- Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Regents Of The University Of MinnesotaRehearing deniedPTAB · Sep 18, 2020 · IPR2017-01186 · APJ Robert J Weinschenk · IPR · Rehearing
The Board denied Ericsson’s rehearing request, leaving institution denied because the petition was time-barred under § 315(b) based on privity with district court defendants.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS When considering a request for rehearing of a decision whether to institute an inter partes review, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“In the Decision, we explained that 35 U.S.C. § 315(b) provides that an inter partes review “may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Dec. 4. We also explained that in determining whether a petitioner is in privity with another party, we consider the Supreme Court’s decision in Taylor v. Sturgell, 553 U.S. 880 (2008). Dec. 4–5. Taylor provides six categories of exceptions to the rule against nonparty preclusion, namely 1) when “[a] person . . . agrees to be bound by the determination of issues in an action between others”; 2) “based on a” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“In the Decision, we explained that 35 U.S.C. § 315(b) provides that an inter partes review “may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Dec. 4. We also explained that in determining whether a petitioner is in privity with another party, we consider the Supreme Court’s decision in Taylor v. Sturgell, 553 U.S. 880 (2008). Dec. 4–5. Taylor provides six categories of exceptions to the rule against nonparty preclusion, namely 1) when “[a] person . . . agrees to be bound by the determination of issues in an action between others”; 2) “based on a” slip op. at 2
Discretionary denialPatents in suitUS 8,774,309 - Unified Patents Inc. v. Synchview Technologies, LLCRehearing deniedPTAB · May 28, 2020 · IPR2019-00470 · APJ Monica S Ullagaddi · IPR · Rehearing
The Board denied rehearing and maintained denial of institution because the record lacked evidence to determine the scope of “DVR” and whether the prior art met that limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“In summary, the record does not include sufficient information for a determination of the claim scope of “DVR.” It is Petitioner’s burden to show, in the Petition, “[h]ow the challenged claim is to be construed” and “[h]ow the construed claim is unpatentable.” 37 C.F.R. § 42.104(b)(3)–(4). Without such an explanation of Petitioner’s position and supporting evidence, we cannot conduct the necessary factual inquiry for determining whether Petitioner has shown a reasonable likelihood in demonstrating that the prior art meets this limitation. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) (reversing the Board’s decision of obviousness because it relied on “what at best are speculative assumptions as to the meaning of the claims”).” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In summary, the record does not include sufficient information for a determination of the claim scope of “DVR.” It is Petitioner’s burden to show, in the Petition, “[h]ow the challenged claim is to be construed” and “[h]ow the construed claim is unpatentable.” 37 C.F.R. § 42.104(b)(3)–(4). Without such an explanation of Petitioner’s position and supporting evidence, we cannot conduct the necessary factual inquiry for determining whether Petitioner has shown a reasonable likelihood in demonstrating that the prior art meets this limitation. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) (reversing the Board’s decision of obviousness because it relied on “what at best are speculative assumptions as to the meaning of the claims”). We are unable to conclude, therefore, that there is a reasonable likelihood that Petitioner would prevail in demonstrating the unpatentability of any of the challenged claims.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In summary, the record does not include sufficient information for a determination of the claim scope of “DVR.” It is Petitioner’s burden to show, in the Petition, “[h]ow the challenged claim is to be construed” and “[h]ow the construed claim is unpatentable.” 37 C.F.R. § 42.104(b)(3)–(4). Without such an explanation of Petitioner’s position and supporting evidence, we cannot conduct the necessary factual inquiry for determining whether Petitioner has shown a reasonable likelihood in demonstrating that the prior art meets this limitation. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) (reversing the Board’s decision of obviousness because it relied on “what at best are speculative assumptions as to the meaning of the claims”).” slip op. at 5
