- PNC Bank N.A. v. United Services Automobile AssociationRehearing deniedPTAB · Mar 8, 2023 · IPR2021-01077 · APJ Juliet Mitchell Dirba · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving in place the final written decision finding claims 1–18 unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD FOR REHEARING 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.” 37 C.F.R. § 42.71(d). “The burden of showing a decision should be modified lies with the party challenging the decision.” Id.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“misapprehended or overlooked matters relevant to whether an ordinary artisan would have reasonably expected success in combining Garcia and Randle. Req. 1–5. We have reviewed and carefully considered all of the arguments presented, but determine Patent Owner fails to show that the Decision misapprehended or overlooked any material arguments or evidence. To provide context for our discussion, we begin with a targeted summary of the Decision, and then we turn to Patent Owner’s specific arguments.” slip op. at 2
§ 103 obviousnessPatents in suitUS 10,621,559 - Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Rehearing deniedPTAB · Jan 4, 2023 · IPR2022-00182 · APJ Steven M Amundson · IPR · Rehearing
Denied Patent Owner’s rehearing request; the Board found no abuse of discretion in instituting IPR of claims 1, 24, and 25 on the stated § 103 grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d) (2022). In a rehearing request, the party challenging the decision “must specifically identify” (1) “all matters the party believes the Board misapprehended or overlooked” and (2) “the place where each matter was previously addressed” in an earlier submission. Id.; see Consolidated Trial Practice Guide at 90.3 “A rehearing request is not an opportunity for the requesting party to reargue its case or merely to express disagreement with the underlying decision.” MicroSurgical Tech., Inc. v. Regents of Univ. of Colo., PGR2021-00026, Paper 14 at 2 (PTAB Aug. 12, 2021). “Nor is it an opportunity for the moving party to present new arguments that were not in its original submissions.” Id.” slip op. at 3
- Obviousness (§103) › Objective indicia / secondary considerations › CopyingObjective indicia no nexusDecided for petitioner
“Patent Owner does not explain why issue preclusion permits the Board to hold the district court’s finding that Cisco “copied software functionality from the [infringed] patents” against Petitioner. See Prelim. Resp. 16, 54–56; Req. Reh’g 3, 14–15. Issue preclusion “is appropriate only if”: (1) “the issue is identical to one decided in the first action”; (2) “the issue was actually litigated in the first action”; (3) “resolution of the issue was essential to a final judgment in the first action”; and (4) the party defending against preclusion “had a full and fair opportunity to litigate the issue in the first action.” SynQor, Inc. v. Vicor Corp., 988 F.3d 1341, 1353 (Fed. Cir. 2021). Patent Owner does not address any of these requirements for issue preclusion. See Prelim. Resp. 16, 54–56; Req. Reh’g 3, 14–15.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Regarding the policy’s whitelist processing, if the security device determines that a newly received packet with encrypted data is correlated to the hostname corresponding to the whitelisted destination domain, the security device filters the packet by forwarding it to the remote server with the whitelisted destination domain. See Ex. 1004, 7:52–59, 16:36–42; Ex. 1003 ¶ 90; see also Ex. 1004, 6:1–11. Filtering the newly received packet with encrypted data by forwarding it to the remote server with the whitelisted destination domain occurs “without having to decrypt the encrypted secure tunnel session traffic.” Ex. 1004, 5:24–27, 5:35–42, 7:1–9, 11:7–19; see Ex. 1003 ¶¶ 94, 113. Further, filtering the newly received packet with encrypted data by forwarding it to the remote server with the whitelisted destination domain results from applying a packet-filtering rule (a whitelisted destination domain) to the packet. Hence, we disagree with Patent Owner that Buruganahalli’s security devices process whitelisted packets by “forward[ing] the entire encrypted stream without . . . filtering encrypted packets.” See Req. Reh’g 10. We also disagree with Patent Owner that “encrypted packets in whitelisted sessions” are (1) “forwarded without applying any packet-filtering rules” and (2) “allowed uninspected.” See id. at 11 n.1, 13. Regarding the policy’s blacklist processing, if the security device determines that a newly received packet with encrypted data is correlated to the hostname corresponding to the blacklisted destination domain, the security device either blocks the packet (as Patent Owner contends) or filters the packet by forwarding it to a decryption engine. See Ex. 1004, 7:60–67, 9:61–67, 14:33–36, 