- Apple Inc. v. THL Holding Company, LLCRehearing deniedPTAB · Sep 27, 2024 · IPR2024-00399 · APJ Christopher M Kaiser · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no abuse of discretion in instituting review of claims 1–19 despite the later disclaimer of claims 1–10.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“be treated as never having existed, and because claim 1 is the only claim on which Petitioner has shown a reasonable likelihood of prevailing, we should overturn our decision instituting review. As noted above, when rehearing a decision on petition, we review the decision for an abuse of discretion, and an abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” 37 C.F.R. § 42.71(c); PPG Indus. Inc., 840 F.2d at 1567. But Patent Owner has not explained how we erred in any way in reaching our decision instituting review. Instead, Patent Owner’s argument is new and was not presented previously, and Patent Owner bases its rehearing argument on circumstances having changed since we issued our decision. Req. Reh’g 4 (stating statutory disclaimer was “filed following, and in view of, the Board’s guidance in the [decision on institution]”). For this reason, the Rehearing Request does not “identify [any] matters [Patent Owner] believes [we] misapprehended or overlooked,” nor does it “identify . . . 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). For this reason, we deny Patent Owner’s Request for Rehearing. In addition, we note that statutory disclaimers are “considered as part” slip op. at 4
- Adverse judgmentOther
“proposition that “[c]laims disclaimed under § 253(a) are treated as though they never existed.” Prelim. Resp. 3 (citing Vectra Fitness, 162 F.3d at 1383; Guinn, 96 F.3d at 1422). Neither Guinn nor Vectra Fitness involved a situation in which a determination about the patent, once made, was required to be unwound in light of a subsequent statutory disclaimer. Instead, Vectra Fitness related to a question of how to resolve post-disclaimer proceedings, and Guinn dealt with whether to apply a rule treating the disclaimer of all claims involved in an interference proceeding as a request for adverse judgment against the disclaiming party. Vectra Fitness, 162 F.3d at 1381 (disclaimer filed Feb. 16, 1990; reissue application at issue filed May 9, 1991; reissue patent issued Mar. 29, 1994; infringement suit filed Dec. 4, 1996); Guinn, 96 F.3d at 1420–21. In fact, contrary to the result that Patent Owner urges here of reversing our institution of review, Guinn held that it was appropriate to resolve an interference even after all the involved claims had been disclaimed. 96 F.3d at 1422 (“We hold that the Board had the authority and the responsibility pursuant to 35 U.S.C. § 135(a) to resolve the interference and render judgment against Guinn as a result of his disclaimer of claim 9 of the ’812 patent.”).” slip op. at 5
NonePatents in suitUS 11,350,246 - Askeladden, L.L.C. v. Ohva, Inc.Rehearing grantedPTAB · Mar 15, 2024 · IPR2023-00921 · APJ Amee A Shah · IPR · Rehearing
Granted petitioner’s rehearing request and instituted IPR of claims 1–4 on all asserted grounds, finding a reasonable likelihood of prevailing based on the preliminary construction of “transaction data.”
RulingsRehearing decision- RehearingRehearing, grantedGranted
“institute has the burden of showing the decision should be modified, and the 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 its papers. 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Id. § 42.71(c).” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“Although the ’286 patent distinguishes “account data” from “transaction data” in the embodiment of Figure 11, the “transaction data” is submitted by the user to perform a series of banking transactions after manually entering a PIN code, whereas the “account data” is stored on the server, and the token information is accepted from the smart card’s embedded token, i.e., the output interface of the transaction card. See Ex. 1001, 10:12–18, 10:30–35, 10:40–42, 11:21–22, 11:65–12:4, 12:22–36. Thus, the claimed “transaction data” that is “accepted . . . from an output interface of a transaction card” and “accepted . . . from a transaction card at an input interface of the card reader,” as recited in independent claims 1 and 3, comprises data stored on and read from a card, such as an ID number, password, authentication information, or session information, that can be used to facilitate a transaction. Such claimed “transaction data” is distinct from the “transaction data” described in connection with the Figure 11 embodiment. We therefore do not limit the claimed “transaction data” and instead preliminarily construe that term as encompassing any data involved in a transaction, including account data. As described above, the claimed transaction data must come from the output interface of a transaction card. Should either party believe that a different construction should apply in the instituted trial, it should explain the proposed construction, how the construction is supported by the record, and how the construction affects our unpatentability analysis.” slip op. at 8