Claim constructionPatents in suitUS 6,788,882 - PTAB · Sep 4, 2019 · IPR2017-00909 · APJ Jacqueline T Harlow · IPR · Rehearing
The Board denied rehearing, finding no abuse of discretion in denying institution because the petition did not adequately show motivation to combine or a reasonable expectation of success.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS Pursuant to 37 C.F.R. § 42.71(d): A party dissatisfied with a decision may file a single 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. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion exists where a “decision [i]s based on an erroneous conclusion of law or clearly” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“In addition, there is no dispute that the annealing protocol employed by the Wu Thesis “prove[d] deleterious to the functionality of the silicon device, particularly to its infrared wavelength absorptance capabilities.” Id. at 15 (citing Pet. 21). Based on these observations, we concluded that the Petitioner did not “adequately explain why an ordinarily skilled artisan would have sought to anneal the sulfur-doped spiked silicon disclosed by the Wu Thesis in view of the reference’s teachings concerning the characteristics of spiked silicon, and the limitations of annealing such devices.” Id. at 17.” slip op. at 4
- Strike new argumentNew argument disregardedOther
“Hamamatsu’s argument regarding the alleged limitations of passivation by hydrogenation for only healing damage appears to be new. In fact, Hamamatsu’s Petition states that “[a]nnealing typically occurs after a doping process, because the annealing is used to repair damage caused by 7 the doping process, and to ‘activate’ the dopant material in the silicon.” Pet. 4. Hamamatsu did not make a distinction between these two purposes until now, nor have they adequately explained why it matters. As explained in our Decision, the passivation by hydrogenation process as disclosed in the Wu Thesis is used to “cure the structural defects in, and improve the electrical properties of,” the silicon substrate. Decision 18. Even, assuming arguendo, that the passivation by hydrogenation process is not a “full and complete substitute for the annealing process,” this does not change the fact that the Wu Thesis does not suggest any positive effect of annealing on dopant activation or on the electrical properties of spiked silicon. Furthermore, to the extent that annealing was discussed in the Wu Thesis, it had deleterious effects on absorptance.” slip op. at 7
§ 103 obviousnessPatents in suitUS 8,080,467 - Google LLC v. Uniloc Luxembourg, S.A.Rehearing deniedPTAB · Dec 13, 2018 · IPR2017-02202 · APJ Charles J Boudreau · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because Richardson and Demeyer did not teach determining the claimed account information or software features through physical device recognition.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision[,]” which party “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.” 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“machine parameters include . . . information relating to the device’s software configuration” and that a person of ordinary skill in the art would have recognized that “data relating to the client device’s software configuration can contain information regarding features of software that the user of the client device is entitled to use” (Pet. 19 (emphasis added) (citing Ex. 1103 ¶ 52; Ex. 1104 ¶ 22)), we find no support in the cited evidence that Richardson teaches or suggests that any “information regarding features of software that the user of the client device is entitled to use” could be determined by performing physical device recognition. Indeed, as we explained in our earlier Decision, we discern no information regarding “features of software that [a] user is entitled to use” in any of Richardson’s machine parameters cited by Petitioner as examples of “information relating to the device’s software configuration,” namely, “the platform on which a web browser or another application runs,” “unique parameters associated with the firmware in use,” and “software or operating system serial number.” Dec. 17; cf. Pet. 19. Despite Petitioner’s citation to the testimony of its declarant, Mr. James Geier, in support of its argument, the cited testimony in disclosures corresponding to the challenged claim language. Although we agree with Petitioner that “a reference need not use the same terminology to disclose an element” (Req. Reh’g 6 n.1 (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009))), we will not employ the benefit of hindsight from the ’852 patent’s disclosure to find a teaching or suggestion in Richardson. relevant part merely repeats verbatim Petitioner’s argument (compare Ex. 1103 ¶ 52, with Pet. 19) and likewise fails to explain how the cited examples from Richardson would have taught or suggested the claim limitation. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“disclosures corresponding to the challenged claim language. Although we agree with Petitioner that “a reference need not use the same terminology to disclose an element” (Req. Reh’g 6 n.1 (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009))), we will not employ the benefit of hindsight from the ’852 patent’s disclosure to find a teaching or suggestion in Richardson. relevant part merely repeats verbatim Petitioner’s argument (compare Ex. 1103 ¶ 52, with Pet. 19) and likewise fails to explain how the cited examples from Richardson would have taught or suggested the claim limitation. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 9
NonePatents in suitUS 8,239,852 - Google LLC v. Uniloc Luxembourg, S.A.Rehearing deniedPTAB · Nov 1, 2018 · IPR2017-02080 · APJ Charles J Boudreau · IPR · Rehearing
The Board denied Google's rehearing request, leaving institution denied for claims 3–23 because the petition did not show Zydney disclosed the claimed object field.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We have considered Petitioner’s contentions but are not persuaded of any error in our Decision. Our Decision was premised not on a rejection of Petitioner’s proposed formulation of the broadest reasonable interpretation of the “object field” limitation recited in claim 3, but instead on Petitioner’s failure to persuade us that Zydney’s “body” maps to the recited object field. A prior art reference cannot anticipate “unless [it] discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Moreover, “[a]nticipation requires that a single reference ‘describe the claimed invention with sufficient precision and detail to establish that the subject matter existed in the prior art.’” Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1284 (Fed. Cir. 2017) (alteration in original) (quoting Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed. Cir. 2002)). “For this reason, it has long been understood that ambiguous references do not, as a matter of law, anticipate a claim.” Id. But the disclosure of Zydney relied upon by Petitioner for the object field limitation of claim 3 is, at best, ambiguous.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In our Decision, we found that there was insufficient evidence on the record to support Petitioner’s contention that Zydney’s disclosure of a message “body” expressly discloses the recited object field and, further, that Petitioner did not establish a reasonable likelihood of showing that the claimed object field is inherently anticipated by Zydney. Dec. 17. We explained, in particular, that “[a]lthough Zydney discloses that its voice container includes ‘voice data,’ . . . Petitioner has not shown that voice data necessarily would be included in an ‘object field.’” Id. We, accordingly, determined that Petitioner did not demonstrate a reasonable likelihood of showing that the object field limitation of claim 3 is disclosed by Zydney.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“record to support Petitioner’s contention that Zydney’s disclosure of a message “body” expressly discloses the recited object field and, further, that Petitioner did not establish a reasonable likelihood of showing that the claimed object field is inherently anticipated by Zydney. Dec. 17. We explained, in particular, that “[a]lthough Zydney discloses that its voice container includes ‘voice data,’ . . . Petitioner has not shown that voice data necessarily would be included in an ‘object field.’” Id. We, accordingly, determined that Petitioner did not demonstrate a reasonable likelihood of showing that the object field limitation of claim 3 is disclosed by Zydney.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“recites, in part, “a messaging system communicating with a plurality of instant voice message client systems . . . wherein the messaging system receives an instant voice message from one of the plurality of instant voice message client systems, and wherein the instant voice message includes an object field including a digitized audio file.” Ex. 1001, 24:15–27 (emphasis added). Petitioner alleges that claims 3–8, 11, 13, and 18–21 are anticipated by Zydney1 and that claims 3–23 also are unpatentable as obvious over the combined teachings of Zydney and certain other references (Pet. 6, 11–68), relying in each of the asserted grounds on Zydney as teaching the recited “object field including a digitized audio field” (id. at 17–19, 38).” slip op. at 3
