- Kingston Technology Company, Inc. v. Polaris Innovations Ltd.Rehearing deniedPTAB · Oct 26, 2017 · IPR2017-00974 · APJ Matthew R Clements · IPR · Rehearing
The Board denied Kingston’s rehearing request, leaving in place the discretionary denial of inter partes review of claim 4 under §§ 314(a) and 325(d).
RulingsRehearing decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“We are not persuaded by Petitioner’s argument because we disagree with its premise—i.e., that denying inter partes review of claim 4 may result in an inconsistent application of the law. As an initial matter, Petitioner’s argument depends upon speculation about whether the panel in the 1622 IPR will determine that the subject matter of proposed, substitute claim 9 is unpatentable. Even if that becomes true, however, it would not result in an inconsistent application of the law because our denial of institution of inter partes review of claim 4 is not an affirmative determination that the subject matter of claim 4 is patentable. The denial of institution in the 1622 IPR was based on a deficiency of the petition in that case. Kingston Technology Company, Inc. v. Polaris Innovations Ltd., Case IPR2016-01622, slip op. at 17, 18 (PTAB February 15, 2017) (Paper 7) (determining, with respect to claim 4, that Petitioner did not explain persuasively how and/or why a person of ordinary skill in the art would have made the proposed modifications to Simpson alone or in view of the teachings of the Intel Specification); see id., slip op. at 6 (PTAB April 6, 2017) (Paper 16) (denying request for rehearing). The denial of institution in this proceeding was because, inter alia, “we determine[d] that the prior art and arguments asserted in this Petition are ‘substantially the same’ as those in the first petition” (Dec. 13) and, therefore, declined to reach the merits of the Petition. In neither decision did the Board determine affirmatively that claim 4 is patentable over the prior art asserted in the respective petitions. As a result, even if the panel in the 1622 IPR later determines that proposed substitute claim 9 is unpatentable, that determination will not be inconsistent with our denial of institution of inter partes review of claim 4.” slip op. at 4
- RehearingRehearing, deniedDenied
“We are not persuaded by Petitioner’s argument because we disagree with its premise—i.e., that denying inter partes review of claim 4 may result in an inconsistent application of the law. As an initial matter, Petitioner’s argument depends upon speculation about whether the panel in the 1622 IPR will determine that the subject matter of proposed, substitute claim 9 is unpatentable. Even if that becomes true, however, it would not result in an inconsistent application of the law because our denial of institution of inter partes review of claim 4 is not an affirmative determination that the subject matter of claim 4 is patentable. The denial of institution in the 1622 IPR was based on a deficiency of the petition in that case. Kingston Technology Company, Inc. v. Polaris Innovations Ltd., Case IPR2016-01622, slip op. at 17, 18 (PTAB February 15, 2017) (Paper 7) (determining, with respect to claim 4, that Petitioner did not explain persuasively how and/or why a person of ordinary skill in the art would have made the proposed modifications to Simpson alone or in view of the teachings of the Intel Specification); see id., slip op. at 6 (PTAB April 6, 2017) (Paper 16) (denying request for rehearing). The denial of institution in this proceeding was because, inter alia, “we determine[d] that the prior art and arguments asserted in this Petition are ‘substantially the same’ as those in the first petition” (Dec. 13) and, therefore, declined to reach the merits of the Petition. In neither decision did the Board determine affirmatively that claim 4 is patentable over the prior art asserted in the respective petitions. As a result, even if the panel in the 1622 IPR later determines that proposed substitute claim 9 is unpatentable, that determination will not be inconsistent with our denial of institution of inter partes review of claim 4.” slip op. at 4
Discretionary denialPatents in suitUS 6,850,414 - Radware, Inc. v. F5 Networks, Inc.Institution deniedPTAB · Oct 23, 2017 · IPR2017-01249 · APJ Kristen L Droesch · IPR · Institution
The Board denied institution because Radware, Inc. did not identify Radware, Ltd. as a real party in interest.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiDecided for patent owner
