- Smith & Nephew, Inc. v. Conformis, Inc.Rehearing deniedPTAB · Jan 12, 2018 · IPR2017-00780 · APJ James A Worth · IPR · Rehearing
The Board denied the petitioner’s rehearing request, finding no overlooked or misapprehended arguments concerning the denied grounds for claims 9, 10, 12–19, and 38.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 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 Industries, Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes the Board misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“The panel addressed Petitioner’s theory of modifying Radermacher’s teachings with Kenna’s teachings on, inter alia, pages 20–21 of the Decision, as referred to by Petitioner immediately above. Id.; see also id. at 16–21. Although we are mindful that issues of bodily incorporation may be irrelevant to a combination, see In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc), the Decision considered the fact that Kenna’s surgical approach is based on intra-operative alignment while Radermacher’s surgical approach is directed to pre-operative alignment, and that Petitioner did not identify a sufficient rationale to combine the different disclosed approaches. Dec. 18–21. We are not persuaded that this difference is irrelevant to whether a person of ordinary skill would have combined these approaches. The Petition does not explain adequately how to adapt Kenna’s teachings to Radermacher’s template, or why this would have been obvious to a POSITA, in light of the references’ different alignment approaches. Pet. 71–73; see Dec. 20–21. Accordingly, we conclude that the Decision did not misapprehend or overlook any arguments in the Petition.” slip op. at 5
§ 103 obviousnessDiscretionary denialPatents in suitUS 8,062,302 - 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 - Cpi Card Group Inc. v. Gemalto S.A.Rehearing deniedPTAB · Mar 14, 2017 · IPR2016-01092 · APJ Patrick M Boucher · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution for claims 6, 8–11, 15, and 16 over Griffin alone or with Matsumura.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Accordingly, we are not persuaded that we misapprehended or overlooked Petitioner’s arguments as to the construction of “means for decorrelating” under 35 U.S.C. § 112, ¶ 6, as it relates to the second and third structures. ORDER In consideration of the foregoing, it is hereby: ORDERED that Petitioner’s Request for Rehearing is denied.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not shown unpatentable
“The Board’s obligation at this stage is both well-defined and limited— to determine whether the Petition demonstrates “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). In the Institution Decision, we determined that the Petition did not meet that standard with respect to claims 6, 8–11, 15, or 16. Dec. 20–22. In requesting that we make specific findings with respect to its “alternative” claim-construction positions, Petitioner asks that we disregard unambiguous opinions of its own expert. Dr. Polish testifies that “a person of ordinary skill in the art would have also understood from the specification that this third structure that executes random secondary sequences does not perform the claimed function,” that the third structure “does not perform the function in a manner such ‘that the execution of the at least one instruction sequence is desynchronized with respect to the internal or external electrical signals,’” and that the specification “fails to disclose that the execution of the random secondary sequences causes the execution of any instructions ‘to be desynchronized with respect to the internal or external electrical signals.’” Ex. 1003 ¶ 56. We recognize that, like Petitioner, Dr. Polish addresses the possibility of a finding that “the ‘means for decorrelating’ includes this third structure for randomly executing secondary sequences.’” Id. ¶ 58–60. Nevertheless, after considering the full context of the arguments made in the Petition and the supporting testimony of Dr. Polish, we remain unpersuaded that Petitioner has demonstrated a reasonable likelihood of prevailing on its challenges of claims 6, 8–11, 15, and 16 as unpatentable over Griffin alone or in combination with Matsumura.” slip op. at 5
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for patent owner
- BurdenNot shown unpatentable