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateInstituted
“The dispute relates to whether the ’030 application describes the claimed “smart telephone” accepting transaction data and executing coded instructions to convert the analog signal to digital data representing transaction data as digital data. See Pet. 14–15, 19–27. In Petitioner’s view, that term is supported only by language added to the “Brief Summary of the Invention” during prosecution of the application resulting in the ’286 patent. Id. at 17. In contrast, argues Petitioner, the corresponding section of the ’030 application instead describes transmitting sound to a PC, not a smart telephone. Id. at 19–26. Patent Owner submits that the ’030 application describes generating sounds from a smart phone and using a “key jack sound pass generator” to communicate sounds. Prelim. Resp. 16. Patent Owner contends that the claim language is supported by disclosure of receiving the audio signal at a microphone port and converting the signal to transaction data. Id. at 16–18. Patent Owner points also to description of direct communication between a “client device” and server. Id. at 19. On the present record, we find that Petitioner, at this stage in the proceeding, has shown sufficiently how it contends that the earliest possible effective filing date for claims 1–4 of the ’286 patent is March, 3, 2015, such that the Cho, Aaron, Carpenter, and de Geer references qualify as prior art. Patent Owner has identified a factual dispute regarding the significance of the ’030 application’s disclosures, and we view that dispute as best resolved through trial.” slip op. at 9
- PTAB / AIA Trials › Real party in interest / privityDecided for petitioner
“35 U.S.C. § 312(a)(2) provides that one of the “Requirements of Petition” is that “the petition identifies all real parties in interest.” “Whether a non-party is a RPI is a ‘highly fact-dependent question’ and must be considered on a case-by-case basis.” SharkNinja Operating LLC. v. IROBOT Corp., No. IPR2020-00735, 2020 WL 6050687, at *4 (PTAB Oct. 13, 2020) (precedential) (citing Ventex Co. v. Columbia Sportswear N. Am., Inc., IPR2017-00651, Paper 148 at 6 (PTAB Jan. 24, 2019) (Paper 148) (precedential) (citing Office Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012))). Here, addressing whether TCH is an unnamed RPI would not create a time bar or estoppel under 35 U.S.C. § 315. There is no allegation or evidence that TCH is “barred or estopped from this proceeding or that Petitioner purposefully omitted [TCH] to gain some advantage.” SharkNinja at *4. Rather, Patent Owner argues that for “once again willfully fail[ing] to identify TCH as a real party in interest, . . . the Petition should be denied on that basis.” Prelim. Resp. 7. In other words, Patent Owner contends only that we deny institution because of “the alleged failure of a procedural requirement that can be corrected under our precedent.” SharkNinja at *4. We understand that” slip op. at 11
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialPatents in suitUS 9,679,286 - PTAB · Apr 7, 2022 · PGR2021-00030 · APJ Sheridan K Snedden · PGR · Rehearing
Granted Petitioner’s rehearing request and instituted PGR on claims 1–5, 9, and 10 based on the more-likely-than-not enablement showing and efficiency considerations.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“As acknowledged by both Petitioner and Patent Owner, this proceeding and PGR2021-00042 involve essentially identical issues. See 6 Reh’g Req. 15; Prelim. Resp. 19 n.3. In particular, we note that claims 6–8 of the ’039 patent challenged in PGR2021-00042 depend from claim 1 of the ’039 patent challenged in this proceeding, and are challenged under essentially identical written description, enablement and prior art issues. Reh’g Req. 15. Thus, our decision to institute post-grant review in PGR2021-00042 effectuates our review of issues almost identical to those in this proceeding. Petitioner further argues that this proceeding and PGR2021-00042 involve related issues, and that “considerations of efficiency . . . therefore counsel in favor of the Board reviewing the patentability of claims 1–5, 9, and 10 of the ’039 patent as well.” Id. We agree with Petitioner that, because we are to review practically the same issues of this proceeding in PGR2021-00042, considerations of efficiency (i.e., efficient use of the Board’s resources) strongly weigh in favor of also instituting trial in this proceeding. See Reh’g Req. 15. Considering all the factors together as a whole, we determine that, under the particular circumstances of this case, the interests of efficiency and integrity of the patent system weigh against exercising discretionary denial under § 324(a). Accordingly, we grant Petitioner’s Request for Rehearing and decline to exercise our discretion to deny institution. We consider the merits of the Petition with respect to the threshold for institution below.