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,724,622 - C&D Zodiac, Inc. v. B/E Aerospace, Inc.Rehearing deniedPTAB · Mar 9, 2018 · IPR2017-01274 · APJ Scott A Daniels · IPR · Rehearing
The Board denied C&D Zodiac’s rehearing request and left in place its denial of institution because the hypothetical forward wall limitation did not provide ascertainable claim scope.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision[,]” which party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“In the Institution Decision, we explained that we were unable to determine the metes and bounds of the hypothetical enclosure unit limitation required by all the challenged claims. Inst. Dec. 7–12. Specifically, we found that “[a]s a whole, the claim language does not in any comprehensible way tie the relative position of the seat support to the shape of the wall, be it “substantially not flat” or, hypothetically speaking, “substantially flat.”” Inst. Dec. 10. In light of this uncertainty, we found that “Petitioner has not provided sufficient information for a determination of the scope of certain limitations, such as the ‘additional space’ and, therefore, we cannot conduct the necessary factual inquiry for determining whether the prior art meets this limitation.” Id. at 16.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In the Institution Decision, we explained that we were unable to determine the metes and bounds of the hypothetical enclosure unit limitation required by all the challenged claims. Inst. Dec. 7–12. Specifically, we found that “[a]s a whole, the claim language does not in any comprehensible way tie the relative position of the seat support to the shape of the wall, be it “substantially not flat” or, hypothetically speaking, “substantially flat.”” Inst. Dec. 10. In light of this uncertainty, we found that “Petitioner has not provided sufficient information for a determination of the scope of certain limitations, such as the ‘additional space’ and, therefore, we cannot conduct the necessary factual inquiry for determining whether the prior art meets this limitation.” Id. at 16.” slip op. at 3
Claim constructioncites MarkmanPatents in suitUS 9,365,292 - C&D Zodiac, Inc. v. B/E Aerospace, Inc.Rehearing deniedPTAB · Mar 8, 2018 · IPR2017-01273 · APJ Jennifer S Bisk · IPR · Rehearing
The Board denied rehearing of its decision denying institution because Petitioner did not show an abuse of discretion in finding claims 1–6 indefinite in scope.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision[,]” which party “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.” 37 C.F.R. § 42.71(d). slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In the Institution Decision, we explained that we were unable to determine the metes and bounds of the hypothetical enclosure unit limitation required by all the challenged claims. Inst. Dec. 7–9. Specifically, we found that the claim language “leaves us to compare the claimed enclosure unit with a configuration that we know nothing about, except that it has an alternative hypothetical enclosure unit with ‘a substantially flat front wall located in the substantially the same position in the cabin as the forward wall.’” Inst. Dec. 8. In light of this uncertainty, we found that “Petitioner has not provided sufficient information for a determination of the scope of the hypothetical enclosure unit limitation and, therefore, we cannot conduct the necessary factual inquiry for determining whether the prior art meets this limitation.” Id. at 9.” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“determine the metes and bounds of the hypothetical enclosure unit limitation required by all the challenged claims. Inst. Dec. 7–9. Specifically, we found that the claim language “leaves us to compare the claimed enclosure unit with a configuration that we know nothing about, except that it has an alternative hypothetical enclosure unit with ‘a substantially flat front wall located in the substantially the same position in the cabin as the forward wall.’” Inst. Dec. 8. In light of this uncertainty, we found that “Petitioner has not provided sufficient information for a determination of the scope of the hypothetical enclosure unit limitation and, therefore, we cannot conduct the necessary factual inquiry for determining whether the prior art meets this limitation.” Id. at 9.” slip op. at 3
Claim constructionPatents in suitUS 9,434,476 - Fieldpiece Instruments, Inc. v. Twin Rivers Engineering, Inc.Rehearing deniedPTAB · Sep 25, 2017 · IPR2017-00362 · APJ Monica S Ullagaddi · IPR · Rehearing
