- Apple Inc. v. Fastvdo LLCRehearing deniedPTAB · Mar 15, 2017 · IPR2016-01203 · APJ Jeffrey S Smith · IPR · Rehearing
The Board denied FastVDO’s rehearing request, leaving institution of review of claims 7–11 and 22–26 in place because no overlooked or misapprehended matter was shown.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“argue that Petitioner provided a “sole theory” for the claimed “error protection means” based on indefiniteness. Rather, Patent Owner argued generally that “Petitioner does not describe the structure, materials, or acts corresponding to the terms that Petitioner contends are in means-plus-function format.” Prelim. Resp. 11. Because Patent Owner did not present its “sole theory” argument in the Preliminary Response, the Board could not have misapprehended or overlooked this argument. Even considering this argument, we are not persuaded. In our Decision, we disagreed with Petitioner’s indefiniteness arguments, but nonetheless found that the Petition identifies sufficient structure to support constructions of the means-plus-function limitations. Dec. 10–16. Rather than misapprehend or overlook Patent Owner’s arguments, we found that the Specification of the ’482 patent “discloses enough of an algorithm to allow a person of ordinary skill to discern the necessary structure for performing the claimed function of the ‘error protecting means.’” Dec. 12.” slip op. at 4
NonePatents in suitUS 5,850,482 - PTAB · Aug 30, 2016 · IPR2014-01448 · APJ Debra K Stephens · IPR · Rehearing
The Board denied rehearing of its final written decision, leaving claims 1 and 7 unpatentable over He and Korodi under § 103.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified, 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.” 37 C.F.R. § 42.71(d).” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73, concluding Petitioner had shown by a preponderance of the evidence that the challenged claims are unpatentable. Specifically, we determined Petitioner had established by a preponderance of the evidence claims 1 and 7 are unpatentable under 35 U.S.C. § 103(a) over He and Korodi (Final Dec. 11–25). In light of our determination that Petitioner had established by a preponderance of the evidence that claims 1 and 7 of the ’279 Patent are unpatentable under 35 U.S.C. § 103(a) as obvious over He and Korodi, we took no position on whether the same claims are also obvious over the combination of the teachings and suggestions of Gustafsson and He (id. at 25).” slip op. at 3
§ 103 obviousnessPatents in suitUS 7,671,279 - Sony Mobile Communications Inc. v. SSH Communications Security OyjRehearing grantedPTAB · Jul 21, 2016 · IPR2015-01869 · APJ Bryan F Moore · IPR · Rehearing
The Board granted rehearing in part, declining institution on specified Bellovin-based grounds for claims 4, 11, 21, and 28 and the Shuen/RFC 1234 ground for claim 26.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the Decision should be modified, and “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked.” 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
“Carmichael teaches using keepalive datagrams to “preserve communications that involve address mapping.” Pet. 20. We are not persuaded that this conclusory statement is a sufficient showing of a reasonable rationale to combine Bellovin and the keepalive packets without meaningful payload of Carmichael. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Carmichael teaches using keepalive datagrams to “preserve communications that involve address mapping.” Pet. 20. We are not persuaded that this conclusory statement is a sufficient showing of a reasonable rationale to combine Bellovin and the keepalive packets without meaningful payload of Carmichael. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). Petitioner also asserts Keepalive datagrams were thus a well-known solution to the problem of avoiding communication session (and address mapping) timeouts. A person of skill in the art, seeing Bellovin’s system and knowing of the potential to use keepalives, would have found it obvious to do so for NAT mappings just as with other phone call resources. The relevant field is predictable, and the implementation of keepalives was well within ordinary skill (as evidenced by the keepalive references), and could have been accomplished without surprising results. Indeed, the ’079 patent reports no surprising results. See KSR Int’l Co. v. Teleflex, Inc., 127 S.Ct. 1727, 1739–40 (2007). (Ex. 1002, ¶¶ 165–166). Pet. 24. Petitioner