- PTAB · Jun 5, 2023 · IPR2022-01437 · APJ Benjamin D M Wood · IPR · Rehearing
The Board denied SharkNinja’s rehearing request and left institution denied because the petition did not establish a reasonable likelihood of success on the Xia-Park obviousness challenge.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). 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 Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party challenging the decision has the burden of showing a decision should be modified, and the 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 in its papers. 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
“articulated why it would have been obvious to modify the recovery tank of Xia’s non-wet-filter vacuum to include a strainer basket like that shown in Park’s wet-filter water vacuum. Dec. 13.2 Based on review of the disclosure of Park, the Decision found that the strainer was used to help the wet-filter mechanism work. Id. at 8–10. The Decision noted that the strainer served its purpose at two times—during recirculation of the filtering water when in use and during draining of the filtering water when finished. Id. Thus, the Decision found that the strainer’s purpose was to solve problems unique to wet-filter vacuums. Id. at 11. The Decision found insufficient evidentiary support for Petitioner’s assertion that Park suggested its strainer would be useful in devices like Xia that did not have wet filters. Id. The Decision also found insufficient evidentiary support for Petitioner’s assertion that a person of ordinary skill in the art would nevertheless recognize that Park’s strainer could be useful in devices that did not have wet filters. Id. at 12–13. Accordingly, the Decision determined that the Petition did not meet the burden for institution. Id. at 13.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”). However, we disagree that Petitioner has established the factual underpinnings required to support such a theory. Petitioner’s Request directs us to no evidence the Decision missed on this topic. As noted in the Decision, the expert testimony relies on Park or on other devices in which the strainer is used to prevent clogging of recirculation devices. Dec. 13, n.3. These devices teach no more than Park—strainers used to permit recirculation systems to operate without clogging. See id. The Petition did not identify sufficient evidence that would support a finding that a person of ordinary skill in the art would have recognized, before the date of invention, the obviousness of using Park’s strainer in Xia, a device that operates in a different way than Park. See KSR, 550 U.S. at 417 (noting a precondition of the application-of-a-known-technique rationale is that the technique used to improve a device improves the device “in the same way.”) (emphasis added).” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableDecided for patent owner
“sense” reason to combine the references, premised on testimony alleging that debris dumped from a wet vacuum tank could clog the drain. Req. Reh’g. 11–12. Petitioner does not direct our attention to where this theory of unpatentability was raised; arguments not raised cannot have been overlooked. In any event, the expert testimony cited is not entitled to persuasive weight because it is not supported by sufficient evidence or technical reasoning. Xerox Corp. et al v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (Decision Denying Institution) (precedential). As explained in the Decision, Petitioner points to no evidence that there was a known problem of drain clogs when disposing of waste water from devices like Xia, nor does Petitioner’s expert explain the reasons why a person of ordinary skill in the art would have nevertheless recognized the problem and its solution. Dec. 12 (“Petitioner has not explained why it would have been obvious to modify Xia by borrowing features that are meant to solve problems unique to water-filter vacuum cleaners”), 13 n.3 (finding that Petitioner’s expert “does not provide an explanation of why a person of ordinary skill in the art would look to add a recirculation filter to devices that do not use recirculation”). Unless there is credible evidence showing otherwise, any perceived obviousness today is only apparent in hindsight. See, e.g., Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 381 F.3d 1371, 1376 (Fed. Cir. 2004) (“Prior knowledge in the field of the invention must be supported by tangible teachings of reference materials, and the suggestion to combine references must not be derived by hindsight from knowledge of the invention itself.”); see also Leo Pharmaceutical Products, Ltd. v. Rea, 726 F.3d 1346, 1353 (Fed. Cir. 2013) (“an invention can often be the recognition of a problem itself”); Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed. Cir. 1983) (holding that a proper obviousness analysis “precludes consideration of whether the invention would have been obvious . . . after learning all about the invention”).” slip op. at 7
§ 103 obviousnesscites KSRPatents in suitUS 11,185,205 - Meridian Wildlife Services, LLC v. Safe Haven Wildlife Removal And Property Management Experts, LLCRehearing deniedPTAB · Apr 11, 2023 · IPR2022-01340 · APJ Amee A Shah · IPR · Rehearing
