- Google LLC v. Cywee Group LtdRehearing deniedPTAB · Jan 30, 2019 · IPR2018-01258 · APJ Christopher L Ogden · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution of review of claims 1 and 3–5 in place because no abuse of discretion was shown.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When a party requests rehearing on a decision instituting inter partes review, we “review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). There is an abuse of discretion if we have made “a clear error of judgment in weighing relevant factors or in basing [our] decision on an error of law or on clearly erroneous factual findings.” Bayer CropScience AG v. Dow AgroSciences LLC, 851 F.3d 1302, 1306 (Fed. Cir. 2017) (quoting Mentor Graphics Corp. v. Quickturn Design Sys., Inc., 150 F.3d 1374, 1377 (Fed. Cir. 1998)). In a request for rehearing, “[t]he burden of showing a decision should be modified lies with the party challenging the decision,” 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 the record. 37 C.F.R. § 42.71(d).” slip op. at 2
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“factual issue, which we do not disturb on rehearing unless it was clearly erroneous. See In re Paulsen, 30 F.3d 1475, 1481 (Fed. Cir. 1994). Based on” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“with the second signal set whereby said resultant angles . . . are obtained under said dynamic environments.” Ex. 1001, 19:12–17 (emphasis added). We construed the term comparison as the ’438 patent explicitly defines it: “the calculating and obtaining of the actual deviation angles of the 3D pointing device . . . with respect to the first reference frame or spatial 3–5 of the ’438 patent, we need not address whether or not Bachmann is pertinent to the different problem that Patent Owner defines. Further, we do not consider the evidence in Appendix A, because Patent Owner does not point to any place where this evidence was addressed in the preliminary record. See 37 C.F.R. 42.71(d). pointing frame XP YP ZP utilizing signals generated by motion sensors while reducing or eliminating noises associated with said motion sensors.” Decision 14 (quoting id. at 2:28–32). We also determined that the ’438 patent uses the term consistently with that broad definition—for example, to describe a program or model for updating a state based on a previous state and a measured state. Id. at 13–14.” slip op. at 5
- Skill levelSkill level board ownDecided for petitioner
“inquiries underpinning the legal conclusion of obviousness. See Okajima v. Bourdeau, 261 F.3d 1350, 1354 (Fed. Cir. 2001) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)). On the preliminary record, we determined that a person of ordinary skill in the art would have had, among other things, “knowledge of . . . quaternion mechanics.” Decision 19.” slip op. at 7
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 8,441,438 - Google LLC v. Cywee Group Ltd.Rehearing deniedPTAB · Jan 30, 2019 · IPR2018-01257 · APJ Patrick M Boucher · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no overlooked error in its analogous-art and skill-level analysis and declining to deny institution under § 325(d).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision 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 Decision should be modified lies with Patent Owner, 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
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“(1) the similarities and material differences between the asserted art and the prior art involved during examination; (2) the cumulative nature of the assert art and the prior art evaluated during examination; (3) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (4) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (5) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (6) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586, slip op. at 17–18 (PTAB Dec. 15, 2017) (Paper 8) (informative) (formatting added). These factors weigh against exercising our discretion under § 325(d) to deny institution, particularly in view of the limited nature of Patent Owner’s allegations in its Preliminary Response.