has not identified sufficient support for the predictability of the art. Although Petitioner presents references that disclose keepalive messages, Petitioner has not explained sufficiently why, or identified evidence that shows, that the invention described in the ’079 Patent falls into a very predictable field, that one of ordinary skill in the art would have possessed the requisite skills to make the proposed combination with Carmichael, or that one of ordinary skill in the art reasonably would have anticipated the combination to function in an ordinary and expected way. See Rothman v. Target Corp., 556 F.3d 1310, 1319–20 (Fed. Cir. 2009). Additionally, the payload in Bellovin contains meaningful information. Req. Reh’g 4 (citing Ex. 1003, 20:29–32; Ex. 1004, 32, 103, 1114). Petitioner has not explained how Carmichael’s teaching of keepalives having no meaningful information in the payload could be combined with Bellovin’s system in which the keepalive payload has meaningful information. See KSR, 550 U.S. at 418 (“A patent composed of several elements is not proved obvious by merely demonstrating that each of its elements was, independently, known in the prior art.”); see also Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013): Where, as here, the necessary reasoning is absent, we cannot simply assume that ‘an ordinary artisan would be awakened to modify prior art in such a way as to lead to an obviousness rejection.’ It is in such circumstances, moreover, that it is especially important to guard against the dangers of hindsight bias.” (Citation omitted). Although, as stated above, Petitioner relies on the combination of Bellovin and Carmichael, we also determine Petitioner has not presented sufficient motivation to modify Ballovin alone to meet this limitation. 4 Patent Owner cites to the page numbers added to Ex. 1004 instead of the internal page numbers of the Bellovin Provisional. Thus, we are not persuaded that Petitioner has shown a reasonable likelihood of success as to its challenge to claims 4, 11, 21, and 28 based on the combination of Bellovin and Carmichael. Thus, we amend the Decision to Institute such that we do not institute as to the challenge to claims 4, 11, 21, and 28 as unpatentable in view of Bellovin and the knowledge of a person having ordinary skill in the art.” slip op. at 7
- Strike new argumentNew argument disregardedDecided for patent owner
“3 Petitioner cites without explanation to paragraphs in its Declarant’s testimony related to how Bellovin could teach keepalives without a meaningful payload but does not present this argument in the Petition. Pet. 29 (citing Ex. 1002, ¶¶200–04). The Petition purports to rely only on Carmichael for the limitation of claims 4, 11, 21, and 28 to keepalives without a meaningful payload. Pet. 29. The Petition merely cites the Bradner Declaration and does not explain sufficiently the significance of the cited testimony. Id.; see also 37 C.F.R. § 42.22(a)(2). “Arguments must not be incorporated by reference from one document into another document.” 37 C.F.R. § 42.6(a)(3). Therefore, we do not consider that testimony.” slip op. at 5
§ 103 obviousnesscites KSRPatents in suitUS 8,544,079 - Sandisk Corporation v. Netlist, Inc.Rehearing deniedPTAB · Apr 27, 2016 · IPR2014-00970 · APJ Linda M Gaudette · IPR · Rehearing
Denied SanDisk’s rehearing request; the Board maintained its findings that claims 2, 5, and 6 were not shown obvious over Huang and claims 17–19 and 35 were not shown anticipated by Averbuj.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW The party requesting rehearing has the burden of showing the decision should be modified, 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.” 37 C.F.R. § 42.71(d).” slip op. at 3
- BurdenNot shown unpatentable
“20–21 (“Averbuj discloses that in BIST mode, the multiplexer 46 shown in Fig. 6 selectively inputs signals BIST_ADDR/CTRL (i.e., address and control signals from the control module) to the address and control port of the corresponding memory device 12.” (emphasis added)). In other words, the Petition is devoid of any discussion of BIST_EN in connection with the limitations of claims 17–19 and 35. See Pet. 19–21. Likewise, the Reply fails to contain any discussion of how the claim limitations are met by Averbuj’s use of the BIST_EN signal. See Reply 17. 