- 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 - PTAB · Jul 6, 2017 · IPR2017-00245 · APJ Melissa A Haapala · IPR · Rehearing
The Board denied the petitioner’s rehearing request, leaving institution on claims 52, 58, 60, and 61 and denial of institution on the remaining challenged claims unchanged.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“instituting an inter partes review of claims 52, 58, 60, and 61 of U.S. Patent No. 6,950,013 (“the ’013 patent”) and denying institution of claims 1, 4, 8– 12, 17, 18, 27, 28, 34, 35, and 45 of the ’013 patent. Paper 11 (“Req. Reh’g”), 1. On rehearing, the burden of showing that the Decision should be modified lies with Petitioner, the party challenging the Decision. See 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 address in a motion, an opposition, or a reply.” Id. “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” See 37 C.F.R. § 42.71(c).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“differentiation analysis constitutes error, much less an abuse of discretion. Specifically, under any standard, we disagree that merely because claim 13 sets forth “said download trigger is adapted to require input of an electronic access code,” that the information datalink is able to access the captured data without an authorization code. Even if we were to agree with Petitioner that the “electronic access code” recited in claim 13 is synonymous or related to the “authorization code” recited in claim 1 (see id. at 7), an assertion that itself is dubious given the differences in express claim language, claim 13 merely sets forth a specific technique for inputting the electronic access code via the download trigger. Claim 13 does not negate claim 1’s specific requirement that the captured data is inaccessible without the authorization code — in other words, if the authorization code is not required to be input in the download trigger, it must be provided in another way to access the data. We similarly disagree with Petitioner that the limitations set forth in claim 47 dictate that the data can be transferred (accessed) without an authorization code. Claim 47 merely sets forth the transfer is “in response” to the receipt of the access code, and does not mandate an interpretation that the data can be transferred (accessed) without the authorization code.” slip op. at 3
- BurdenDecided for patent owner
“In our Decision, we concluded that Petitioner did not adequately explain or map how either Joao or Mackey discloses captured/stored data being inaccessible without the use of the authorization code. Dec. 10, 15. Petitioner asserts that in reaching our conclusion, we incorrectly interpreted “the captured data being inaccessible without the authorization code” to” slip op. at 2
Claim constructionPatents in suitUS 6,950,013 - 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 - Informatica Corporation v. Protegrity CorporationRehearing deniedPTAB · Aug 6, 2015 · CBM2015-00010 · APJ Meredith C Petravick · CBM · Rehearing
The Board denied both rehearing requests, leaving institution and denial of the identified claims and grounds unchanged after finding no abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A. Standard of Review When rehearing a decision on petition, the Board will review the decision 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 Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party challenging the decision has the burden of showing a decision should be modified, and the request for rehearing must identify specifically all matters the party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). In its Request for Rehearing, the dissatisfied party must (1) “specifically identify all matter that party believes the Board misapprehended or overlooked” and (2) identify the place where each matter was previously addressed. Id.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Other
“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). “[T]he prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983). “[I]t is not enough that the prior art reference . . . includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Id. at 1371. “[D]ifferences between the prior art reference and a claimed invention, however slight, invoke the question of obviousness, not anticipation.” Id. Petitioner first quotes a passage from Denning that describes the columns of the access matrix as corresponding to objects which are controlled by the access matrix. See Ex. 1006, 192. Petitioner then quotes a disparate portion of Denning that describes a relational database system that consists of n-tuples having n attributes or columns, with respect to authorization lists, which are a different type of access control. See id. at 213. Neither of these quoted passages links the objects of the access matrix model to the columns of the relational database system, described in connection with the authorization lists, or provides any other adequate explanation as to how Denning discloses that the object of the access matrix model “corresponds” to the columns of the relational database system. In the Petition, Petitioner and its declarant also state that Denning discloses that the access matrix is applicable to database systems. Pet. 3; Ex. 1010 ¶ 54 (citing Ex. 1006, 192). However, this also does not describe the objects of the access matrix model as columns of the relational database system. slip op. at 14