16:43–48; Ex. 1003 ¶¶ 90–91, 94, 97, 108, 118, 127, 137; Req. Reh’g 10–11, 13. Filtering the newly received packet with encrypted data by forwarding it to a decryption engine occurs “without having to decrypt the encrypted secure tunnel session traffic.” Ex. 1004, 5:24–27, 5:35–42, 7:1–9, 11:7–19; see Ex. 1003 ¶¶ 94, 113, 135. Further, filtering the newly received packet with encrypted data by forwarding it to a decryption engine results from applying a packet-filtering rule (a blacklisted destination domain) to the packet and corresponds to limitation [1.g] and the similar limitations in claims 24 and 25. See Ex. 1003 ¶¶ 109, 134–135. The Institution Decision explained how Buruganahalli’s security devices may filter packets comprising unencrypted data and packets comprising encrypted data according to claims 1, 24, and 25 by applying a whitelist/blacklist policy to the packets. See, e.g., Inst. Dec. 57–60, 66–67, 69–71. As the Institution Decision explained and as discussed above, “for each session packets comprising unencrypted data and packets comprising encrypted data are correlated and filtered based on the hostname (destination domain) extracted from the handshake traffic, and then the correlated and filtered packets are processed separately from packets destined for other domains.” See Inst. Dec. 69–70; Ex. 1003 ¶¶ 109, 120–121, 133–135; Ex. 1004, 7:39–67, 8:55–60, 11:47–51, 14:21–33, 14:50–55, 16:32–48. Buruganahalli discloses additional filtering after forwarding a newly received packet with encrypted data to a decryption engine, e.g., as occurs in Buruganahalli’s Figure 3B embodiment. See, e.g., Ex. 1004, 6:17–22, 9:67–10:4, 12:4–64, Fig. 3B. But claims 1, 24, and 25 use the transitional term “comprising.” Ex. 1001, 25:14, 28:59, 29:29–30. Hence, the claims do not “exclude unrecited elements,” such as additional filtering after forwarding a newly received packet with encrypted data to a decryption engine. See Regeneron Pharm., Inc. v. Merus N.V., 864 F.3d 1343, 1352 (Fed. Cir. 2017) (citing Manual of Patent Examining Procedure § 2111.03).” slip op. at 8
§ 103 obviousnessPatents in suitUS 9,917,856 - 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 · Nov 20, 2020 · IPR2020-00846 · APJ David C Mckone · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no overlooked or misapprehended arguments and no abuse of discretion in instituting review.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“an abuse of discretion. See 37 C.F.R. § 42.71(c) (2019). 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 the Institution Decision should be modified is on Patent Owner, the party challenging the Decision. See 37 C.F.R. § 42.71(d) (2019). In addition, “[t]he request 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.” Id.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“not be persuasive. We do not view the circumstances to have changed materially. The record still is unclear as to whether the Texas court has set a trial date. Staff at the Texas court has indicated that Patent Owner “may use 7/12/2021 as the scheduled trial date” for a group of trials that will include Petitioners (Ex. 2018, 1), but the record does not indicate that the Texas court has issued any orders to that effect. final decision to assess the weight to be accorded a trial date set earlier than the expected final written decision date. This proximity inquiry is a proxy for the likelihood that the trial court will reach a decision on validity issues before the Board reaches a final written decision. A trial set to occur soon after the institution decision is fairly likely to happen prior to the Board’s final decision, even if the trial date were postponed due to intervening circumstances. Here, however, a July 12, 2021, trial date would be approximately three months before our final written decision is due. Even considering the allegedly changed circumstances raised by Patent Owner, there is at least some persuasive evidence that delays are possible. In these circumstances, the efficiency and system integrity concerns that animate the Fintiv analysis are not as strong—all other things being equal. Accordingly, even if we were to consider Patent Owner’s new arguments, this factor still would be, at best, neutral to whether we should exercise our discretion to deny the Petition. For the same reasons, our analysis of Fintiv factor 5 also would remain unchanged.” slip op. at 7
Discretionary denialPatents in suitUS 7,076,431 - Flex Logix Technologies, Inc. v. Venkat KondaRehearing deniedPTAB · Sep 16, 2020 · IPR2020-00261 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, leaving institution of review of claims 1–7, 11, 15–18, 20–22, 32, and 47 in place.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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). Patent Owner, as the party challenging the Decisions, has the burden of showing that the Decisions should be modified. Id. When rehearing a decision on a petition, the Board reviews the decision for an abuse of discretion. Id. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of the law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- Expert testimonyPetitioner expert creditedDecided for petitioner
