- Samsung Electronics Co. Ltd / Samsung Electronics America, Inc. et al. v. Neonode Smartphone LLCRehearing grantedPTAB · Dec 3, 2021 · IPR2021-00144 · APJ Michelle N Ankenbrand · IPR · Rehearing
Granted rehearing and instituted IPR of claims 1–6 and 12–17 on all asserted grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“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). Petitioner, as the party challenging the Decision, has the burden of showing that we should modify the Decision. Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. Id. § 42.71(c). “An abuse of discretion occurs if the decision (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision.” Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015).” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“that we misapprehended Hirayama307’s distinction between icon 41 and window 43 and, as a result, misapprehended the Petition’s arguments related to icon 41. Specifically, Hirayama307 discloses that window 43 appears “after having touched the desired icon 41 with the point of the pen 3,” and that window 43 is “the processing display form” of icon 41. Ex. 1006, 5:64–66. Thus, contrary to our determination in the Decision that “Hirayama307 appears to duplicate or relocate the representation of the function, i.e., icon, during gliding,” a closer reading of Hirayama307 indicates that icon 41 and window 43 are different, though Hirayama307 at times uses the term “large icon” or “enlarged icon” to describe window 43. See, e.g., Ex. 1006, 6:7–14, 6:22–23, 6:30. We acknowledge that Patent Owner disagrees with Petitioner, but we find that the parties’ disagreement raises an issue of fact that is best resolved on a full trial record. Accordingly, we determine that Petitioner shows sufficiently at this stage of the proceeding that Hirayama307 discloses the limitation “wherein the representation of the function is not relocated or duplicated during the gliding.” In light of this determination, we need not address Petitioner’s additional arguments related to whether Hirayama307 discloses the limitation at issue.10” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“2:48–51. Hirayama307 explains that, after the user moves the pen point from icon 41 to display portion 3, “an icon (hereinafter . . . referred to as a window) enlarged in the form of the processing display mode of the desired icon 41 is automatically displayed on the display portion 1 as shown in FIG. 3B.” Id. at 5:3–12.” slip op. at 6
- Other 314aInstituted
“§ 314(a). See 35 U.S.C. § 314(a) (“The Director may not authorize an inter partes review to be instituted unless . . . .”); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“First of all, the PTO is permitted, but never compelled, to institute an IPR proceeding.” (citing 35 U.S.C. § 314(a))). When deciding whether to exercise our discretion, we may consider the number of claims and grounds that meet the reasonable likelihood standard and whether, in the interests of efficient petition should be denied. Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 at 42 (PTAB Jan. 24, 2019) (informative); SAS Q&A’s, Part D, Effect of SAS on Future Challenges that Could Be Denied for Statutory Reasons, D2 (June 5, 2018), available at https://www.uspto.gov/sites/ default/files/documents/sas_qas_20180605.pdf. Here, Petitioner demonstrates a reasonable likelihood of prevailing on its challenges involving Hirayama307, which address all challenged claims. On this record, and based on the particular facts of this proceeding, we find that instituting a trial is an efficient use of the Board’s time and resources.” slip op. at 8
§ 103 obviousnessDiscretionary denialPatents in suitUS 8,095,879 - PTAB · Nov 17, 2021 · IPR2021-00544 · APJ Terrence W Mcmillin · IPR · Rehearing
Rehearing was granted and review instituted on all challenged claims and grounds after the Board found the ITC target date made Fintiv factor 2 neutral and Petitioner’s broadened stipulation favored institution.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Institution stated, “[t]he evidentiary hearing in the ITC investigation is scheduled to begin January 5, 2022, and the final determination is due April 29, 2022.” DDI 9 (citing Ex. 2004, 5; emphasis added). Petitioner is correct that the statement did not correctly state the target date for the ITC’s final determination. According to the Adopted Procedural Schedule for the ITC Investigation, the “Final ID” is due April 29, 2022, and the “Target Date” is August 29, 2022. Ex. 2004, 5. We agree that the ITC’s target date for final determination is more appropriate for evaluating Fintiv factor 2, consistent with the Board’s prior decisions. See Request 2–3 (identifying numerous proceedings). Applying the August 29, 2022, date, we conclude that Fintiv factor 2 is neutral in this proceeding, because of the close proximity between the ITC’s target final determination and our expected final written decision based on the mailing date of this Decision.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied discretionary otherDecided for petitioner
