- Emerson Electric Co. v. Sipco, LLCRehearing deniedPTAB · Jun 8, 2017 · IPR2017-00001 · APJ Patrick M Boucher · IPR · Rehearing
The Board denied Emerson’s rehearing request, leaving institution on claims 5, 6, and 8 under § 103 over Mason, Cunningham, and Shuey unchanged.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision by the Board on whether to institute a trial, the Board reviews the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated 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. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burden of showing that our Institution Decision should be modified lies with Petitioner, the party challenging the decision. See 37 C.F.R. § 42.71(d). In addition, “[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.” Id.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentableNot shown unpatentable
“advanced by Petitioner in its Rehearing Request—still involves a combination of Kahn and prior art described in the ’661 patent that requires articulation of reasoning with some rational underpinning to support the combination. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2006). Petitioner attempts to distance itself from this requirement by arguing that the Institution Decision “failed to address that Cunningham was presented as an alternative to the disclosure of sensors and actuators in the [prior art described in the ’661 patent].” Req. Reh’g 5. Such an argument obscures the Institution Decision’s finding that the Petition provides insufficient reasoning, apart from hindsight, why one of skill in the art would have combined the teachings of Kahn with the prior art described in the ’661 patent. In particular, the Institution Decision found that the Petition “relies on the ’661 patent to describe the problem that would motivate one of ordinary skill in the art to combine the teachings of Kahn and the prior art described in the ’661 patent,” and applied the reasoning of Mintz v. Dietz & Watson, Inc., 679 F.3d 1372 (Fed. Cir. 2012). Dec. 11–13.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“In addition to this deficiency, the Institution Decision determined that “Petitioner’s challenges are deficient in addressing the ‘gateway’ recited in each of . . . independent claims [1, 5, and 12].” Dec. 13. This additional deficiency extends to challenged dependent claims 6, 8, and 14. Id. at 17. In addressing the “gateway” limitations of independent claims 1, 5, and 12 in its Rehearing Request, Petitioner contends that we “misapprehended or overlooked Cerf’s disclosure of encapsulation datagrams when transmitting datagrams across a network boundary.” Reh’g Req. 14. Petitioner directs our attention to page 26 of its Petition, which asserts that “Cerf discloses that gateways serve as network protocol translators using encapsulation of datagrams, and mapping addresses from one network into local network addresses.” Id. (citing Pet. 26). This limited assertion is insufficient to support the inferential argument presented in the Rehearing Request, namely that “encapsulation of the PRNET packets by the gateway . . . would result in the entire set of selectors and sensor data being transmitted by the gateway over the WAN.” Id. The original Petition insufficiently explains how teachings from Kahn and Cerf are proposed to be combined.” slip op. at 6
§ 103 obviousnesscites KSRPatents in suitUS 7,468,661 - 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 - Broad Ocean Technologies, LLC v. Nidec Motor CorporationRehearing deniedPTAB · Feb 22, 2017 · IPR2015-01617 · APJ Patrick M Boucher · IPR · Rehearing
The Board denied Petitioner’s rehearing request, leaving intact its decision that claims 7–13 were not shown anticipated by Beifus.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“On rehearing, the burden of showing that the Decision should be modified lies with Petitioner, the party challenging the Decision. 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
- BurdenDecided for patent owner
“On rehearing, the burden of showing that the Decision should be modified lies with Petitioner, the party challenging the Decision. 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
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“1 We do not disagree with Petitioner’s general contention that “a prior art reference’s disclosure of a non-anticipatory embodiment does not negate the invalidating effect under 35 U.S.C. §102 of any other anticipatory alternative embodiments.” Req. Reh’g 8–9 (citing Celeritas Techs., Ltd. v. Rockwell Intern. Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998); Upsher-Smith Labs., Inc. v. Pamlab, L.L.C., 412 F.3d 1319, 1322–23 (Fed. Cir. 2005); Paper 30, 15:10–16:2). Rather, we disagree that Petitioner has carried its burden of showing that Beifus discloses any anticipatory embodiment.” slip op. at 4
- Strike new argumentNew argument disregardedDecided for patent owner