“The Board’s obligation at this stage is both well-defined and limited— to determine whether the Petition demonstrates “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). In the Institution Decision, we determined that the Petition did not meet that standard with respect to claims 6, 8–11, 15, or 16. Dec. 20–22. In requesting that we make specific findings with respect to its “alternative” claim-construction positions, Petitioner asks that we disregard unambiguous opinions of its own expert. Dr. Polish testifies that “a person of ordinary skill in the art would have also understood from the specification that this third structure that executes random secondary sequences does not perform the claimed function,” that the third structure “does not perform the function in a manner such ‘that the execution of the at least one instruction sequence is desynchronized with respect to the internal or external electrical signals,’” and that the specification “fails to disclose that the execution of the random secondary sequences causes the execution of any instructions ‘to be desynchronized with respect to the internal or external electrical signals.’” Ex. 1003 ¶ 56. We recognize that, like Petitioner, Dr. Polish addresses the possibility of a finding that “the ‘means for decorrelating’ includes this third structure for randomly executing secondary sequences.’” Id. ¶ 58–60. Nevertheless, after considering the full context of the arguments made in the Petition and the supporting testimony of Dr. Polish, we remain unpersuaded that Petitioner has demonstrated a reasonable likelihood of prevailing on its challenges of claims 6, 8–11, 15, and 16 as unpatentable over Griffin alone or in combination with Matsumura.” slip op. at 5
Claim constructionPatents in suitUS 5,944,833 - Amerigen Pharmaceuticals Limited v. Shire LLCRehearing deniedPTAB · Dec 28, 2016 · IPR2015-02009 · APJ Toni R Scheiner · IPR · Rehearing
The Board denied Amerigen’s rehearing request, leaving claims 1–3, 5, 8, 9, and 11 uninstituted because Mehta did not disclose the claimed release limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW When reconsidering a decision on institution, the Board reviews the decision for an abuse of discretion. See 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. See Star Fruits S.N.C. v. United States, 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 a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must, in relevant part, “specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Amerigen’s arguments with these principles in mind.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“These arguments are not persuasive. First, Petitioner cites no authority for the proposition that a generic disclosure, such as that discussed above, is an express disclosure of every possible permutation of that generic disclosure. Second, even if we were to accept, for the sake of argument, that Mehta’s combined disclosures constitute an express disclosure of a composition capable of delayed release of “essentially all [of the drug] . . . within about 60 minutes,” non-instituted claims 1–3, 5, 8, 9, and 11 further require that the delayed release is enteric (i.e., the composition releases the second dose of the drug in the intestines, not the stomach). As we noted in the Decision, however, Mehta does not use the word “enteric,” nor does Mehta discuss delivery of the delayed dose to the intestines. Dec. 28. Nevertheless, we considered the possibility that Mehta might inherently disclose a composition that releases into the intestine not less than 80% of the second dose of the drug within about 60 minutes of the delayed release. Accordingly, we turned to Mehta’s Examples 1–5, but determined that not one of the exemplified delayed release compositions achieved a release of “essentially all” of the drug from a delayed release coating within about 60 minutes—regardless of whether the delay was long enough to be considered enteric.3 Id. at 24. As we noted in the Decision,” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“This argument is not persuasive. We considered, for example, Dr. Elder’s testimony that one of ordinary skill in the art would expect “that the number of variables and number of experimental runs to optimize the coating for the amphetamine would present no unusual problems of technology or expense” because one “can use statistical experimental design to optimize a formulation within the 21 trials that Mehta discloses to design one for amphetamine salts” (Ex. 1005 ¶ 471), as well as Dr. Elder’s testimony that one would expect “that routine optimization of the coating using the parameters identified by Mehta would provide enough guidance for controlling the release timing” (id. ¶ 512). Nevertheless, we found the actual results reported by Mehta to be more compelling. As we stated in the Decision: [N]one of Mehta’s delayed release formulations that could be considered to be enteric by virtue of their delay periods (i.e., those with delays of 4 or 5 hours) had release rates of “essentially all” of the drug anywhere near the required time period. Even if Mehta could be read to suggest that a delay of 4 or 5 hours followed by a release of essentially all of the delayed dose within 60 minutes would be desirable, we are not persuaded that Mehta’s disclosure that “the amount of drug released is influenced by: amount of coating, ratio of the two 4 Amerigen supported its challenges with the Declaration of Edmund J. Elder, Jr., Ph.D., R.Ph., executed September 30, 2015 (“Elder Declaration”) (Ex. 1005). polymers, amount of talc, and curing time” is adequate guidance for one of ordinary skill in the art to achieve such a dosage form. In general, Mehta demonstrates that longer delays are accompanied by longer release times, with formulations that could be considered to provide enteric release (i.e., a release after a 4 or 5 hour [delay]) having 85% release times of 8 or more hours. Dec. 33–34 (citing Ex. 1003, Table 1).” slip op. at 8