The Board denied Fieldpiece’s rehearing request, leaving institution denied because the Petition did not sufficiently show that the prior art taught or suggested the negative limitation in claims 2, 3, 6, 7, and 9.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Pet. 44 (for claims 2 and 9); see also id. at 58 (substantially similar argument for claim 6), 68 (for claim 7, referring to argument for claim 6). In its Rehearing Request, Petitioner cites numerous portions of the Laub Declaration in support of its contention. Reh’g. Req. 5, 6, 8–10, 12, 13 (citing Ex. 1003, 29, 30, 32–34, 36, 49, 50, 73, 74). None of these portions of the Laub Declaration were cited in the Petition in connection with the negative limitation. In fact, as noted in our Decision, Petitioner did not cite to the Laub Declaration at all in connection with the negative limitation. See Dec. 14 n.2. The Rehearing 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.” 37 C.F.R. § 42.71(d) (emphasis added). As Petitioner did not cite to the Laub Declaration at all in connection with the negative limitation in its Petition, we could not have “misapprehended or overlooked” this evidence in connection with that limitation. Moreover, the portions of the Petition cited in the Rehearing Request relate only to overviews of the references. See Reh’g. Req. 5–13 (citing Pet. 13, 14, 21, 22, 26, 29, 33, 34, 46, 47). In our Decision, we stated that the burden of persuasion remains on a petitioner in inter partes review proceedings. See Dec. 13 (citing DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (Fed. Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”)). Petitioner does not meet its burden because none of these overviews explain why the ordinarily skilled artisan would have understood the references to teach or suggest the negative limitation. Similarly, even having considered the portions of the Laub Declaration first cited in the Request for Rehearing, we still are not persuaded Petitioner explains sufficiently why the negative limitation is taught or suggested by the references.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“person of ordinary skill in the art would have nonetheless expected the limitation ‘without…a secondary tracer’ to have been known in the art.” Reh’g. Req. 2, 14. The Petition, however, does not mention the level of the ordinary skill in the art in connection with the negative limitation, let alone explain why the limitation would have been taught or suggested to one of ordinary skill in the art at the time of the invention. Petitioner further asserts that our Decision “misapprehends the disclosure in the prior art and is based on authority regarding [the] written description requirement of a negative limitation – not the standard required to show disclosure of a negative limitation in the prior art.” Id. at 4 (emphasis added); see also id. at 13–14 (expanding upon argument). We clarify that we relied on the case law cited in our Decision, not to indicate the minimum that a petitioner is required to show regarding a negative limitation, but simply to emphasize that the negative limitation inquiry is focused on what a person of ordinary skill in the art would understand the prior art to teach or suggest. Petitioner does not disagree with this legal point. See, e.g., id. at 15 (“Petitioner contends that the prior art, when viewed from the perspective of a person of ordinary skill in the art, sufficiently discloses the negative limitation . . .”). Nonetheless, as noted above, Petitioner neither points out an express teaching nor provides any other explanation as to why the negative limitation would have been taught or suggested to one of ordinary skill in the art at the time of the invention. Based on our construction of the negative limitation and our reading of the prior art, we concluded that a person of ordinary skill would not have understood the prior art to disclose the negative limitation. And Petitioner did not provide any evidence to the contrary. See, e.g., Pet. 44, 58, 68 (citing “generally” to prior art exhibits, but not citing to Laub Declaration). Thus, we are not persuaded that we erred in determining that Petitioner did not meet its burden to show a reasonable likelihood of prevailing on this issue.” slip op. at 6
- BurdenDecided for patent owner
“Moreover, the portions of the Petition cited in the Rehearing Request relate only to overviews of the references. See Reh’g. Req. 5–13 (citing Pet. 13, 14, 21, 22, 26, 29, 33, 34, 46, 47). In our Decision, we stated that the burden of persuasion remains on a petitioner in inter partes review proceedings. See Dec. 13 (citing DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (Fed. Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”)). Petitioner does not meet its burden because none of these overviews explain why the ordinarily skilled artisan would have understood the references to teach or suggest the negative limitation. Similarly, even having considered the portions of the Laub Declaration first cited in the Request for Rehearing, we still are not persuaded Petitioner explains sufficiently why the negative limitation is taught or suggested by the references.” slip op. at 4