“Institution stated, “[t]he evidentiary hearing in the ITC investigation is scheduled to begin January 5, 2022, and the final determination is due April 29, 2022.” DDI 9 (citing Ex. 2004, 5; emphasis added). Petitioner is correct that the statement did not correctly state the target date for the ITC’s final determination. According to the Adopted Procedural Schedule for the ITC Investigation, the “Final ID” is due April 29, 2022, and the “Target Date” is August 29, 2022. Ex. 2004, 5. We agree that the ITC’s target date for final determination is more appropriate for evaluating Fintiv factor 2, consistent with the Board’s prior decisions. See Request 2–3 (identifying numerous proceedings). Applying the August 29, 2022, date, we conclude that Fintiv factor 2 is neutral in this proceeding, because of the close proximity between the ITC’s target final determination and our expected final written decision based on the mailing date of this Decision.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Summary as to Claim 1 Petitioner has shown a reasonable likelihood of showing that claim 1 of the ’423 patent would have been obvious in view of the combined teachings of Jeon, Everett, and Abramson. 5. Claims 2–4, 6–10, 12–15, 18–23, 25, and 26 Petitioner also contends that claims 2–4, 6–10, 12–15, 18–23, 25, and 26 would have been obvious in view of a combination of the asserted references. See Pet. 26–80. As noted previously, Patent Owner does not address the merits of any portion of the Petitioner’s obviousness showing. See generally Prelim. Resp. Thus, at this stage, Petitioner’s obviousness showing as to claims 2–4, 6–10, 12–15, 18–23, 25, and 26 is undisputed. We have determined that there is a reasonable likelihood that the Petitioner will prevail with respect to at least one of the claims challenged in the Petition pursuant to 35 U.S.C. § 314 and that inter partes review should be instituted. Accordingly, we institute as to all the challenged claims and all the challenges raised in the Petition. SAS Institute Inc. v. Iancu, 138 S.Ct. 1348, 1358 (2018); 37 C.F.R. §42.108 (a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). III. CONCLUSION Petitioner has persuaded us that rehearing is appropriate and we grant the Request for Rehearing. After reconsidering our discretionary denial of the Petition, we determine that discretionary denial is inappropriate. And, we determine that Petitioner has demonstrated a reasonable likelihood of showing at least one of the claims challenged in the Petition would have been obvious. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Request for Rehearing is granted; FURTHER ORDERED that an inter partes review is instituted on all challenged claims under all challenged grounds; and FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter partes review of the ʼ423 patent is hereby instituted commencing on the entry date of this Decision, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial.” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“With regard to combining the relevant teachings of Jeon and Everett relating to this limitation, the Petition states: It would have been obvious to combine this well-known, reduced base station approach velocity with [ ]Jeon . . . Doing so is nothing more than substituting a known feature (e.g., Everett’s reduced base station approach velocity) in an existing system ([ ]Jeon’s robot cleaner) according to known methods (e.g., function of stand-off distance) to achieve a predictable result (avoiding collision with and/or increased maneuverability for accurate alignment with the base station). Id.; KSR, 550 U.S. at 416-418. Selecting a reduced base station approach velocity is a known, obvious, trivial selection from a limited number of options (increasing, decreasing, or maintaining velocity). Likhachev, ¶ 82. Given the benefits of reducing the velocity (e.g., avoiding collision and/or increased maneuverability), to the extent not already understood from [ ]Jeon and the knowledge of a skilled artisan, a skilled artisan would have found it obvious to try reducing the base station approach velocity of [ ]Jeon’s robot cleaner as taught by Everett. Id.; KSR, 550 U.S. at 421. Pet. 19–20. At least at this stage of the proceedings, we determine that Petitioner provides sufficient rationale for combining the relied upon teachings of Jeon and Everett. We determine that, for purposes of institution, Petitioner has shown sufficiently that the cited art teaches this limitation.” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,884,423 - Samsung Display Co., Ltd. v. Solas Oled, Ltd.Rehearing deniedPTAB · Oct 25, 2021 · IPR2019-01668 · APJ Jessica C Kaiser · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1–20 unpatentable over Moran and Joo-based obviousness grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A. Standard of Review The party challenging a decision in a request for rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). A 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 a motion, an opposition, a reply, or a sur-reply.” Id. A request for rehearing, therefore, is not an opportunity to merely disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner’s arguments regarding motivation to combine the teachings of Moran and Joo. In our Decision, we found that, “[a]s Patent Owner acknowledges (PO Sur-reply 26), Petitioner’s combination does not rely on any manufacturing techniques in Joo.” Dec. 21. We agreed with Petitioner that “creat[ing] additional touch sensitive regions on the sides of the device as taught in Joo,” provides the benefits attributed to Joo, but the benefits “are not wholly dependent upon the injection molding technique of Joo.” Id. (citing Pet. 66–67). Although we appreciate that Joo uses injection molding to form his device, we determined that the “benefits [of Joo] inure from having the touch sensitive portion on the side of the display rather than