§ 102 anticipation§ 103 obviousness - Microsoft Corporation v. Keith A. RaniereRehearing deniedPTAB · Nov 10, 2016 · IPR2016-00663 · APJ John A Hudalla · IPR · Rehearing
The Board denied Microsoft’s rehearing request, leaving in place the denial of institution on the Delaney anticipation ground for claims 1, 5, 7, 9, 12, and 21.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined 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. United States, 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 party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)
“3 As Patent Owner points out (Prelim. Resp. 4–7), Technology Licensing discussed the relative burdens in the case where a patent claims priority by virtue of a continuation-in-part application that added new matter. As the Federal Circuit has explained, “when neither the PTO nor the Board has previously considered priority, there is simply no reason to presume that claims in a CIP application are entitled to the effective filing date of an earlier filed application.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305 (Fed. Cir. 2008). The Federal Circuit has distinguished this from instances, such as detailed in Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570 (Fed. Cir. 1985), in which the Office has made a priority determination. See PowerOasis, 522 F.3d at 1304. The Ralston court placed the burden of proving insufficient disclosure in the parent application on the patent challenger. See Ralston, 772 F.2d at 1573–74. Because the ’752 patent claims priority to Delaney and earlier applications through an unbroken chain of continuations, it is arguable that the framework of Ralston, rather than that of Technology Licensing, should apply here. Nevertheless, Microsoft has failed to show a reasonable likelihood of success on this ground even under the framework of Technology Licensing.” slip op. at 6
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedNot shown unpatentable
“expect Raniere to be in unique possession of rebuttal evidence, as the case might be if it sought to present evidence of prior invention. See, e.g., Dynamic Drinkware, 800 F.3d at 1380. The 1995 ancestor application itself, already part of the record, is the best evidence of whether an earlier application provides support, under 35 U.S.C. § 120, for the challenged claims. See Ex. 1002. Microsoft does not contest that the common specification, included in both Delaney and the ’752 patent, describes examples within the scope of each of the challenged claims. Nor could Microsoft reasonably maintain such a position in light of its position that Delaney anticipates those same claims. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008) (stating that to anticipate, a reference must “show all of the limitations of the claims arranged or combined in the same way as recited in the claims”). It was not necessary for Raniere to re-establish this. Rather, the issue raised in the Petition (and addressed in the Decision on Institution) was whether those examples were sufficient to describe claims that Microsoft argued had been broadened beyond what those examples support. Raniere presented arguments, with reference to the evidence already of record, disputing this point. See Prelim. Resp. 8–20. At that point, the burden shifted back to Microsoft to persuade us that the ’752 patent is not entitled the benefit of an earlier priority date. See Tech. Licensing Corp., 545 F.3d at 1328. As explained below, Microsoft failed to meet that burden.” slip op. at 7
§ 102 anticipationPatents in suitUS 7,215,752 - PTAB · May 20, 2016 · IPR2015-00979 · APJ Hyun J Jung · IPR · Rehearing
The Board denied rehearing, leaving claims 6 and 13 uninstituted over Raymond and Mutti and over Mutti, Kano, and Suffa.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The applicable standard for a request for rehearing of an institution decision is abuse of discretion. 37 C.F.R. § 42.71(c). The requirements are set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. 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. For the reasons stated below, Petitioners’ request is denied.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for patent owner