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the art would have had, inter alia, “knowledge of . . . quaternion mathematics.” Dec. 15. In doing so, we stated that “[t]he record provides support for Dr. Sarrafzadeh’s [Petitioner’s declarant] position that quaternion mathematics was well known in the relevant time frame.” Id. at 14. Patent Owner contends that, in doing so, we misapprehended the level of skill in the art “by conflating that ‘quaternion mathematics was well known in the relevant time frame’ with the issue of whether the application of quaternion mathematics was well known in the art of 3D pointing devices.” Req. Reh’g 12–13. But in describing its technical field as “methods and apparatus for tracking the orientation . . . of an object,” Bachmann specifically states that “the field of quaternion mathematics is known to those having ordinary skill in the art and is explained in detail in numerous mathematical texts.” Ex. 1004, 1:18–20, 7:25–28. As we noted in the Institution Decision, and reiterate above, “[s]uch tracking is also one of the concerns of the ’978 patent.” Dec. 14. It is thus apparent that we considered not only the isolated question of whether quaternion mathematics was known in the relevant time frame, but also the degree of its application to tracking the orientation of objects.2 We conclude that we did not misapprehend or overlook Patent Owner’s argument that the level of skill in the art should exclude knowledge of quaternion mathematics.” slip op. at 5
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Even accepting, for purposes of this Decision, Patent Owner’s characterization of Bachmann, we are not persuaded that we erred in finding that Bachmann is at least reasonably pertinent to the problem with which the inventor of the ’978 patent was involved. The question of whether a reference is analogous art presents an issue of fact. See In re Paulsen, 30 F.3d 1475, 1481 (Fed. Cir. 1994). In considering this factual issue, Patent Owner’s focus on the display aspect of the problem confronting the inventor of the ’978 patent is too narrow. The bulk of the disclosure of the ’978 patent is concerned with determining the changes in angles that define an orientation of the 3D pointing device rather than with the geometrical task of mapping those determined angles onto a two-dimensional display. Compare, e.g., Ex. 1001, 13:60–19:60 (six columns of description for determining yaw, pitch, and roll angles of 3D pointing device in describing Figure 7), with 20:6–21:65 (two columns describing the geometry of mapping to a display with Figure 9). Regardless of the specific degree to which each of these aspects of the problem is treated by the ’978 patent, it is unambiguously apparent that a significant aspect of the problem addressed is the determination of the 3D pointing device’s orientation. The determination of a hand-held device’s orientation is exactly what Bachmann describes. Ex. 1004, 1:18–20 (“The invention described herein relates to methods and apparatus for tracking the orientation . . . of an object.”), 13:47–48 (“Examples include . . . hand-held devices”). Because of the close similarity of this principal aspect of the problem confronted by the inventor of the ’978 patent, Bachmann reasonably would have commended itself to the inventor’s attention, and is therefore analogous art. We conclude that we did not misapprehend or overlook Patent Owner’s argument that Bachmann is not analogous art.” slip op. at 4
§ 103 obviousnessDiscretionary denialPatents in suitUS 8,552,978 - Unified Patents Inc. v. Intellectual Ventures II, LLCRehearing deniedPTAB · Sep 27, 2018 · IPR2016-01404 · APJ Kamran Jivani · IPR · Rehearing
The Board granted the motion to excuse late filing and denied rehearing, maintaining that claims 1, 2, 13, 14, 33, 34, 39, 46, and 48 were not shown unpatentable over Bensimon.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision . . .” who “must specifically identify all matters the party believes [we] 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’s argument is predicated upon a mischaracterization of our factual findings. Petitioner asserts that we found Bensimon “taught all of the elements of the claim in ‘one possible mode of operation.’” Reh’g Req. 1 (citing Decision 17). We, however, made no such finding. The phrase that Petitioner attributes to us—namely, “one possible mode of operation”—does not appear anywhere in our Final Written Decision. Compare Reh’g Req. 1 (citing Decision 17) to Decision 17. Contrary to Petitioner’s assertions, we did not find “that Bensimon sometimes teaches all of the elements of the claim” nor did we find “that Bensimon discloses a ‘restricted-access mode’ by disclosing a ‘write protection’ mode.” Reh’g Req. 1–3 (citing Decision, 16–17). Rather, we found the exact opposite—that Bensimon fails to disclose the claimed restricted-access mode because, as claimed, that mode requires the absence of the claimed device-specific security information (i.e. the read/write password, or alternatively the combination of the read/write password and password-enabling flag). Decision 16–17 (citing Reply 16– 22) (“Petitioner identifies Bensimon’s read/write password, alone