The Board denied the petitioner’s rehearing request, leaving institution denied for claims 1–8 because the petitioner did not show the Board misapprehended or overlooked its obviousness arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“C. STANDARD FOR REHEARING The party filing a request for rehearing of a decision whether to institute has the burden of showing the decision should be modified, and the 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 in its papers. 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Id. § 42.71(c)).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In our decision on institution (Paper 9, “Dec.” or “Decision”), we determined that Petitioner failed to show a reasonable likelihood of prevailing with respect to any of the Challenged Claims and denied institution of inter partes review. Petitioner filed a timely Request for Rehearing in which it asks that we institute inter partes review of the Challenged Claims. Paper 10, 1 (“Reh’g Req.” or “Request”). For the reasons that follow, we deny Petitioner’s Request.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“to “then place nets where the birds are observed flying in the building.” Reh’g Req. 4 (citing Pet. 19; Ex. 1008 ¶¶ 15, 45; Ex. 1004 ¶¶ 71, 72, 75). Brugh does not “instruct” a POSA to perform either of these actions. Rather, Brugh provides a method comprising, in relevant part, “a) determining the species of flying vertebrate inside the building; b) selecting bird netting; . . . [and] d) positioning the netting for capture based on the species of flying vertebrate and their flight characteristics utilizing the height adjustable poles to raise the netting.” Ex. 1004 ¶¶ 8–10, 15 (emphasis added). There is no “instruction” that the location of the netting is adjusted based on the flight pattern; rather, the height is adjusted. Brugh further provides for “determin[ing] how [the flying vertebrate] flies, e.g., a bat flies in a different pattern than a sparrow” and using the flight pattern “to place the netting in relationship to the position of the flying vertebrate.” Id. ¶ 45. There is no “instruction” that the determining of the flight pattern must be by observing the flying vertebrate (as opposed to researching the flight pattern of the species of the flying vertebrate) or that the netting is placed in relationship to and observed or expected position. b) “The Board’s analysis ignores common sense.” Reh’g Req. 4. Petitioner contends that the Board ignored common sense, as “at some point a POSA necessarily would have observed some species of bird flying near some perimeter walls within some building.” Reh’g Req. 4; see also id. at 6 (“It was common sense that a POSA would eventually observe a bird near a perimeter wall and place Brugh’s capture device accordingly.”), 7 (“[T]he Board . . . substitutes a rigid review of the prior art’s disclosure for common sense. . . .”)). This argument is unavailing. “[W]hile ‘common sense’ can be invoked, even potentially to supply a limitation missing from the prior art, it must still be supported by evidence and a reasoned explanation.” Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1363 (Fed. Cir. 2016). As explained above, Petitioner’s argument discounts the inventor’s discovery, in which he spent “countless hours” before discovering that birds fly along the perimeter wall of a building’s interior. Ex. 2001 ¶ 16. Further, as discussed above, Brugh does not instruct nor teach a POSA to observe flight patterns and determine or adjust the locations of the nets accordingly. We are not persuaded that the inventor’s discovery was merely “common sense,” and if it was, Petitioner should have submitted sufficient evidence to support such a finding. See Arendi, 832 F.3d at 1363. As explained in our Decision, Petitioner did not. See, e.g., Dec. 32 (“Petitioner provides insufficient evidence that bats or other flying animals are likely to fly ‘at or proximate to a perimeter wall and at or near the ceiling’ such that a POSA would find it obvious to place a net at or proximate to the perimeter of a wall within a building”). A request for rehearing under 37 C.F.R. § 42.71(d) is not an opportunity for Petitioner to simply reargue issues we previously addressed.” slip op. at 6
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Owner’s expert, Mr. Tolley, is the inventor of the ’683 patent. We considered this fact but, nevertheless, found Mr. Tolley’s testimony more persuasive than Dr. Chamberlain’s testimony. We considered the provided evidence of Mr. Chamberlain’s declaration and the support thereof and found insufficient evidentiary support for why a POSA would place at least one net at or proximate to the perimeters and at or near the ceiling of the structure. Dec. 32 (citing Ex. 1004 ¶¶ 71, 72). Id. at 33. As such, Mr. Chamberlain’s testimony is entitled to little weight. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (Aug. 24, 2022) (precedential) (denying institution and holding that a declaration is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning); see also 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.”); see also Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1311 (Fed. Cir. 2000) (“Lack of factual support for expert opinion to factual determinations . . . may render the testimony of little probative value in a validity determination.”) (quotation omitted); see also Carella v. Starlight Archery & Pro Line Co., 804 F.2d 135, 138 (Fed. Cir. 1986) (“Although in some circumstances unsupported oral testimony can be sufficient to prove prior knowledge or use, it must be regarded with suspicion and subjected to close scrutiny.”). Dr. Chamberlain’s testimony that at least one net would reduce the flying area was not supported by any evidence. Dec. 34. As such, Dr. Chamberlain’s testimony was afforded little weight. 37 C.F.R. § 42.65(a).” slip op. at 11
