- Motorola Mobility LLC v. Intellectual Ventures II LLCRehearing deniedPTAB · Jul 22, 2020 · IPR2014-00504 · APJ Patrick R Scanlon · IPR · Rehearing
The Board denied Motorola’s rehearing request, leaving intact the remand decision that claims 1–4, 7, and 18 were not shown unpatentable on the instituted grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 3
- Expert testimonyPatent owner expert creditedDecided for patent owner
“that Dr. Tewfik’s testimony is not credible because he has “no personal knowledge” and “merely parrots the inventor’s claim chart.” Req. 6. We disagree, because we considered and analyzed expressly Petitioner’s argument and the basis for Dr. Tewfik’s testimony. Remand Dec. 27, 30. We determined that Dr. Tewfik’s testimony was credible, in that it was testimony concerning his opinion with respect to the claim chart, and also that his testimony was based, at least in part, on his personal experience with Windows 98 and its functionalities. Id. at 30. Indeed, the Federal Circuit noted that the rule of reason requires us to consider all pertinent evidence, and then noted explicitly that Dr. Tewfik’s testimony was one example of such pertinent evidence that needed to be considered. See Intellectual Ventures II, 692 F. App’x at 627–628. For these reasons, we are not persuaded that we misapprehended or overlooked the credibility of Dr. Tewfik’s testimony.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“not have changed the outcome of our Decision. In Figure 4, Kellerer shows a block with a central control unit, address management, routing, an application server, and network managers. Exhibit 1007, 45. This block diagram, however, does not specifically address whether or not Internet access requires an external service controller. Moreover, Petitioner provides no citations to any passages that describe the functions of the central control unit, address management, routing, the application server, and the network managers. See generally Req. 9–13. We are not persuaded that Kellerer teaches all of the components that are necessary to enable Internet access based on Figure 4 alone. That these components are located inside the car, as shown in Figure 3, also does not specifically address whether or not Internet access requires an external service controller. Accordingly, we are not persuaded that Figures 3 and 4 render the stand-alone system limitation obvious.” slip op. at 12
§ 103 obviousnessPatents in suitUS 7,382,771 - PTAB · Sep 12, 2017 · IPR2016-00502 · APJ James J Mayberry · IPR · Rehearing
The Board denied Valeo’s rehearing request, leaving its final written decision that claims 1–13 were unpatentable on grounds other than the Nester obviousness grounds unchanged.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the party challenging the decision[,]” which party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“such as the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for improvement, an express motivation to combine references may not be necessary under the Court’s flexible analysis. See KSR Int’l Co., 550 U.S. at 417. Valeo fails, however, to characterize its obviousness position as falling under these cases, nor do we read Valeo’s position as advocating a simple substitution or applying a known technique to a reference ready for improvement. See Pet. 41–42; Ex. 1002 ¶¶ 121–123. Instead, Valeo advocates substituting in Nester’s over-tuned pendulum absorber for Sudau’s even-tuned compensation flywheel, without explaining how such a substitution would be “simple.” See Ex. 1002 ¶ 120. Although Nester’s pendulum absorber may represent a “known technique,” Valeo fails to adequately explain why Sudau’s torque converter is so apparently “ready for improvement” that a person having ordinary skill in the art would need no further motivation to make the substitution.” slip op. at 13
- Expert testimonyPetitioner expert discountedDecided for patent owner
“unavailing. As an initial point, Valeo fails to identify where it relied on Dr. Shaw’s deposition testimony specifically quoted at page 6 of the Request in a motion, opposition, or reply, and we cannot discern independently where Valeo relied on this testimony. See 37 C.F.R. § 42.71(d). We cannot overlook facts that were not presented to us. Further, we find that Dr. Shaw’s testimony that Nester’s over-tuning addresses multiple effects is from the perspective of a co-author—Dr. Shaw is not testifying about what the actual reference discloses, but instead what the over-tuning may address based on his knowledge of the underlying testing. See Ex. 2013, 292:11– 297:24 (containing deposition testimony about the underlying testing and results, not specific disclosures in Nester). Our analysis in the Final Written Decision weighed already that evidence of record and found that Nestor’s over-tuning addressed non-linear effects only, and we are unpersuaded that the above-identified testimony affects dispositively the outcome of that weighing.” slip op. at 8