“review, “the party against whom a presumption is directed has the burden of producing evidence to rebut the presumption. But this rule does not shift the burden of persuasion, which remains on the party who had it originally.” Fed. R. Evid. 301; see 37 C.F.R 42.62(a). Accordingly, when a patent owner provides sufficient evidence prior to institution that reasonably brings into question the accuracy of a petitioner’s identification of real parties-in-interest, the overall burden remains with the petitioner to establish that it has complied with the statutory requirement to identify all real parties-in-interest. Zerto at 7. The allocation of the burdens of production and persuasion for identification of all real parties in interest appropriately accounts for the fact that a petitioner is far more likely to be in possession of, or have access to, evidence relevant to the issue than is a patent owner. Id.” slip op. at 5
Discretionary denialPatents in suitUS 6,311,278 - 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 - Kingston Technology Company, Inc. v. Polaris Innovations Ltd.Institution deniedPTAB · Aug 14, 2017 · IPR2017-00974 · APJ Matthew R Clements · IPR · Institution
The Board denied institution of inter partes review of claim 4, exercising its discretion under § 325(d) because the petition presented substantially the same art and arguments as the earlier petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“With respect to the eighth factor, we determine that the prior art and arguments asserted in this Petition are “substantially the same” as those in the first petition. We agree with Patent Owner that this Petition uses different secondary references but that those references “serve the same purpose.” Prelim. Resp. 19. For example, whereas the first petition relied upon the Intel Specification for teaching a module having a height in the range recited by claim 4, this Petition relies upon Karabatsos for teaching a module with a height of between 1.125 and 1.250 inches. Pet. 35 (citing Ex. 1003 ¶ 27). As in its first Petition, Petitioner argues that a person of ordinary skill in the art would have recognized the design need for modules with the recited height and would have found it obvious to reduce the height of Simpson’s module. Pet. 35–38. This is substantially the same argument that we determined not to be persuasive in IPR2016-01622. Prelim. Resp. 40–41. In particular, this argument, like the argument in the first Petition, does not address[], for example, the dimensions of the components taught by Simpson, whether two rows of memory chips would fit on a printed circuit board that has a height of only 1 to 1.2 inches, or—if the memory chips taught by Simpson would not fit—what a person of ordinary skill in the art would have known about the dimensions of similar memory chips as of the critical date that would have made it obvious to fit two rows of them on a printed circuit board having a height of only 1 to 1.2 inches. Kingston Technology Company, Inc. v. Polaris Innovations Ltd., Case IPR2016-01622, slip op. at 6 (PTAB April 6, 2017) (Paper 16). Petitioner relies upon substantially the same argument in the ground based upon Bechtolsheim. Pet. 51–54. Bechtolsheim teaches three rows of chips. See, e.g., Ex. 1004, Figs. 1a, 2a. Petitioner suggests that a person of ordinary skill in the art could, “for example, simply eliminat[e] a row of the DRAM memory devices to reduce the profile height of the memory module” (Pet. 53), but Petitioner does not address the dimensions of the memory devices taught by Bechtolsheim, whether two rows of those devices would fit on a printed circuit board that has a height of only 1 to 1.2 inches, or—if the memory chips taught by Bechtolsheim would not fit—what a person of ordinary skill in the art would have known about the dimensions of similar memory chips as of the critical date that would have made it obvious to fit two rows of them on a printed circuit board having a height of only 1 to 1.2 inches.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“D. Summary On this record, we exercise our discretion not to institute inter partes review. 35 U.S.C. §§ 314(a), 325(d). III. ORDER Accordingly, it is ORDERED that the Petition is denied.” slip op. at 14
Discretionary denialPatents in suitUS 6,850,414 - Fieldpiece Instruments, Inc. v. Twin Rivers Engineering, Inc.Institution deniedPTAB · Jun 9, 2017 · IPR2017-00362 · APJ Monica S Ullagaddi · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 2, 3, 6, 7, and 9 were obvious over the asserted references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We are not persuaded by Petitioner’s arguments because Petitioner does not point to sufficient evidence or explain how Wong, Wallack, Sibley, Horiba, Johnson Controls, and Moyer teach or suggest the “without . . . secondary tracer” limitations recited in claims 2, 6, 7, and 9. In the present proceeding, citing to these references generally, particularly without citation to specific portions, is insufficient to meet Petitioner’s burden of persuasion. See 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.”). Moreover, we