- Johnson Controls, Inc. v. Wildcat Licensing Wi, LLCRehearing deniedPTAB · Aug 29, 2014 · IPR2014-00304 · APJ Susan L C Mitchell · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no abuse of discretion in instituting review of claims 24 and 25 based on Petitioner’s reasonable-likelihood showing.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION When rehearing a decision on petition, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). 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.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted) . 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.” 37 C.F.R. § 42.71(d).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner
“In any event, we are not persuaded that the prosecution history of the ’573 patent shows that Patent Owner affirmatively relinquished claim scope that would encompass a “fasten it wrong and fix it later” system. We did consider the Examiner’s statement for allowance (see Ex. 1007, 3–4; Prelim. Resp. 12–13, 33–34, 36) and the general statement in the Specification of the ’573 patent concerning the goal of providing “a more reliable and more foolproof way to conduct fastening operations” (see Ex. 1001, col. 2, ll. 39-40, Abstract; Prelim. Resp. 6, 26–27), along with Figure 4 and its description, the meaning of the claim term “indicating,” and the predetermined sequence program embodiment. Dec. 25. We are unpersuaded on this record, however, that Patent Owner affirmatively surrendered claim scope that would encompass a “fasten it wrong and fix it later” system.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Id. at 4 (citation omitted). In our decision to institute inter partes review, we addressed these arguments, but found them unpersuasive. See Dec. 10–16 (addressing claim construction). We stated that, as Patent Owner admitted, Figure 4 of the ’573 patent and its description “is an express teaching that it is possible to incorrectly insert fasteners in the fastening locations 52a-52c.” Id. at 11. We also stated that the originally-filed claims and the ordinary meaning of the claim term “indicating” “does not limit or negate the admittedly express teaching of a ‘fasten it wrong and fix it later’ system, as depicted in Figure 4 and described in the ’573 patent.” Id. at 12. Finally, as we noted in the decision on institution and as Patent Owner expressly acknowledges, the Specification of the ’573 patent uses the permissive “may” when referring to the electronic controller as including the predetermined sequence program embodiment. Req. Reh’g. 4; Dec. 5.” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not reached
“2 Because we did not institute inter partes review on any ground based on the Wilhelm reference, we need not address Patent Owner’s argument as to this reference. See Req. Reh’g 13.” slip op. at 5
Claim construction§ 102 anticipationPatents in suitUS 6,763,573 - Johnson Controls, Inc. v. Wildcat Licensing Wi, LLCRehearing deniedPTAB · Aug 29, 2014 · IPR2014-00305 · APJ Susan L C Mitchell · IPR · Rehearing
The Board denied Wildcat’s rehearing request, finding no abuse of discretion in instituting review of claims 22–28 based on Gass.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION When rehearing a decision on petition, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). 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.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). 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.” 37 C.F.R. § 42.71(d).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner
“In any event, we are not persuaded that the prosecution history of the ’831 patent shows that Patent Owner affirmatively relinquished claim scope that would encompass a “fasten it wrong and fix it later” system. We did consider the Examiner’s statement for allowance (see Ex. 1007, 3–4; Prelim. Resp. 12–14) and the general statement in the Specification of the ’831 patent concerning the goal of providing “a more reliable and more fool-proof way to conduct fastening operations” (see Ex. 1001, col 2., ll. 44-45, Abstract; Prelim. Resp. 6, 23), along with Figure 4 and its description, the meaning of the claim term “providing,” and the predetermined sequence program embodiment. Dec. 22. We are unpersuaded on this record, however, that Patent Owner affirmatively surrendered claim scope that would encompass a “fasten it wrong and fix it later” system or method.” slip op. at 4
- Strike new argumentNew argument disregardedDecided for petitioner
“To the extent that Patent Owner argues that it “affirmatively gave up” the ability to have a claim with the scope to cover a “fasten it wrong and fix it later” system (see Req. Reh’g 1, 4), that argument does not appear to have been made in Patent Owner’s Preliminary Response.1 A request for rehearing is not an opportunity to present new arguments or evidence that could have been presented and developed in the petition. See 37 C.F.R. § 41.104(b)(4) (stating “[t]he petition must specify where each element of a challenged claim is found in the prior art patents or printed publications relied upon”). We could not have overlooked or misapprehended arguments or evidence not presented and developed by Patent Owner in the first instance.” slip op. at 3
Claim constructionPatents in suitUS 7,062,831
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.