or in combination with the password-enabling flag, as the device-specific security information, yet Petitioner does not identify in Bensimon an explicit disclosure that Bensimon’s storage device operates in the claimed restricted-access mode when the read/write password is absent from the device.”) (bolding added; italics original). slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“claim” nor did we find “that Bensimon discloses a ‘restricted-access mode’ by disclosing a ‘write protection’ mode.” Reh’g Req. 1–3 (citing Decision, 16–17). Rather, we found the exact opposite—that Bensimon fails to disclose the claimed restricted-access mode because, as claimed, that mode requires the absence of the claimed device-specific security information (i.e. the read/write password, or alternatively the combination of the read/write password and password-enabling flag). Decision 16–17 (citing Reply 16– 22) (“Petitioner identifies Bensimon’s read/write password, alone or in combination with the password-enabling flag, as the device-specific security information, yet Petitioner does not identify in Bensimon an explicit disclosure that Bensimon’s storage device operates in the claimed restricted-access mode when the read/write password is absent from the device.”) (bolding added; italics original).” slip op. at 6
§ 102 anticipationPatents in suitUS 6,968,459 - Eset, LLC / Eset Spol S.R.O. v. Finjan, Inc.Rehearing deniedPTAB · Aug 10, 2018 · IPR2017-01738 · APJ Patrick M Boucher · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving review instituted on all challenged claims and all grounds presented in the Petition.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Nevertheless, like Petitioner, the panel “is not aware of a single case where a partially-instituted IPR was de-instituted post-SAS, as requested by Patent Owner.” Opp. 5. The panel is sympathetic to the position in which institution of the Freund-based grounds places Patent Owner. If now faced with the Petition in the first instance, and understanding that we have only a “binary choice,” it may well be appropriate to deny the Petition in its entirety. But we have been instructed that the Office SAS Guidance is to be interpreted with the weight of Office policy as precluding termination of a partially instituted proceeding in response to SAS Institute. Given that constraint, we are not persuaded that we abused our discretion in our modification Order to include review of all challenged claims and all grounds presented in the Petition. See 37 C.F.R. § 42.71(c). Thus, notwithstanding the panel’s significant reservations, we continue to give effect to the Director’s policy guidance, and deny Patent Owner’s Rehearing Request.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“SAS procedure outlined herein and determines that the trial must be instituted on all grounds or none, Patent Owner requests that the proceedings be terminated pursuant to 35 U.S.C. § 325(d).” Req. Reh’g 10. In making this request, Patent Owner raises important issues regarding the interplay of SAS Institute and 35 U.S.C. § 325(d). The panel is sensitive to Patent Owner’s concern that Under the full-institution full-review paradigm laid out in the Board’s Modified Institution Order and envisioned by the Guidelines, Patent Owners will be forced to defend against the very types of harassing challenges that these sections of the America Invents Act [35 U.S.C. §§ 314(a) and 325(d)] were designed to prevent, namely to “prevent parties from mounting attacks on patents that raise issues that are substantially the same as issues that were already before the Office with respect to the patent.” Id. at 6 (quoting 157 Cong. Rec. S1360 at S1376 (Mar. 8, 2011) (remarks of Senator Kyl); citing H.R. Rep. No. 112-98, pt. 1, at 48 (2011) (warning the AIA’s procedures should not be used as tools for harassment)).5 Nevertheless, like Petitioner, the panel “is not aware of a single case where a partially-instituted IPR was de-instituted post-SAS, as requested by Patent Owner.” Opp. 5. The panel is sympathetic to the position in which institution of the Freund-based grounds places Patent Owner. If now faced with the Petition in the first instance, and understanding that we have only a “binary choice,” it may well be appropriate to deny the Petition in its entirety. But we have been instructed that the Office SAS Guidance is to be interpreted with the weight of Office policy as precluding termination of a partially instituted proceeding in response to SAS Institute. Given that constraint, we are not persuaded that we abused our discretion in our modification Order to include review of all challenged claims and all grounds presented in the Petition. See 37 C.F.R. § 42.71(c).” slip op. at 9
