- Henny Penny Corporation v. Frymaster L.L.C.Rehearing deniedPTAB · Jan 20, 2017 · IPR2016-01435 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Henny Penny’s rehearing request, leaving institution on two obviousness grounds and denial of the other nine grounds unchanged.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“I. 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, and the place where each matter was addressed previously in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d).” slip op. at 2
NonePatents in suitUS 8,497,691 - 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 · Apr 19, 2016 · IPR2015-01872 · APJ David C Mckone · IPR · Rehearing
The Board denied Ericsson’s rehearing request, leaving claims 5, 10, and 15 uninstituted because it found no abuse of discretion in the merits determination.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). The burden of showing that the Decision should be modified is on Petitioner, the party challenging the Decision. See 37 C.F.R. § 42.71(d). In addition, “[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.” Id.” slip op. at 2
- BurdenDecided for patent owner
“different groups of users could be served before others. Req. 5. According to Petitioner, a skilled artisan would have incorporated these values into the “class” fields of Lu’s data packets such that Lu’s system could make distinctions based on subscribers’ subscription requirements and identify the priorities of certain users. Id. at 5–6. This argument was not presented in the Petition. A request for rehearing, is not an opportunity for a party to introduce new argument, bolster insufficient argument, or mend gaps in the evidence relied on in the Petition. See 37 C.F.R. § 42.71(d). Because Petitioner did not make this argument in the Petition, we could not have misapprehended or overlooked it. In any case, as Patent Owner explained in the Preliminary Response (at 42–43), Lu already provides a mechanism (the class field) for making distinctions based on subscribers’ subscription requirements. Ex. 1002, 5:21–32, 5:57–67; Dec. 27. Petitioner does not explain why a skilled artisan would have had reason to incorporate what appears to be a redundant feature. Thus, Petitioner’s argument is unpersuasive.” slip op. at 4
- Strike new argumentNew argument disregardedDecided for patent owner
“In the Request, Petitioner identifies the fairness metric values described in paragraph 76 of Pankaj (not cited in the Petition) and explains that these fairness metric values could be used in Lu’s packets so that different groups of users could be served before others. Req. 5. According to Petitioner, a skilled artisan would have incorporated these values into the “class” fields of Lu’s data packets such that Lu’s system could make distinctions based on subscribers’ subscription requirements and identify the priorities of certain users. Id. at 5–6. This argument was not presented in the Petition. A request for rehearing, is not an opportunity for a party to introduce new argument, bolster insufficient argument, or mend gaps in the evidence relied on in the Petition. See 37 C.F.R. § 42.71(d). Because Petitioner did not make this argument in the Petition, we could not have misapprehended or overlooked it.” slip op. at 3
NonePatents in suitUS 7,385,994
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.