37 C.F.R. § 42.22(a)(2) requires each petition to include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” Our discussion in the Final Decision of the patentability challenge as to claims 17–19 and 35 based on anticipation by Averbuj addresses Petitioner’s arguments in the Petition and Reply, which are limited to a contention that Averbuj’s multiplexer 46 is required to meet the “configured to selectively input” and “selectively inputs” limitations recited in claims 17–19 and 35. See Final Dec. 44–46 (citing Pet. 19–21; Reply 17). In arguing that we should have considered Dr. Alpert’s testimony that Averbuj’s sequencer, by generating a BIST_EN signal, is “configured to selectively input”/“selectively inputs” address and control signals to the memory modules, Petitioner attempts to improperly incorporate arguments into its Petition and Reply by reference to Dr. Alpert’s declaration testimony. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). In any event, we find the declaration testimony relied on by Petitioner in support of this Request (see Req. Reh’g 13) supports our determination that Petitioner failed to show, by a preponderance of the evidence, that Averbuj anticipates claims 17–19 and 35. Dr. Alpert testified that if the “configuration [to selectively input to the address and control ports] is determined to require the structure that performs the selection itself, then the disclosed control module also includes multiplexer 46 of memory interface 41.” Ex. 1007 ¶ 78 (emphasis added); see also id. ¶ 81 (identifying multiplexer 46 as the “DRAM controller which performs the selective inputting” as recited in claim 18). Petitioner did not explain (see Pet. 19–21; Reply 17) how Averbuj describes multiplexer 46 as being part of sequencer 8 (the alleged control module). See Final Dec. 45–46 (explaining that Petitioner has not addressed Patent Owner’s argument that the device that selectively inputs address and control signals to memory modules 12 is multiplexer 46 of memory interface 41 (the alleged data handler), not sequencer 8 (the alleged control module)). In sum, for the above reasons, we are not persuaded of error in our determination that Petitioner did not meet its burden to establish unpatentability of claims 17–19 and 35 under 35 U.S.C. § 102(b) based on Averbuj.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Huang and Tsern, Petitioner relied on the declaration testimony of its expert, Dr. Donald Alpert (Ex. 1007). See, e.g., id. at 44 (citing Ex. 1007 ¶ 222 in support of its challenge as to claim 2). In concluding Petitioner had not demonstrated a reasonable likelihood it would prevail in showing that claims 2, 5, and 6 would have been obvious over Huang in view of Tsern, we said the following: Dr. Alpert’s opinion that a person of ordinary skill in the art would have been motivated to combine Huang and Tsern . . . is either unsupported or relies on disclosure in the ’434 patent Detailed Description. See, e.g., Ex. 1007 ¶¶ 193, 199, and 206. . . . [T]here is no evidence on this record that the cited portions of the ’434 patent are a description of prior art. Moreover, Dr. Alpert’s statements lack sufficient articulated reasoning with rational underpinning as to why an ordinary artisan at the time of the invention would have had a reason to combine the prior art elements in the manner required by the challenged claims.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” Our discussion in the Final Decision of the patentability challenge as to claims 17–19 and 35 based on anticipation by Averbuj addresses Petitioner’s arguments in the Petition and Reply, which are limited to a contention that Averbuj’s multiplexer 46 is required to meet the “configured to selectively input” and “selectively inputs” limitations recited in claims 17–19 and 35. See Final Dec. 44–46 (citing Pet. 19–21; Reply 17). In arguing that we should have considered Dr. Alpert’s testimony that Averbuj’s sequencer, by generating a BIST_EN signal, is “configured to selectively input”/“selectively inputs” address and control signals to the memory modules, Petitioner attempts to improperly incorporate arguments into its Petition and Reply by reference to Dr. Alpert’s declaration testimony. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). In any event, we find the declaration testimony relied on by Petitioner in support of this Request (see Req. Reh’g 13) supports our determination that Petitioner failed to show, by a preponderance of the evidence, that Averbuj anticipates claims 17–19 and 35. Dr. Alpert testified that if the “configuration [to selectively input to the address and control ports] is determined to require the structure that performs the selection itself, then the disclosed control module also includes multiplexer 46 of memory interface 41.” Ex. 1007 ¶ 78 (emphasis added); see also id. ¶ 81 (identifying multiplexer 46 as the “DRAM controller which performs the selective inputting” as recited in claim 18). Petitioner did not explain (see Pet. 19–21; Reply 17) how Averbuj describes multiplexer 46 as being part of sequencer 8 (the alleged control module). See Final Dec. 45–46 (explaining that Petitioner has not addressed Patent Owner’s argument that the device that selectively inputs address and control signals to memory modules 12 is multiplexer 46 of memory interface 41 (the alleged data handler), not sequencer 8 (the alleged control module)). In sum, for the above reasons, we are not persuaded of error in our determination that Petitioner did not meet its burden to establish unpatentability of claims 17–19 and 35 under 35 U.S.C. § 102(b) based on Averbuj.” slip op. at 11
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,001,434 - Sandisk Corporation v. Netlist, Inc.Rehearing grantedPTAB · Apr 27, 2016 · IPR2014-00971 · APJ Linda M Gaudette · IPR · Rehearing
Rehearing was granted for claims 9 and 10, held unpatentable over Averbuj and JEDEC Standard and over Huang and JEDEC Standard; rehearing was denied for claims 4 and 15.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“II. STANDARD OF REVIEW The party requesting rehearing has the burden of showing the decision should be modified, 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.” 37 C.F.R. § 42.71(d).” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“C. Analysis Petitioner’s arguments are based on an underlying contention that, because the Board sua sponte raised a patentability challenge based on Huang alone, whereas Petitioner’s challenge was based on a combination of Huang and Tsern, the Board relied on evidence that was not cited in the Petition. Petitioner has not identified, nor do we find, however, any indication in our Institution Decision that we relied on evidence other than that expressly cited by Petitioner, e.g., Dr. Alpert’s statement that “[t]o the extent th[e] additional claim [4] element may not be disclosed by Huang alone, it is disclosed by Tsern” (Dr. Alpert’s first declaration (Ex. 1007) ¶ 156, cited in Pet. 42). See Dec. on Inst. 17–18. Petitioner has not explained, moreover, why it delayed more than a year to bring to our attention the alleged error in our finding that the Petition “identifies where Huang discloses or suggests every element of challenged claim[ 2].” (Dec. on Inst. 18). For example, Petitioner did not file a request for rehearing of our decision denying institution of trial on Petitioner’s challenge based on Huang and Tsern and/or instituting trial based on unpatentability in view of Huang alone. See 37 C.F.R. § 42.71(d) (“A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board.”). Nor did Petitioner seek our authorization to withdraw the instituted challenge of claim 4 based on Huang alone. Cf. Ericsson Inc. v. Intellectual Ventures I LLC, 2015 WL 8651563, at *9–10 (PTAB 2015) (denying Petitioner’s motion to withdraw its challenge as to some of the claims where Petitioner delayed in seeking to correct its petition: “[O]ur Decision to Institute should have apprised Ericsson of the problem with its challenge to claim 55.”).” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“In any event, we find the declaration testimony relied on by Petitioner in support of this Request (see Req. Reh’g 13–14) supports our determination that Petitioner failed to show, by a preponderance of the evidence, that Averbuj anticipates claim 15. Dr. Alpert testified that if the “configuration [to selectively input to the address and control ports] is determined to require the structure that performs the selection itself, then the disclosed control module also includes multiplexer 46 of memory interface 41.” Ex. 1007 ¶ 87 (emphasis added). Petitioner did not explain (see Pet. 24–25; Reply 14–15) how Averbuj describes multiplexer 46 as being part of sequencer 8 (the alleged control circuit). See Final Dec. 43–44 (explaining that Petitioner has not addressed Patent Owner’s argument that the device that selectively inputs address and control signals to memory modules 12 is multiplexer 46 of memory interface 41 (the alleged data handler), not sequencer 8 (the alleged control circuit)). In sum, for the above reasons, we are not persuaded of error in our determination that Petitioner did not meet its burden to establish unpatentability of claim 15 under 35 U.S.C. § 102(b) based on Averbuj.