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“3. Analysis “[T]o be enabling, the specification of a patent must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation.’” Genentech Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997) (quoting In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993)) (alteration in original). “The enablement requirement ensures that the public knowledge is enriched by the patent specification to a degree at least commensurate with the scope of the claims. The scope of the claims must be less than or equal to the scope of the enablement. The scope of enablement, in turn, is that which is disclosed in the specification plus the scope of what would be known to one of ordinary skill in the art without undue experimentation.” National Recovery Techs. Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1195–96 (Fed Cir. 1999). [Although] a specification need not disclose what is well known in the art . . . , that general, oft-repeated statement is merely a rule 24 of supplementation, not a substitute for a basic enabling disclosure. . . . [W]hen there is no disclosure of any specific starting material or of any of the conditions under which a process can be carried out, undue experimentation is required; there is a failure to meet the enablement requirement that cannot be rectified by asserting that all the disclosure related to the process is within the skill of the art. It is the specification, not the knowledge of one skilled in the art, that must supply the novel aspects of an invention in order to constitute adequate enablement. Genentech Inc., 108 F.3d at 1366. Having considered the parties’ positions and evidence of record, summarized above, we determine that Petitioner has established that it is more likely than not that claims 1–5, 9, and 10 of the ’039 patent lack enablement. In particular, we are persuaded based on the record at this stage of the proceeding that the Specification does not enable the full scope of the claims. The Specification focuses on dolastatin/auristatin derivatives and does not describe novel ADCs having non-dolastatin/auristatin derivative drug moieties. Ex. 1001, Abstract. For example, the Specification states that “there is a clear need in the art for dolastatin/auristatin derivatives having significantly lower toxicity, yet useful therapeutic efficiency [sic]” and purports that “[t]hese and other limitations and problems of the past are addressed by the present invention.” Id. at 4:25–29 (emphasis added). Moreover, each embodiment, example, figure, and assay disclosed in the Specification appears to use a drug moiety that is a dolastatin/auristatin derivative. See, e.g., Ex. 1001, Abstract, 4:22–29, 50:56–52:30, 71:19–22, 131:23–48, Figs. 1–19, Examples 2–16. Claim 1, however, recites ADCs” slip op. at 24
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“As acknowledged by both Petitioner and Patent Owner, this proceeding and PGR2021-00042 involve essentially identical issues. See 6 Reh’g Req. 15; Prelim. Resp. 19 n.3. In particular, we note that claims 6–8 of the ’039 patent challenged in PGR2021-00042 depend from claim 1 of the ’039 patent challenged in this proceeding, and are challenged under essentially identical written description, enablement and prior art issues. Reh’g Req. 15. Thus, our decision to institute post-grant review in PGR2021-00042 effectuates our review of issues almost identical to those in this proceeding. Petitioner further argues that this proceeding and PGR2021-00042 involve related issues, and that “considerations of efficiency . . . therefore counsel in favor of the Board reviewing the patentability of claims 1–5, 9, and 10 of the ’039 patent as well.” Id. We agree with Petitioner that, because we are to review practically the same issues of this proceeding in PGR2021-00042, considerations of efficiency (i.e., efficient use of the Board’s resources) strongly weigh in favor of also instituting trial in this proceeding. See Reh’g Req. 15. Considering all the factors together as a whole, we determine that, under the particular circumstances of this case, the interests of efficiency and integrity of the patent system weigh against exercising discretionary denial under § 324(a). Accordingly, we grant Petitioner’s Request for Rehearing and decline to exercise our discretion to deny institution. We consider the merits of the Petition with respect to the threshold for institution below.” slip op. at 6
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Instituted
“skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation.’” Genentech Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997) (quoting In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993)) (alteration in original). “The enablement requirement ensures that the public knowledge is enriched by the patent specification to a degree at least commensurate with the scope of the claims. The scope of the claims must be less than or equal to the scope of the enablement. The scope of enablement, in turn, is that which is disclosed in the specification plus the scope of what would be known to one of ordinary skill in the art without undue experimentation.” National Recovery Techs. Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1195–96 (Fed Cir. 1999). [Although] a specification need not disclose what is well known in the art . . . , that general, oft-repeated statement is merely a rule 24 of supplementation, not a substitute for a basic enabling disclosure. . . . [W]hen there is no disclosure of any specific starting material or of any of the conditions under which a process can be carried out, undue experimentation is required; there is a failure to meet the enablement requirement that cannot be rectified by asserting that all the disclosure related to the process is within the skill of the art. It is the specification, not the knowledge of one skilled in the art, that must supply the novel aspects of an invention in order to constitute adequate enablement. Genentech Inc., 108 F.3d at 1366.” slip op. at 24
