- 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 - Supercell OY v. Gree, Inc.Rehearing deniedPTAB · May 10, 2019 · PGR2018-00008 · APJ Michael W Kim · PGR · Rehearing
The Board denied Supercell's rehearing request, leaving claims 1, 8, and 10–12 unpatentable under § 101 and claims 2–7 and 9 not shown unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Even assuming that the Board did overlook or misapprehend that the Petition articulated that “in a multi-player environment” was subsumed within “creating and applying a template of positions of one or more game contents,” we note that the aforementioned portion of the Petition also identifies, as additional details, “wherein a second player can also create and apply templates within the game space.” Neither the Petition nor the Request explains why these additional details should be considered a part of the claimed concept. Furthermore, delving into the merits of those latter additional details, we were, and continue to be, unpersuaded that a second player, that can both “create” and “apply” a template, is accounted for adequately in the Petition. Specifically, even if we were to agree the Petition accounts for a second player “applying” a template “in a multi-player environment” (see Req. 5, citing Pet. 6), the Petition makes no mention of the second player being able to also create the template. As discussed in the Final Written Decision, Petitioner did not provide sufficient evidence or analysis that a second player able to also create and apply templates is included in the claimed concept of “creating and applying a template of positions of one or more game contents.” Final Dec. 43. We could not have overlooked or misapprehended something not presented adequately in the Petition.” slip op. at 5
NonePatents in suitUS 9,597,594 - Vestas-American Wind Technology, Inc. / Vestas Wind Systems A/S v. General Electric Co.Rehearing deniedPTAB · Apr 11, 2019 · IPR2018-01563 · APJ Michael W Kim · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution on all challenged claims and grounds unchanged because the petitions differed in their use of EON and the § 325(d) analysis remained unchanged.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“outset, we acknowledge that we did misapprehend or overlook some aspects identified by Patent Owner. Ultimately, however, Patent Owner’s assertions are unpersuasive, because while they certainly highlight the similarities between the two proceedings, they do not address adequately the differences. It is those differences that did, and once again, carry the day, even when we reweigh our previous determination in light of our acknowledged errors.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“on EON is for substantively the same claim limitation, i.e., the recited “uninterruptible power supply.” Compare Pet. 46–48; -01029 Pet. 28–29. The issue, however, are the portions of these petitions that precede those identified by Patent Owner. In the cited portion of -01029 Petition, the only other reference identified is Cousineau. -01029 Pet. 28–29. Neither petition relies on Cousineau for the “uninterruptible power supply.” Accordingly, in the -01029 Petition, we could come to no conclusion other than Petitioner was relying on EON alone for the “uninterruptible power supply.” And it was on that basis that we agreed with Patent Owner that the Office had already considered, and rejected, that position during reexamination. Req. 12.” slip op. at 4
- Other 314aDenied
“In the present case, GE respectfully suggests that an expanded panel is appropriate to secure and maintain uniformity of the Board’s decisions where the same panel has taken inconsistent positions with respect to the same reference (EON), used in the same manner, to challenge the same patent (the ’985 patent), in cases IPR2018-01029 and IPR2018-01563, involving the same parties. The panel came to its conclusion in the DI -01029 following a reasoned and complete Becton, Dickinson analysis, then reaffirmed that conclusion in the -01029 Rehearing Decision, recognizing the reliance on the same art and the same or substantially the same argument that was presented previously to the office. The consistent conclusion of exercising the Board’s discretion under 35 U.S.C. § 325(d) to deny institution of an inter partes review is also appropriate here. Req. 14–15. The Chief Judge has considered Patent Owner’s request for an expanded panel, but has determined that an expanded panel is not warranted.” slip op. at 8
Discretionary denialPatents in suitUS 6,921,985 - Motorola Mobility LLC v. Intellectual Ventures II LLCRehearing deniedPTAB · Nov 16, 2018 · IPR2014-00504 · APJ Patrick R Scanlon · IPR · Rehearing
The Board denied Patent Owner’s request for rehearing of the SAS Order, leaving review instituted on all challenged claims and all grounds in the Petition.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). In particular, “[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.” Id.” slip op. at 3
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)New argument disregardedDenied
