- PTAB · Nov 17, 2021 · IPR2021-00544 · APJ Terrence W Mcmillin · IPR · Rehearing
Rehearing was granted and review instituted on all challenged claims and grounds after the Board found the ITC target date made Fintiv factor 2 neutral and Petitioner’s broadened stipulation favored institution.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Institution stated, “[t]he evidentiary hearing in the ITC investigation is scheduled to begin January 5, 2022, and the final determination is due April 29, 2022.” DDI 9 (citing Ex. 2004, 5; emphasis added). Petitioner is correct that the statement did not correctly state the target date for the ITC’s final determination. According to the Adopted Procedural Schedule for the ITC Investigation, the “Final ID” is due April 29, 2022, and the “Target Date” is August 29, 2022. Ex. 2004, 5. We agree that the ITC’s target date for final determination is more appropriate for evaluating Fintiv factor 2, consistent with the Board’s prior decisions. See Request 2–3 (identifying numerous proceedings). Applying the August 29, 2022, date, we conclude that Fintiv factor 2 is neutral in this proceeding, because of the close proximity between the ITC’s target final determination and our expected final written decision based on the mailing date of this Decision.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied discretionary otherDecided for petitioner
“Institution stated, “[t]he evidentiary hearing in the ITC investigation is scheduled to begin January 5, 2022, and the final determination is due April 29, 2022.” DDI 9 (citing Ex. 2004, 5; emphasis added). Petitioner is correct that the statement did not correctly state the target date for the ITC’s final determination. According to the Adopted Procedural Schedule for the ITC Investigation, the “Final ID” is due April 29, 2022, and the “Target Date” is August 29, 2022. Ex. 2004, 5. We agree that the ITC’s target date for final determination is more appropriate for evaluating Fintiv factor 2, consistent with the Board’s prior decisions. See Request 2–3 (identifying numerous proceedings). Applying the August 29, 2022, date, we conclude that Fintiv factor 2 is neutral in this proceeding, because of the close proximity between the ITC’s target final determination and our expected final written decision based on the mailing date of this Decision.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Summary as to Claim 1 Petitioner has shown a reasonable likelihood of showing that claim 1 of the ’423 patent would have been obvious in view of the combined teachings of Jeon, Everett, and Abramson. 5. Claims 2–4, 6–10, 12–15, 18–23, 25, and 26 Petitioner also contends that claims 2–4, 6–10, 12–15, 18–23, 25, and 26 would have been obvious in view of a combination of the asserted references. See Pet. 26–80. As noted previously, Patent Owner does not address the merits of any portion of the Petitioner’s obviousness showing. See generally Prelim. Resp. Thus, at this stage, Petitioner’s obviousness showing as to claims 2–4, 6–10, 12–15, 18–23, 25, and 26 is undisputed. We have determined that there is a reasonable likelihood that the Petitioner will prevail with respect to at least one of the claims challenged in the Petition pursuant to 35 U.S.C. § 314 and that inter partes review should be instituted. Accordingly, we institute as to all the challenged claims and all the challenges raised in the Petition. SAS Institute Inc. v. Iancu, 138 S.Ct. 1348, 1358 (2018); 37 C.F.R. §42.108 (a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). III. CONCLUSION Petitioner has persuaded us that rehearing is appropriate and we grant the Request for Rehearing. After reconsidering our discretionary denial of the Petition, we determine that discretionary denial is inappropriate. And, we determine that Petitioner has demonstrated a reasonable likelihood of showing at least one of the claims challenged in the Petition would have been obvious. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Request for Rehearing is granted; FURTHER ORDERED that an inter partes review is instituted on all challenged claims under all challenged grounds; and FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter partes review of the ʼ423 patent is hereby instituted commencing on the entry date of this Decision, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial.” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“With regard to combining the relevant teachings of Jeon and Everett relating to this limitation, the Petition states: It would have been obvious to combine this well-known, reduced base station approach velocity with [ ]Jeon . . . Doing so is nothing more than substituting a known feature (e.g., Everett’s reduced base station approach velocity) in an existing system ([ ]Jeon’s robot cleaner) according to known methods (e.g., function of stand-off distance) to achieve a predictable result (avoiding collision with and/or increased maneuverability for accurate alignment with the base station). Id.; KSR, 550 U.S. at 416-418. Selecting a reduced base station approach velocity is a known, obvious, trivial selection from a limited number of options (increasing, decreasing, or maintaining velocity). Likhachev, ¶ 82. Given the benefits of reducing the velocity (e.g., avoiding collision and/or increased maneuverability), to the extent not already understood from [ ]Jeon and the knowledge of a skilled artisan, a skilled artisan would have found it obvious to try reducing the base station approach velocity of [ ]Jeon’s robot cleaner as taught by Everett. Id.; KSR, 550 U.S. at 421. Pet. 19–20. At least at this stage of the proceedings, we determine that Petitioner provides sufficient rationale for combining the relied upon teachings of Jeon and Everett. We determine that, for purposes of institution, Petitioner has shown sufficiently that the cited art teaches this limitation.” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,884,423 - Apple Inc. v. Corephotonics, Ltd.Rehearing grantedPTAB · Nov 4, 2021 · IPR2020-00487 · APJ Monica S Ullagaddi · IPR · Rehearing
Claims 1–18 are unpatentable under §103: claims 1–4, 7, 10–13, and 16 over Golan and Martin; the remaining claims over combinations adding Ahiska, Levey, or Parulski.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“We initially concluded that Petitioner failed to establish a reasonable likelihood of prevailing in demonstrating that the challenged claims are unpatentable. Paper 9 (“Decision Denying Institution” or “DDI”). Specifically, we concluded that Petitioner’s rationale for combining Golan and Martin was not sufficiently supported by a rational underpinning. Dec. 26 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). Accordingly, we declined to institute trial on the challenged claims of the ’233 patent. Id. Petitioner filed a request for rehearing (Paper 10, “Rehearing Request” or “Reh’g Req.”) of our Decision Denying Institution. We granted that request and instituted trial (Paper 13, “Institution Decision” or “Inst. Dec.”) on all challenged claims on all grounds set forth in the Petition. Patent Owner filed a Response (Paper 16, “Patent Owner Response” or “PO. Resp.”).1 Petitioner filed a Reply (Paper 25, “Petitioner’s Reply” or “Pet.” slip op. at 2
- Expert testimonyOther
“Dr. Durand testifies that “a POSITA would have understood that Martin’s teachings of critical alignment for stable transition between images of different points of view apply to electronic camera systems providing continuous zoom video output [i]mages as taught in Golan, regardless of whether a three dimensional illusion is provided.” Ex. 1003 ¶ 59. Citing Ahiska (Ex. 1007), Border (Ex. 1009), Orimoto (Ex. 1014), and Hansen (Ex. 1019) to support his testimony, Durand further testifies that It was well known in the art that for seamless transition between two images of different points of views in continuous zoom video applications, when calibration between two cameras (e.g., the electronic calibration of Golan) is not sufficient alone (e.g., because of shocking, vibration, thermal variation, etc.), image registration of two images from two imaging sections for position matching (e.g., critical alignment of Martin) may be used. Id. ¶ 57 (citing Ex. 1007, 4:58–62, 10:2–5; Ex. 1014, 1:63–2:1; Ex. 1019, 1059; Ex. 1009 ¶¶ 41, 42). The portion of Hansen (Ex. 1019) cited by Dr. Durand addresses how extrinsic calibration errors occur and “a method to recalibrate extrinsic parameters online to correct drift or bias.” Ex. 1019, 1059 (emphasis omitted). Orimoto discloses how misalignment occurs, irrespective of “how exactly the dual lens camera has been conditioned and adjusted by the manufacturer.” Ex. 1014, 1:63–2:1. Border addresses image registration as an alternative to correspondence (i.e., calibration). Ex. 1009 ¶¶ 41, 42. And Ahiska disclose image registration or matching, when calibration is insufficient, to provide a seamless transition between master and slave cameras and “create the quality of a continuous zoom function.” Ex. 1007, 4:58–62, 10:2–5 (“[i]f calibration between the [wide-angle] master and slave cameras is insufficient alone, image registration or matching can be carried out,” “transition[ing] between the master view and the slave view as seamlessly as possible to create the quality of a continuous zoom function”). Petitioner’s third and fourth reasons for combining Golan and Martin are supported by Dr. Durand’s testimony quoted above, which is in turn supported by Ahiska and Border. The portions of Border cited by Dr. Durand address image registration as an alternative to correspondence (i.e., calibration). Ex. 1009 ¶¶ 41, 42. The portions of Ahiska cited by Dr. Durand address the additional step of image registration or matching, when calibration is insufficient, to provide a seamless transition between master and slave cameras and “create the quality of a continuous zoom function.” Ex. 1007, 4:58–62, 10:2–5. Thus, each of Border and Ahiska show a relation between electronic calibration and registration. As such, and for the foregoing reasons, we are persuaded that Petitioner’s rationale for combining Golan and Martin is supported by sufficient rational underpinning, based on the entirety of the record developed at trial. See KSR, 550 at 418.” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends [A] Person of Ordinary Skill in the Art (“POSITA”) at the time of the claimed invention would have a bachelor’s or the equivalent degree in electrical and/or computer engineering or a related field and 2–3 years of experience in imaging systems including optics and image processing. Pet. 5. Petitioner supports its contention with the testimony of Dr. Durand. Ex. 1003 ¶ 17. Patent Owner “adopts Petitioner’s definition of the level of ordinary skill. . . .” PO Resp. 7 (citing Pet. 3; Ex. 2015 ¶¶ 31–33). The level of ordinary skill in the art proposed by Petitioner is consistent with the ’233 patent and the asserted prior art. Where pertinent, we apply Petitioner’s definition in making the findings and conclusions rendered in this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“understood ‘reduce an image jump effect seen in video output images’ to mean “reduce a discontinuous image change in video output images.’” Pet. 6 (citing Ex. 1003 ¶¶ 41–43). Petitioner asserts the Specification supports this proposed construction. Id. (citing Ex. 1001, 10:30–40). Patent Owner “adopts, for this IPR proceeding only, Petitioner’s proposed construction for the phrase ‘reduce an image jump effect seen in video output images’ and appl[ies] it in [its] analysis herein.” PO Resp. 8 (citing Ex. 2015 ¶¶ 34–36). We do not discern a dispute between the parties regarding this limitation and we need not expressly construe this limitation to resolve the controversy before us. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,661,233 - PTAB · Sep 24, 2021 · IPR2021-00095 · APJ Terrence W Mcmillin · IPR · Rehearing
The Board granted rehearing, vacated its discretionary denial, and instituted review of claims 1, 2, 6, 8–10, and 12–20 on all asserted grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“misapprehended the nature and fragility of Patent Owner’s assertion of the ’707 Patent in the ITC Investigation and the corresponding likelihood that the ITC Investigation would yield a final invalidity determination before a final written decision is this proceeding, and further that the facts as they stand today do not support the Board’s Decision.” Request 2. We do not agree that the Board misapprehended anything. Our Decision Denying Institution was appropriate under the facts as they existed at the time. We do agree that the facts as they stand today do not support our Decision Denying Institution and, in light of the changed facts, we modify our earlier decision that exercised our discretion to deny institution. The parallel proceeding that served as our basis for exercising our discretion to deny institution no longer involves the ’707 patent. On June 28, 2021, the ITC Investigation was terminated with respect to the ’707 patent. Ex. 1063, 2. Petitioner argues that, “Patent Owner’s decision to terminate the ’707 Patent from the ITC Investigation eliminates the factual basis for the Board’s denial of institution.” Request 4. We agree. In weighing the Fintiv factors, we relied on the involvement of the ’707 patent in an ITC investigation as the basis for our weighing 4 of 6 factors and for our holistic assessment of the factors in favor of our exercising our discretion to deny institution. DDI 9 (factor 1), 10 (factor 2), 11 (factor 3), 14 (factor 5), 15 (holistic assessment). However, the ITC investigation no longer provides any basis for exercising our discretion to deny institution.11 We possess the inherent authority to reconsider our Decision Denying Institution. See GTNX, Inc. v. INTTRA, Inc., 789 F.3d 1309, 1313 (Fed. Cir. 2015). In light of the termination of the ITC investigation with respect to the ’707 patent, we no longer exercise our discretion to deny institution.