§ 103 obviousnessPatents in suitUS 8,161,740 - Telebrands Corp. v. Tinnus Enterprises, LLCRehearing deniedPTAB · May 5, 2017 · PGR2016-00031 · APJ Frances L Ippolito · PGR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no abuse of discretion in instituting PGR despite the district court ruling, secondary-considerations evidence, and § 325(d) arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“I. LEGAL STANDARDS When rehearing a decision whether to institute post-grant review, we review the decision for an “abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing [the] decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). 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” the briefing. Id.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“§ 325(d), Req. Reh’g 7–11, we disagree. At bottom, § 325(d) is discretionary. See 35 U.S.C. § 325(d) (“the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments were presented to the Office.”) (emphasis added). Patent Owner’s argument amounts to a disagreement about how the panel viewed the Examiner’s treatment of the art and arguments from the related petition for post-grant review in PGR2015-00018. See Req. Reh’g 7–11. Patent Owner fails to point out anything in the prosecution history we overlooked or misapprehended. Id. Instead, the bulk of Patent Owner’s Request is devoted to new legal arguments, not found anywhere in the Preliminary Response, regarding how it believes we should interpret the standard for institution of post-grant review. A party seeking reconsideration “is not supposed to treat the [Board’s] initial decision as the opening of a dialogue in which that party may then use such a motion to advance new theories or adduce new evidence in response to the [Board’s] rulings.” Polsby v. St. Martin’s Press, Inc., No. 97 Civ. 690 (MBM), 2000 WL 98057, at *1 (S.D.N.Y. Jan 18, 2000). We decline to reweigh these same sections of the prosecution history or reconsider the meaning § 324(a) and § 325(d) based on new arguments advanced for the first time in a request for rehearing. Thus, we are not persuaded that we abused our discretion in applying § 325(d) to this case.” slip op. at 10
- Other 314aDecided for petitioner
“First, on this record, we are not persuaded that the district court’s preliminary injunction decision in Tinnus II controlled our independent review of the arguments and evidence submitted by the parties in our proceeding. To the contrary, our reviewing court has noted that a prior judicial opinion does not bind the Board’s review. Thus, generally, we are not required to reach the same conclusion as the district court. See Novartis AG v. Noven Pharms. Inc., No. 2016-1678, 1679, 2017 WL 1229742, at *3 (Fed. Cir. Apr. 4, 2017) (“Novartis alleges that a fundamental legal error pervades the PTAB’s Final Written Decisions: the PTAB unlawfully reached different conclusions than our court and the [district court], which addressed the ‘same’ arguments and the ‘same’ evidence and found the Asserted Claims nonobvious in two prior opinions. . . . [E]ven if the record were the same, Novartis’s argument would fail as a matter of law.”). Second, we do not agree with Patent Owner’s characterization that a district court’s standard of a “substantial question of validity” transfers so neatly to our institution standard of “more likely than not.” Req. Reh’g 4. Although “a showing of a substantial question of invalidity, requires less proof than the clear and convincing standard to show actual invalidity,” Erico Int’l Corp. v. Vutec Corp., 516 F.3d 1350, 1356 (Fed. Cir. 2008), it still requires a showing that “in light of the presumptions and burdens that will inhere at trial on the merits” the attacker has “a likelihood of success” in invalidating the patent, Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1364 (Fed. Cir. 1997); see also PPG Indus., Inc. v. Guardian Indus., Inc., 75 F.3d 1558 (Fed. Cir. 1996) (“The ultimate question, however, is whether the challenger’s evidence of invalidity is sufficiently persuasive that it is likely to overcome the presumption of patent validity.”). In contrast, there are no presumptions of validity to be overcome in proceedings before the Board. Third, on the record before us, we do not agree that “identical arguments and evidence” are at issue in our proceeding and before the district court as Patent Owner contends. Req. Reh’g 4. For example, the district court conducted a hearing where witnesses gave testimony and were subject to cross examination. Ex. 2003, 1 (noting hearing), 14 (noting testimony by an expert at hearing regarding invalidity). In contrast, at the pre-institution stage for a post-grant review, testimony submitted provided by the parties has not been cross-examined in our proceeding. Moreover, our rules require us to view disputed issues of material fact created by the testimony of the competing declarants in the light most favorable to the Petitioner. See 37 C.F.R. § 42.208(c). There is no similar requirement in a preliminary injunction ruling. Further, even if the same record were before us, this would not constrain our independent review of the arguments and evidence presented by the parties for the purposes of determining whether to institute a post-grant review. See Novartis AG, 2017 WL 1229742, at *3.” slip op. at 3
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“secondary considerations of nonobviousness. Req. Reh’g 5–7. We disagree. Initially, we note that aside from the fact that we must be careful in assigning definitive weight to evidence of secondary considerations at the institution stage before Petitioner has had a chance to respond, even when we evaluated that evidence preliminarily, we did not determine the arguments and evidence presented by Patent Owner in its Preliminary Response to be sufficient to preclude institution. See Dec. 32–33. As we pointed out in our Decision, we reviewed the evidence submitted by the Patent Owner, including evidence purported to show commercial success, copying, and praise. See Dec. 32. However, at that stage in the proceeding, we did not agree with Patent Owner’s arguments. Id. Thus, Patent Owner has not established that the Board overlooked some evidence it was required to consider for institution. A request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence.” slip op. at 7