Claim construction§ 102 anticipation§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 10,808,039 - Google LLC v. Ikorongo Technology LLC And Ikorongo Texas LLCRehearing grantedPTAB · Jan 25, 2022 · IPR2021-00205 · APJ Bryan F Moore · IPR · Rehearing
The Board granted Google's rehearing request and instituted IPR on claims 5–7, 9–12, 21–23, 25–28, 37, and 39–42 on all petitioned grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Circuit directed the WDTX to transfer the district court cases to the NDCA [Northern District of California] (Ex-1023 at 16) . . . the cases against LGE and Samsung will be given a new case schedule in the NDCA, delaying not only the trial date but the overall investment in the case by both the parties and the court.” Request 5. We agree. In fact, the cases in NDCA are currently stayed pending an appeal of the Federal Circuit’s Decision. Ex. 3003. In weighing the Fintiv factors, we relied on the involvement of the ’554 patent in the WDTX cases as the basis for our weighing four of six factors and for our holistic assessment of the factors in favor of our exercising our discretion to deny institution. DDI 7–13. However, the WDTX cases no longer provide any basis for exercising our discretion to deny institution.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“3 In assessing whether to exercise such discretion, the Board weighs the following factors: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11 at 6–7. Circuit directed the WDTX to transfer the district court cases to the NDCA [Northern District of California] (Ex-1023 at 16) . . . the cases against LGE and Samsung will be given a new case schedule in the NDCA, delaying not only the trial date but the overall investment in the case by both the parties and the court.” Request 5. We agree. In fact, the cases in NDCA are currently stayed pending an appeal of the Federal Circuit’s Decision. Ex. 3003. In weighing the Fintiv factors, we relied on the involvement of the ’554 patent in the WDTX cases as the basis for our weighing four of six factors and for our holistic assessment of the factors in favor of our exercising our discretion to deny institution. DDI 7–13. However, the WDTX cases no longer provide any basis for exercising our discretion to deny institution.” slip op. at 7
- Parallel petitionsDecided for petitioner
“should exercise its discretion under § 314(a) to deny at least one of Petitioner’s two overlapping petitions. Petitioner concurrently filed two petitions against the ’554 patent: IPR2021-00204 (Petition 1) and IPR2021- 00205 (Petition 2).” Prelim. Resp. 18. Petitioner contends “Petition 2 challenges only claims with an admitted later priority date . . . [and n]one of the claims challenged in Petition 2 are addressed in Petition 1. The two” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“E. Obviousness Analysis We determine that Petitioner has shown a reasonable likelihood of establishing the obviousness of the limitations of claim 1 and of claim 5 (which includes the limitations of claim 1) and, on that basis, institute inter partes review of all the Challenged Claims. See 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims.”). Although dependent claim 5 is the first Challenged Claim in the Petition, we begin our analysis thereof by analyzing its underlying base claim, namely, independent claim 1.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,874,554 - Google LLC v. Ikorongo Technology LLC And Ikorongo Texas LLCRehearing grantedPTAB · Jan 25, 2022 · IPR2021-00204 · APJ Bryan F Moore · IPR · Rehearing
The Board granted rehearing and instituted IPR on claims 1–4, 8, 17–20, 24, 33–36, and 38 on all petition grounds, finding a reasonable likelihood of obviousness.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“as our basis for exercising our discretion to deny institution are no longer in the Western District of Texas. Ex. 1023, 16; Ex. 3003. In the Request for Rehearing, Petitioner argues that (at that time), “[b]ecause the Federal Circuit directed the WDTX to transfer the district court cases to the NDCA [Northern District of California] (Ex-1023 at 16) . . . the cases against LGE and Samsung will be given a new case schedule in the NDCA, delaying not 3 In assessing whether to exercise such discretion, the Board weighs the following factors: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11 at 6. only the trial date but the overall investment in the case by both the parties and the court.” Request 5. We agree. In fact, the cases in NDCA are currently stayed pending an appeal of the Federal Circuit’s Decision. Ex. 3003. In weighing the Fintiv factors, we relied on the involvement of the ’554 patent in the WDTX cases as the basis for our weighing four of six factors and for our holistic assessment of the factors in favor of our exercising our discretion to deny institution. DDI 7–13. However, the WDTX cases no longer provide any basis for exercising our discretion to deny institution.