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“LLC. See Decision 9–10. As we stated in our Decision, a party may not petition for post-grant review if it has filed a civil action challenging the validity of a claim of the patent before the petition is filed. 35 U.S.C. § 325(a)(1); 37 C.F.R. § 42.201(a); see Securebuy, LLC, CBM2014-00035, (PTAB Apr. 25, 2014) (Paper 12, precedential) (explaining that 35 U.S.C. § 325(a)(1) applies to covered business method patent review proceedings). In this case, however, Petitioner’s filing of a civil action before filing the Petition did not trigger the statutory bar because the civil action was dismissed without prejudice. See id. Dismissal without prejudice does not trigger the statutory bar. See Decision 9 (citing Cyanotech Corp. v. Bd. of Trustees of the Univ. of Ill., IPR2013-00401, slip op. at 11–12 (PTAB Dec. 19, 2013) (Paper 17) (“Excluding an action that de jure never existed from the scope of § 315(a)(1) is consistent with both relevant case law and legislative history.”); Callidus Software, Inc. v. Versata Software, Inc., CBM2013-00052, slip op. at 5–7 (PTAB Mar. 4, 2014) (Paper 21).); “The dismissal of an action without prejudice leaves the parties as though the action had never been brought. Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022, slip op. at 16–18 (PTAB Sept. 2, 2014)(Paper 166) (citing Graves v. Principi, 294 F.3d 1350, 1356 (Fed. Cir. 2002)). In SecureBuy, LLC, the Board determined the 35 U.S.C. § 325(a)(1) applied to covered business method review proceedings, but made no determination as to whether or not a dismissal without prejudice triggered the statutory bar. See SecureBuy, LLC, CBM2014-00035 (PTAB April 25, 2014)( Paper 12).” slip op. at 4
- BurdenDecided for patent owner
“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). “[T]he prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983). “[I]t is not enough that the prior art reference . . . includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Id. at 1371. “[D]ifferences between the prior art reference and a claimed invention, however slight, invoke the question of obviousness, not anticipation.” Id. Petitioner first quotes a passage from Denning that describes the columns of the access matrix as corresponding to objects which are controlled by the access matrix. See Ex. 1006, 192. Petitioner then quotes a disparate portion of Denning that describes a relational database system that consists of n-tuples having n attributes or columns, with respect to authorization lists, which are a different type of access control. See id. at 213. Neither of these quoted passages links the objects of the access matrix model to the columns of the relational database system, described in connection with the authorization lists, or provides any other adequate explanation as to how Denning discloses that the object of the access matrix model “corresponds” to the columns of the relational database system. In the Petition, Petitioner and its declarant also state that Denning discloses that the access matrix is applicable to database systems. Pet. 3; Ex. 1010 ¶ 54 (citing Ex. 1006, 192). However, this also does not describe the objects of the access matrix model as columns of the relational database system. Petitioner alternatively argues that Denning’s objects at the top of the columns of the access matrix model are associated with a data category, when “data category” is given the broadest reasonable construction adopted in the Decision. Pet. Req. 3, 9. Petitioner states: “[f]or example, M1 refers to a division of data that shares a common attribute of being stored in memory segment M1.” Id. Petitioner, however, does not identify where this argument was raised in the first instance in the Petition, and we can find no such argument in the Petition. We could not have overlooked or misapprehended an argument that was not raised in the Petition. We, thus, are not persuaded by Petitioner that we abused our discretion in denying institution of covered business method patent review of claims 15, 31, 33, and 47 on the ground of obviousness over Denning. slip op. at 14
§ 101 eligibility§ 102 anticipationDiscretionary denialPatents in suitUS 8,402,281 - Ube Maxell Co., Ltd. v. LG Chem, Ltd.Rehearing deniedPTAB · Feb 28, 2014 · IPR2013-00471 · APJ Francisco C Prats · IPR · Rehearing
The Board denied rehearing, leaving claim 7 and Grounds 1 and 3 uninstituted because the petition did not clearly address claim 7’s peeling-force limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on a petition to institute an inter partes review, the Board “will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). The party requesting rehearing has the burden of showing 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). III. ANALYSIS” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction neededDecided for patent owner
“A. Claim Construction of Claim 7 Claim 7 of the ’870 patent recites “[t]he organic/inorganic composite separator according to claim 1, wherein the porous coating layer has a peeling force of 5 gf/cm or above.” Ex. 1101, 12:5-8.” slip op. at 3
- BurdenNot reached
“The Decision to Institute concluded that Ground 1 was redundant to the grounds for which review was instituted. Decision to Institute 18. As to claim 7, Ube Maxell “either relies on the claim construction we decline to adopt, or makes no specific mention of the peel strength requirements of claim 7.” Id. The Decision further explained that “[i]n either event, we are not persuaded that Ube Maxell establishes adequately how the cited references disclose or suggest a separator with a porous coating layer having the peel strength required by claim 7.” Id. (citation omitted).” slip op. at 4
Claim constructionPatents in suitUS 7,695,870
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.