- 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 - 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 - Marvell Semiconductor, Inc. v. Intellectual Ventures I LLCRehearing grantedPTAB · Feb 20, 2015 · IPR2014-00553 · APJ Patrick M Boucher · IPR · Rehearing
Rehearing was granted in part; review was instituted on four §103 grounds for claims 1–23, while the Boer-based challenge did not meet the institution threshold.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“patent in IPR2014-00553 (“this proceeding”). Paper 17 (“Dec.”). We observed that the grounds advanced in this proceeding “rely on teachings from Boer[1] and Wu[2] that Petitioner already identifies as disclosed by Webster” and that “Petitioner [had] not shown, and we [were] not convinced, that any of the additional grounds add substantively to the grounds on which we institute[d] inter partes review [in the related proceeding].” Dec. 16, 18. On January 2, 2015, Petitioner filed a Request for Rehearing (Paper 18, “Req. Reh’g”) that notes Patent Owner now raises an issue under 35 U.S.C. § 103(c) with respect to Webster in the related proceeding that it had not raised in its Preliminary Response. Req. Reh’g 1. Specifically, Patent Owner contends that Webster is not prior art to the ʼ195 patent because Webster and the ʼ195 patent “were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.” 35 U.S.C. § 103(c)(1). In view of Patent Owner’s new contention, which was not advanced until after institution, Petitioner requests rehearing of our denial of institution in this proceeding. See Req. Reh’g 4–5. We agree that, under these circumstances, rehearing is appropriate and we therefore reconsider our decision not to proceed on Petitioner’s challenges based on Boer and Wu.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedMixed
“We agree with Patent Owner that Boer lacks sufficient detail, even in combination with the other cited art, to support Petitioner’s challenge. See Prelim. Resp. 20. Consequently, we conclude that Petitioner has not established a reasonable likelihood of prevailing on its challenge of claims 1–23 as obvious over Boer and other art.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Although each of the modulation schemes in this structure is a single- carrier modulation scheme, Petitioner contends that a person of ordinary skill in the art “would have appreciated the benefit of including multi-carrier modulation in the Wu system,” observing that Wu references the 802.11a standard as a multi-carrier OFDM scheme able to achieve data rates faster than the 802.11b transmission rates. Pet. 48. Petitioner supports this contention with testimony by Dr. Almeroth, which we credit. See Ex. 1103 ¶ 66. Petitioner further reasons that the addition of the multi-carrier 802.11a modulation scheme “would have been a simple addition, if a technique was available for using a channel estimate obtained from data modulated according to a single carrier modulation scheme for acquisition of data modulated according to a multi-carrier modulation scheme.” Pet. 48 (citing Ex. 1103 ¶¶ 43–47, 65–68). Petitioner cites Böhnke for such a technique. Pet. 49. We are persuaded by Petitioner’s analysis on the present record.” slip op. at 5
- Expert testimonyPetitioner expert creditedDecided for petitioner
“carrier modulation scheme, Petitioner contends that a person of ordinary skill in the art “would have appreciated the benefit of including multi-carrier modulation in the Wu system,” observing that Wu references the 802.11a standard as a multi-carrier OFDM scheme able to achieve data rates faster than the 802.11b transmission rates. Pet. 48. Petitioner supports this contention with testimony by Dr. Almeroth, which we credit. See Ex. 1103 ¶ 66. Petitioner further reasons that the addition of the multi-carrier 802.11a modulation scheme “would have been a simple addition, if a technique was available for using a channel estimate obtained from data modulated according to a single carrier modulation scheme for acquisition of data modulated according to a multi-carrier modulation scheme.” Pet. 48 (citing Ex. 1103 ¶¶ 43–47, 65–68). Petitioner cites Böhnke for such a technique. Pet. 49. We are persuaded by Petitioner’s analysis on the present record.” slip op. at 5
§ 103 obviousnessPatents in suitUS 6,754,195
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.