the manufacturing technique that results in that touch sensitive portion (i.e., injection molding versus bending the touch sensitive portion to wrap it around the edge of the display).” Id. at 21–22. This is consistent with Petitioner’s “Motivation to Combine” set forth in the Petition, i.e., “application of a known technique [Joo’s teaching of wrapping a touch sensor around the edges of a touchscreen display] to a piece of prior art ready for the improvement [Moran’s flexible capacitive touch sensor for a touchscreen device].” Pet. 67 (citing KSR International Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)). Indeed, in our Decision on Institution (Paper 7, 21), we expressly stated that we did not “understand Petitioner’s combination to rely on any manufacturing techniques in Joo.” Accordingly, we determine we did not change reasoning midstream as to why we agreed with Petitioner’s motivation to combine the teachings of Moran and Joo, and thus, did not misapprehend or overlook Petitioner’s motivation to combine the teachings of Moran and Joo.” slip op. at 4
- Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for petitioner
“We disagree. In our Decision, we found Dr. Wolfe’s testimony “credible and persuasive that resolving [implementation] details would have been well within the skill of a person of ordinary skill in the art.” Dec. 23 (citing Ex. 1023 ¶¶ 178–183). Dr. Wolfe provided detailed testimony supported by objective evidence on this point. See id. (citing Pet. 68); Ex. 1023 ¶¶ 182–183 (citing Ex. 1007, 8:13–21; Ex. 1012 ¶¶ 8–9; Ex. 1018, 2955, 2962; Ex. 1019 ¶¶ 25, 33, 81; Ex. 1003, 21:8–12, 27:48–28:38, 29:55– 30:33). Thus, even if Mr. Credelle’s testimony was not directly rebutted, we properly weighed Mr. Credelle’s testimony against Dr. Wolfe’s testimony. As such, we determined that a preponderance of the evidence supported Petitioner’s contention that an ordinary artisan would have known how to modify Moran to arrive at a substrate and touch sensor configured to wrap around an edge of a display. See Dec. 26. Accordingly, we are not persuaded that we overlooked or failed to consider any argument or evidence related to how the proposed modification would have been achieved.” slip op. at 6
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Not reached
“D. Constitutionality The remainder of Patent Owner’s arguments on rehearing are devoted to contesting the constitutionality of the appointments of the Administrative Patent Judges. Req. Reh’g 9–12. We decline to address Patent Owner’s constitutional challenge except to note that the constitutionality of the appointments of the Administrative Patent Judges was addressed by the U.S. Supreme Court in United States v. Arthrex, Inc., 141 S. Ct. 1970, 1986–87, 1997 (2021).” slip op. at 9
§ 103 obviousnesscites KSRPatents in suitUS 9,256,311 - PTAB · Sep 24, 2021 · IPR2021-00095 · APJ Terrence W Mcmillin · IPR · Rehearing
The Board granted rehearing, vacated its discretionary denial, and instituted review of claims 1, 2, 6, 8–10, and 12–20 on all asserted grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“misapprehended the nature and fragility of Patent Owner’s assertion of the ’707 Patent in the ITC Investigation and the corresponding likelihood that the ITC Investigation would yield a final invalidity determination before a final written decision is this proceeding, and further that the facts as they stand today do not support the Board’s Decision.” Request 2. We do not agree that the Board misapprehended anything. Our Decision Denying Institution was appropriate under the facts as they existed at the time. We do agree that the facts as they stand today do not support our Decision Denying Institution and, in light of the changed facts, we modify our earlier decision that exercised our discretion to deny institution. The parallel proceeding that served as our basis for exercising our discretion to deny institution no longer involves the ’707 patent. On June 28, 2021, the ITC Investigation was terminated with respect to the ’707 patent. Ex. 1063, 2. Petitioner argues that, “Patent Owner’s decision to terminate the ’707 Patent from the ITC Investigation eliminates the factual basis for the Board’s denial of institution.” Request 4. We agree. In weighing the Fintiv factors, we relied on the involvement of the ’707 patent in an ITC investigation as the basis for our weighing 4 of 6 factors and for our holistic assessment of the factors in favor of our exercising our discretion to deny institution. DDI 9 (factor 1), 10 (factor 2), 11 (factor 3), 14 (factor 5), 15 (holistic assessment). However, the ITC investigation no longer provides any basis for exercising our discretion to deny institution.11 We possess the inherent authority to reconsider our Decision Denying Institution. See GTNX, Inc. v. INTTRA, Inc., 789 F.3d 1309, 1313 (Fed. Cir. 2015). In light of the termination of the ITC investigation with respect to the ’707 patent, we no longer exercise our discretion to deny institution.