“regarding “cap” and “valve holder” for claims 6 and 13. Reh’g Req. 1–5 (citing Pet. 17–19, 28). Petitioners explain that the Petition asserted clamping ring 27, body 16, nipple pieces 15, and upper membrane 7 combined are the required “cap” of claim 1. Id. at 2–4 (discussing Pet. 17– 19). Petitioners also explain that the Petition asserted clamping ring 27 meets the “valve holder” of dependent claims 6 and 13 “because the cap in Raymond is much more than clamping ring 27” and clamping ring 27 “is separable from the other parts of the claimed ‘cap.’” Id. at 5 (discussing Pet. 28). Petitioners further argue that the claims, specification, and case law do not require the recited valve holder and cap to be separate structures. Id. at 6–7, 12–13 (citing Ex. 1001, 6:38–41; Ex. 1013; Dec. 16).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“on Mutti, Kano, and Suffa was also misapprehended and should have been instituted. Reh’g Req. 2, 14–15. Petitioners acknowledge that they rely on Figure 6 for claim 1 and rely on Figures 1–5, which depict another embodiment, for claim 6 which depends from claim 1. Id. Petitioners, however, argue that the “motivation to combine the teachings of Mutti in one embodiment with the teachings of Mutti in another embodiment is entirely obvious—it’s the same reference.” Id. at 15. Petitioners do not identify where the asserted motivation was presented in their Petition. See 37 C.F.R. § 42.71(d). Even if the Petition included this particular motivation, it does not address the deficiency identified in the Decision. Citing to two embodiments in the same reference does not explain “how and why stop ring 23 of Figure 1 . . . , which holds membrane 22 in position . . . , would be combined with outer part 14b of Figure 6 . . . , which includes inner part/body 14a . . . that also holds membrane 22 in place . . . . In other words, inner part/body 14a, which is an integral part of outer part 14b, already holds membrane 22 in place.” Dec. 21. The Petition does not explain why one of ordinary skill in the art would be motivated to add stop ring 23 of Figure 1 to outer part 14b of Figure 6, when Mutti teaches each can hold a membrane in place. In particular, the Petition does not explain why both would be required when Mutti teaches that one is adequate. Without such an explanation in the Petition, we are not persuaded to modify our Decision regarding claims 6 and 13 as rendered obvious by Mutti, Kano, and Suffa.” slip op. at 4
Claim construction§ 103 obviousnessPatents in suitUS 8,695,841 - Broad Ocean Technologies, LLC v. Nidec Motor CorporationRehearing deniedPTAB · Mar 7, 2016 · IPR2015-01617 · APJ Patrick M Boucher · IPR · Rehearing
The Board denied rehearing, leaving claims 1–6 uninstituted because Beifus did not disclose adjusting all motor torque settings with the adjustment factor.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“On rehearing, the burden of showing that the Decision should be modified lies with Petitioner, the party challenging the Decision. 37 C.F.R. § 42.71(d). “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.” Id.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“diamonds and squares) of an induction-motor speed-torque curve that may be stored within the memory of an electrically commutated motor (“ECM”) circuit, including breakdown speed, no-load or synchronous speed, and a “shape description number” used in calculating new torque demands. Ex. 1007 ¶ 36. The drawing illustrates scaling of the torque by a factor less than one between a breakdown speed of 1050 RPM and a no-load speed of 1200 RPM, with no scaling at speeds less than the breakdown speed. Id. That is, when Beifus adjusts torque settings at any particular operating speed that is between the breakdown speed and the no-load speed, the same adjustment factor is applied; consequently, torque settings of the motor are adjusted “with the adjustment factor to obtain proportionally reduced torque settings,” as recited in independent claim 1.” slip op. at 4
- BurdenDecided for patent owner
“On rehearing, the burden of showing that the Decision should be modified lies with Petitioner, the party challenging the Decision. 37 C.F.R. § 42.71(d). “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.” Id.” slip op. at 2
§ 102 anticipationPatents in suitUS 7,990,092 - Meyer Products, LLC v. Douglas Dynamics, L.L.C.Rehearing deniedPTAB · Feb 29, 2016 · IPR2015-01247 · APJ James A Worth · IPR · Rehearing
The Board denied rehearing, leaving institution on claims 18 under Pruss and Keeler and claims 1, 4–7, and 18 under Coates and Hetrick; other grounds failed the institution threshold.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 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). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsMixed
“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). As applied here, the Petition must have specified which prior art structures are being relied on in the asserted ground such that “said lift frame, trunnion, A-frame and motion generating device all being attachable to and detachable from a vehicle as one assembly,” as recited by claim 1 and similarly required by claims 4–7 and 18. The Petition did not. slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“back bar and a pair of side bars arranged in a triangular or ‘A’ configuration,” the Board misapprehended or overlooked the fact that the Specification of the ’757 patent does not define the term “A-frame,” that the Specification states that the patent is “limited . . . by the scope of the following claims and their equivalents,” and that the Specification also uses the term “frame” without the prefix “A-” or uses the term preceded by “mount,” “lift,” or “A-”. Request 3–6. Petitioner argues that this misapprehension causes the Board’s construction to be divorced from the Specification and the record evidence. Request 6 (Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015)). As an initial matter, we note that Petitioner only cited to two portions of the Specification in the Petition in supporting its construction of “A-frame”: Ex. 1001, 4:62–64, 8:36–40. Pet. 8–9. Accordingly, we restrict ourselves to reconsideration of only this portion of the Specification. And upon reconsideration, we determine that the Board did not misapprehend or overlook the aforementioned cited portions of the Specification in construing “A-frame”; instead, the Board considered those portions expressly, but came to a different conclusion. Specifically, as set forth in the Decision, the fact that other shapes may be referred to in the Specification does not broaden the “A” shape of the “A-frame,” as recited in claims 1 and 4–7. The Decision notes Patent Owner’s suggestion that other claims, not at issue, might still allow for use of the invention with another shape for the frame. Decision 7. Petitioner argues that these other claims do not refer to an “A-frame.” Request 6. We agree. This argument is misplaced, however, as the lack of specificity of shape for the corresponding frame in the other claims is fully consistent with the notion that these other frames use a non-A-frame shape. Therefore, we are not persuaded that the Decision misapprehended or overlooked any arguments with respect to the asserted ground of anticipation by Pruss.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). As applied here, the Petition must have specified which prior art structures are being relied on in the asserted ground such that “said lift frame, trunnion, A-frame and motion generating device all being attachable to and detachable from a vehicle as one assembly,” as recited by claim 1 and similarly required by claims 4–7 and 18. The Petition did not. slip op. at 8
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 6,928,757 - Hamilton Beach Brands, Inc. v. Courtesy Products, LLCRehearing deniedPTAB · Sep 2, 2015 · IPR2014-01258 · APJ Hyun J Jung · IPR · Rehearing
The Board denied Hamilton Beach’s rehearing request, leaving institution denied for claims 22–24, 49–51, 54, 55, 65, and 66 based on insufficient § 103 showing.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The applicable standard for a request for rehearing of an institution decision is abuse of discretion. 37 C.F.R. § 42.71(c). The requirements are set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. 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. For the reasons stated below, Petitioner’s motion is denied. A. Decision to Institute We determined that Petitioner had not established a reasonable” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“likelihood of prevailing on its assertion that claims 22–24, 49–51, 54, 55, 65, and 66 of the ’512 patent as unpatentable under 35 U.S.C. § 103 over U.S. Patent No. 6,164,191 to Liu, iss. Dec. 26, 2000 (Ex. 1002, “Liu”); U.S. Patent No. 5,840,189 to Sylvan, iss. Nov. 24, 1998 (Ex. 1003, “Sylvan”); and U.S. Patent No. 3,446,624 to Luedtke, iss. May 27, 1969 (Ex. 1004, “Luedtke”) or over U.S. Patent No. 3,620,155 to Bixby, iss. Nov. 16, 1971 (Ex. 1005, “Bixby”); Sylvan; and Luedtke. Dec. 15–17, 18. Specifically, for claims 22–24 and 49–51, we determined that the Petition failed to explain how the relied upon references teach the limitations and how those same references would be combined. Dec. 12–13, 15. For claims 54, 55, 65, and 66, we agreed with Patent Owner that the Petition fails to explain where limitations are found and improperly incorporates arguments by reference to a Declaration of Alexander H. Slocum (Ex. 1009, “Slocum Declaration”). Dec. 17, 19.” slip op. at 2