§ 103 obviousnessDiscretionary denialPatents in suitUS 9,315,282 - Telebrands Corp. v. Tinnus Enterprises, LLCRehearing deniedPTAB · May 5, 2017 · PGR2016-00030 · APJ Kevin W Cherry · PGR · Rehearing
The Board denied Patent Owner’s request for rehearing, finding no abuse of discretion in its institution decision concerning the district court ruling, secondary considerations, or § 325(d).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“I. LEGAL STANDARDS When rehearing a decision whether to institute post-grant review, we review the decision for an “abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing [the] decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). 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” the briefing. Id.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“C. Improper Application of 35 U.S.C. § 325(d) As for Patent Owner’s arguments that we misapplied 35 U.S.C. § 325(d), Req. Reh’g 10–15, we disagree. At bottom, § 325(d) is discretionary. See 35 U.S.C. § 325(d) (“the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments were presented to the Office.”) (emphasis added). Patent Owner’s argument amounts to a disagreement about how the panel viewed the Examiner’s treatment of the art and arguments from the related petition for post-grant review in PGR2015-00018. See Req. Reh’g 10–11. Patent Owner fails to point out anything in the prosecution history we overlooked or misapprehended. Id. Instead, the bulk of Patent Owner’s Request is devoted to new legal arguments, not found anywhere in the Preliminary Response, regarding how it believes we should interpret the standard for institution of post-grant review. A party seeking reconsideration “is not supposed to treat the [Board’s] initial decision as the opening of a dialogue in which that party may then use such a motion to advance new theories or adduce new evidence in response to the [Board’s] rulings.” Polsby v. St. Martin’s Press, Inc., No. 97 Civ. 690 (MBM), 2000 WL 98057, at *1 (S.D.N.Y. Jan 18, 2000). We decline to reweigh these same sections of the prosecution history or reconsider the meaning § 324(a) and § 325(d) based on new arguments advanced for the first time in a request for rehearing. Thus, we are not persuaded that we abused our discretion in applying § 325(d) to this case.” slip op. at 13
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“Patent Owner also asserts that we misapprehended the evidence that it did present. Req. Reh’g 6–9. We disagree. Much of Patent Owner’s discussion amounts to little more than an effort to have us re-weigh the evidence that was before us. See Ahmed v. Ashcroft, 388 F.3d 247, 249 (7th Cir. 2004) (“A motion that merely republishes the reasons that had failed to convince the tribunal in the first place gives the tribunal no reason to change its mind.”). As we pointed out in our Decision, we accorded the evidence presented little weight because, aside from the fact that we must be careful in assigning definitive weight to evidence of secondary considerations at the institution stage before Petitioner has had a chance to respond, even when we evaluated that evidence preliminarily, we ascertained numerous problems with the evidence that significantly undercut the weight to be accorded. See Dec. 32–33. In particular, we discern that much of the testimony submitted consisted of vague and unsupported assertions deserving of little weight. Although Patent Owner is correct that there is no requirement that the testimony be corroborated, Req. Reh’g 9, a fact finder is entitled to take any corroboration (or lack thereof) into account in determining the weight that the testimony should be accorded. See, e.g., Nigro v. Sears, Roebuck & Co., 784 F.3d 495, 499 (9th Cir. 2015) (noting certain testimony was admissible “though absent corroboration, it may have limited weight”); United States v. Ibisevic, 675 F.3d 342, (4th Cir. 2012) (noting jury entitled to give different weight to corroborated and uncorroborated testimony); United States v. Parry, 649 F.2d 292, 296 (5th Cir. 1981) (noting a “defense discounted by the jury when standing alone, may have been believed when bolstered by corroborative testimony”). Our assessment giving corroborated testimony greater weight is additionally supported by the lack of cross-examination of these witnesses. See Martin–Mendoza v. INS, 499 F.2d 918, 921 (9th Cir. 1974) (approving the hearing officer’s determination that the “weight [of a sworn statement] is necessarily impaired by the fact that the affiant could not be presented for cross-examination”). Moreover, we have broad discretion to determine what weight to give the evidence before us. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding that Board has discretion to give weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“[A]ccord[ing] little weight to broad conclusory statements [in expert testimony before the Board] that it determined were unsupported by corroborating references [was] within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate.”). We are not persuaded by Patent Owner’s contentions that we erred in weighing its evidence.” slip op. at 8
§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 9,242,749
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.