“overlooked express statutory requirements that the Board was obligated to assess before considering the Petition for re-institution.” Reh. Req. 10 (citing 35 U.S.C. § 312(a)). Specifically, Patent Owner argues “the Petition fails to meet the particularity requirement [of 35 U.S.C. § 312(a)(3)] at least with respect to the multiple grounds identified on pages 47–59 of the Petition” because of the “vague formulation” (i.e., Veeck in view of Kellerer, Boehm, and/or Mitchell). Id. at 12. Patent Owner, however, does not identify where this “matter was previously addressed in a motion, an opposition, or a reply,” as required by 37 C.F.R. § 42.71(d). We could not have misapprehended or overlooked something that was not presented previously. A Request for Rehearing is not an opportunity to raise new arguments against a petition. To the extent Patent Owner believes the grounds newly instituted in the SAS Order lack sufficient particularity under 35 U.S.C. § 312(a)(3), it can make such arguments in its supplemental briefing.” slip op. at 10
- Director reviewOther
“The standard operating procedure exemplifies some of the reasons for which the Chief Judge may expand a panel. PTAB SOP 1, 15 (§ III.M). For example, the Chief Judge may expand a panel “where appropriate, to secure and maintain uniformity of the Board’s decisions, e.g., in related cases ordinarily involving different three judge panels.” Id. (§ III.M.1). In this case, the acting-Chief Judge has considered Patent Owner’s suggestion for an expanded panel, but has determined that an expanded panel is not warranted.” slip op. at 12
NonePatents in suitUS 7,382,771 - Google Inc. v. Intellectual Ventures II LLCRehearing deniedPTAB · Nov 16, 2018 · IPR2014-00787 · APJ Patrick R Scanlon · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving in place the SAS Order instituting review on all challenged claims and all petition grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). In particular, “[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.” Id.” slip op. at 3
- Other 314aDecided for petitioner
“Our governing statutes and regulations do not provide for parties to request, or panels to authorize, an expanded panel. See generally 35 U.S.C. § 6; 37 C.F.R. §§ 41.1–42.412. The Chief Judge may consider panel expansions upon a “suggestion” from a judge, panel, or party. PTAB SOP 1, 15; see also Apple Inc. v. Rensselaer Polytechnic Inst., Case IPR2014- 00319, slip op. at 2 n.1 (PTAB Dec. 12, 2014) (Paper 20) (expanded panel) (per curiam). The standard operating procedure exemplifies some of the reasons for which the Chief Judge may expand a panel. PTAB SOP 1, 15 (§ III.M). For example, the Chief Judge may expand a panel “where appropriate, to secure and maintain uniformity of the Board’s decisions, e.g., in related cases ordinarily involving different three judge panels.” Id. (§ III.M.1). In this case, the acting-Chief Judge has considered Patent Owner’s suggestion for an expanded panel, but has determined that an expanded panel is not warranted.” slip op. at 11
Discretionary denialPatents in suitUS 6,121,960 - Supercell OY v. Gree, Inc.Rehearing deniedPTAB · Oct 26, 2018 · PGR2018-00039 · APJ Lynne H Browne · PGR · Rehearing
The Board denied GREE’s rehearing request, finding no abuse of discretion in instituting PGR of claims 1–8 based on the § 101 challenge.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“limitations. For example, as noted by Patent Owner, the full quotation is “[i]n a conventional battle game, however, during one battle, the user needs to select a command to determine the action of the player character many times . . . .” Ex. 1001, 1:41–43 (emphasis added). And by modeling that behavior in the future, the number of user operations are reduced. Accordingly, while we acknowledge that it is plausible, during trial, that Patent Owner will be able to show that such a disclosure is insufficient evidentiary support for “a second mode for executing the battle with fewer user operations received from the communication terminal than in the first mode,” we disagree that it has no factual bearing on the above limitation.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“not rest solely on our determination that the claim elements or combinations of elements analyzed on pages 32–39 of the Petition were well-understood, routine, and conventional to a skilled artisan in the field. Rather, our Decision was also based on the sufficiency of Petitioner’s arguments in totality with respect to the second step of Alice, for example, that for some limitations, “the claimed improvements identified by Patent Owner do not improve the technological field. Rather, they improve game play for the user.” Dec. 17. Further, as we explained, “the claims recite the use of conventional computer activity to determine the outcome of the procedure. Such claims ‘defining a desirable information-based result and not limited to inventive means of achieving the result, fail under § 101’” and that “claim 1 merely indicates that these steps are performed by a server without further details.” Dec. 12–13 (citing Elec. Power Group 830 F.3d 1351; Ex. 1001, 19:52–20:11. While that analysis does concern the first step of Alice, it, nevertheless, does have some bearing on the second step as well.” slip op. at 4
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptNot reached
“not rest solely on our determination that the claim elements or combinations of elements analyzed on pages 32–39 of the Petition were well-understood, routine, and conventional to a skilled artisan in the field. Rather, our Decision was also based on the sufficiency of Petitioner’s arguments in totality with respect to the second step of Alice, for example, that for some limitations, “the claimed improvements identified by Patent Owner do not improve the technological field. Rather, they improve game play for the user.” Dec. 17. Further, as we explained, “the claims recite the use of conventional computer activity to determine the outcome of the procedure. Such claims ‘defining a desirable information-based result and not limited to inventive means of achieving the result, fail under § 101’” and that “claim 1 merely indicates that these steps are performed by a server without further details.” Dec. 12–13 (citing Elec. Power Group 830 F.3d 1351; Ex. 1001, 19:52–20:11. While that analysis does concern the first step of Alice, it, nevertheless, does have some bearing on the second step as well.” slip op. at 4