“in our Decision on Institution. In the Decision, we directly addressed Patent Owner’s arguments that Dr. Baker is not qualified to testify in this proceeding because he is neither a person of ordinary skill in the art, nor an expert in the relevant art. See Dec. 7–8. In particular, we explained that there is no requirement “that the expert’s experience perfectly match the relevant field, or that the expert is a person of ordinary skill in the art.” Id. at 7. We also explained that Dr. Baker testifies as to his education and qualifications and provides his curriculum vitae. See Ex. 1002 ¶¶ 3–12; Ex. 1003. At this preliminary stage, we cannot say that Dr. Baker’s scientific, technical, and other specialized knowledge will not be helpful in understanding the evidence. See Fed. R. Evid. 702(a). On this record, we are not persuaded that Dr. Baker’s testimony should be disregarded. Id. at 8. Therefore, even if Dr. Baker were not a person of ordinary skill in the art as Patent Owner contends, it does not follow that he is unqualified to testify in these proceedings. Nothing was misapprehended or overlooked in considering Dr. Baker’s testimony.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(Ex. 2001). In the Preliminary Response, Patent Owner cited the Konda Declaration when discussing the experience and qualifications of the named inventor of the ’523 patent. Prelim. Resp. 8–9. The education level of the inventor, however, is just one of several factors that we may consider in determining the level of ordinary skill in the art. See Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (enumerating six factors that “may be considered in determining the level of ordinary skill in the art” (quoting Evt’l Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696 (Fed. Cir. 1983))). And, as Patent Owner noted in the Preliminary Response, “these factors are merely a guide to determining the level of ordinary skill in the art.” Prelim. Resp. 7–8 (citing Daiichi Sankyo, 501 F.3d at 1256). In any event, in the Decision we also considered Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art, noted the differences between them, and stated that “[o]ur determination regarding Petitioner’s challenge does not turn on the differences between Petitioner’s and Patent Owner’s definitions.” Dec. 7. Therefore, our evaluation of Petitioner’s challenges and Dr. Baker’s testimony in support thereof would have been the same under Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art. See id. (“[W]e note that our conclusions would be same under either definition.”).” slip op. at 7
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot reached
“Moreover, in the Decision, we directly addressed Patent Owner’s argument with respect to whether the ’394 provisional and ’605 PCT provided support for the claim limitation “said routing network comprising a plurality of stages y, in each sub-integrated circuit block, starting from the lowest stage of 1 to the highest stage of y, where y≧1” when y=1. Dec. 14. In particular, we found that Patent Owner’s arguments, as we understand them, are directed only to the disclosure of a network with only one stage (y=1). [Prelim. Resp.] at 15–39. Patent Owner does not address the other limitations of claim 1, and does not point to any disclosures in the priority applications that describe a sub-integrated circuit block with only one stage that also comprises pluralities of forward connecting links and backward connecting links as required by claim 1. Id. Thus, we did not overlook Patent Owner’s arguments, but rather evaluated the disclosures in the ’394 provisional and ’605 PCT and determined, on the record at this stage of the proceeding, that they do not provide sufficient written description support for the challenged claims. The parties will have the opportunity to further develop the record on these issues during trial, and the Board will evaluate the fully-developed record at the close of the evidence. D. Public Availability of the ’394 provisional” slip op. at 9
§ 102 anticipation§ 112 disclosurePatents in suitUS 8,269,523 - Eli Lilly And Company v. Teva Pharmaceuticals International GmbHRehearing deniedPTAB · Feb 18, 2020 · IPR2018-01424 · APJ James A Worth · IPR · Rehearing