disagree with Petitioner’s contention that the silence of the references regarding the “without . . . secondary tracer” limitations teaches or otherwise suggests the negative limitation recited in claims 2, 6, 7, and 9. See Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012) (“Negative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation.”); see also Inphi Corp. v. Netlist, Inc., 805 F.3d 1350, 1357 (Fed. Cir. 2015) (“We hold that Santarus did not create a heightened written description standard for negative claim limitations and that properly described, alternative features are sufficient to satisfy the written description standard of § 112, paragraph 1 for negative claim limitations.”)” slip op. at 13
- BurdenInstitution denied
“We are not persuaded by Petitioner’s arguments because Petitioner does not point to sufficient evidence or explain how Wong, Wallack, Sibley, Horiba, Johnson Controls, and Moyer teach or suggest the “without . . . secondary tracer” limitations recited in claims 2, 6, 7, and 9. In the present proceeding, citing to these references generally, particularly without citation to specific portions, is insufficient to meet Petitioner’s burden of persuasion. See 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.”). Moreover, we disagree with Petitioner’s contention that the silence of the references regarding the “without . . . secondary tracer” limitations teaches or otherwise suggests the negative limitation recited in claims 2, 6, 7, and 9. See Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012) (“Negative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation.”); see also Inphi Corp. v. Netlist, Inc., 805 F.3d 1350, 1357 (Fed. Cir. 2015) (“We hold that Santarus did not create a heightened written description standard for negative claim limitations and that properly described, alternative features are sufficient to satisfy the written description standard of § 112, paragraph 1 for negative claim limitations.”)” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We are not persuaded by Petitioner’s arguments because Petitioner does not point to sufficient evidence or explain how Wong, Wallack, Sibley, Horiba, Johnson Controls, and Moyer teach or suggest the “without . . . secondary tracer” limitations recited in claims 2, 6, 7, and 9. In the present proceeding, citing to these references generally, particularly without citation to specific portions, is insufficient to meet Petitioner’s burden of persuasion. See 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.”). Moreover, we disagree with Petitioner’s contention that the silence of the references regarding the “without . . . secondary tracer” limitations teaches or otherwise suggests the negative limitation recited in claims 2, 6, 7, and 9. See Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012) (“Negative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation.”); see also Inphi Corp. v. Netlist, Inc., 805 F.3d 1350, 1357 (Fed. Cir. 2015) (“We hold that Santarus did not create a heightened written description standard for negative claim limitations and that properly described, alternative features are sufficient to satisfy the written description standard of § 112, paragraph 1 for negative claim limitations.”) Furthermore, Wong at least suggests “introducing or mixing a secondary tracer within the leak detector,” which is directly contrary to the negative limitations at issue. Specifically, Wong discloses The chamber 104 that is to be tested is filled with a test gas and preferably is pressurized with the test gas so as to accelerate the leakage, if any, of the test gas from the chamber. The chamber is surrounded by an ambient gas which may be the air of the atmosphere, or, alternatively, the chamber 104 may be placed within a larger chamber so as to permit the chamber 104 to be surrounded by a chosen ambient gas other than air. In another embodiment, shown in FIG. 3 a localized region on the surface of the chamber may be flooded by a chosen ambient gas that temporarily displaces the air that otherwise would be present. Ex. 1004, 3:52–62 (emphasis added).” slip op. at 13