Discretionary denialPatents in suitUS 7,975,305 - Bose Corporation v. Freebit AsRehearing deniedPTAB · Jul 10, 2018 · IPR2017-00130 · APJ David C Mckone · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving in place its determination that claims 1–13 would have been obvious over the cited references.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We do not read Dr. Casali’s cross-examination testimony to include admissions that Aber’s device only loosely fits the crus of helix. Rather, in context, Dr. Casali considered “accommodate” and “partially embrace,” as used in Aber, to be synonymous with “conform,” as used in the ’995 patent. Ex. 2015, 11:14–12:12, 13:11–19, 17:4–18. Moreover, we do not read Aber’s references to “accommodate,” “partially embrace,” and “partially surround” in isolation, but rather in the context of its full disclosure. As noted above and in the Decision (Dec. 35), Aber expressly states that its device embraces the crus of helix in such a way as to provide “much greater contact” between the device and the crus of helix and “assist in firmly retaining” the device in the ear. Ex. 1006, 1:17–83. To the extent that “accommodate,” “partially embrace,” and “partially surround” could be read more broadly, Aber makes clear that its device substantially conforms to the concha at the position of the crus of helix. Thus, we did not overlook Dr. Casali’s testimony.” slip op. at 5
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We do not read Dr. Casali’s cross-examination testimony to include admissions that Aber’s device only loosely fits the crus of helix. Rather, in context, Dr. Casali considered “accommodate” and “partially embrace,” as used in Aber, to be synonymous with “conform,” as used in the ’995 patent. Ex. 2015, 11:14–12:12, 13:11–19, 17:4–18. Moreover, we do not read Aber’s references to “accommodate,” “partially embrace,” and “partially surround” in isolation, but rather in the context of its full disclosure. As noted above and in the Decision (Dec. 35), Aber expressly states that its device embraces the crus of helix in such a way as to provide “much greater contact” between the device and the crus of helix and “assist in firmly retaining” the device in the ear. Ex. 1006, 1:17–83. To the extent that “accommodate,” “partially embrace,” and “partially surround” could be read more broadly, Aber makes clear that its device substantially conforms to the concha at the position of the crus of helix. Thus, we did not overlook Dr. Casali’s testimony.” slip op. at 5
NonePatents in suitUS 8,976,995 - Bose Corporation v. Freebit AsRehearing deniedPTAB · Jul 10, 2018 · IPR2017-00129 · APJ David C Mckone · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding it had not shown that the Board overlooked or misapprehended arguments or evidence concerning Aber’s groove and obviousness of claims 1–10.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We do not read Dr. Casali’s cross-examination testimony to include admissions that Aber’s device only loosely fits the crus of helix. Rather, in context, Dr. Casali considered “accommodate” and “partially embrace,” as used in Aber, to be synonymous with “conform,” as used in the ’436 patent. Ex. 2015, 11:14–12:12, 13:11–19, 17:4–18. Moreover, we do not read Aber’s references to “accommodate,” “partially embrace,” and “partially surround” in isolation, but rather in the context of its full disclosure. As noted above and in the Decision (Dec. 35), Aber expressly states that its device embraces the crus of helix in such a way as to provide “much greater contact” between the device and the crus of helix and “assist in firmly retaining” the device in the ear. Ex. 1006, 1:17–83. To the extent that “accommodate,” “partially embrace,” and “partially surround” could be read more broadly, Aber makes clear that its device substantially conforms to the concha at the position of the crus of helix. Thus, we did not overlook Dr. Casali’s testimony.” slip op. at 5
- Expert testimonyDecided for patent owner
“We do not read Dr. Casali’s cross-examination testimony to include admissions that Aber’s device only loosely fits the crus of helix. Rather, in context, Dr. Casali considered “accommodate” and “partially embrace,” as used in Aber, to be synonymous with “conform,” as used in the ’436 patent. Ex. 2015, 11:14–12:12, 13:11–19, 17:4–18. Moreover, we do not read Aber’s references to “accommodate,” “partially embrace,” and “partially surround” in isolation, but rather in the context of its full disclosure. As noted above and in the Decision (Dec. 35), Aber expressly states that its device embraces the crus of helix in such a way as to provide “much greater contact” between the device and the crus of helix and “assist in firmly retaining” the device in the ear. Ex. 1006, 1:17–83. To the extent that “accommodate,” “partially embrace,” and “partially surround” could be read more broadly, Aber makes clear that its device substantially conforms to the concha at the position of the crus of helix. Thus, we did not overlook Dr. Casali’s testimony.” slip op. at 5