The Board denied Teva’s rehearing request, finding it had not misapprehended or overlooked arguments when it declined supplemental briefing on Arthrex and denied a stay.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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). A request for rehearing 2 For convenience, we refer herein to Papers and Exhibits filed in IPR2018-01422. Substantially the same documents have been filed in each of the captioned proceedings. 3 Patent Owner also requested Precedential Opinion Panel (POP) review of the requests for rehearing. See Ex. 3002; Req. Reh’g 3, 15. Patent Owner’s request for POP review has been denied. See Paper 77. “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. With this in mind, we address the arguments presented by Patent Owner. III.” slip op. at 2
- Other 314aOther
“overlooked that a brief stay until the Arthrex mandate issues will conserve agency resources, and will avoid taking further steps in this proceeding while an Appointments Clause violation still exists.” Req. Reh’g 5, 14–15. Regarding Patent Owner’s request for a stay of the proceedings, we disagree that we overlooked Patent Owner’s arguments. Instead, we note that except in cases involving the unique nature of the sovereign immunity right of the States, see, e.g., Taiwan Semiconductor Manufacturing Co. v. STC.UNM, IPR2019-01410, Paper 8 at 2–3 (PTAB Oct. 11, 2019) (cited by Patent Owner at Req. Reh’g 14–15), the Board generally declines to stay proceedings pending an appeal to the Federal Circuit or the Supreme Court. See, e.g., Askeladden LLC v. Purple Leaf, LLC, IPR2016-01720, Paper 22 at 2 (PTAB Sept. 11, 2017) (denying authorization to file a motion to stay pending the outcome of an appeal to the Supreme Court).4 The present proceedings simply do not fall within the narrow category of cases in which the Board generally entertains a stay pending Federal Circuit review.” slip op. at 3
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Not reached
“Teva authorization to file supplemental briefing addressing Arthrex and a motion to stay (Ex. 2274 at 1), the panel misapprehended or overlooked the limitations of [the] Arthrex remedy and the constitutional issues that remain to be addressed.” Req. Reh’g 5. We disagree that we overlooked Patent Owner’s argument in this regard. Instead, we declined to consider Patent Owner’s constitutional arguments, as the issue has been addressed by the Federal Circuit in Arthrex. See Ex. 2274, 1. Additional briefing from the parties was not necessary to come to the decision to decline consideration of these constitutional arguments.” slip op. at 3
Discretionary denialPatents in suitUS 9,346,881 - Valve Corporation v. Ironburg Inventions Ltd.Rehearing deniedPTAB · Oct 30, 2019 · IPR2017-01928 · APJ Mitchell G Weatherly · IPR · Rehearing
The Board denied Valve’s rehearing request, leaving claims 1–24 not shown unpatentable because Valve did not establish that Burns was a prior art printed publication.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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.” 37 C.F.R. § 42.71(d). Therefore, Valve must demonstrate that we misapprehended or overlooked matters previously argued and specifically identify the location in its papers at which it made the argument that we misapprehended or overlooked in order to justify modifying our Final Decision. It has failed to do so. Instead, Valve asks us to reconsider and reweigh evidence and” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“As explained in detail, in our Final Decision, we do not consider Exhibit 1003 to be the same as the document accessible using the 1 The cited pages of Exhibit 1040 (pp. 171–179) refer to a copy of the Burns article provided by the Examiner during prosecution of an unrelated but commonly owned patent that appears to have been retrieved from the “Wayback Machine” web archive. See Ex. 1040, 172 (referring to “WAYBACK MACHINE”). However, neither the cited pages nor the Examiner’s Notice of References Cited lists the Webarchive URL. See id. at 165, 171–179 (listing only URL to xboxer360.com domain as source of Burns article). Webarchive URL. Final Dec. 17–29. The URL listed on Exhibit 1003 refers to a URL on the xboxer360.com domain, not the Webarchive URL on the web.archive.org domain. Ex. 1003, 1–10. Contrary to Valve’s contentions otherwise, URLs are not prior art materials themselves, but merely addresses that might permit a user to access information via the internet. Valve also wholly fails to identify any specific argument or evidence that it advanced during the trial that we misapprehended or overlooked in reaching our decision on the issue of whether Valve had proven that Exhibit 1003 was a prior art printed publication.” slip op. at 4
- ExcludeNot reached
“Ironburg filed a Motion to Exclude Evidence (Paper 30, “Mot.” or “Motion”). Valve opposed the Motion (Paper 31, “Opp.” or “Opposition”). Ironburg filed a Reply in support of the Motion (Paper 32, “Mot. Reply”).” slip op. at 3