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petitioner’s Declarant, Mr. Laub, testifies that “Wong discloses a hand-held portable infrared leak detector . . . which detects leaks without introducing or mixing a secondary tracer,” but fails to cite any underlying record evidence supporting his testimony.2 Ex. 1003 ¶ 103. Mr. Laub also fails to address the disclosure of Wong described above. Mr. Laub presents similarly unsupported testimony with respect to Wallack and Sibley. See id. ¶¶ 107, 113. We do not find persuasive Mr. Laub’s conclusory and unsupported testimony regarding the disclosure of Wong, Wallack, and Sibley. 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.”). With respect to claim 6, Mr. Laub supports his testimony by citing portions of Moyer. Id. ¶ 172 (citing Ex. 1010, 3:43–45, 3:53–56, 4:22–25). We have reviewed the cited portions of Moyer and disagree that they disclose or suggest the “without . . . secondary tracer” limitations recited in independent claims 2, 6, 7, and 9. 2 Petitioner does not actually cite to this specific portion of Mr. Laub’s testimony. See 37 C.F.R. § 42.104(b)(5) (requiring petitions to include a statement of the precise relief requested, including “identifying specific portions of the evidence that support the challenge . . . [t]he Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge”). It is unnecessary to invoke rule 104(b)(5) here because even considering this portion of Mr. Laub’s testimony, we do not find its contents persuasive.” slip op. at 14
§ 103 obviousnessPatents in suitUS 7,022,993 - Unified Patents Inc. v. Hybrid Audio, LLCRehearing deniedPTAB · Apr 7, 2017 · IPR2016-01265 · APJ Monica S Ullagaddi · IPR · Rehearing
The Board denied rehearing of its decision denying institution, finding no overlooked or misapprehended arguments and upholding its construction of “filter” to exclude QMF filters.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“(d) Rehearing. . . . 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.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“evidence when we determined that the term “filter,” in the context of the ’281 patent and its prosecution history, excludes QMF filters. See id.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Reh’g Req.”) of our Decision Denying Institution (Paper 7, “Dec.”). Petitioner requests that we reconsider our decision to deny institution of inter partes review with respect to claims 5, 12, 18, 26, 34, 41, 48, 57, 66, 71, 83, 90, 95, 100, 107, 112, 114, 116, and 120 (“the challenged claims”) and our determination that Petitioner had not demonstrated a reasonable likelihood of prevailing in showing that the challenged claims of U.S. Patent No. RE40,281 (Ex. 1001, “the ’281 patent”) would have been obvious over various combinations of Jones, Adelson, and Veldhuis. For the reasons set forth below, the request is denied. slip op. at 2
Claim construction§ 103 obviousness - Kingston Technology Company, Inc. v. Polaris Innovations Ltd.Rehearing deniedPTAB · Apr 6, 2017 · IPR2016-01622 · APJ Matthew R Clements · IPR · Rehearing
The Board denied Kingston’s rehearing request, leaving in place the denial of institution for claim 4 because the Petition did not sufficiently explain how Simpson would meet the claimed board height.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated 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. See 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). With this in mind, we address the arguments presented by Petitioner.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Petitioner’s argument is unavailing. Simpson teaches a printed circuit board with a height sufficient to accommodate the components mounted thereon—i.e., two rows of horizontally-oriented memory chips 12A–H. Petitioner relies upon both rows of memory chips as teaching “at least nine identically designed integrated semiconductor memories,” as recited in claim 1. Pet. 18–19. The Intel Specification, by contrast, teaches a single row of vertically-oriented memory chips. Ex. 1003, 7. The Petition and Dr. Subramanian propose modifying the height of Simpson’s printed circuit board, but do not address whether a height in the range of 1 to 1.2 inches would be sufficient to accommodate two rows of horizontally-oriented memory chips, as taught by Simpson. Neither the Petition nor Dr. Subramanian addresses, for example, the dimensions of the components taught by Simpson, whether two rows of memory chips would fit on a printed circuit board that has a height of only 1 to 1.2 inches, or—if the memory chips taught by Simpson would not fit—what a person of ordinary skill in the art would have known about the dimensions of similar memory chips as of the critical date that would have made it obvious to fit two rows of them on a printed circuit board having a height of only 1 to 1.2 inches. In its Rehearing Request, Petitioner does not identify where in the Petition these issues were addressed. As a result, we are not persuaded that we misapprehended or overlooked any arguments and evidence when we concluded that “Petitioner has not explained sufficiently how or why a person of ordinary skill in the art would have modified Simpson to achieve a height of ‘1 to 1.2 inches perpendicular to said contact strip.’” Dec. 17.” slip op. at 5