“reliance in its Reply on the reasoning of Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376 (Fed. Cir. 2015)” gave improper effect to an objection raised by Patent Owner during Petitioner’s redirect examination of Dr. Sidman. See Req. Reh’g 12–13 (“Patent Owner Nidec waived all its evidentiary objections to the redirect testimony of Dr. Sidman by not filing a motion to exclude” (citing 37 C.F.R. § 42.64(c))). This implication misconstrues the reasoning provided in the Final Written Decision. Rather, we determined that Petitioner’s reliance on Kennametal was improper because it was an argument not raised in the initial Petition. Dec. 18. Regardless of whether Patent Owner made an objection, and regardless of whether Patent Owner filed a motion to exclude based on such an objection, we are not absolved of our duty to guard against the improper presentation of shifting arguments that may unfairly disadvantage an opposing party. 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in the corresponding opposition, patent owner preliminary response, or patent owner response.”) (emphasis added); CBS Interactive, Inc. v. Helferich Pat. Lic., LLC, Case IPR2013-00033, slip op. at 3 (PTAB Aug. 9, 2013) (Paper 79) (“Should there be improper arguments or evidence presented with a reply, the Board, exercising its discretion, may exclude the reply and related evidence in their entirety, or alternatively, decline to consider the improper arguments and/or related evidence.”). We recognize that Patent Owner addressed Kennametal in its Patent Owner Response, and, as a broadly general proposition, raising an argument in a Response may, without more, entitle a Petitioner to reply to it. But the specific circumstances in this case are not that simple.” slip op. at 7
§ 102 anticipationPatents in suitUS 7,990,092 - Atlanta Gas Light Company v. Bennett Regulator Guards, Inc.Rehearing deniedPTAB · Dec 6, 2016 · IPR2015-00826 · APJ Patrick M Boucher · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1–8 unpatentable, and granted sanctions for Petitioner’s failure to timely update real-party-in-interest notices.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“IV. REQUEST FOR REHEARING On rehearing, the burden of showing that the Decision should be modified lies with Patent Owner, the party challenging the Decision. 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 10
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“With respect to Southern Company Gas, Petitioner’s assertion ignores the fact that Southern Company Gas did not result merely from a name change, but rather also from a merger with AMS Corp. that occurred before the name change. See Paper 34, 3. In the related IPR, the Board specifically found that AGLR is a real party in interest, and it follows that the merged entity is also a real party in interest. Atlanta Gas, slip op. at 13 (PTAB Jan. 6, 2015) (Paper 88). The merger with AMS Corp. has meaningful effects that impose an obligation on Petitioner to apprise the Board that Southern Gas Company is a real party in interest. Petitioner’s failure to file timely the updated mandatory notice is especially significant in light of the central nature that the issue of AGLR’s status as a real party in interest played in the related IPR. See Atlanta Gas, Paper 87, 46:6–9 (“The problem that we have, and you will remember, we had to fight like tooth and nail to get these documents. At every turn there was an objection to producing documents related to the real party in interest issue or the privity issue.” (statement by Patent Owner at oral hearing in the related IPR)). With respect to The Southern Company, we do not credit Petitioner’s argument that The Southern Company is not a real party in interest in light of Petitioner’s explicit notification to the contrary. Petitioner cannot have it both ways, identifying The Southern Company as a real party in interest (even “out of an abundance of caution”) to ensure compliance with 35 U.S.C. § 312(b), while simultaneously maintaining that it is not a real party in interest to evade the obligations of 37 C.F.R. § 42.8(a)(3). In light of these various considerations, we conclude that Petitioner has performed conduct that warrants a sanction.” slip op. at 5
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“be to expunge the Decision and the request for rehearing, dismiss the Petition with prejudice, and order [Petitioner] to pay compensatory expenses and attorney fees to [Patent Owner].” Mot. 5. We disagree that this proposed sanction is proportionate to the harm suffered by Patent Owner. In particular, as Petitioner contends, the harm suffered by Patent Owner is limited because “the estoppel provisions apply to the petitioner and ‘the real party in interest or privy of the petitioner.’” Opp. 6 (citing 35 U.S.C. § 325(e)(1)) (emphasis by Petitioner). There is no requirement that a petitioner identify all of its privies in a petition, and Patent Owner’s ability to address whether The Southern Company was a privy that would give rise to estoppel was not impacted by Petitioner’s original failure to file an updated mandatory notice. Furthermore, “[a] sanction imposed under this rule must be limited to what suffices to deter repetition of the conduct or comparable conduct by others similarly situated.” 37 C.F.R. § 42.11(d)(4) (emphasis added). We have considered, but are not persuaded by, Patent Owner’s argument that “[a]ny remedy short of termination with prejudice would encourage future petitioners to try to suppress the identification of real parties-in-interest.” Mot. 6. A more limited sanction will have sufficient deterrent effect. We determine that an appropriate sanction, proportionate to the harm suffered by Patent Owner, is to award costs and fees incurred in association with this proceeding from the time after issuance of the Final Written Decision until the date of this Decision. 37 C.F.R. § 42.12(b)(6).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached
“Although we agree with Patent Owner in the abstract that the “ordinary and customary meaning” standard applied to expired patents requires that evidence be viewed through the eyes of one of ordinary skill in the art, Patent Owner stretches that principle too far. See id. at 9–10. “[A] claim construction analysis must begin and remain centered on the claim language itself.” Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 382 F.3d 1111, 1116 (Fed. Cir. 2004). Patent Owner asks us to deviate far from this cardinal principle by incorporating features of the Fisher S254 regulator that are not recited in the claims themselves, under circumstances in which the Fisher S254 regulator is not explicitly identified as such anywhere in the specification of the ’029 patent. “Reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is a quite different thing from reading limitations of the specification into a claim, to thereby narrow the scope of the claim by implicitly adding disclosed limitations which have no express basis in the claim.” In re Prater, 415 F.2d 1393, 1404–05 (CCPA 1969). This is particularly the case when the standard we are obliged to apply does not afford Patent Owner a presumption of validity of the patent’s claims. For these reasons, we are not persuaded that we misapprehended or overlooked any aspect of Patent Owner’s claim-construction arguments. Nor are we persuaded that Patent Owner’s evidence in support of those arguments was inadequately considered.” slip op. at 16
Claim constructioncites PhillipsPatents in suitUS 5,810,029 - 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 - Palo Alto Networks, Inc. v. Finjan, Inc.Rehearing deniedPTAB · Jun 2, 2016 · IPR2016-00151 · APJ Miriam L Quinn · IPR · Rehearing
The Board denied Finjan’s rehearing request and left institution of review on claims 1–8, 10, and 11 in place, finding no overlooked or misapprehended matter warranting § 325(d) denial.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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. We deny the request for rehearing for the reasons that follow.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Preliminary Response that “Petitioner’s admission alone demonstrates that denial” is appropriate, Patent Owner did not explain this argument further. See Prelim. Resp. 2. For example, Section IV.A of the Preliminary Response, dedicated to Patent Owner’s contention that the Petition should be denied under § 325(d), contains no legal authority supporting the proposition that an acknowledgement by Petitioner in the Motion for Joinder should be deemed a conclusive finding requiring the Board to exercise its discretion under section 325(d). Patent Owner also did not articulate its contention that Petitioner’s statements should have been evaluated under the doctrine of judicial admissions or any other legal authority. Nor did Patent Owner proffer any explanation or analysis of how the judicial admission doctrine applies to an entirely discretionary consideration exercised by the panel. See 35 U.S.C. § 325(d) (“In determining whether to institute or order a proceeding . . . the Director may take into account whether, and reject the petition or request, because the same or substantially the same prior art or arguments previously were presented to the Office.”) (emphasis added). We could not have misapprehended an issue of law that was not presented adequately or at all. Second, even if such a doctrine were applicable to the discretionary consideration under § 325(d), Patent Owner now oversimplifies the analysis by implying that statements by Petitioner are the only factor to consider. Even in a situation, such as here, where the same, previously presented prior art is asserted and the arguments are alleged to be similar (although we do not agree), other factors may be relevant in determining whether to exercise our discretion. In this case, after considering the two arguments presented in the Preliminary Response, including the so-called admission by Petitioner, and various factors we generally consider under § 325(d), we declined to exercise our discretion. Accordingly, we are not persuaded that Patent Owner has shown that we misapprehended or overlooked the application of judicial admissions in light of our discretion under § 325(d).” slip op. at 4
Discretionary denialPatents in suitUS 8,141,154 - Palo Alto Networks, Inc. v. Finjan, Inc.Rehearing deniedPTAB · May 16, 2016 · IPR2015-02001 · APJ Patrick M Boucher · IPR · Rehearing
The Board denied Finjan’s rehearing request, finding no matter it had misapprehended or overlooked in instituting review of the challenged claims.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The two-stage process described by Chandnani is not unambiguous: The data stream, in an embodiment in which the target script languages are defined by pattern matching rules and the patterns are associated with output tokens (described above), may be converted to a stream of tokens. The tokens may correspond to respective language constructs, and each token may be a corresponding unique number, symbol, etc. A detection process in that embodiment has two stages: (i) tokenize the data stream; and (ii) process the tokens using the detection data. Ex. 1003, col. 7, ll. 51–59. That is, it is not apparent from this description that the two stages identified by Chandnani occur, as Patent Owner contends, as a “sequential, disjointed process,” rather than as interleaved stages. At this stage of the proceeding, we credit the testimony of Dr. Rubin that “[i]n the context of the Chandnani + Kolawa combination, [operation on a stream of tokens] means that at any given time, the continuous data stream will intersect with both the tokenizer (which feeds nodes from the stream to the parse tree for storage) and the analyzer (which searches the nodes[’] output by the parsing stage for patterns that represent potential exploits).” Ex. 1002 ¶ 190. Such testimony regarding what one of skill in the art would understand from Chandnani and Kolawa is not unambigously contradicted by the disclosure identified by Patent Owner, and Patent Owner provides insufficient reason for us to discount it at this stage of the proceedings.