§ 103 obviousnessPatents in suitUS 11,064,683 - Meridian Wildlife Services, LLC v. Safe Haven Wildlife Removal And Property Management Experts, LLCRehearing deniedPTAB · Apr 11, 2023 · IPR2022-01254 · APJ Amee A Shah · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution because Petitioner did not show that the Board misapprehended or overlooked its obviousness arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“C. STANDARD FOR REHEARING The party filing a request for rehearing of a decision whether to institute has the burden of showing the decision should be modified, and the 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 in its papers. 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Id. § 42.71(c)).” slip op. at 3
- BurdenInstitution denied meritsInstitution denied
“Petitioner’s argument does not give enough credit to the inventor’s discovery. Mr. Tolley, the inventor, testified that he “spent countless hours monitoring bird flights and patterns within Walmart’s facilities and other indoor structures, focusing not only on where birds typically roosted in the facilities, but also where and how they flew within the enclosures . . . and experimenting with various placements of nets based on [his] observations.” Ex. 2001 ¶ 16. We do not find Petitioner’s citation to the inventor’s testimony, in which the inventor testifies to having “spent countless hours” working on his discovery, to support Petitioner’s argument that the inventor’s discovery would have been obvious based on Brugh’s “instruct[ions to] a POSA to observe the ‘flight patterns’ of these birds” and to “place nets where the birds are observed flying in the building.” Reh’g Req. 4 (citing Ex. 1008 ¶¶ 15, 45; Ex. 1004 ¶¶ 32, 72, 75). Brugh does not “instruct” a POSA to perform either of these actions. Rather, Brugh provides a method comprising, in relevant part, “a) determining the species of flying vertebrate inside the building; b) selecting bird netting; . . . [and] d) positioning the netting for capture based on the species of flying vertebrate and their flight characteristics utilizing the height adjustable poles to raise the netting.” Ex. 1004 ¶¶ 8–10, 15 (emphasis added). There is no “instruction” that the location of the netting is adjusted based on the flight pattern; rather, the height is adjusted. Brugh further provides for “determin[ing] how [the flying vertebrate] flies, e.g., a bat flies in a different pattern than a sparrow” and using the flight pattern “to place the netting in relationship to the position of the flying vertebrate.” Id. ¶ 45. There is no “instruction” that the determining of the flight pattern must be by observing the flying vertebrate (as opposed to researching the flight pattern of the species of the flying vertebrate) or that the netting is placed in relationship to an observed or expected position.” slip op. at 7
- Expert testimonyPetitioner expert discountedDecided for patent owner
“been obvious to place at least one net ‘along a perimeter wall . . . in response to observing flight patterns in those locations’ is premised on the alleged fact” that bats and other animals tend to roost in protected locations. Dec. 36 (citing Pet. 18). We then addressed Mr. Chamberlain’s declaration and the support thereof and found insufficient support for his testimony that birds would fly or roost “in or along the perimeter of a wall within a building or structure.” Id. at 36–37 (citing Ex. 1004 ¶¶ 32, 33; Ex. 1018, 81, 85.) As such, Mr. Chamberlain’s testimony is entitled to little weight. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (Aug. 24, 2022) (precedential) (denying institution and holding that a declaration is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning); see also 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.”); see also Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1311 (Fed. Cir. 2000) (“Lack of factual support for expert opinion to factual determinations . . . may render the testimony of little probative value in a validity determination.”) (quotation omitted); see also Carella v. Starlight Archery & Pro Line Co., 804 F.2d 135, 138 (Fed. Cir. 1986) (“Although in some circumstances unsupported oral testimony can be sufficient to prove prior knowledge or use, it must be regarded with suspicion and subjected to close scrutiny.”).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“The first reason was not written as observing flight patterns or, alternatively, expecting flight patterns, but as one reason resulting from “observing flight patterns,” premised on the tendency of birds to roost in a protected, expected location, such as, ostensibly, along the inside perimeter wall of a building. The second reason was that the placement of the nets along a perimeter wall and in another location would shrink the bird’s flying area and thus improve capture. The third reason was, ostensibly, that having more nets, i.e., increased net density, would increase the capture rate. The Decision addressed the first argument regarding observing flight patterns at pages 36–37, the second argument at pages 37–38, and the third argument at pages 38–39.” slip op. at 6