NonePatents in suitUS 7,022,993 - General Plastic Industrial Co., Ltd. v. Canon Kabushiki KaishaRehearing deniedPTAB · Sep 6, 2017 · IPR2016-01361 · APJ Sheila F Mcshane · IPR · Rehearing
The Board granted the expanded-panel request but denied rehearing, leaving in place the discretionary denial of institution in all five follow-on petitions.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“B. Requests for Rehearing A party requesting rehearing has the burden to show a decision should be modified by specifically identifying all matters the party believes were misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 5
- Other 314aInstitution denied discretionary otherInstitution denied
“Our intent in formulating the factors was to take undue inequities and prejudices to Patent Owner into account. Thus, factor 3 is directed to Petitioner’s potential benefit from receiving and having the opportunity to study Patent Owner’s Preliminary Response, as well as our institution decisions on the first-filed petitions, prior to its filing of follow-on petitions. As discussed in our Decisions Denying Institution, we are concerned here by the shifts in the prior art asserted and the related arguments in follow-on petitions. See Dec. 11. Multiple, staggered petitions challenging the same patent and same claims raise the potential for abuse. The absence of any restrictions on follow-on petitions would allow petitioners the opportunity to strategically stage their prior art and arguments in multiple petitions, using our decisions as a roadmap, until a ground is found that results in the grant of review.14 All other factors aside, this is unfair to patent 14 The Board has addressed efficiency and potential prejudice induced by multiple petitions in multiple cases. See LG Electronics, slip op. at 12 (“The Board’s resources would be more fairly expended on first petitions rather than on a followon petition like the Petition in this case.”); Butamax Advanced Biofuels LLC v. Gevo, Case IPR2014-00581, slip op. at 12–13 (PTAB Oct. 14, 2014) (Paper 8) (“[T]he four obviousness grounds are ‘second bites at the apple,’ which use our prior decision as a roadmap to remedy Butamax’s prior, deficient challenge. owners and is an inefficient use of the inter partes review process and other post-grant review processes. Considering other factors (i.e., factors 2, 4, and 5) allows us to assess and weigh whether a petitioner should have or could have raised the new challenges earlier. We recognize that there may be circumstances where multiple petitions by the same petitioner against the same claims of a patent should be permitted, and that such a determination is dependent on the facts at issue in the case. The factors set forth above, in our view, represent a formulation of relevant considerations that permit the Board to assess the potential impacts on both the efficiency of the inter partes review process and the fundamental fairness of the process for all parties. We recognize, also, that additional factors may arise in other cases for consideration, where appropriate. However, the factors set forth above, at the very least, serve to act as a baseline of factors to be considered in our future evaluation of follow-on petitions.” slip op. at 17
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“panels to authorize, an expanded panel. See generally 35 U.S.C. § 6; 37 C.F.R. §§ 41.1–42.412; see also AOL Inc. v. Coho Licensing LLC, Case IPR2014-00771, slip op. at 2 (PTAB Mar. 24, 2015) (Paper 12) (“[P]arties are not permitted to request, and panels do not authorize, panel expansion.”). Our standard operating procedures, however, provide the Chief Judge with discretion to expand a panel to include more than three judges. PTAB SOP 1, 1–3 (§§ II, III) (Rev. 14); see id. at 1 (introductory language explaining that the Director has delegated to the Chief Judge the authority to designate panels under 35 U.S.C. § 6); see also In re Alappat, 33 F.3d 1526, 1532 (Fed. Cir. 1994) (providing that Congress “expressly granted the Commissioner the authority to designate expanded Board panels made up of more than three Board members.”). The Chief Judge may consider panel expansions upon a “suggestion” from a judge, panel, or party in a post-grant review. Id. at 3–4; see also Apple Inc. v. Rensselaer Polytechnic Inst., Case IPR2014-00319, slip op. at 2 n.1 (PTAB Dec. 12, 2014) (Paper 20) (expanded panel) (per curiam). The standard