NonePatents in suitUS 8,630,436 - Unified Patents, Inc. v. Harry Heslop & Sportbrain Holdings LLCRehearing deniedPTAB · Apr 18, 2018 · IPR2016-01464 · APJ Jeffrey S Smith · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1–16 unpatentable based on Vock and Smith and the failure to establish conception of periodic transmission.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion may be determined 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. United States, 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 request must identify, with specificity, all matters that the moving party believes the Board misapprehended or overlooked. See 37 C.F.R. § 42.71(d). Section 42.71(d) further provides that the request must identify where each matter was previously addressed.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We determine that Patent Owner’s contention that Vock teaches away from using the pedometer of system 620 shown in Figure 21 with the system shown in Figure 1 is inconsistent with Vock’s disclosure that “system 620 [shown in Figure 21] is useful to joggers who can gate it to serve as a pedometer” and that “[d]ata may also be acquired by the accelerometer and telemetered to the electronics 626 via an RF link 631 back to a remote base 632 for storage and processing (e.g., such as the base station 70, FIG. 1).” Ex. 1006, 50:5, 49:21–23, and Fig. 21. We determine that the Petition and supporting testimony of Dr. Eldering show that it would have been obvious to a person of ordinary skill in the art to modify the sensing unit of Vock to measure and transmit the number of steps taken by a user, and to modify the base station of Vock to provide feedback based on the number of steps, in light of the teachings of Smith, for the benefit of providing a user with additional information with which to quantitatively assess performance during a physical activity, and that such modifications would have been accomplished with a high chance of success. See Ex. 1009 ¶¶ 50–52. Dec. 16–17. In our Decision, we relied on the Petition and supporting testimony of Dr. Eldering to determine that it would have been obvious to a person of ordinary skill in the art to modify the sensing unit of Vock to measure and transmit the number of steps taken by a user, and to modify the base station to provide feedback based on a number of steps, in light of the teachings of Smith. Dec. 17 (citing Ex. 1009 ¶¶ 50–52).” slip op. at 4
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We determine that the Petition and supporting testimony of Dr. Eldering show that it would have been obvious to a person of ordinary skill in the art to modify the sensing unit of Vock to measure and transmit the number of steps taken by a user, and to modify the base station of Vock to provide feedback based on the number of steps, in light of the teachings of Smith, for the benefit of providing a user with additional information with which to quantitatively assess performance during a physical activity, and that such modifications would have been accomplished with a high chance of success. See Ex. 1009 ¶¶ 50–52. Dec. 16–17. In our Decision, we relied on the Petition and supporting testimony of Dr. Eldering to determine that it would have been obvious to a person of ordinary skill in the art to modify the sensing unit of Vock to measure and transmit the number of steps taken by a user, and to modify the base station to provide feedback based on a number of steps, in light of the teachings of Smith. Dec. 17 (citing Ex. 1009 ¶¶ 50–52).” slip op. at 4
- BurdenDecided for petitioner
“periodically transmitting the personal data from the wireless communication device to a network server over a wireless network.” We determined that the cited disclosure of a user telephoning a workstation to transfer data does not show conception of “periodically transmitting the personal data from the wireless communication device to a network server over a wireless network” as claimed. Dec. 31–32. Accordingly, the Decision did not misapprehend or overlook any slip op. at 7
§ 103 obviousnessPatents in suitUS 7,454,002 - 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
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.