- PTAB · Dec 1, 2017 · IPR2017-01291 · APJ Miriam L Quinn · IPR · Rehearing
The Board denied rehearing; inter partes review remains instituted for claims 1 and 3 and denied for claims 7, 9, 13, and 15.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The party requesting rehearing has the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). In our Decision, we disagreed with Petitioner’s proposed construction of “means for maintaining” as encompassing the structure of “a database and equivalents thereof.” Dec. 6. We determined that Petitioner’s argument and evidence did not show that the database was clearly linked to the recited function. Id. Instead, we were persuaded by Patent Owner’s showing that the Specification of the ’433 patent linked the function of “maintaining license management policy information for a plurality of application programs at a license management server” to algorithms for maintaining license management policy information. Id. at 7−8. Petitioner’s Request does not show a matter that we misapprehended or overlooked. For instance, Petitioner argues that “the Board’s construction appears to have overlooked or misapprehended the disclosure of the ’766 patent, as the specification does not disclose—and the Board’s construction does not identify—any algorithmic structure.” Req. Reh’g 3. Further, Petitioner argues that the “database and equivalents thereof” is the only structure that is clearly linked to the function and that does not render the claims indefinite. Req. Reh’g. 4. These arguments amount to expressing mere dissatisfaction with the Board’s decision, not identifying a matter that we overlooked or misapprehended. As we noted in the Decision, Petitioner did not proffer any argument as to how “a database and equivalents thereof” is linked to the function of “maintaining” the license management policy at the server. Dec. 6. The argument presented in Rehearing does not point out any argument or evidence included in the Petition that we did not consider or that we misapprehended. The Rehearing merely restates what we already found lacking: that the “database” is the linked structure.” slip op. at 2
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for patent owner
“decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). In our Decision, we disagreed with Petitioner’s proposed construction of “means for maintaining” as encompassing the structure of “a database and equivalents thereof.” Dec. 6. We determined that Petitioner’s argument and evidence did not show that the database was clearly linked to the recited function. Id. Instead, we were persuaded by Patent Owner’s showing that the Specification of the ’433 patent linked the function of “maintaining license management policy information for a plurality of application programs at a license management server” to algorithms for maintaining license management policy information. Id. at 7−8.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“argument, the claim term “means for maintaining” allegedly would lack proper disclosure in the ’733 patent Specification, rendering us powerless to review the denied claims. Petitioner’s argument is that “the ‘766 Patent provides no disclosure of an algorithm, instructions, or steps for setting license management policy information[,which] renders the Board’s construction of the ‘means for maintaining’ limitation indefinite.” Req. Reh’g 9−10. In the end, given that we have not been persuaded by Petitioner’s showing that the “database” is the linked structure, a finding of no “algorithm” would result in denial of inter partes review of claim 7, 9, 13, and 15 based on our inability to construe the claim. In summary, Petitioner has not persuaded us that we misapprehended or overlooked arguments or evidence that a “database and equivalents thereof” is clearly linked to the function recited in the “means for maintaining” limitation. Further, Petitioner has not persuaded us that we misapprehended or overlooked any contention that the ’766 patent does not disclose an “algorithm” for the “means for maintaining,” as such contention was not presented. Consequently, Petitioner’s Request for Rehearing is denied.” slip op. at 4
Claim constructionPatents in suitUS 6,728,766 - Allsteel Inc. v. Dirtt Environmental Solutions Ltd.Rehearing deniedPTAB · Apr 4, 2016 · IPR2015-01691 · APJ Sally C Medley · IPR · Rehearing
The Board denied Allsteel’s request for rehearing and upheld the decision not to institute review of claim 8 because the petition did not explain how Yu met the L-shaped slot limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs 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. Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). For the reasons that follow, Petitioner has not shown that the Board abused its discretion.” slip op. at 2
- BurdenDecided for patent owner
“sufficiently how the modified Yu Figure 30 meets the limitation.” Id. at 18 (emphasis added). We then proceeded to surmise what Petitioner meant as to how the Yu modified Figure 30 presented by Petitioner met the claim limitation. We did this to illustrate that there was insufficient explanation, but we need not have. The burden of demonstrating that a particular feature is met by the prior art rests with the Petitioner, not the Board. 37 C.F.R. § 42.20(c). To the extent that Petitioner disagrees with our assessment of what Petitioner may have meant demonstrates the point. The Petition is unclear and lacks explanation for how the modified Yu Figure 30 meets the generally L-shaped slot limitation of claim 8. In essence, the Petition provides a modified figure of Yu and asks the Board and Patent Owner to figure out how the modified figure meets the claim 8 limitations. Such a showing is insufficient to meet the Petitioner’s burden to show that it is entitled to the relief requested. Accordingly, Petitioner has not shown that we abused our discretion to not institute trial on claim 8.” slip op. at 3
NonePatents in suitUS 8,024,901
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.