- BurdenDecided for patent owner
“A petition must contain a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence.” 37 C.F.R. § 42.22(a)(2). The Slocum Declaration contains argument, not discussed adequately in the Petition, regarding where limitations are found in the references and why an ordinary artisan would have been led to combine the references to attain the subject matter of claim 26. Under these circumstances, the Petition violates our rule that prohibits arguments made in a supporting document from being incorporated by reference into a petition. See 37 C.F.R. § 42.6(a)(3). After considering the cited portions of the Petition, we determine Petitioner has not shown that the Board misapprehended or overlooked a matter addressed in the Petition, and therefore, has not carried its burden of demonstrating an abuse of discretion in the Board’s decision.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“hospitality industry regulations teaches this limitation.” Pet. 33, 37 (citing Ex. 1007 ¶¶ 53–55; Ex. 1009 ¶¶ 100, 108). The portion of the Petition now cited by Petitioner provides a description of Liu, Sylvan, and Luedtke (Pet. 17–19) and a “Motivation to Combine Liu with Sylvan and Luedtke” (Pet. 19–22). Petitioner’s arguments do not explain how the descriptions of Liu, Sylvan, and Luedtke, and the asserted rationales to combine these particular references, support the contention that “Liu in view of relevant hospitality industry regulations teaches this limitation”—where the cited portions do not discuss “relevant hospitality industry regulations.” In sum, Petitioner does not direct us to any argument in the Petition that would have supported extending our analysis, regarding independent claims 53 and 64 and Liu, Sylvan, and Luedtke, to claims 54 and 65, or an analysis of “Liu in view of relevant hospitality industry regulations.” We are, therefore, unpersuaded to modify our Decision regarding claims 54 and 65.” slip op. at 3
§ 103 obviousnessPatents in suitUS 7,770,512 - Hamilton Beach Brands, Inc. v. Courtesy Products, LLCRehearing deniedPTAB · Sep 2, 2015 · IPR2014-01257 · APJ Hyun J Jung · IPR · Rehearing
The Board denied Hamilton Beach’s rehearing request, leaving claims 6, 7, 19, and 26 uninstituted because the Petition did not adequately explain the asserted obviousness combinations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The applicable standard for a request for rehearing of an institution decision is abuse of discretion. 37 C.F.R. § 42.71(c). The requirements are set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. 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. For the reasons stated below, Petitioner’s motion is denied. A. Decision to Institute We determined that Petitioner had not established a reasonable” slip op. at 2
- BurdenNot shown unpatentable
“Combine Liu with Sylvan and Luedtke” and that provides several rationales for combining these particular references and no others. Pet. 21–23. Petitioner fails to identify a portion of the Petition that extends one or more of these rationales for combining Liu, Sylvan, and Luedtke to “Van Damme,” cited for claims 6 and 7. Petitioner also cites page 10 of its Petition, which describes KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) and argues that “the Examiner did not apply its principles . . . during the prosecution of the ’037 Patent.” Pet. 9–10. The cited portion of the Petition does not present an argument that claims 6 and 7 are unpatentable over Liu and “Van Damme.” The Petition does not discuss any rationale for combining Liu and Van Damme. Petitioner’s arguments for claims 6 and 7, therefore, do not persuade us to modify our Decision.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Petitioner cites a part of its Petition that is titled “Motivation to Combine Liu with Sylvan and Luedtke” and that provides several rationales for combining these particular references and no others. Pet. 21–23. Petitioner fails to identify a portion of the Petition that extends one or more of these rationales for combining Liu, Sylvan, and Luedtke to “Van Damme,” cited for claims 6 and 7. Petitioner also cites page 10 of its Petition, which describes KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) and argues that “the Examiner did not apply its principles . . . during the prosecution of the ’037 Patent.” Pet. 9–10. The cited portion of the Petition does not present an argument that claims 6 and 7 are unpatentable over Liu and “Van Damme.” The Petition does not discuss any rationale for combining Liu and Van Damme. Petitioner’s arguments for claims 6 and 7, therefore, do not persuade us to modify our Decision.” slip op. at 4
§ 103 obviousnesscites KSRPatents in suitUS 7,311,037
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.