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“discretion to deny institution no longer involves the ’707 patent. On June 28, 2021, the ITC Investigation was terminated with respect to the ’707 patent. Ex. 1063, 2. Petitioner argues that, “Patent Owner’s decision to terminate the ’707 Patent from the ITC Investigation eliminates the factual basis for the Board’s denial of institution.” Request 4. We agree. In weighing the Fintiv factors, we relied on the involvement of the ’707 patent in an ITC investigation as the basis for our weighing 4 of 6 factors and for our holistic assessment of the factors in favor of our exercising our discretion to deny institution. DDI 9 (factor 1), 10 (factor 2), 11 (factor 3), 14 (factor 5), 15 (holistic assessment). However, the ITC investigation no longer provides any basis for exercising our discretion to deny institution.11 We possess the inherent authority to reconsider our Decision Denying Institution. See GTNX, Inc. v. INTTRA, Inc., 789 F.3d 1309, 1313 (Fed. Cir. 2015). In light of the termination of the ITC investigation with respect to the ’707 patent, we no longer exercise our discretion to deny institution.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Id. at 21–23. We determine that Petitioner has provided a showing sufficient to support institution as to why a skilled artisan would have been motivated at the time of the invention to look to the laser ablation scribing system of Suutarinen to implement the solar cell backside scribing techniques of Jinno, with a reasonable expectation of success in meeting the limitations of the claimed invention. Summary as to Claim 1 Petitioner has shown a reasonable likelihood of showing that claim 1 of the ’707 patent would have been obvious in view of the combined teachings of Jinno and Suutarinen.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Motivation to Combine the Relevant Teachings of Jinno and Suutarinen Petitioner provides detailed and well-supported reasoning for combining the relevant teachings of Jinno and Suutarinen. See Pet. 19–26. The Petition states, “[a]s of the effective filing date of the 707 Patent, a Skilled Artisan would have found it obvious to employ the laser ablation scribing system of Suutarinen to implement the solar cell backside scribing techniques of Jinno[ ].” Id. at 19. With specific regard to combining the teachings of these references, the Petition provides: [T]he two systems disclose analogous functionality, such as ablation or laser scribing more generally, a Skilled Artisan would understand combining their techniques to be an efficient and common sense way to implement the combined system in order to obtain the benefits of both, and therefore would have been motivated to make the combination. EX1003,¶80. Further, Jinno[ ], Suutarinen, and the 707 Patent are analogous art because each is in the same field of endeavor— i.e., laser scribing and singulation of semiconductor wafers. See EX1005,Abstract,¶[0006]; EX1006,¶[0002]; EX1001,Abstract. Also, Jinno[ ] and Suutarinen are reasonably pertinent to the particular problem the inventor of the 707 Patent was trying to solve—achieving singulation without the drawbacks of mechanical sawing. See EX1001,2:19-20 (“Conventionally, solar cells are mechanically cut with a saw. However, this technique has numerous disadvantages.”); EX1005,[0005]; EX1006,¶[0005]; EX1003,¶81. A Skilled Artisan would have further understood that the combination of Jinno[ ] and Suutarinen as analyzed here is merely an arrangement of old elements (backside laser scribing of solar cells to a depth of half the solar cell thickness (Jinno[ ]) and blowing gas and vacuum exhaust during laser ablation (Suutarinen)), with each performing the same function it had been known to perform (singulation of semiconductor based solar cells (Jinno[ ]), enhancing scribing via debris removal (Suutarinen)), and yielding no more than what one would expect from such an arrangement (laser ablation and singulation of solar cells with removal of gaseous material generated from the laser processing). The combination could therefore have been made with a reasonable expectation of success and without undue experimentation. EX1003,¶82. Id. at 21–23. We determine that Petitioner has provided a showing sufficient to support institution as to why a skilled artisan would have been motivated at the time of the invention to look to the laser ablation scribing system of Suutarinen to implement the solar cell backside scribing techniques of Jinno, with a reasonable expectation of success in meeting the limitations of the claimed invention.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,522,707 - Platform Science, Inc. v. Omnitracs, LLCRehearing grantedPTAB · Sep 3, 2021 · IPR2020-01612 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board granted rehearing and instituted IPR on all petition grounds for claims 1–4, 6–9, 11, 12, and 15, finding a reasonable likelihood of prevailing.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“preliminary stage, we determine that Petitioner demonstrates a reasonable likelihood of prevailing with respect to claim 1.” slip op. at 44
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The only dispute pertaining to claim construction at this stage of the proceeding is whether the phrase “a process for creating said response message,” recited in claim 1, is governed by 35 U.S.C. § 112 ¶ 6.6 Petitioner 6 As noted above, Petitioner raises a second claim construction issue in its Rehearing Request. See Req. Reh’g 12–15 (asserting that the claims require only one instance of copying information from a formatted message to a response message based on which formatted message was received). Petitioner did not raise this issue in the Petition, Patent Owner has not had an contends that the phrase should be interpreted as a means-plus-function limitation, whereas Patent Owner contends that it should not. Compare Pet. 2–7 (advocating for a means-plus-function construction), with Prelim. Resp. 9–11 (advocating for an ordinary and customary meaning). At this stage of the proceeding, the dispute between the parties regarding the construction of this claim phrase does not impact our Decision. Accordingly, we need not construe expressly any claim terms for the purpose of this Decision.