§ 103 obviousnessPatents in suitUS 6,850,414 - PTAB · Mar 15, 2017 · IPR2016-00999 · APJ Jeffrey S Smith · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution for claims 1–28 because Petitioner did not show a reasonable likelihood that steered planar-array beams are necessarily asymmetrical.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion may be determined 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. See 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). The request must identify, with specificity, all matters that the moving party believes the Board misapprehended or overlooked. See 37 C.F.R. § 42.71(d). Section 42.71(d) further provides that the request must identify where each matter was previously addressed.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Lastly, Petitioner contends the Decision overlooked or “misapprehended the facts showing that all steered planar array antennas inherently result in radiation patterns having at least one asymmetrical beam.” Req. 13–15. According to Petitioner, Figure 4 of U.S. Patent No. 5,929,823 (Exhibit 2010) and Figure 3 of U.S. Patent No. 6,198,434 (Exhibit 2011), relied upon in Patent Owner’s Preliminary Response as describing remedies for distortion effects due to asymmetrical beams (Prelim. Resp. 47–48), do not eliminate the inherent asymmetry of the main beam. Req. 14. However, our Decision relies on Paragraphs 151 to 156 of Mr. Cosgrove’s testimony (Ex. 2001), which cite additional sections of Exhibits 2010 and 2011, to determine that the steered beams of a planar array are not necessarily asymmetrical. Dec. 21–23 (citing Ex. 2001 ¶¶ 151–156). For example, Mr. Cosgrove addresses the asymmetric bulge shown in Figure 4 of Exhibit 2010 by citing to a description of Figure 6, which describes a lobe symmetry of main lobe 610 that presents a more slender beam mid-section than that of main lobe 410 of Figure 4. Ex. 2001 ¶ 152 (citing Ex. 2010, 7:65–8:6). Mr. Cosgrove also addresses the asymmetric bulge shown in Figure 3 of Exhibit 2011 by citing to a description of Figure 6, which describes main lobe 610 as substantially symmetric, and more suited than lobe 310 of Figure 3 to provide communications within a defined subsection of an area to be served. Ex. 2001 ¶ 156 (citing Ex. 2011, 10:13–16). Accordingly, the Decision did not misapprehend or overlook any arguments or evidence presented by Petitioner. We did not abuse our discretion in determining that the Petitioner did not adequately establish a reasonable likelihood that a steered beam of a planar array is necessarily asymmetrical.” slip op. at 5
NonePatents in suitUS 8,311,582 - Unified Patents Inc. v. Cuica, LLCInstitution deniedPTAB · Feb 27, 2017 · IPR2016-01644 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution on claims 1–4, 6, 7, 9, and 10 because the cited combinations did not show the claimed means-plus-function limitations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we conclude that the information presented in the Petition does not establish that there is a reasonable likelihood that Unified would prevail in challenging claims 1–4, 6, 7, 9, and 10 of the ’983 patent as unpatentable under 35 U.S.C § 103(a). Pursuant to 35 U.S.C. § 314, we hereby decline to institute an inter partes review of the ’983 patent.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“We agree with Unified’s view that the term “forresta” does not have ordinary meaning because the Specification indicates that the inventor intended to act as a lexicographer for the term based upon the use of quotation marks for identification of the term therein, and referring to “forresta” as “a set of values herein named” and “herein labeled.” Ex. 1001, Abstract, 3:31–33. The Specification states that the invention “overcomes the deficiencies of prior schemes for controlling content dissemination,” by using a “forresta” as “passive information” that is included “within the user’s request,” and that by “[u]sing the functionality provided by the forresta, each of the client requests and each of the server responses are individualized.” Id. at 3:28–34. On this record, we agree that the Specification supports Unified’s proposed construction of the term “forresta” as “any passive data which can be used to identify the user’s level of access to a repository of data,” and we adopt this construction for purposes of this Decision.” slip op. at 11
