• Microsoft Corporation v. Keith A. RaniereRehearing denied
  PTAB · 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 anticipation
  Patents in suitUS 7,215,752

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