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“3 In assessing whether to exercise such discretion, the Board weighs the following factors: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11 at 6. only the trial date but the overall investment in the case by both the parties and the court.” Request 5. We agree. In fact, the cases in NDCA are currently stayed pending an appeal of the Federal Circuit’s Decision. Ex. 3003. In weighing the Fintiv factors, we relied on the involvement of the ’554 patent in the WDTX cases as the basis for our weighing four of six factors and for our holistic assessment of the factors in favor of our exercising our discretion to deny institution. DDI 7–13. However, the WDTX cases no longer provide any basis for exercising our discretion to deny institution.” slip op. at 7
- Parallel petitionsDecided for petitioner
“B. Multiple Petitions In its Preliminary Response, Patent Owner also argues “[t]he Board should exercise its discretion under § 314(a) to deny at least one of Petitioner’s two overlapping petitions. Petitioner concurrently filed two petitions against the ’554 patent: IPR2021-00204 (Petition 1) and IPR2021- 00205 (Petition 2).” Prelim. Resp. 17. Petitioner contends “Petition 2 challenges only claims with an admitted later priority date . . . [and n]one of the claims challenged in Petition 2 are addressed in Petition 1. The two petitions therefore differ materially both in substance and in the defenses Patent Owner may potentially raise, and were needed to comply with the word limits.” Paper 3, 3. Patent Owner argues this reason is moot because Patent Owner “has opted to not raise a priority dispute at the pre-institution stage.” Prelim Resp. 18–20. We determine that Patent Owner may raise a priority challenge post-institution so Petitioner’s reason for two petitions is still valid. Thus, we determine that denial of one of the two petitions is not appropriate in this case.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We are also guided by the principle that we need only construe claim terms if, and to the extent that, it is necessary for the purpose of the proceeding. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). The Petition states, “[n]o claim terms need to be construed by the Board at this time.” Pet. 6. Patent Owner “does not propose any claim constructions.” Prelim. Resp. 21. Petitioner does present an implied construction of “location information” which we discuss below, in Section III.E.1.d., in association with Petitioner’s contentions regarding that claim term. Nevertheless, in this Decision, we give the claim terms their ordinary and customary meanings.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,874,554 - PTAB · Nov 17, 2021 · IPR2021-00544 · APJ Terrence W Mcmillin · IPR · Rehearing
Rehearing was granted and review instituted on all challenged claims and grounds after the Board found the ITC target date made Fintiv factor 2 neutral and Petitioner’s broadened stipulation favored institution.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Institution stated, “[t]he evidentiary hearing in the ITC investigation is scheduled to begin January 5, 2022, and the final determination is due April 29, 2022.” DDI 9 (citing Ex. 2004, 5; emphasis added). Petitioner is correct that the statement did not correctly state the target date for the ITC’s final determination. According to the Adopted Procedural Schedule for the ITC Investigation, the “Final ID” is due April 29, 2022, and the “Target Date” is August 29, 2022. Ex. 2004, 5. We agree that the ITC’s target date for final determination is more appropriate for evaluating Fintiv factor 2, consistent with the Board’s prior decisions. See Request 2–3 (identifying numerous proceedings). Applying the August 29, 2022, date, we conclude that Fintiv factor 2 is neutral in this proceeding, because of the close proximity between the ITC’s target final determination and our expected final written decision based on the mailing date of this Decision.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied discretionary otherDecided for petitioner