operating procedure exemplifies some of the reasons for which the Chief Judge may expand a panel. PTAB SOP 1, 3 (§ III.A). For example, an expanded panel may be appropriate when “[t]he proceeding or AIA Review involves an issue of exceptional importance.” Id. (§ III.A.1). In these cases, the Chief Judge has considered whether expansion is warranted, and has decided to expand the panel due to the exceptional nature of the issues presented.4 As we discuss further below, follow-on petitions have been at issue in multiple cases before the Board. The Chief Judge has determined that an expanded panel is warranted to provide a discussion of factors that are considered in the exercise of the Board’s discretion under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a).” slip op. at 4
Discretionary denialPatents in suitUS 8,909,094 - General Plastic Industrial Co., Ltd. v. Canon Kabushiki KaishaRehearing deniedPTAB · Sep 6, 2017 · IPR2016-01360 · APJ Sheila F Mcshane · IPR · Rehearing
The Board denied rehearing of the decisions denying institution in all five proceedings, concluding it had not abused its discretion or overlooked any issue.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“B. Requests for Rehearing A party requesting rehearing has the burden to show a decision should be modified by specifically identifying all matters the party believes were misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 5
- Other 314aInstitution denied discretionary otherDecided for patent owner
“prejudices to Patent Owner into account. Thus, factor 3 is directed to Petitioner’s potential benefit from receiving and having the opportunity to study Patent Owner’s Preliminary Response, as well as our institution decisions on the first-filed petitions, prior to its filing of follow-on petitions. As discussed in our Decisions Denying Institution, we are concerned here by the shifts in the prior art asserted and the related arguments in follow-on petitions. See Dec. 11. Multiple, staggered petitions challenging the same patent and same claims raise the potential for abuse. The absence of any restrictions on follow-on petitions would allow petitioners the opportunity to strategically stage their prior art and arguments in multiple petitions, using our decisions as a roadmap, until a ground is found that results in the grant of review.14 All other factors aside, this is unfair to patent” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDecided for patent owner
“of the seven factors weigh against institution. Petitioner disputes our findings on the issue of whether Petitioner “should have known” of the art asserted in the follow-on petitions under factor 2. We disagree with Petitioner’s characterization that invariably factor 2 could not be met because “patents or printed publications” necessarily “must be locatable by a reasonably diligent search.” Req. Reh’g 8. The relevant issue under factor 2 is not, as Petitioner has framed it, whether the prior art references relied on in the follow-on petitions constitute printed publications, but whether they could have been found with reasonable diligence. Thus, even for printed publications, a petitioner is free to explain why a reasonably diligent search could not have uncovered the newly applied prior art. See Apotex Inc. v. Wyeth LLC, IPR2015-00873, slip op. at 6 (Sept. 16, 2015) (Paper 8) (describing “[w]hat a petitioner ‘could have raised,’” as including “prior art which a skilled searcher conducting a diligent search reasonably could have been expected to discover.”). Here, the record is devoid of any explanation why Petitioner could not have found the newly asserted prior art in any earlier search(es) through the exercise of reasonable diligence.” slip op. at 19
- Strike new argumentNew argument disregardedDecided for patent owner
“In the Replies to Patent Owner’s Preliminary Responses, Petitioner did not argue that there were any changed circumstances that reasonably justified its new prior art searches and associated filing of follow-on petitions. See Reply 1–5. In the Requests for Rehearing, however, Petitioner avers that denial of the first-filed petitions was “surprising” to it, because the Board treated the term “toner supply container” in the claim preamble as limiting. Req. Reh’g 10–11. We determine that the “surprising” argument is not entitled to consideration, because it was not included in the Replies, which we authorized in order to allow Petitioner to address Patent Owner’s Preliminary Responses that raised the issues of impropriety of follow-on petitions and application of discretion under § 314(a).” slip op. at 20
Discretionary denialPatents in suitUS 8,909,094
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.