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“VI. ANALYSIS Legal Standards – Anticipation “[A] claim is anticipated ‘if each and every limitation is found expressly or inherently in a single prior art reference.’” King Pharm., Inc. v. Eon Labs., Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998)). Anticipation is a question of fact, In re Gleave, 560 F.3d 1331, 1334–35 (Fed. Cir. 2009), assessed from the perspective of one of ordinary skill in the art, see Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (“the dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching that every claim element was disclosed in that single reference” (alteration in original) (quotation omitted)).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,925,308 - Energysource Minerals, LLC v. Terralithium LLCRehearing deniedPTAB · Aug 26, 2021 · IPR2019-01603 · APJ Hubert C Lorin · IPR · Rehearing
The Board denied EnergySource’s rehearing request, finding no overlooked or misapprehended arguments or evidence that warranted changing the final written decision on claims 1–18.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A request for rehearing must identify specifically all matters that the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 3
- BurdenNot shown unpatentable
“In that regard, Petitioner contends that Christopher’s “aging process resulted in a reduction in ‘at least one elemental component’ (i.e., silica).” Pet. Reply 5–6 (emphasis added). However, this is not buttressed with any evidence. Petitioner has not presented any evidence showing Christopher’s “aging” process reduces “the concentration of at least one … elemental component” to support its contention that Christopher’s brine of Table 1 is a “treated” brine as claimed. Accordingly, on this record, Petitioner has not shown that the “treated” brine of the claims reads on Christopher’s “aged” brine by a preponderance of the evidence.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable
“The Petition discusses Grounds I and II on pages 27–30 of the Petition. Ground I challenges the patentability of claims 1–20 as anticipated by Christopher and Ground II challenges the patentability of claims 1–20 as anticipated and/or obvious over Christopher. Reading pages 27–30 it is plainly evident that it is focused on making the case that Christopher discloses all that is claimed. It is devoid of any reasoning with respect to the obviousness of the claims over Christopher. The Graham factors are not addressed. See Graham v. John Deere Co., 383 U.S. 1 (1966). The differences between the claimed invention and Christopher are not identified and no rationale as to why one of ordinary skill would have been led to modify Christopher to reach the claimed subject matter is provided. Rather, the entire discussion goes to explaining why, in fact, Christopher discloses all that is claimed. The Board was consistent with that position. Petitioner cites page 12–14 of the Reply as evidence that an obviousness challenge was presented. We disagree. The Reply does not add anything significant to the obviousness challenge presented in the Petition. The Reply is likewise devoid of any reasoning with respect to the obviousness of the claims over Christopher. It repeats that “Christopher teaches using air oxidation and pH modification to selectively precipitate silica, iron, and other heavy metals from a Salton Sea geothermal brine” (Reply 13, emphasis added), where “a POSITA could readily ‘tune’ these parameters to produce the desired results if such were not obtained immediately.” Id. The Board addressed that argument. See Dec. 17.” slip op. at 14
- Expert testimonyOther
“Petitioner cites footnote 3 [sic. 1] in the Petition but it merely states “mg/kg=(g/L*1000)/1.18kg/L due to the density of Salton Sea geothermal brines.” There is no evidence cited to support it. Petitioner cites “Reply, 3; Ex. 2025, 337:5-9” and “337:5-13” (Req. 6) but the Reply does not cite to those lines in Dr. Gallup’s Declaration. See Pet. Reply 3 (“Ex. 2025, 336:3-5-337:2”). We were unable to locate these lines of testimony in the Reply. The Board could not have misapprehended or overlooked evidence demonstrating Petitioner’s 1.18 kg/L density that was not before it.” slip op. at 11
§ 103 obviousnesscites GrahamPatents in suitUS 9,644,126 - Energysource Minerals, LLC v. Terralithium LLCRehearing deniedPTAB · Aug 26, 2021 · IPR2019-01602 · APJ Hubert C Lorin · IPR · Rehearing
The Board denied EnergySource Minerals’ rehearing request, leaving undisturbed the final written decision that claims 1–18 were not shown unpatentable on any asserted ground.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A request for rehearing must identify specifically all matters that the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 3
- Expert testimonyPatent owner expert creditedDecided for patent owner