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“The two-stage process described by Chandnani is not unambiguous: The data stream, in an embodiment in which the target script languages are defined by pattern matching rules and the patterns are associated with output tokens (described above), may be converted to a stream of tokens. The tokens may correspond to respective language constructs, and each token may be a corresponding unique number, symbol, etc. A detection process in that embodiment has two stages: (i) tokenize the data stream; and (ii) process the tokens using the detection data. Ex. 1003, col. 7, ll. 51–59. That is, it is not apparent from this description that the two stages identified by Chandnani occur, as Patent Owner contends, as a “sequential, disjointed process,” rather than as interleaved stages. At this stage of the proceeding, we credit the testimony of Dr. Rubin that “[i]n the context of the Chandnani + Kolawa combination, [operation on a stream of tokens] means that at any given time, the continuous data stream will intersect with both the tokenizer (which feeds nodes from the stream to the parse tree for storage) and the analyzer (which searches the nodes[’] output by the parsing stage for patterns that represent potential exploits).” Ex. 1002 ¶ 190. Such testimony regarding what one of skill in the art would understand from Chandnani and Kolawa is not unambigously contradicted by the disclosure identified by Patent Owner, and Patent Owner provides insufficient reason for us to discount it at this stage of the proceedings.” slip op. at 4
- Expert testimonyPetitioner expert creditedDecided for petitioner
“The two-stage process described by Chandnani is not unambiguous: The data stream, in an embodiment in which the target script languages are defined by pattern matching rules and the patterns are associated with output tokens (described above), may be converted to a stream of tokens. The tokens may correspond to respective language constructs, and each token may be a corresponding unique number, symbol, etc. A detection process in that embodiment has two stages: (i) tokenize the data stream; and (ii) process the tokens using the detection data. Ex. 1003, col. 7, ll. 51–59. That is, it is not apparent from this description that the two stages identified by Chandnani occur, as Patent Owner contends, as a “sequential, disjointed process,” rather than as interleaved stages. At this stage of the proceeding, we credit the testimony of Dr. Rubin that “[i]n the context of the Chandnani + Kolawa combination, [operation on a stream of tokens] means that at any given time, the continuous data stream will intersect with both the tokenizer (which feeds nodes from the stream to the parse tree for storage) and the analyzer (which searches the nodes[’] output by the parsing stage for patterns that represent potential exploits).” Ex. 1002 ¶ 190. Such testimony regarding what one of skill in the art would understand from Chandnani and Kolawa is not unambigously contradicted by the disclosure identified by Patent Owner, and Patent Owner provides insufficient reason for us to discount it at this stage of the proceedings.” slip op. at 4
§ 103 obviousnessPatents in suitUS 8,225,408 - Palo Alto Networks, Inc. v. Finjan, Inc.Rehearing deniedPTAB · May 16, 2016 · IPR2016-00157 · APJ Patrick M Boucher · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no overlooked or misapprehended matter in instituting review of claims 1, 3-7, 9, 12-16, 18-23, 29, and 35.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We conclude that Petitioner has not identified adequately any matter that we misapprehended or overlooked. In consideration of the foregoing, it is hereby: ORDERED that Petitioner’s Request for Rehearing is denied.” slip op. at 6
- Expert testimonyPetitioner expert creditedOther
“The two-stage process described by Chandnani is not unambiguous: The data stream, in an embodiment in which the target script languages are defined by pattern matching rules and the patterns are associated with output tokens (described above), may be converted to a stream of tokens. The tokens may correspond to respective language constructs, and each token may be a corresponding unique number, symbol, etc. A detection process in that embodiment has two stages: (i) tokenize the data stream; and (ii) process the tokens using the detection data. Ex. 1003, col. 7, ll. 51–59. That is, it is not apparent from this description that the two stages identified by Chandnani occur, as Patent Owner contends, as a “sequential, disjointed process,” rather than as interleaved stages. At this stage of the proceeding, we credit the testimony of Dr. Rubin that “[i]n the context of the Chandnani + Kolawa combination, [operation on a stream of tokens] means that at any given time, the continuous data stream will intersect with both the tokenizer (which feeds nodes from the stream to the parse tree for storage) and the analyzer (which searches the nodes[’] output by the parsing stage for patterns that represent potential exploits).” Ex. 1002 ¶ 190. Such testimony regarding what one of skill in the art would understand from Chandnani and Kolawa is not unambigously contradicted by the disclosure identified by Patent Owner, and Patent Owner provides insufficient reason for us to discount it at this stage of the proceedings.” slip op. at 4
NonePatents in suitUS 8,225,408 - 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
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.