- Unified Patent Inc. v. Plectrum LLCRehearing deniedPTAB · Dec 12, 2017 · IPR2017-01430 · APJ Sheila F Mcshane · IPR · Rehearing
The Board denied rehearing, leaving in place the denial of institution for claims 1–6, 12–14, and 21–24 because the petition did not show a reasonable likelihood of success on obviousness.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION A party requesting rehearing has the burden to show a decision should be modified by specifically identifying all matters the party believes were misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise 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. 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).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not shown unpatentable
“The Request for Rehearing repeatedly refers to alleged mischaracterizations in Patent Owner’s assertions. However, as discussed in the Decision, it is the failure of the Petition to demonstrate a reasonable likelihood of prevailing on its assertion that the challenged claims are obvious—and not the Patent Owner’s assertions—that was determinative. See Dec. 14–16. We are aware, as the Petitioner argues (see Req. Reh’g 4–5), that there is no requirement under § 103 that claim terms be described verbatim in a prior art reference. As discussed in the Decision, however, the issue of an explicit disclosure of the term “row” in Cheriton was not in itself determinative. See Dec. 14–16. The Decision states that institution was denied because the Petition failed demonstrate a reasonable likelihood of prevailing on the obviousness challenge based on lack of adequate support in Cheriton for the alleged teaching of a comparison of values associated with a row in a cache, as well as the lack of support for the expert’s view that it would have been obvious to one of skill in the art to compare the cache value by row. Id. The disclosures in Cheriton that Petitioner relied upon fail to disclose or suggest the use of rows in caches. Id. at 14–15. And, Petitioner expert’s testimony regarding the knowledge of one of skill in the art concerning row comparisons in caches is conclusory and, therefore, deserved little to no credit. Id. at 15; see Perreira v. Dep’t of Health and Human Serv., 33 F.3d 1375, 1377 n.6 (Fed. Cir. 1994) (“An expert opinion is no better than the soundness of the reasons supporting it.”). Petitioner’s argument that Fujishima’s disclosure of 4-way set associative cache organized by rows, which corroborates its expert’s testimony, misses the point. Although the use of rows in 4-way set associative caches may have been known, the Petition fails to provide sufficient support to identify why one of skill in the art would view Cheriton as teaching or suggesting the specific limitations associated with the use of rows.” slip op. at 3
- Expert testimonyPetitioner expert discountedDecided for patent owner
“requirement under § 103 that claim terms be described verbatim in a prior art reference. As discussed in the Decision, however, the issue of an explicit disclosure of the term “row” in Cheriton was not in itself determinative. See Dec. 14–16. The Decision states that institution was denied because the Petition failed demonstrate a reasonable likelihood of prevailing on the obviousness challenge based on lack of adequate support in Cheriton for the alleged teaching of a comparison of values associated with a row in a cache, as well as the lack of support for the expert’s view that it would have been obvious to one of skill in the art to compare the cache value by row. Id. The disclosures in Cheriton that Petitioner relied upon fail to disclose or suggest the use of rows in caches. Id. at 14–15. And, Petitioner expert’s testimony regarding the knowledge of one of skill in the art concerning row comparisons in caches is conclusory and, therefore, deserved little to no credit. Id. at 15; see Perreira v. Dep’t of Health and Human Serv., 33 F.3d 1375, 1377 n.6 (Fed. Cir. 1994) (“An expert opinion is no better than the soundness of the reasons supporting it.”). Petitioner’s argument that Fujishima’s disclosure of 4-way set associative cache organized by rows, which corroborates its expert’s testimony, misses the point. Although the use of rows in 4-way set associative caches may have been known, the Petition fails to provide sufficient support to identify why one of skill in the art would view Cheriton as teaching or suggesting the specific limitations associated with the use of rows.” slip op. at 3
NonePatents in suitUS 5,978,951 - 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
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.