“Institution stated, “[t]he evidentiary hearing in the ITC investigation is scheduled to begin January 5, 2022, and the final determination is due April 29, 2022.” DDI 9 (citing Ex. 2004, 5; emphasis added). Petitioner is correct that the statement did not correctly state the target date for the ITC’s final determination. According to the Adopted Procedural Schedule for the ITC Investigation, the “Final ID” is due April 29, 2022, and the “Target Date” is August 29, 2022. Ex. 2004, 5. We agree that the ITC’s target date for final determination is more appropriate for evaluating Fintiv factor 2, consistent with the Board’s prior decisions. See Request 2–3 (identifying numerous proceedings). Applying the August 29, 2022, date, we conclude that Fintiv factor 2 is neutral in this proceeding, because of the close proximity between the ITC’s target final determination and our expected final written decision based on the mailing date of this Decision.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Summary as to Claim 1 Petitioner has shown a reasonable likelihood of showing that claim 1 of the ’423 patent would have been obvious in view of the combined teachings of Jeon, Everett, and Abramson. 5. Claims 2–4, 6–10, 12–15, 18–23, 25, and 26 Petitioner also contends that claims 2–4, 6–10, 12–15, 18–23, 25, and 26 would have been obvious in view of a combination of the asserted references. See Pet. 26–80. As noted previously, Patent Owner does not address the merits of any portion of the Petitioner’s obviousness showing. See generally Prelim. Resp. Thus, at this stage, Petitioner’s obviousness showing as to claims 2–4, 6–10, 12–15, 18–23, 25, and 26 is undisputed. We have determined that there is a reasonable likelihood that the Petitioner will prevail with respect to at least one of the claims challenged in the Petition pursuant to 35 U.S.C. § 314 and that inter partes review should be instituted. Accordingly, we institute as to all the challenged claims and all the challenges raised in the Petition. SAS Institute Inc. v. Iancu, 138 S.Ct. 1348, 1358 (2018); 37 C.F.R. §42.108 (a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). III. CONCLUSION Petitioner has persuaded us that rehearing is appropriate and we grant the Request for Rehearing. After reconsidering our discretionary denial of the Petition, we determine that discretionary denial is inappropriate. And, we determine that Petitioner has demonstrated a reasonable likelihood of showing at least one of the claims challenged in the Petition would have been obvious. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Request for Rehearing is granted; FURTHER ORDERED that an inter partes review is instituted on all challenged claims under all challenged grounds; and FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter partes review of the ʼ423 patent is hereby instituted commencing on the entry date of this Decision, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial.” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“With regard to combining the relevant teachings of Jeon and Everett relating to this limitation, the Petition states: It would have been obvious to combine this well-known, reduced base station approach velocity with [ ]Jeon . . . Doing so is nothing more than substituting a known feature (e.g., Everett’s reduced base station approach velocity) in an existing system ([ ]Jeon’s robot cleaner) according to known methods (e.g., function of stand-off distance) to achieve a predictable result (avoiding collision with and/or increased maneuverability for accurate alignment with the base station). Id.; KSR, 550 U.S. at 416-418. Selecting a reduced base station approach velocity is a known, obvious, trivial selection from a limited number of options (increasing, decreasing, or maintaining velocity). Likhachev, ¶ 82. Given the benefits of reducing the velocity (e.g., avoiding collision and/or increased maneuverability), to the extent not already understood from [ ]Jeon and the knowledge of a skilled artisan, a skilled artisan would have found it obvious to try reducing the base station approach velocity of [ ]Jeon’s robot cleaner as taught by Everett. Id.; KSR, 550 U.S. at 421. Pet. 19–20. At least at this stage of the proceedings, we determine that Petitioner provides sufficient rationale for combining the relied upon teachings of Jeon and Everett. We determine that, for purposes of institution, Petitioner has shown sufficiently that the cited art teaches this limitation.” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,884,423 - Energysource Minerals, LLC v. Terralithium LLCRehearing deniedPTAB · Aug 26, 2021 · IPR2019-01603 · APJ Hubert C Lorin · IPR · Rehearing
The Board denied EnergySource’s rehearing request, finding no overlooked or misapprehended arguments or evidence that warranted changing the final written decision on claims 1–18.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A request for rehearing must identify specifically all matters that the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 3
- BurdenNot shown unpatentable
“In that regard, Petitioner contends that Christopher’s “aging process resulted in a reduction in ‘at least one elemental component’ (i.e., silica).” Pet. Reply 5–6 (emphasis added). However, this is not buttressed with any evidence. Petitioner has not presented any evidence showing Christopher’s “aging” process reduces “the concentration of at least one … elemental component” to support its contention that Christopher’s brine of Table 1 is a “treated” brine as claimed. Accordingly, on this record, Petitioner has not shown that the “treated” brine of the claims reads on Christopher’s “aged” brine by a preponderance of the evidence.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable
“The Petition discusses Grounds I and II on pages 27–30 of the Petition. Ground I challenges the patentability of claims 1–20 as anticipated by Christopher and Ground II challenges the patentability of claims 1–20 as anticipated and/or obvious over Christopher. Reading pages 27–30 it is plainly evident that it is focused on making the case that Christopher discloses all that is claimed. It is devoid of any reasoning with respect to the obviousness of the claims over Christopher. The Graham factors are not addressed. See Graham v. John Deere Co., 383 U.S. 1 (1966). The differences between the claimed invention and Christopher are not identified and no rationale as to why one of ordinary skill would have been led to modify Christopher to reach the claimed subject matter is provided. Rather, the entire discussion goes to explaining why, in fact, Christopher discloses all that is claimed. The Board was consistent with that position. Petitioner cites page 12–14 of the Reply as evidence that an obviousness challenge was presented. We disagree. The Reply does not add anything significant to the obviousness challenge presented in the Petition. The Reply is likewise devoid of any reasoning with respect to the obviousness of the claims over Christopher. It repeats that “Christopher teaches using air oxidation and pH modification to selectively precipitate silica, iron, and other heavy metals from a Salton Sea geothermal brine” (Reply 13, emphasis added), where “a POSITA could readily ‘tune’ these parameters to produce the desired results if such were not obtained immediately.” Id. The Board addressed that argument. See Dec. 17.” slip op. at 14
- Expert testimonyOther
“Petitioner cites footnote 3 [sic. 1] in the Petition but it merely states “mg/kg=(g/L*1000)/1.18kg/L due to the density of Salton Sea geothermal brines.” There is no evidence cited to support it. Petitioner cites “Reply, 3; Ex. 2025, 337:5-9” and “337:5-13” (Req. 6) but the Reply does not cite to those lines in Dr. Gallup’s Declaration. See Pet. Reply 3 (“Ex. 2025, 336:3-5-337:2”). We were unable to locate these lines of testimony in the Reply. The Board could not have misapprehended or overlooked evidence demonstrating Petitioner’s 1.18 kg/L density that was not before it.” slip op. at 11
§ 103 obviousnesscites GrahamPatents in suitUS 9,644,126 - Energysource Minerals, LLC v. Terralithium LLCRehearing deniedPTAB · Aug 26, 2021 · IPR2019-01602 · APJ Hubert C Lorin · IPR · Rehearing
The Board denied EnergySource Minerals’ rehearing request, leaving undisturbed the final written decision that claims 1–18 were not shown unpatentable on any asserted ground.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A request for rehearing must identify specifically all matters that the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 3
- Expert testimonyPatent owner expert creditedDecided for patent owner
“to ppm by weight” (Req. 8) was not before us, therefore, we could not have overlooked it. Nevertheless, even if we take account of this new argument, the discussion on page 4 of the Reply does not support Petitioner’s position that one ordinary skill in the art reading Christopher would have no other choice but to understand “1.0” “PPM” (Ex. 1006, 42) to mean parts–per– weight. This is so because Petitioner concedes that “ppm can generally be reported as either by weight or by volume.” Req. 8. This is consistent with Dr. Gallup’s testimony. See Dec. 18: According to Patent Owner, “Dr. Gallup explained [that] ppm may be reported as ppm by weight or ppm by volume. (Ex. 2025, 119:16-25; Ex. 2002, ¶64).” Id. [PO Resp. 20] Because we are directed to no evidence contradicting it, we credit Dr. Gallup’s testimony that ppm can be reported by weight or by volume. Given this, one of ordinary skill in the art reading that iron is at a concentration of “1.0 ppm” for stream 3 in Figure 20 may understand it to refer to ppm by volume. Notwithstanding the discussion on page 4 of the Reply that the “general convention” for ppm is that it is weight based, the evidence before us showed, as Petitioner concedes, that ppm can “generally be reported” (Req. 8) by weight or volume. Thus, as we determined, it is possible that one of ordinary skill in the art may understand “ppm” in Figure 20 to “refer to ppm by volume” (Dec. 18).” slip op. at 12
- Strike new argumentNew argument disregardedOther
“Regarding Petitioner’s assertion that “[d]uring these proceedings, Petitioner has submitted that when Christopher reduces silica, it necessarily also reduces the elemental components of silicon (Si) and oxygen (O2)” (Req. Sur–Reply 1), this is not a position that Petitioner had previously taken. Rather, Petitioner’s position was only that “Christopher states the silica concentration is reduced.” Pet. 23; cf. Pet. Reply 8–9. A rehearing request is not an opportunity to raise new arguments. We could not have overlooked or misapprehended an argument not raised prior to our decision.” slip op. at 6
- BurdenNot shown unpatentable