§ 102 anticipationPatents in suitUS 9,352,229 - Amazon.Com, Inc. v. M2m Solutions LLCRehearing deniedPTAB · Jun 6, 2019 · IPR2017-01892 · APJ David C Mckone · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no error in its claim construction and concluding that Kloba and Multer render claims 1–30 obvious.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS The burden of showing that the FWD should be modified is on Patent Owner, the party challenging the FWD. 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 in a motion, an opposition, or a reply.” Id.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“In any case, we agree with Petitioner that the language of the claims is clear. As we stated in the Final Written Decision, according to the plain language of claims 1 and 20, it is the communication of management instructions, not the management instructions themselves, that is based upon the results of processing at least some of the received consumer usage information. FWD 17–18. We maintain that conclusion here. The natural reading of the claim language (claim 1, for example) is that “managing” is “based upon the results of having processed at least some of the received consumer usage information” and that the managing is, in turn, accomplished “by sending communications containing management instructions that cause the stored data content files of one or more assets to be automatically modified.” It is the managing, and thus the sending of communications containing management instructions, that is based on the results of having processed consumer usage information, not the management instructions themselves. To the extent Patent Owner still argues that the management instructions themselves must be based on the results of having processed consumer usage information in order to accomplish the recited management, that is not recited in the claims. Rather, the only limitation placed on the “management instructions” by the plain language of the claims is that they “cause the stored data content files of one or more assets to be automatically modified.”” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Ex. 1015, 20:11–21. We found that this teaches communicating management instructions “based upon the results of processing at least some of the received consumer usage information,” as recited in claim 1. FWD 53 (“The server communicates its single set of instructions to the client as a result of processing all of the information it receives in the single-up transmission from the client. This includes deltas, requests for new channels, and changes to preferences.”); see also Ex. 1015, 8:7–19. This finding applies equally under Patent Owner’s new proposed construction, namely, “the server’s determination to communicate the claimed management instruction(s) in particular as part of a transmission sent to at least one consumer device asset is what needs to be ‘based upon the results of processing at least some of the received consumer usage information.’” PO CC Br. 4 (emphasis omitted). Specifically, the decision to communicate synchronization information (including deltas and new channels) from the server to the client is based, in part, on the server’s synchronization of the client’s channel information (including deltas and new channels) with the providers of the channels, which involves processing the requests for new channels and changes to preferences. Ex. 1015, 8:7–19, 20:1–21. Thus, Kloba and Multer (US 6,671,757 B1, Ex. 1016) render claims 1 and 20 obvious even under Patent Owner’s new proposed construction.” slip op. at 16
Claim construction§ 103 obviousnessPatents in suitUS 8,577,358 - Apple Inc. v. Voip-Pal.Com, Inc.Rehearing deniedPTAB · May 24, 2019 · IPR2016-01198 · APJ Scott R Boalick · IPR · Rehearing
The Board denied Apple’s rehearing request, leaving intact the finding that challenged claims of the ’005 and ’815 patents were not shown obvious over the asserted combinations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“At the outset, we note that in a request for rehearing we do not review the merits of the Final Written Decision de novo. Instead, we consider whether Petitioner has met its burden of showing that a matter has been misapprehended or overlooked in the Final Written Decision. 37 C.F.R. § 42.71(d) (“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.”). We conclude that Petitioner has not met this burden in its Request for Rehearing.” slip op. at 2
- Expert testimonyPatent owner expert creditedDecided for patent owner