“to ppm by weight” (Req. 8) was not before us, therefore, we could not have overlooked it. Nevertheless, even if we take account of this new argument, the discussion on page 4 of the Reply does not support Petitioner’s position that one ordinary skill in the art reading Christopher would have no other choice but to understand “1.0” “PPM” (Ex. 1006, 42) to mean parts–per– weight. This is so because Petitioner concedes that “ppm can generally be reported as either by weight or by volume.” Req. 8. This is consistent with Dr. Gallup’s testimony. See Dec. 18: According to Patent Owner, “Dr. Gallup explained [that] ppm may be reported as ppm by weight or ppm by volume. (Ex. 2025, 119:16-25; Ex. 2002, ¶64).” Id. [PO Resp. 20] Because we are directed to no evidence contradicting it, we credit Dr. Gallup’s testimony that ppm can be reported by weight or by volume. Given this, one of ordinary skill in the art reading that iron is at a concentration of “1.0 ppm” for stream 3 in Figure 20 may understand it to refer to ppm by volume. Notwithstanding the discussion on page 4 of the Reply that the “general convention” for ppm is that it is weight based, the evidence before us showed, as Petitioner concedes, that ppm can “generally be reported” (Req. 8) by weight or volume. Thus, as we determined, it is possible that one of ordinary skill in the art may understand “ppm” in Figure 20 to “refer to ppm by volume” (Dec. 18).” slip op. at 12
- Strike new argumentNew argument disregardedOther
“Regarding Petitioner’s assertion that “[d]uring these proceedings, Petitioner has submitted that when Christopher reduces silica, it necessarily also reduces the elemental components of silicon (Si) and oxygen (O2)” (Req. Sur–Reply 1), this is not a position that Petitioner had previously taken. Rather, Petitioner’s position was only that “Christopher states the silica concentration is reduced.” Pet. 23; cf. Pet. Reply 8–9. A rehearing request is not an opportunity to raise new arguments. We could not have overlooked or misapprehended an argument not raised prior to our decision.” slip op. at 6
- BurdenNot shown unpatentable
“brine (Pet. 22; Dec. 7), Petitioner had to show that “the brine of Table 1 must ‘have been processed such that the concentration of at least one metal or elemental component has been reduced in the brine.’ Ex. 1001, 7:18–21.” Dec. 9 (emphasis added). As noted in our Decision: In that regard, Petitioner contends that Christopher’s “aging process resulted in a reduction in ‘at least one elemental component’ (i.e., silica).” Pet. Reply 6 (emphasis added). However, this is not buttressed with any evidence. Petitioner has not presented any evidence showing Christopher’s “aging” process reduces “the concentration of at least one … elemental component” to support its contention that Christopher’s brine of Table 1 is a “treated” brine as claimed. Accordingly, on this record, Petitioner has not shown that the “treated” brine of the claims reads on Christopher’s “aged” brine by a preponderance of the evidence.” slip op. at 5
NonePatents in suitUS 9,650,555 - Neumodx Molecular, Inc. v. Handylab, Inc.Rehearing grantedPTAB · Aug 6, 2021 · IPR2020-01133 · APJ Jo-Anne M Kokoski · IPR · Rehearing
Granted Petitioner’s rehearing request and instituted review of claims 1–15 on all asserted grounds because the Petition showed a reasonable likelihood of unpatentability.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Rehearing Request and conclude that we misapprehended the law of incorporation by reference when evaluating the grounds based on Ganesan- Publ’424, and that the Petition sets forth sufficient grounds and evidence to justify institution of trial.8 We, therefore, grant Petitioner’s Rehearing 8 Because our determination that we misapprehended the law of incorporation by reference is dispositive, we need not address Petitioner’s other arguments in the Rehearing Request. Request and institute an inter partes review of claims 1–15 of the ’103 patent on all the grounds asserted in the Petition.” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“‘generally incorporates’ Ganesan-Prov’264, and did not ‘identif[y] with particularity’ any specific subject matter from Ganesan-Prov’264 . . . misapprehended the law of incorporation by reference in a way that is contrary to both Federal Circuit precedent and other Board decisions.” Req. Reh’g 10 (citing Dec. 18; Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000)). In particular, Petitioner argues that Advanced Display’s statement that “[t]o incorporate material by reference, the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents” (212 F.3d at 1282) does not mean that the host document must identify some specific subject matter or subpart of the incorporated document (such as by page/line). Rather, the quoted statement simply means that the host document must clearly identify what is being incorporated and where it can be found—even when the incorporation applies to the entire document.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“with sufficient particularity such that the entirety of Ganesan-Prov’264 is incorporated therein, and Ganesan-Prov’264 forms a part of Ganesan- Publ’424 for purposes of anticipation. Ganesan-Prov’264 “relates generally to techniques for thermal control of microfluidic devices.” Ex. 1208, 2:29– 30. Ganesan-Prov’264 teaches that “heater/sensors in accordance with the invention may be integral with a microfluidic device or separate from a microfluidic device,” and “may be formed separately from the microfluidic device.” Id. at 12:16–21 (emphases added). Ganesan-Prov’264 further teaches that “one or more heater/sensors may be formed as part of a device configured to operatively receive a microfluidic device,” and “[t]he device may include one or more heater sensors positioned to be in thermal contact with portions of the operatively received microfluidic device.” Id. at 12:21– 26. Based on these teachings, Petitioner’s declarant, Dr. Mark Burns, testifies that “the heater array of Ganesan-Publ’424 may be formed integrally with the network-containing microfluidic substrate, or may be formed separately in a testing device into which the microfluidic substrate is placed or another part of the system.” Ex. 1101 ¶ 345 (citing Ex. 1109 ¶ 79; Ex. 1208, 12:20–25).” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“to begin on April 11, 2022. Prelim. Resp. 45. We note, however, that the parties recently filed a Stipulation and Proposed Order to Extend Case Schedule, pushing the trial to December 2022, which the district court granted. Ex. 3001. Given the statutory deadlines, our latest possible date for issuance of a final written decision in this proceeding is in July, 2022, one year after we issue this decision instituting an inter partes review. 35 U.S.C. §§ 314(c), 316(a)(11); see also 37 C.F.R. § 42.100(c). Thus, our final written decision would issue at least four months before trial. “If the court’s trial date is earlier than the projected statutory deadline, the Board generally has weighed this fact in favor of exercising authority to deny institution under NHK.” Fintiv Order 9. We find that this factor weighs strongly against exercising discretion to deny institution.” slip op. at 12
§ 102 anticipationDiscretionary denialPatents in suitUS 8,415,103 - Brooks Sports, Inc. v. Herbert E. TownsendRehearing grantedPTAB · May 17, 2021 · IPR2018-00577 · APJ Hyun J Jung · IPR · Rehearing
The Board granted rehearing in part, finding challenges 8 and 9 unproven and limiting challenge 3 as to claim 6; it declined to disregard the petitioner’s expert’s entire testimony.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“37 C.F.R. § 42.71(d) sets forth, in relevant part that: A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 4
- Expert testimonyPetitioner expert creditedMixed
“Dr. Shorten’s testimonies entirely. Nonetheless, in the Final Written Decision, in addressing Patent Owner’s arguments concerning the relevant art and level of ordinary skill in the art, we stated that the parties’ arguments “address what weight we should give to the testimony of the parties’ declarants” and “[f]or the reasons addressed below, the parties’ declarants both provide relevant testimony on issues being assessed dependent on the declarant’s particular background and expertise.” Final Dec. 13. We, thus, Rather, we assessed portions of the testimonies and how much weight should be given to them. In doing so, we considered Dr. Shorten’s relationship with Petitioner and the alleged conflicting testimony. Such matters go to credibility of the witness, but do not justify disregarding the testimony altogether as requested by Patent Owner. Even if there were conflicting testimonies as to whether Dr. Shorten ever tested a running shoe that has a dilatant compound in the sole, Dr. Shorten effectively corrected such discrepancy in his second declaration by testifying that his employee tested the Power Bounce shoe. See PO Sur- Reply 9. These two matters raised by Patent Owner did not rise to the level that Dr. Shorten’s entire testimony should be disregarded.” slip op. at 7
- Obviousness (§103) › Objective indicia / secondary considerationsDecided for petitioner
“In its Response in regard to secondary considerations, Patent Owner argued that “Petitioner’s expert tried and failed in 1985 to create shoes that had a dilatant compound in the sole.” PO Resp. 61. Petitioner replied that “Dr. Shorten explains there was not a failed attempt, but a reasonable decision to not to try because better materials were available.” Pet. Reply 27 (citing Ex. 1071 at ¶¶ 164–170). In his Reply Declaration, Dr. Shorten testified that Silly Putty in a shoe component “does not perform better than EVA [(ethyl vinyl acetate)],” that “it performed worse,” and that “[g]iven the additional cost and weight compared to EVA, Silly Putty does not provide a better option.” Ex. 1071 ¶ 170. We stated in the Final Written Decision that Petitioner replied that its declarant “explains there was not a failed attempt, but a reasonable decision to not to try because better materials were available.” Final Dec. 70 (citing Pet. Reply 27). Also, as pointed out in the Final Written Decision, Dr. Shorten testified that “Silly Putty is heavy and costly compared to EVA, a benchmark material,” “[g]iven the additional cost and weight compared to EVA, Silly Putty does not provide a better option,” and “I don’t think it has any -- in the form we see it in, you know, the patent referenced in the Townsend, I don’t think there’s any commercial value there personally.” Id. (citing Ex. 1071 (Shorten Reply Dec.) ¶¶ 164, 170; Ex. 2009 (Shorten “[b]ased on the record, a preponderance of the evidence persuades us that others tried but decided for economic reasons that using a dilatant compound in a shoe was an unattractive option.” Final Dec. 70. Thus, the Final Written Decision provided grounds for disregarding Petitioner’s Expert’s testimony with respect to his conclusion in 1985 to the extent that it conflicts with the later testimony. The fact that Dr. Shorten clarified or corrected his earlier testimony does not mean that we should disregard his later testimony, because there is nothing in the record to hold against the veracity of later testimonies, other than that earlier inconsistent testimony itself.” slip op. at 9