“brine (Pet. 22; Dec. 7), Petitioner had to show that “the brine of Table 1 must ‘have been processed such that the concentration of at least one metal or elemental component has been reduced in the brine.’ Ex. 1001, 7:18–21.” Dec. 9 (emphasis added). As noted in our Decision: In that regard, Petitioner contends that Christopher’s “aging process resulted in a reduction in ‘at least one elemental component’ (i.e., silica).” Pet. Reply 6 (emphasis added). However, this is not buttressed with any evidence. Petitioner has not presented any evidence showing Christopher’s “aging” process reduces “the concentration of at least one … elemental component” to support its contention that Christopher’s brine of Table 1 is a “treated” brine as claimed. Accordingly, on this record, Petitioner has not shown that the “treated” brine of the claims reads on Christopher’s “aged” brine by a preponderance of the evidence.” slip op. at 5
NonePatents in suitUS 9,650,555 - Mercedes-Benz USA, LLC v. Carucel Investments, L.P.Rehearing deniedPTAB · Mar 3, 2021 · IPR2019-01404 · APJ Daniel J Galligan · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1, 4–11, and 14–23 unpatentable based on its construction of “mobile device” and findings on combining CDMA and TDMA.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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. A rehearing request is not an opportunity for the requesting party to reargue its case or merely to express disagreement with the Final Written Decision. Nor is it an opportunity for the moving party to present new arguments that were not in its original submissions.” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We disagree that we misapprehended or overlooked any matters in addressing Patent Owner’s proposed construction for “mobile device.” Rather, we provided a comprehensive analysis of the term “mobile device.” anything that was overlooked or misapprehended in this analysis, as required by 37 C.F.R. § 42.71(d). Instead, Patent Owner merely expresses its disagreement with our conclusions and proceeds to reargue points and evidence already considered and rejected in the Final Written Decision. This approach is not proper in a rehearing request. Furthermore, Patent Owner’s own arguments show the error in its proposed construction. For example, Patent Owner argues that the recited “mobile device” “must register with and be able to directly communicate with the cellular network.” PO Resp. 13; Req. Reh’g 1 n.1. Yet, Patent Owner acknowledges that “the claims of the ’023 Patent require the apparatus/movable base station to communicate directly with the cellular network (and not the ‘mobile device’).” Req. Reh’g 3 (emphasis added). As we pointed out in the Final Decision, the only claimed communication involving the mobile device is between the claimed “apparatus” (the mobile base station) and the mobile device, and Patent Owner acknowledges that this communication need not be cellular. Final Dec. 14 (citing PO Sur-reply 9). Thus, Patent Owner’s arguments undermine its proposed construction.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundOther
“[t]he Board erred in finding that that ‘CDMA and TDMA are not incompatible’ by improperly disregarding substantial evidence set forth by Patent Owner and its expert—that undermines any expectation of success and would have discouraged a [person of ordinary skill in the art] from attempting Petitioner’s combinations.” Req. Reh’g 14 (citing Final Dec. 79). Patent Owner does not attempt to identify any specific errors in citing pages from Patent Owner’s written submissions and testimony from its declarant. Req. Reh’g 14 n.31. We disagree that we misapprehended or overlooked any matters in this regard. Rather, we considered Patent Owner’s submissions and disagreed with them, finding instead that the record demonstrated that CDMA and TDMA can be combined, and we relied on, among other evidence, a prior art reference that expressly discloses a combination of CDMA and TDMA. Final Dec. 56–57 (citing Ex. 1033), 79. We further found that a person of ordinary skill in the art would have had reason to make the proposed combinations and would have had a reasonable expectation of success in doing so. Final Dec. 57–58, 79–81. slip op. at 6
Claim construction§ 103 obviousnessPatents in suitUS 7,979,023 - Flex Logix Technologies, Inc. v. Venkat KondaRehearing deniedPTAB · Sep 16, 2020 · IPR2020-00260 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied the Patent Owner’s rehearing requests, leaving institution in place for claims 1–7, 11, 15–18, 20–22, 32, and 47.
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
- Strike new argumentNew argument disregardedOther
“Consolidated Trial Practice Guide, 90. The Consolidated Trial Practice Guide goes on to state that “[a]bsent a showing of ‘good cause’ prior to filing the request for rehearing or in the request for rehearing itself, new evidence will not be admitted.” Id. (citing Huawei, Paper 19 at 4).” slip op. at 4
- Expert testimonyPetitioner expert creditedDecided for petitioner
“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 levelOther
“(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
§ 102 anticipation§ 112 disclosurePatents in suitUS 8,269,523
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.