- Expert testimonyPetitioner expert creditedDecided for petitioner
“address Patent Owner’s countervailing evidence with respect to the above limitations, in particular, paragraphs 24 and 28–34 of Mr. Zyda’s Declaration. Req. 8–9. While we acknowledge that it was not expressly referenced in our Decision, it was taken into account and determined that, while it is worthy of some weight, Petitioner’s evidence and analysis presented a sufficient factual dispute for which trial is warranted. Given the Petition’s adequate analysis, at this stage of the proceeding, about the generic nature of the components recited in the ’308 patent and the lack of inventive means for achieving the results claimed (Pet. 32–39), we are unpersuaded that our Decision granting institution was an abuse of discretion.” slip op. at 5
§ 101 eligibilitycites BerkheimerPatents in suitUS 9,669,308 - 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 - Mastercard International Incorporated v. William GreciaRehearing deniedPTAB · Jul 27, 2017 · IPR2017-00791 · APJ Jameson Lee · IPR · Rehearing
The Board denied Mastercard’s rehearing request to add Ameerally anticipation grounds for claims 1–4 and 11–21, finding the petition had not adequately asserted or explained those arguments and evidence.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“On request for rehearing, the burden of showing a decision on whether to institute trial should be modified lies with the party challenging the decision. 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “The 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). For reasons discussed below, Petitioner’s Request is denied.” slip op. at 2
- Strike new argumentNew argument disregardedDenied
“Req. Reh’g, 2–3. But the Board could not have overlooked or misapprehended arguments or evidence that were not specifically identified and explained in the Petition. It is too late for Petitioner to add further explanation in a Request for Rehearing. As noted above, Petitioner failed to identify the place in the Petition where the matter allegedly misapprehended or overlooked by the Board was addressed in the Petition, as is required by 37 C.F.R. § 42.71(d). In any event, the reproduced text of Paragraph 83 of Gautier modifies “account identifier” with the parenthetical “(such as an email address”).” Ex. 1011 ¶ 83. The parenthetical is exemplary in nature and indicates only that an email address can be an account identifier, and not that in iTunes the Account Name necessarily is a user’s email address.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)
“we did not state or find that Petitioner’s assertion was not supported by the record evidence. Instead, we determined that why the last step of claim 1 is met by Ameerally was not adequately explained by Petitioner. For instance, with respect to Petitioner’s discussion of Frakes, we stated: The Figure illustrates detailed information kept by Frakes’s iTunes® system for a digital movie file. Id. at 4. Petitioner asserts: “Frakes illustrates ‘Purchased By’ and ‘Account Name’ in the metadata of the iTunes® media file (grayed out in image for privacy, but field illustrated), such that the claimed ‘electronic identification reference’ was necessarily written into the metadata as saved by iTunes®. (Cherukuri Decl. ¶ 139).” Pet. 46. However, neither Petitioner nor Mr. Cherukuri explains why the “Purchased By” or “Account Name” field is necessarily the login information, e.g., the user’s e-mail address, that the iTunes® system had requested and received, as had been explained by Petitioner and Mr. Cherukuri above when accounting for requesting an electronic identification reference and receiving the electronic identification reference. It is not explained why the fields cannot be another identification reference other than the user’s e-mail address. Paper 7, 32. With respect to Petitioner’s discussion of Zweig, we stated: The argument [about Zweig] establishes that, in the metadata for the digital content purchased or downloaded by a user there is an identifier, an electronic identification reference, that identifies that user. However, neither Petitioner nor Mr. Cherukuri explains why that identifier in the metadata is necessarily the login information, e.g., the user’s e-mail address, that the iTunes® system had requested and received, as had been explained by Petitioner and Mr. Cherukuri above when accounting for requesting an electronic identification reference and receiving the electronic identification reference. It is not explained why the fields cannot be another identification reference. Id. at 32–33. With respect to independent claims 11 and 21, we stated that for the same reasons discussed in the context of claim 1, the same operation as is required by claims 11 and 21 is not sufficiently accounted for by Petitioner. Id. at 33.” slip op. at 3
§ 102 anticipationPatents in suitUS 8,533,860 - 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 - 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
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.