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“means-plus-function terms Independent claims 1 and 9 include several recitations of “means” or “means for” limitations. See Ex. 1001, 20:39–63, 22:43–23:35. Unified advocates that 35 U.S.C. § 112 ¶ 6 applies to the “means for allowing access” term of claim 1 and “means for organizing data” of claim 9 because the claim language does not provide sufficient structure to perform the claimed function.3 Pet. 16–18. We agree with Unified on this issue because the use of the word “means” in a claim element creates a rebuttable presumption that § 112 ¶ 6 applies, and there is no structure identified in the claims. Personalized Media Comm’s, LLC v. ITC, 161 F.3d 696, 703–04 (Fed. Cir. 1998). Unified identifies the “server computer 102 [that] contains . . . data access control (‘DAC’) process 106 of the present invention” as the structure for the “means for allowing access” term of claim 1, and the “reference tool 500,” depicted in Figure 5, as the structure of the “means for organizing data” of claim 9. Pet. 16–18 (citing Ex. 1001, 4:60–67, 7:57–8:5, Figs. 1, 2, 5; Ex. 1002 ¶¶ 25, 27).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Ex. 1006, 7:27–41; see Pet. 32.5 Unified appears to rely upon Shannon’s client computer number or machine addresses such as Internet Protocol (“IP”), Media Access Control (“MAC”) addresses, and/or usernames as teaching the claimed n-byte character sequence. Pet. 32. The claim limitation, however, requires the creation of a forresta identity as an n-byte character sequence, and Shannon merely discloses that there are different identifiers of a computer or of a user of a computer that may be associated with different groups and have different assigned levels of access. See Ex. 1006, 7:11–26. Even assuming the identifiers in Shannon are “an n-byte character sequence,” as recited by the claim, Shannon still fails to teach any “creating” because the computer numbers taught by Shannon—e.g., IP 5 In the Petition, Unified cites to Exhibit 1006 at 7:11–26 (Pet. 32), but the text quoted by Unified, and reproduced above, is at 7:27–41. The erroneous citation appears to be inadvertent error, and we rely on the textual portion of Shannon quoted in the Petition. address or MAC address—already exist and, therefore, are not “creat[ed]” by Shannon’s group/source database 203. Moreover, even assuming that Shannon teaches “creating” computer numbers, we still would not be persuaded that Shannon teaches the recited “means for creating said forresta identity” because Unified does not identify, and we cannot find, any teaching in Shannon of the use of the algorithm disclosed in the ’983 patent “for creating a forresta identity,” i.e., fcode process 900. Unified also does not argue that Shannon’s process is equivalent to fcode process 900, or that He teaches this limitation. We are, therefore, not persuaded that the asserted combination of Shannon and He teaches or suggests the limitation of “means for creating said forresta identity as an n-byte character sequence” of the “access control means” of claim 1. Because claims 2–4, 6, and 7 depend from independent claim 1, and because Unified cites no additional evidence in discussing these claims that would remedy the deficiency of the prior art discussed above with respect to claim 1, the obviousness challenge to dependent claims 2–4, 6, and 7 also is not persuasive.” slip op. at 21
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 6,466,983 - Commscope Technologies, LLC v. Communications Components Antenna Inc.Institution deniedPTAB · Nov 3, 2016 · IPR2016-00999 · APJ Jeffrey S Smith · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1–28 unpatentable, principally because Yea did not establish the claimed asymmetrical coverage areas.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review of claims 1–28 of U.S. Patent No. 8,311,582 B2 (Ex. 1001, “the ’582 patent”). Paper 1 (“Pet.”). Patent Owner, Communications Components Antenna Inc., filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). Institution of an inter partes review is authorized by statute 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); see 37 C.F.R. § 42.108. Upon consideration of the Petition and the Preliminary Response, we are not persuaded Petitioner has demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of claims 1–28 of the ’582 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Petitioner’s proposed construction of this limitation is supported by the specification of the ’582 patent. The ’582 patent discloses replacing a single sector coverage area with sub-sector coverage areas, at least one of which is an asymmetrical coverage area. Ex. 1001, 3:16–18. The ’582 patent discloses that the use of asymmetrical coverage areas permits the total coverage area to closely approximate the symmetrical sector coverage area being replaced, without creating excessively large sub-sector handover zones or introducing sever degradation in network performance. Id. at 3:18–24. The ’582 patent discloses creating the asymmetrical coverage areas by replacing an existing antenna with an antenna that has substantially the same coverage area, but divides the coverage area into a plurality of separate asymmetrical beams or sub-sectors. Id. at 4:32–38. As disclosed by the ’582 patent, the replacement antenna produces a plurality of separate beams, each defining a new sub-sector