leaving its case short of compelling.” slip op. at 18

  Claim construction§ 103 obviousnessDiscretionary denial
  Patents in suitUS 11,048,751
• Vizio, Inc. v. Polaris Powerled Technologies, LLCRehearing granted
  PTAB · Sep 15, 2020 · IPR2020-00043 · APJ Kara L Szpondowski · IPR · Rehearing

  The Board granted rehearing but denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim.

  RulingsRehearing decision

  • RehearingRehearing, grantedRehearing, deniedGranted in part

    “We have considered Petitioner’s Request for Rehearing and, for the reasons set forth below, we grant Petitioner’s Request for Rehearing, but we are not persuaded to change our ultimate conclusion to deny institution of inter partes review. II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. When rehearing a decision on petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus.” slip op. at 3

  • Other 314aInstitution denied discretionary otherDenied

    “III. DISCUSSION OF THE REQUEST FOR REHEARING On May 4, 2020, we issued our Decision denying institution of inter partes review based upon: (1) the advanced stage of the California District Court proceeding; (2) the investment of time and resources by the District Court and the parties in the California District Court proceeding; (3) overlap in the invalidity theories that Petitioner is pursuing here and in the California District Court proceeding; and (4) overlap in the claims challenged in the California District Court proceeding. Inst. Dec. 6–12. In the Decision, we did not reach any of the ten substantive grounds for patentability. See generally Inst. Dec. Rather, the denial of institution was solely based on our findings under 35 U.S.C. § 314(a). Id.” slip op. at 4

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied

    “review under 35 U.S.C. §314(a) and 37 C.F.R. §42.4. Institution of an inter partes review is authorized when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2012); see also 37 C.F.R. § 42.4(a) (2019) (“The Board institutes the trial on behalf of the Director.”) For the reasons set forth below, upon considering the arguments and evidence of record, we are not persuaded to change our ultimate conclusion to deny institution of inter partes review.7” slip op. at 5

  • BurdenDenied

    “The petition must identify with particularity each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim. 35 U.S.C. § 312(a)(3); see also 37 C.F.R. § 42.22(a) (content of petitions); 37 C.F.R. 42.104 (content of petition). Petitioner’s conclusory statements, without more, are irreparably lacking in detail. Petitioner does not provide any analysis to support the assertion of obviousness over Oki. In fact, Petitioner instead asserts that Oki discloses all of the limitations in each of claims 1, 2, 4–7, 9, 15, 16, and 18, so it is unclear what modification, if any, is required to Oki, or even the basis of Petitioner’s obviousness grounds. E.g., Pet. 28– 33. Petitioner does not clearly point out the differences between the claimed invention and Oki. Nor does Petitioner explain why a person of ordinary skill in the art would have found the claimed subject matter obvious in spite of those differences. Petitioner has not provided sufficient reasoning or facts on which to base a conclusion that a person of ordinary skill in the art would have found it obvious, in light of Oki’s disclosure, to modify Oki to meet the claim limitations. Accordingly, Petitioner fails to demonstrate a reasonable likelihood that it would prevail on this ground of unpatentability.” slip op. at 28

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 8,223,117
• International Business Machines Corp. v. Intellectual Ventures I LLCRehearing granted
  PTAB · Aug 24, 2015 · IPR2014-01516 · APJ Hyun J Jung · IPR · Rehearing

  The Board granted rehearing only to reconsider constructions of “selecting” and “comparing,” but denied modification of its decision denying institution on claims 1–16.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted in part

    “decision is abuse of discretion. 37 C.F.R. § 42.71(c). The requirements are set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. We grant Petitioner’s request insofar as we have reconsidered our interpretation of the challenged claim terms, but we decline to modify our previous decision.” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied

    “reasonable interpretation of “selecting the file based on whether content of the file matches a file type indicated by a name of the file” in view of the Specification of the ’298 patent includes “a sequence of linked examinations of the indicated file type and file content that demonstrates a mismatch.” Also, as we determined previously, the portions of Chen relied on in the Petition describe examining the file content and file extension, but not comparing the file content to the file extension. Dec. 11. Thus, after considering our previous analysis in view of Petitioner’s proposed interpretation, we determine that Petitioner has not demonstrated Chen discloses “selecting the file based on whether content of the file matches a file type indicated by a name of the file,” as recited by independent claims 1, 10, and 16. Accordingly, we are not persuaded to modify our decision denying institution based on Petitioner’s challenge of claims 1, 2, 6, 7, 9–11, and 16 as anticipated by Chen and Petitioner’s challenge of claims 3–5, 8, and 12– 15 as obvious over Chen and either Ji, Korn, Kim, or admitted prior art, which do not address the deficiency regarding the “selecting” step.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “Id. at 3. In the cited portion, the ’298 patent states that “the retrieved file is examined to determine whether the file structure is as expected for a file of the indicated type.” Ex. 1004, 7:5–7. The ’298 patent also states that “[a]lternatively, files can be checked to ensure that they actually contain the type of data described by the file type marker.” Id. 7:9–10. The ’298 patent, thus, supports Petitioner’s interpretation that “a selection based on whether a file content matches the file type indicated by the file name may be accomplished by a direct comparison between two items,” because it describes a direct comparison. The same portions of the ’298 patent, however, do not support Petitioner’s interpretation that the “selecting” step also includes “a sequence of linked examinations of the indicated file type and file content that demonstrates a mismatch” because it does not describe an examination of file type and a separate examination of file content that, when linked, demonstrate a mismatch. We determine that, in view of the Specification of the ’298 patent, one of ordinary skill in the art would interpret the “selecting” step of independent claims 1, 10, and 16 to include examining files “to determine whether the file structure is as expected for a file of the type indicated,” checking files “to ensure that they actually contain the type of data described by the file type marker,” and other, similar alternatives. Petitioner provides no reasoning that the Specification of the ’298 patent further describes separate examinations that demonstrate a mismatch. Petitioner’s arguments, therefore, do not persuade us that the broadest, reasonable interpretation of the “selecting” step in view of the Specification of the ’298 patent further includes “a sequence of linked examinations of the indicated file type and file content that demonstrates a mismatch.” Finally, an interpretation of the “selecting” step that includes “a sequence of linked examinations of the indicated file type and file content that demonstrates a mismatch” would render meaningless, or superfluous, the term “matches” as recited by independent claims 1, 10, and 16. Separate examinations of file type and file content that demonstrate a mismatch allows for no matching at all. Thus, Petitioner does not persuade us to adopt this particular interpretation of the “selecting” step.” slip op. at 5

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “reasonable interpretation of “selecting the file based on whether content of the file matches a file type indicated by a name of the file” in view of the Specification of the ’298 patent includes “a sequence of linked examinations of the indicated file type and file content that demonstrates a mismatch.” Also, as we determined previously, the portions of Chen relied on in the Petition describe examining the file content and file extension, but not comparing the file content to the file extension. Dec. 11. Thus, after considering our previous analysis in view of Petitioner’s proposed interpretation, we determine that Petitioner has not demonstrated Chen discloses “selecting the file based on whether content of the file matches a file type indicated by a name of the file,” as recited by independent claims 1, 10, and 16. Accordingly, we are not persuaded to modify our decision denying institution based on Petitioner’s challenge of claims 1, 2, 6, 7, 9–11, and 16 as anticipated by Chen and Petitioner’s challenge of claims 3–5, 8, and 12– 15 as obvious over Chen and either Ji, Korn, Kim, or admitted prior art, which do not address the deficiency regarding the “selecting” step.” slip op. at 7

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,757,298

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.