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“In its Response, Patent Owner argues that claims 9 and 10 require a system configured to record “failures,” but in the system described in JEDEC Standard, testing stops after only one failure is recorded. Resp. 59– 60. Patent Owner further argues claims 9 and 10 require an internal tester, but the tester in JEDEC Standard is external to the memory system being tested. Id. at 60. In support of these arguments, Patent Owner relies on the declaration testimony of its witness, Dr. Sechen (Exhibit 2012). Id. at 59–60 (citing Ex. 2012 ¶¶ 229–32). Petitioner, in its Reply, argues “[t]he claims are not limited to recording failures during a single test. Instead, the cla[i]ms only require that the data and addresses associated with the failures be stored.” Reply 22. Petitioner directs us to the section of JEDEC Standard relied on its Petition, noting there is a subsection on “Multiple Failures” and a description of “a procedure to generate ‘a complete data log of all failures’ including the address and data associated with the failure.” Id. (citing Ex. 1006 § 8.2.4.5). In response to Patent Owner’s argument that the system in JEDEC Standard uses an external tester, Petitioner, relies on testimony in Dr. Alpert’s second Declaration (Ex. 1009). See Reply 22–23. Petitioner argues Dr. Sechen’s testimony is based on disclosure in JEDEC Standard relating to transparent mode testing (Ex. 1006 § 8.1), which differs from Memory BIST, described in the section of JEDEC Standard cited in the Petition (id. at § 8.2). See id.; Ex. 1009 ¶ 79 (asserting that the sections of JEDEC Standard relied on by Dr. Sechen, e.g., sections 5.1 and 5.5, relate to transparent mode). Dr. Alpert explains that “Transparent Mode is used during FB-DIMM manufacturing to detect defects in the memory devices, interface, and board assembly using data patterns supplied by an external tester. Memory BIST is used for testing a FB-DIMM in a system at power-on initialization without using test equipment external to the system.” Ex. 1009 ¶ 78. During the oral hearing, Patent Owner did not dispute these assertions. See generally, Paper 33 (transcript of the oral hearing). We find that Dr. Sechen’s testimony is related to JEDEC Standard’s description of testing in transparent mode and does not address adequately JEDEC Standard’s discussion of Memory BIST, i.e., the section of JEDEC Standard relied on by Petitioner in support of its patentability challenges as to claims 9 and 10. We also agree with Petitioner that Patent Owner’s arguments are not commensurate in scope with claims 9 and 10. We find Petitioner’s contentions with respect to the teachings of JEDEC Standard and motivation for modifying the respective systems of Averbuj and Huang are supported by JEDEC Standard, and conclude Petitioner has met its burden to show, by a preponderance of the evidence that claims 9 and 10 are” slip op. at 14
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,359,501 - PTAB · Mar 4, 2016 · IPR2015-01417 · APJ Bryan F Moore · IPR · Rehearing
The Board denied rehearing, finding the petition did not show a reasonable likelihood of prevailing on the anticipation challenge to claim 4 because its mapping was inadequately explained.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS When considering a request for rehearing, we review the Decision Granting Institution for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the Decision Granting Institution should be modified, and “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsNot shown unpatentable
“with respect to the anticipation ground,] Takizawa discloses semiconductor material being disposed at the drain bus line/gate bus line overlap, in addition to other regions in the thin film transistor matrix device. Petition (“Pet.”) at 19–26; Ex. 1012 at ¶¶ 55, 61.” Reh’g Req. 4. We disagree because such evidence was not explained adequately in the Petition. The Petition states, without further explanation, that “Takizawa also teaches formation of semiconductor layers at the crossover location. Ex. 1012, ¶ 61.” Pet. 21–22. Nevertheless, the Petition contains no further explanation supporting that statement. Id. The Petition merely cites the Chiang declaration and does not explain sufficiently the significance of the cited testimony. See 37 C.F.R. § 42.22(a)(2). “Arguments must not be incorporated by reference from one document into another document.” 