with only a small overlapping area between them and which together provide substantially identical coverage to the sector supported by the original antenna, to upgrade the single sector to a plurality of sub-sectors without significantly affecting neighboring sites. Id. at 4:51–57. The replacement antenna introduces asymmetry into the generated beam pattern. Id. at 4:58–60. The introduction of asymmetrical beams by the replacement antenna allows close approximation of the coverage area of the conventional sector antenna being replaced. Id. at 5:61–64. For purposes of this Decision, we adopt Petitioner’s proposed construction of “a plurality of sub-sector coverage areas extending therefrom, at least one of which is asymmetrical,” as a plurality of replacement sub-sector beams, at least one of which has an asymmetrical shape, where asymmetry includes deliberate or inherent asymmetry as the broadest reasonable construction consistent with the specification.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“49 (Fed. Cir. 2005). There, the district court invalidated claims of the patent in suit on summary judgment based on the measured dimensions of a prior art patent figure. Id. at 1148. The Federal Circuit reversed, warning “that arguments based on drawings not explicitly made to scale in issued patents are unavailing.” Id. at 1149. Petitioner here does not identify any portion of Yea disclosing that Figures 4 and 8 are drawn accurately enough to determine an asymmetrical nature of the radiation patterns. Petitioner also fails to cite to any disclosure in Yea that identifies or describes an asymmetrical nature of the radiation patterns. Furthermore, Petitioner also has not explained why the shapes shown in the linear scale drawings of Figure 4 would show similar shapes when converted to a logarithmic scale. Additionally, Petitioner does not explain why the carrier to interference ratio shown in Figure 8 can be used to accurately measure antenna radiation beam patterns. We find Petitioner does not sufficiently establish that the plots shown in Figures 4 and 8 of Yea can be used to determine whether the antenna radiation beam pattern is asymmetrical. On the record before us, we determine the Petition and supporting evidence does not adequately establish a reasonable likelihood that Petitioner would prevail in showing that Yea anticipates independent claims 1, 13, and 20. b. Dependent Claims 2, 6, 7, 9, 11, 12, 14, 15, 18, 19, 21, 22, 24, and 27 Petitioner argues that Yea anticipates dependent claims 2, 6, 7, 9, 11, 12, 14, 15, 18, 19, 21, 22, 24, and 27. Pet. 47–53. In so arguing, Petitioner relies on Yea as disclosing the claimed asymmetrical coverage area. Id. Because we are not persuaded that Yea discloses this limitation, we are not persuaded that Petitioner establishes a reasonable likelihood of prevailing in showing that Yea anticipates dependent claims 2, 6, 7, 9, 11, 12, 14, 15, 18, 19, 21, 22, 24, and 27.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“as well as testimony of both Mr. Collins and Mr. Cosgrove. Under Rule 37 C.F.R. § 42.108, any genuine issues of material fact created by the testimonial evidence should be viewed in light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review. Even reviewing the testimony of Mr. Collins in the light most favorable to Petitioner, we determine Petitioner has established only that asymmetrical beams may be used in a planar array antenna, but not that a person of ordinary skill in the art would have understood steered beams of a planar array antenna are necessarily asymmetrical. Mr. Collins cites to Litva (Ex. 1009) and Wästberg (Ex. 1018) in stating that prior art steered beams of a planar array antenna can be asymmetrical beams. Ex. 1024 ¶ 179. We credit Patent Owner’s arguments and the testimony of Mr. Cosgrove to determine Petitioner does not sufficiently establish the likelihood that a person of ordinary skill in the art would have understood that steered beams of a planar array antenna are necessarily asymmetrical. Further, Petitioner fails to set forth a sufficient rationale for why a person of ordinary skill in the art would use the asymmetrical beams of the prior art with the disclosure of Yea. Pet. 39–40. On the record before us, we determine the Petition and supporting evidence does not adequately establish a reasonable likelihood that using asymmetrical beams in Yea would have been obvious. We therefore conclude that the information presented does not show a reasonable likelihood that Petitioner would prevail in showing the subject matter of claims 1, 2, 6, 7, 9, 11–15, 18–22, 24, and 27 would have been obvious over Yea, Metawave Website, Litva, and Wästberg.” slip op. at 22
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,311,582
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.