§ 103 obviousnessPatents in suitUS 7,490,416 - Axonics Modulation Technologies, Inc. v. Medtronic, Inc.Rehearing grantedPTAB · May 14, 2021 · IPR2020-00712 · APJ James A Tartal · IPR · Rehearing
The Board granted Patent Owner leave to file Dr. Mihran’s cross-examination testimony as an exhibit, finding it could not have been obtained earlier and that the interests of justice supported admission.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“To the extent Patent Owner’s request for leave did not specifically encompass relief pursuant to Rule 42.123(b) and, therefore, lies outside of a proper request for rehearing, we find in the interests of efficiency in the proceedings that we may consider whether Patent Owner’s Request satisfies Rule 42.123(b), in light of the arguments advanced by both parties, rather than, for example, require Patent Owner to refile its request for leave pursuant to Rule 42.123(b). We further find that Patent Owner’s arguments sufficiently show that the cross-examination testimony of Dr. Mihran could not have been obtained earlier (by virtue of it being cross-examination testimony). Petitioner’s contention that Patent Owner had “unfettered access” to Dr. Mihran does not suggest that the cross-examination testimony to be filed as an exhibit, based on questioning by Petitioner, could have been obtained earlier. See Resp. 9. Further, we are persuaded that the interests-of-justice support allowing the cross-examination testimony to be entered in the record as an exhibit, including the interests of allowing each party to rely on evidence developed during trial to support or attack the credibility of a declarant. See Ultratec, Inc. v. CaptionCall LLC, 872 F.3d 1267, 1273 (Fed. Cir. 2017) (“[N]o reasonable fact finder would refuse to consider evidence of inconsistent sworn testimony. Moreover, any such inconsistencies would likely bear on the overall credibility of the expert.”). We considered Petitioner’s argument that Patent Owner seeks to use improperly the cross-examination testimony to support its sur-reply, because “Dr. Mihran developed new arguments and opinions that Patent Owner would like to advance.” Id. at 7–8. To be clear, we make no finding on whether any testimony in the transcript of Dr. Mihran’s cross-examination may be properly relied on by Patent Owner in support of the sur-reply in each case and do not limit Petitioner’s ability to contest Patent Owner’s use of the cross-examination testimony. To the extent Patent Owner relies on the cross-examination testimony in support of its sur-replies, Petitioner may dispute whether such reliance is proper. Petitioner may also choose to request leave to file additional briefing to respond to arguments advanced by Patent Owner citing the cross-examination testimony of Dr. Mihran. We, therefore, conclude that the interests-of-justice favor allowing Patent Owner to file the cross-examination testimony of Dr. Mihran as an exhibit.” slip op. at 7
- Additional discoveryAdditional discovery, grantedGranted
“encompass relief pursuant to Rule 42.123(b) and, therefore, lies outside of a proper request for rehearing, we find in the interests of efficiency in the proceedings that we may consider whether Patent Owner’s Request satisfies Rule 42.123(b), in light of the arguments advanced by both parties, rather than, for example, require Patent Owner to refile its request for leave pursuant to Rule 42.123(b). We further find that Patent Owner’s arguments sufficiently show that the cross-examination testimony of Dr. Mihran could not have been obtained earlier (by virtue of it being cross-examination testimony). Petitioner’s contention that Patent Owner had “unfettered access” to Dr. Mihran does not suggest that the cross-examination testimony to be filed as an exhibit, based on questioning by Petitioner, could have been obtained earlier. See Resp. 9. Further, we are persuaded that the interests-of-justice support allowing the cross-examination testimony to be entered in the record as an exhibit, including the interests of allowing each party to rely on evidence developed during trial to support or attack the credibility of a declarant. See Ultratec, Inc. v. CaptionCall LLC, 872 F.3d 1267, 1273 (Fed. Cir. 2017) (“[N]o reasonable fact finder would refuse to consider evidence of inconsistent sworn testimony. Moreover, any such inconsistencies would likely bear on the overall credibility of the expert.”). We considered Petitioner’s argument that Patent Owner seeks to use improperly the cross-examination testimony to support its sur-reply, because “Dr. Mihran developed new arguments and opinions that Patent Owner would like to advance.” Id. at 7–8. To be clear, we make no finding on whether any testimony in the transcript of Dr. Mihran’s cross-examination may be properly relied on by Patent Owner in support of the sur-reply in each case and do not limit Petitioner’s ability to contest Patent Owner’s use of the cross-examination testimony. To the extent Patent Owner relies on the cross-examination testimony in support of its sur-replies, Petitioner may dispute whether such reliance is proper. Petitioner may also choose to request leave to file additional briefing to respond to arguments advanced by Patent Owner citing the cross-examination testimony of Dr. Mihran. We, therefore, conclude that the interests-of-justice favor allowing Patent Owner to file the cross-examination testimony of Dr. Mihran as an exhibit.” slip op. at 7
NonePatents in suitUS 8,738,148
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.