§ 103 obviousnessPatents in suitUS 10,729,108 - Meridian Wildlife Services LLC v. Safe Haven Wildlife Removal And Property Management Experts LLCRehearing deniedPTAB · Apr 11, 2023 · IPR2022-01253 · APJ Michael L Woods · IPR · Rehearing
The Board denied Meridian’s rehearing request, leaving institution denied because the petition did not show a reasonable likelihood of prevailing on any challenged claim.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“the burden of showing a decision should be modified, and the 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 in its papers. 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Id. § 42.71(c)).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We disagree with Petitioner. The Petition did not cite sufficient evidence to support a finding that a bird would have flown along the interior perimeter of an interior wall. See, e.g., Dec. 19 (“Petitioner provides no evidence that bats or other flying animals are likely to fly or roost along the inner perimeter of a structure such that a POSITA would have found it obvious to place a net along the perimeter of a wall within a building.”). Petitioner’s attempt to cite the inventor’s (Mr. Tolley’s) expert testimony is equally unavailing. See Reh’g Req. 4. We disagree with Petitioner’s assertion that Mr. Tolley’s testimony supports Petitioner’s obviousness challenge.” slip op. at 5
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“Petitioner’s fourth sub-argument is not persuasive. As explained in our Decision, Dr. Chamberlain’s testimony that birds would fly along the inner perimeter of a building is not supported by evidence. Dec. 18–19. As such, his testimony is entitled to little weight. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (Aug. 24, 2022) (precedential) (denying institution and holding that a declaration is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning); see also 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.”); see also Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1311 (Fed. Cir. 2000) (“Lack of factual support for expert opinion to factual determinations, however, may render the testimony of little probative value in a validity determination.”) (quotation omitted); see also Carella v. Starlight Archery & Pro Line Co., 804 F.2d 135, 138 (Fed. Cir. 1986) (“Although in some circumstances unsupported oral testimony can be sufficient to provide prior knowledge or use, it must be regarded with suspicion and subjected to close scrutiny.”).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We disagree with Petitioner. The Petition did not cite sufficient evidence to support a finding that a bird would have flown along the interior perimeter of an interior wall. See, e.g., Dec. 19 (“Petitioner provides no evidence that bats or other flying animals are likely to fly or roost along the inner perimeter of a structure such that a POSITA would have found it obvious to place a net along the perimeter of a wall within a building.”). Petitioner’s attempt to cite the inventor’s (Mr. Tolley’s) expert testimony is equally unavailing. See Reh’g Req. 4. We disagree with Petitioner’s assertion that Mr. Tolley’s testimony supports Petitioner’s obviousness challenge.” slip op. at 5
§ 103 obviousnessPatents in suitUS 10,251,374 - Abs Global, Inc. / Genus, PLC v. Cytonome/St, LLCRehearing deniedPTAB · Jan 7, 2022 · IPR2021-00306 · APJ Lynne H Browne · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution under § 325(d) because Petitioner did not show material error concerning Weigl, Ohki, or Wada.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 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). Additionally, 37 C.F.R. § 42.71(d) further provides that “[t]he burden of showing a decision should be modified lies with the party challenging the decision,” i.e., Petitioner, and “[t]he 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 3
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“pursuant to 35 U.S.C. § 325(d). Paper 13 (“Dec.”). The Decision explains the two-part framework used to assess arguments under § 325(d) and that the Board considers several factors (i.e. the “Becton, Dickinson” factors) when determining: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Dec. 8. In the Decision, the Board determined that “Weigl, Ohki, and Wada were previously presented to the Office” and that Petitioner had “not demonstrated that the Examiner materially erred when considering these references.” Id. at 16. Based on this determination, the Board exercised discretion to deny institution of inter partes review. Id.” slip op. at 2
Discretionary denialPatents in suitUS 10,689,210 - Platform Science, Inc. v. XRS CorporationRehearing deniedPTAB · Dec 14, 2021 · IPR2021-00325 · APJ Neil T Powell · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because the Petition did not show a reasonable likelihood that claims 1–24 were unpatentable as obvious.