“view of Chu ’684. See Reh’g Opp’n 7–10 (relying on its declarant to argue that Chu ’684 does not operate as asserted by Petitioner, undermining Petitioner’s justification for the combination); PO Resp. 70 (citing Ex. 2016 ¶ 66). Petitioner contends that Dr. Mangione-Smith’s testimony did not address the asserted combination and therefore provided no need for a reply declaration. Reh’g Reply 7–8. We do not agree with Petitioner’s position, for the reasons stated above. Petitioner does not raise any basis on which we should discount the panel’s reliance on Dr. Mangione-Smith’s testimony regarding the reason to combine.7 We conclude that the panel did not misapprehend Chu ’684’s operation when it concluded that the Petition failed to show Chu ’684 is deficient and ripe for improvement. Instead, it resolved a factual dispute in Patent Owner’s favor based on record evidence.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“view of Chu ’684. See Reh’g Opp’n 7–10 (relying on its declarant to argue that Chu ’684 does not operate as asserted by Petitioner, undermining Petitioner’s justification for the combination); PO Resp. 70 (citing Ex. 2016 ¶ 66). Petitioner contends that Dr. Mangione-Smith’s testimony did not address the asserted combination and therefore provided no need for a reply declaration. Reh’g Reply 7–8. We do not agree with Petitioner’s position, for the reasons stated above. Petitioner does not raise any basis on which we should discount the panel’s reliance on Dr. Mangione-Smith’s testimony regarding the reason to combine.7 We conclude that the panel did not misapprehend Chu ’684’s operation when it concluded that the Petition failed to show Chu ’684 is deficient and ripe for improvement. Instead, it resolved a factual dispute in Patent Owner’s favor based on record evidence.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“testimony by Dr. Mangione-Smith—when rejecting Petitioner’s view of the prior art and reason for the combination. See FWD 19 (citing Ex. 2016 ¶¶ 65–67); Reh’g Opp’n 6. Thus, when the panel concluded that Petitioner had not shown that Chu ’684’s method would apply to a number reformatted by the secondary references (see FWD 22–23), it relied on record evidence supporting its conclusion. We determine that the panel did not misapprehend the nature of the proposed combination; rather, based on the record, it resolved a factual dispute and concluded that Petitioner failed to show the proposed combination would operate as asserted.” slip op. at 5
§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,179,005 - GN Hearing A/S v. Oticon A/SRehearing deniedPTAB · Apr 16, 2019 · IPR2017-01927 · APJ Terrence W Mcmillin · IPR · Rehearing
The Board denied Oticon’s rehearing request, leaving claims 2 and 7 unpatentable based on the Dodge and Saltykov showing.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Decision is set forth in 37 C.F.R. § 42.71(d), which provides that 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, or a reply.” The party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“presented earlier in this proceeding—the Board improperly relied on a combination of the embodiments of Dodge. Request 2 (“The Board misapprehended the disclosure of various embodiments in Dodge and overlooked the complete lack of a motivation for the new combination of Dodge’s various embodiments.”), 4–5 (“The Board misapprehended the disclosure of Dodge and overlooked the lack of support in the record for a combination of multiple embodiments in Dodge’s figures.”), 6 (“There is no embodiment in Dodge that includes both a smooth, gradual curve on the first surface and an edge with a cross-sectional angle of less than ninety degrees.”), 12 (“The record is devoid of any support for an alleged combination of Dodge’s various embodiments.”). In its Request, Patent Owner fails to show that the Board misapprehended or overlooked these arguments earlier in the course of this proceeding. See generally Request. To the contrary and as noted above, Patent Owner failed to address the teachings of Figures 3 and 4 of Dodge and failed to address the combination of the teachings of the embodiments shown in those figures with the other teachings and embodiments in Dodge. Instead, Patent Owner ignored Figures 3 and 4 of Dodge in its Response to the Petition (see Paper 10, 29–34) and never contended it was improper to rely on Figures 3, 4, 5, and 6 of Dodge for teaching the elements of claims 2 and 7, as Petitioner did in its Reply (see Paper 14, 24–26) and the Board did in its Institution Decision (see Paper 7, 25–27). Patent Owner had notice that Figures 3 and 4 (and Figures 5 and 6) of Dodge were being relied upon and cited against claims 2 and 7 and, as also noted above, was given an opportunity file a Sur-Reply. In its Sur-Reply, Patent Owner acknowledged that Figures 3, 4, 5, and 6 of Dodge were being relied upon and cited against claims 2 and 7, but failed to provide any argument as to why Figures 3, 4, 5, and 6 of Dodge when considered together did not teach or suggest all the limitations relating to the claimed slit configuration. Paper 21, 23. At this stage of these proceedings, it is too late for Patent Owner to introduce and rely on new arguments.” slip op. at 6
§ 103 obviousnessPatents in suitUS 8,494,204
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.