- PTAB · Oct 20, 2016 · IPR2015-01047 · APJ Stephen C Siu · IPR · Rehearing
The Board denied VirnetX’s rehearing request, rejecting its real-party-in-interest arguments and finding the challenged claims remained unpatentable based on the Petition and Kiuchi.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The applicable standard for a request for rehearing is set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a 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, opposition, or a reply.” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Paper 82, 8. We are not persuaded by Patent Owner’s argument. Even assuming that Petitioner, in fact, “admitted that the US Feeder and the Cayman Feeder are ‘controlling shareholders’ of the Mangrove Petitioner,” as Patent Owner asserts, Patent Owner does not demonstrate persuasively that Petitioner also “admitted” that the “US Feeder and the Cayman Feeder” exerted control over the filing or preparation of the Petition. Nor does Patent Owner provide sufficient evidence demonstrating such control.” slip op. at 2
- Expert testimonyDecided for petitioner
“1003 is entitled to no weight and reverse its findings of unpatentability that improperly rely on Exhibit 1003.” Paper 82, 14. Reference to Exhibit 1003 in the Decision was made in conjunction with the Petition in describing the Kiuchi disclosure with respect to claim features. Decision 5. We note that Exhibit 1003 merely confirms what is already apparent in the Petition and/or the Kiuchi reference itself (both of which are also relied upon in consideration of the Kiuchi reference with respect to claim features). Hence, to the extent that any modifications might have been made to the relevant portions of Exhibit 1003, we conclude that such alleged potential modifications (if any) are of insubstantial relevance in view of the fact that analysis of the Petition and the Kiuchi reference itself (without reliance on Exhibit 1003 in this regard) indicate that Petitioner has met its burden by a preponderance of the evidence that claims 1, 2, 6–8, and 12–14 of the ’151 patent are unpatentable, as indicated in the Decision. See, e.g., Decision 1-4, 6-24, and 26-38. Reference to Exhibit 1003 in the Decision was also made in the Petition as corroboration that RFC documents are “publications [that] are prepared and distributed,” “published and widely distributed” for “a period for others to provide comments on the document,” “can be obtained from a number of Internet hosts using . . . document-retrieval systems,” and contain a date “in the top right corner of the first page of the document.” Decision 25. Such testimony merely corroborates what is already clear on its face. For example, the fact that RFC documents are prepared and distributed, are for others to provide comments, are published on a specific date, and that the top right corner of such documents specify a date is clear on simple inspection of the RFC document itself. Therefore, we determine that the importance of any alleged modifications to Dr. Guerin’s testimony confirming what is already apparent on its face is of insubstantial importance. Also, Patent Owner does not demonstrate sufficiently that any modifications were, in fact, made to Dr. Guerin’s testimony that RFC documents are published on a specific date and that the top right corner of such documents specify a date.” slip op. at 6
NonePatents in suitUS 7,490,151 - PTAB · Feb 26, 2016 · IPR2015-01047 · APJ Stephen C Siu · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution of IPR2016-00167 and its joinder with IPR2015-01047 in place.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“because “the ’167 IPR is entirely devoid of any supporting expert testimony” but expert testimony was supposedly submitted in IPR2015-01047. Req. Reh’g 3–4. As previously explained, however, the record reflects that Petitioner has demonstrated a reasonable likelihood of prevailing and Patent Owner fails to demonstrate sufficiently that the absence of expert testimony alone indicates the failure to demonstrate a reasonable likelihood of prevailing in proving unpatentability of a challenged claim. See, e.g., Decision 4.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingOther
“(“Req. Reh’g” or “Request”), seeks reversal of the Board’s Decision granting institution in IPR2016-00167 and joining IPR2016-00167 with IPR2015-01047. See Req. Reh’g 1. The Board denies the requested relief.” slip op. at 2
NonePatents in suitUS 7,490,151 - PTAB · Feb 26, 2016 · IPR2015-01047 · APJ Stephen C Siu · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution of IPR2016-00063 and its joinder with IPR2015-01047 in place.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We have considered Patent Owner’s arguments in the Request but find them unpersuasive to demonstrate that we misapprehended or overlooked any points.” slip op. at 3
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“Patent Owner argues that we incorrectly granted institution of IPR2016-00062 under 35 U.S.C. § 315(b). See, e.g., Req. Reh’g 6–10. Contrary to Patent Owner’s contention, our granting of institution of IPR2016-00063 is in accordance with 35 U.S.C. § 315(b) for at least the reasons previously discussed. Decision 4. Patent Owner reiterates that an alternative interpretation of 35 U.S.C. § 315(b) should be adopted to permit denial of institution of IPR2016-00063. See, e.g., Req. Reh’g 6–10. In support of this contention, Patent Owner continues to cite the dissent in Target Corp. v. Destination Maternity Corp., Case IPR2014-00508, dissent slip op. at 18 (PTAB Feb. 12, 2015) (Fitzpatrick, Bisk, & Weatherly, A.P.JJ., dissenting) (Paper 28) but does not explain why a dissent in this cited matter should compel us to adopt an alternate interpretation of 35 U.S.C. § 315(b). We therefore continue not to do so.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Patent Owner argues that “Apple’s past conduct and the numerous challenges to the ’151 patent nonetheless compel that the Petition be denied under § 325(d).” Req. Reh’g 10. According to 35 U.S.C. § 325(d), “the Director may take into account whether, and reject the petition or request, because the same or substantially the same prior art or arguments previously were presented to the Office.” Having carefully considered Patent Owner’s arguments (Req. Reh’g 10–12), we decline to exercise our discretion to reject the petition or request because the same or substantially the same prior art or arguments previously were presented (allegedly) to the Office, even assuming that the same or substantially the same prior art or arguments were, in fact, previously presented to the Office.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedDecided for petitioner
“DISCUSSION In the Decision dated January 25, 2016, Paper 29 (“Decision”), we granted institution of IPR2016-00063 (filed by Apple Inc.) and joined IPR2016-00063 with the instant matter (i.e., IPR2015-01047). Decision 7.” slip op. at 2
Discretionary denialPatents in suitUS 7,490,151
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.