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 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.” Id. When rehearing a decision on a” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner has not offered persuasive evidence of any suggestion in the prior art that Nehowig’s onboard computer may be used with multiple different engine control modules that communicate data in different languages. Nor has Petitioner offered persuasive evidence of any suggestion in Nehowig that its engine control module uses more than one language. Contrarily, Nehowig suggests that the onboard computer and engine control module are vehicle specific without an indication that either needs to be adaptable for use in multiple different vehicles. . . . Additionally, regardless of whether Nehowig’s ECM uses one or multiple communication protocols, Petitioner does not provide persuasive evidence that it would have been obvious to modify Nehowig’s OBC 204 to meet limitation 1A.1. Fedorchuk discloses a device configured for connecting to and communicating with a diagnostic communication port of any of a variety of vehicles using any of a number of different possible protocols, enabled by interface device 10’s ability to detect the different possible protocols. . . . Petitioner does not provide persuasive evidence that Nehowig’s OBC 204 would be connected to any ECM without OBC 204 and the ECM already configured to communicate specifically with one another using one more predesignated protocols. . . . Petitioner does not provide persuasive evidence that Nehowig’s OBC 204 would not already have dedicated provisions for communicating with the ECM in the specific protocol(s) the ECM uses. Nehowig clearly discloses that OBC 204 already can communicate with Nehowig’s ECM, apparently using whatever protocol(s) the ECM uses. [Ex. 1005] ¶ 23. Accordingly, Petitioner has not shown sufficiently a reason that a person of ordinary skill in the art would have modified Nehowig’s OBC 204 to allow it to communicate with the ECM.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“misapprehended that the Petition identified a particular proposed combination. We acknowledged Petitioner’s proposed combination. See Dec. 25–26 (“Petitioner then describes a scenario, argued ‘[t]o achieve this goal [of not having the official enter the vehicle],’ where the official ‘will provide a cable to the driver to plug into the EOBR’ . . . . Based on this, Petitioner concludes ‘[t]herefore, the combined system of Nehowig and Fedorchuk implementing the DOT regulations discloses transferring the hours of service information from the OBC to a safety assurance officer’s computer via a data cable.’”). And, even had we overlooked or misapprehended it, the outcome would not change. Again, the basis for the Decision is that Petitioner failed to explain adequately and persuasively why a person of ordinary skill in the art would arrange the data flow in this manner. Dec. 27. In view of the foregoing, we are not persuaded of any error in our Decision that the Petition did not demonstrate a reasonable likelihood of establishing obviousness of limitation 1B.1. See Dec. 27–28. IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated that we abused our discretion in not instituting an inter partes review of the challenged claims of the ’575 patent.” slip op. at 19
§ 103 obviousnessPatents in suitUS 10,255,575 - Tomofun, LLC v. Doggyphone LLCRehearing deniedPTAB · Dec 10, 2021 · IPR2021-00260 · APJ Patrick R Scanlon · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because Petitioner did not show the Board overlooked or misapprehended its arguments or abused its discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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. We review our Decision under an abuse of discretion standard. 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). “Substantial evidence is ‘such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.’” OSI Pharm., LLC v. Apotex” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Claim(s) Ground 35 U.S.C. § Reference(s)/Basis Challenged 1 7 102(b) Alasaarela1 2 8 103(a) Alasaarela 3 7–9 102(b) Beccaria2 4 7–9 103(a) Carelli,3 Beccaria 5 7–9 103(a) Bloksberg,4 Beccaria Pet. 4. Petitioner asserts that Alasaarela discloses the audio signal limitation for Grounds 1 and 2. Id. at 23–24, 31. Petitioner asserts that Beccaria discloses the audio signal limitation for Ground 3, and Carelli discloses the audio signal limitation for Ground 4. Id. at 36–37, 48. For Ground 5, Petitioner asserts that Bloksberg discloses the audio signal limitation. Id. at 60.” slip op. at 3
- BurdenDecided for patent owner