37 C.F.R. § 42.6(a)(3). Without a sufficient explanation why Takizawa would anticipate the limitation to operative semiconductor formed where said gate bus line overlaps said drain bus line in the Petition itself, the citations to the Chiang Declaration amount to incorporation by reference of arguments made in that declaration that circumvent the page limits that apply to petitions. 37 C.F.R. § 42.24(a). Thus, we did not overlook or misapprehend Petitioner’s arguments or evidence in the Petition. Thus, we are not persuaded by this argument.” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“with respect to the anticipation ground,] Takizawa discloses semiconductor material being disposed at the drain bus line/gate bus line overlap, in addition to other regions in the thin film transistor matrix device. Petition (“Pet.”) at 19–26; Ex. 1012 at ¶¶ 55, 61.” Reh’g Req. 4. We disagree because such evidence was not explained adequately in the Petition. The Petition states, without further explanation, that “Takizawa also teaches formation of semiconductor layers at the crossover location. Ex. 1012, ¶ 61.” Pet. 21–22. Nevertheless, the Petition contains no further explanation supporting that statement. Id. The Petition merely cites the Chiang declaration and does not explain sufficiently the significance of the cited testimony. See 37 C.F.R. § 42.22(a)(2). “Arguments must not be incorporated by reference from one document into another document.” 37 C.F.R. § 42.6(a)(3). Without a sufficient explanation why Takizawa would anticipate the limitation to operative semiconductor formed where said gate bus line overlaps said drain bus line in the Petition itself, the citations to the Chiang Declaration amount to incorporation by reference of arguments made in that declaration that circumvent the page limits that apply to petitions. 37 C.F.R. § 42.24(a). Thus, we did not overlook or misapprehend Petitioner’s arguments or evidence in the Petition. Thus, we are not persuaded by this argument.” slip op. at 3
- BurdenDecided for patent owner
“teaches formation of semiconductor layers at the crossover location. Ex. 1012, ¶ 61.” Pet. 21–22. Nevertheless, the Petition contains no further explanation supporting that statement. Id. The Petition merely cites the Chiang declaration and does not explain sufficiently the significance of the cited testimony. See 37 C.F.R. § 42.22(a)(2). “Arguments must not be incorporated by reference from one document into another document.” 37 C.F.R. § 42.6(a)(3). Without a sufficient explanation why Takizawa would anticipate the limitation to operative semiconductor formed where said gate bus line overlaps said drain bus line in the Petition itself, the citations to the Chiang Declaration amount to incorporation by reference of arguments made in that declaration that circumvent the page limits that apply to petitions. 37 C.F.R. § 42.24(a). Thus, we did not overlook or misapprehend Petitioner’s arguments or evidence in the Petition. Thus, we are not persuaded by this argument.” slip op. at 3
§ 102 anticipationPatents in suitUS 5,966,589 - PTAB · Feb 29, 2016 · IPR2015-01468 · APJ Karl D Easthom · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving in place institution on claims 4–10 under § 103 over Yamada because the request did not show an overlooked matter or abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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 burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). A rehearing “request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“may extend across, and from, the whole width of a symmetrical wiring portion edge, thereby making the edge of the symmetrical wiring pattern coextensive with the edge of the beginning of the protrusion, as Yamada’s Figure 5 depicts. Patent Owner simply does not address this underlying finding and rationale of the Institution Decision squarely in its Request for Rehearing.3” slip op. at 5
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“may extend across, and from, the whole width of a symmetrical wiring portion edge, thereby making the edge of the symmetrical wiring pattern coextensive with the edge of the beginning of the protrusion, as Yamada’s Figure 5 depicts. Patent Owner simply does not address this underlying finding and rationale of the Institution Decision squarely in its Request for Rehearing.3” slip op. at 5
§ 103 obviousnesscites KSRPatents in suitUS 6,909,053
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.