- Unified Patents Inc. v. Nonend Inventions N.V.Rehearing deniedPTAB · Jul 25, 2017 · IPR2016-00174 · APJ Daniel N Fishman · IPR · Rehearing
The Board denied rehearing, leaving intact its findings that claims 1–6 and 8–18 were anticipated by Shastri and claims 1–20 were unpatentable over Goldszmidt-based grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“a panel will review the decision for an abuse of discretion.” “An abuse of discretion occurs 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.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000)). On rehearing, the burden of showing the Decision should be modified lies with the party challenging the Decision—here, Patent Owner. 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.” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“by our rules. Patent Owner’s argument that it received insufficient notice that its preliminary arguments regarding real party in interest (Paper 7, 4–13) would be waived fails to identify an argument we overlooked or misapprehended. Instead, Patent Owner’s argument challenges the propriety of our cautionary order that such arguments not raised in its Response will be waived. Arguments that are not raised in Patent Owner’s Response could not have been overlooked or misapprehended.” slip op. at 4
- BurdenDecided for petitioner
“to Patent Owner. As we observed in our Decision, Patent Owner complied with its burden to produce evidence supporting its position that the patent at issue antedates Shastri. Dec. 18–19 (“We find that Patent Owner has met that burden by producing the Declarations of the inventors of the ’862 patent (Exs. 2018, 2019) and corroborating evidence (Exs. 2020–2027, 2029) that allegedly show conception prior to Shastri, and reasonable diligence through filing of a patent application (constructive reduction to practice) to antedate the filing of Shastri. PO Resp. 11–13.”). As an initial matter, we disagree with Patent Owner’s argument that it provided the only evidence relating to antedating Shastri. Petitioner did provide cross-examination testimony of Patent Owner’s declarants—the inventors of the ’862 patent—concerning this issue, which is “evidence.” Even putting that aside, however, what Patent Owner is actually asserting is that the evidence Patent Owner provided supports only its position, and that, relatedly, Petitioner cannot use that same evidence to support Petitioner’s position. That assertion has no merit. While certainly a party would be expected to present evidence that, on balance, would favor their position, the evidence itself is merely objective information that can be used by any party, as appropriate. To that end, a party submitting evidence submits it at their own peril. In that vein, Petitioner had every right to, and indeed did, reply to Patent Owner’s proffered evidence (inventor Declarations and related documents) by arguing that Patent Owner’s evidence on this issue was not persuasive. Pet. Reply 6–8 (citing Exs. 1014 and 1015). As we discussed in our Decision, we weighed Petitioner’s proffered testimony against Patent Owner’s proffered evidence. Dec. 20–26. We determined that Patent Owner’s proffered evidence in support of its claim to antedate Shastri was not persuasive when viewed in the context of the entire record, including the cross-examination testimony of Patent Owner’s Declarants. Thus, our Decision did not overlook or misapprehend Patent Owner’s arguments to antedate Shastri, nor did we “discard” the “only” evidence on the issue.” slip op. at 5
- Expert testimonyDecided for petitioner
“to Patent Owner. As we observed in our Decision, Patent Owner complied with its burden to produce evidence supporting its position that the patent at issue antedates Shastri. Dec. 18–19 (“We find that Patent Owner has met that burden by producing the Declarations of the inventors of the ’862 patent (Exs. 2018, 2019) and corroborating evidence (Exs. 2020–2027, 2029) that allegedly show conception prior to Shastri, and reasonable diligence through filing of a patent application (constructive reduction to practice) to antedate the filing of Shastri. PO Resp. 11–13.”). As an initial matter, we disagree with Patent Owner’s argument that it provided the only evidence relating to antedating Shastri. Petitioner did provide cross-examination testimony of Patent Owner’s declarants—the inventors of the ’862 patent—concerning this issue, which is “evidence.” Even putting that aside, however, what Patent Owner is actually asserting is that the evidence Patent Owner provided supports only its position, and that, relatedly, Petitioner cannot use that same evidence to support Petitioner’s position. That assertion has no merit. While certainly a party would be expected to present evidence that, on balance, would favor their position, the evidence itself is merely objective information that can be used by any party, as appropriate. To that end, a party submitting evidence submits it at their own peril. In that vein, Petitioner had every right to, and indeed did, reply to Patent Owner’s proffered evidence (inventor Declarations and related documents) by arguing that Patent Owner’s evidence on this issue was not persuasive. Pet. Reply 6–8 (citing Exs. 1014 and 1015). As we discussed in our Decision, we weighed Petitioner’s proffered testimony against Patent Owner’s proffered evidence. Dec. 20–26. We determined that Patent Owner’s proffered evidence in support of its claim to antedate Shastri was not persuasive when viewed in the context of the entire record, including the cross-examination testimony of Patent Owner’s Declarants. Thus, our Decision did not overlook or misapprehend Patent Owner’s arguments to antedate Shastri, nor did we “discard” the “only” evidence on the issue.” slip op. at 5
NonePatents in suitUS 8,090,862 - Microsoft Corpporation v. Corel Software, LLCRehearing deniedPTAB · Feb 22, 2017 · IPR2016-01086 · APJ Daniel N Fishman · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution of inter partes review of claims 3 and 24 in place because no matter was misapprehended or overlooked.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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,” 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 the record. 37 C.F.R. § 42.71(d).” slip op. at 2
NonePatents in suitUS 8,700,996
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.