“As such, the Petition does not indicate with sufficient particularity that Petitioner relies on the Examiner’s finding as a basis for asserting that Bloksberg discloses the audio signal limitation and, thus, does not satisfy Petitioner’s burden on this point. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” (citing 35 U.S.C. § 312(a)(3)); see also Intelligent Bio- Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings the ‘evidence that supports the grounds for the challenge to each claim.’” (quoting 35 U.S.C. § 312(a)(3))). Because the Petition did not indicate clearly that it was relying on the Examiner’s finding, we could not have misapprehended or overlooked such a position. In addition, Patent Owner was not afforded a fair opportunity to dispute any reliance on the Examiner’s finding or the reasoning underlying the finding.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We disagree with Petitioner’s characterization of Ground 3 as being based on obviousness. Rather, the Petition clearly asserts for Ground 3 that “Claims 7-9 are anticipated under 35 U.S.C. § 102 by Beccaria[].” Pet. 4; see also id. at 32 (“Ground 3 – Claims 7–9 Are Unpatentable As Anticipated By Beccaria[]”). Petitioner’s Ground 3 analysis of claim 7 relies on Beccaria disclosing each limitation, including the audio signal limitation. Id. at 32–40. Petitioner’s Rehearing Request does not direct us to any portion of the Petition for Ground 3 that asserts any claim limitation would have been obvious over Beccaria, alone or in combination with another reference. Accordingly, we are not persuaded that we misapprehended Petitioner’s argument with respect to Beccaria.” slip op. at 9
§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,723,813 - PTAB · Dec 6, 2021 · IPR2021-00605 · APJ Thu A Dang · IPR · Rehearing
The Board denied Samsung’s rehearing request, leaving institution denied under § 325(d) because the same or substantially the same arguments were previously presented and material Examiner error was not shown.
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 previously addressed in its petition. Id. 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 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. Star” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Under Part 2 of the Advanced Bionics framework, Petitioner has the burden to show that “[t]he Examiner erred by not realizing that Chu ’330, Chu ’185, and Chu ’886 qualify as 35 U.S.C. § 102(b) prior art and are material to the patentability of the ’768 Patent claims,” as Petitioner alleges in its § 325(d) analysis. Pet. 7, 9−18. Upon consideration of Petitioner’s Request for Rehearing, we are not persuaded by Petitioner’s arguments of Examiner error.” slip op. at 4
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner’s arguments are new arguments raised for the first time in its Rehearing Request. Petitioner acknowledges that “Hollmer and NRG were not cited in the Petition.” Req. Reh’g 10. Nevertheless, Petitioner alleges that it “could not have anticipated the Patent Owner’s mischaracterization of the Droplets decision, nor the Board’s reliance on this mischaracterization,” and that Petitioner was not authorized to file a reply to the Patent Owner Preliminary Response. Id.; see also id. at 2−3, fn.1. Petitioner’s new arguments in connection with Hollmer and NRG are improper. As we discussed above, Patent Owner did not mischaracterize and we did not misapprehend Droplets. It was not necessary to authorize Petitioner to file a reply, as we were capable of determining whether Patent Owner mischaracterizes Droplets. As discussed above, Petitioner fails to recognize that the language relied upon by Patent Owner in Droplets is consistent with 37 C.F.R. § 1.57 and MPEP § 608.01(p). Although Petitioner relies on MPEP § 608.01(p) in its Petition, Petitioner now in its Rehearing Request for the first time suggests that we should ignore MPEP § 608.01(p) and the case law cited in MPEP § 608.01(p). Pet. 11; Req. Reh’g 6−7. A request for rehearing is not an opportunity to submit new arguments, after the decision has noted the deficiencies in the petitioner’s original analysis. 37 C.F.R. § 42.71(d). It is Petitioner’s burden to identify specifically all matters we misapprehended or overlooked in our Decision to Institute. We could not have misapprehended or overlooked the new arguments that were not presented in the record until after the Decision.” slip op. at 15
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“codes (21), (22), (45), (60), 6:1–7. The initial parent application in the ’768 patent’s priority chain, U.S. Application No. 09/569,758 (“the ’758 application”), which incorporated the ’882 application by reference, was filed on May 12, 2000, and issued as U.S. Patent No. 6,718,415 B1 (“the ’415 patent”) on April 6, 2004. See Ex. 1001, code (63); Ex. 1008, code (45), 4:50–53. Both the ’882 application (issued as Chu ’330) and the ’758 application (issued as the ’415 patent) were filed and issued as patents prior to the effective date, September 21, 2004, of 37 C.F.R. § 1.57. Petitioner does not explain why the applicant should have complied with 37 C.F.R. § 1.57, which did not exist at the time of filing of those applications or issuance of those patents that incorporated by reference Chu ’886 and the ’882. Pet. 7, 9−18; Req. Reh’g 1−13. We decline to apply 37 C.F.R. § 1.57 retroactively to the incorporation by reference statements submitted in the ’882 application and the ’758 application.” slip op. at 7
§ 102 anticipationDiscretionary denialPatents in suitUS 9,529,768 - PTAB · Dec 2, 2021 · IPR2021-00604 · APJ Joni Y Chang · IPR · Rehearing
The Board denied Samsung’s rehearing request, leaving institution denied under § 325(d) because the same or substantially the same arguments were previously presented and material examiner error was not shown.
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). Under 37 C.F.R. § 42.71(d), a petitioner who requests rehearing of a decision denying institution must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in its petition. Id. 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 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. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Under Part II of the Advanced Bionics framework, Petitioner has the burden to show that “[t]he Examiner erred by not realizing that Chu ’330 and Chu ’886 qualify as 35 U.S.C. § 102(b) prior art and are material to the patentability of the claims in the ’750 Patent,” as Petitioner alleges in its § 325(d) analysis. Pet. 7, 9−18. Upon consideration of Petitioner’s Request for Rehearing, we are not persuaded by Petitioner’s arguments.” slip op. at 4
- Strike new argumentNew argument disregardedDenied
“Petitioner’s new arguments in connection with Hollmer and NRG are improper. As we discussed above, Patent Owner did not mischaracterize, nor did we misapprehend, Droplets. It was not necessary to authorize Petitioner to file a reply, as we were capable of determining whether Patent Owner mischaracterizes Droplets. Petitioner fails to recognize that the language relied upon by Patent Owner in Droplets is consistent with 37 C.F.R. § 1.57 and MPEP § 608.01(p). Although Petitioner relies on MPEP § 608.01(p) in its Petition, Petitioner now in its Rehearing Request for the first time suggests that we should ignore MPEP § 608.01(p) and the case law cited in MPEP § 608.01(p). Pet. 11; Req. Reh’g 6−7. A request for rehearing is not an opportunity to submit new arguments, after the decision has noted the deficiencies in the petitioner’s original analysis. 37 C.F.R. § 42.71(d). We could not have misapprehended or overlooked the new arguments that were not presented in the record until after the Decision. Id.” slip op. at 14
- BurdenDecided for patent owner
“Petitioner failed to show that the examiner erred in determining that Chu ’330 incorporated by reference Chu ’886 or in entering the amendments that added the subject matter from Chu ’886 to the ’912 application. Id. at 16−21. Under the second part of the Advanced Bionics framework, Petitioner has the burden to demonstrate that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8. “If reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability. At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 20
Discretionary denialPatents in suitUS 9,703,750 - Platform Science, Inc. v. XRS CorporationRehearing deniedPTAB · Aug 26, 2021 · IPR2021-00323 · APJ Ken B Barrett · IPR · Rehearing
The Board denied rehearing of its decision denying institution on claims 1–24, finding no abuse of discretion in its conclusion that the Petition inadequately explained the proposed data flow.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. 37 C.F.R. § 42.71(d). “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.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Dec. 13. We determined that “Petitioner does not explain adequately and persuasively why, in such circumstances—where the portable unit could directly transmit the report to the inspector—a person of ordinary skill in the art would see a reason to configure the system in a seemingly awkward way where the report is sent to the onboard system and then sent to the inspector.” Id. at 14.” slip op. at 7
§ 103 obviousnessPatents in suitUS 8,626,568
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.