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“discretion to deny institution no longer involves the ’707 patent. On June 28, 2021, the ITC Investigation was terminated with respect to the ’707 patent. Ex. 1063, 2. Petitioner argues that, “Patent Owner’s decision to terminate the ’707 Patent from the ITC Investigation eliminates the factual basis for the Board’s denial of institution.” Request 4. We agree. In weighing the Fintiv factors, we relied on the involvement of the ’707 patent in an ITC investigation as the basis for our weighing 4 of 6 factors and for our holistic assessment of the factors in favor of our exercising our discretion to deny institution. DDI 9 (factor 1), 10 (factor 2), 11 (factor 3), 14 (factor 5), 15 (holistic assessment). However, the ITC investigation no longer provides any basis for exercising our discretion to deny institution.11 We possess the inherent authority to reconsider our Decision Denying Institution. See GTNX, Inc. v. INTTRA, Inc., 789 F.3d 1309, 1313 (Fed. Cir. 2015). In light of the termination of the ITC investigation with respect to the ’707 patent, we no longer exercise our discretion to deny institution.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Id. at 21–23. We determine that Petitioner has provided a showing sufficient to support institution as to why a skilled artisan would have been motivated at the time of the invention to look to the laser ablation scribing system of Suutarinen to implement the solar cell backside scribing techniques of Jinno, with a reasonable expectation of success in meeting the limitations of the claimed invention. Summary as to Claim 1 Petitioner has shown a reasonable likelihood of showing that claim 1 of the ’707 patent would have been obvious in view of the combined teachings of Jinno and Suutarinen.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Motivation to Combine the Relevant Teachings of Jinno and Suutarinen Petitioner provides detailed and well-supported reasoning for combining the relevant teachings of Jinno and Suutarinen. See Pet. 19–26. The Petition states, “[a]s of the effective filing date of the 707 Patent, a Skilled Artisan would have found it obvious to employ the laser ablation scribing system of Suutarinen to implement the solar cell backside scribing techniques of Jinno[ ].” Id. at 19. With specific regard to combining the teachings of these references, the Petition provides: [T]he two systems disclose analogous functionality, such as ablation or laser scribing more generally, a Skilled Artisan would understand combining their techniques to be an efficient and common sense way to implement the combined system in order to obtain the benefits of both, and therefore would have been motivated to make the combination. EX1003,¶80. Further, Jinno[ ], Suutarinen, and the 707 Patent are analogous art because each is in the same field of endeavor— i.e., laser scribing and singulation of semiconductor wafers. See EX1005,Abstract,¶[0006]; EX1006,¶[0002]; EX1001,Abstract. Also, Jinno[ ] and Suutarinen are reasonably pertinent to the particular problem the inventor of the 707 Patent was trying to solve—achieving singulation without the drawbacks of mechanical sawing. See EX1001,2:19-20 (“Conventionally, solar cells are mechanically cut with a saw. However, this technique has numerous disadvantages.”); EX1005,[0005]; EX1006,¶[0005]; EX1003,¶81. A Skilled Artisan would have further understood that the combination of Jinno[ ] and Suutarinen as analyzed here is merely an arrangement of old elements (backside laser scribing of solar cells to a depth of half the solar cell thickness (Jinno[ ]) and blowing gas and vacuum exhaust during laser ablation (Suutarinen)), with each performing the same function it had been known to perform (singulation of semiconductor based solar cells (Jinno[ ]), enhancing scribing via debris removal (Suutarinen)), and yielding no more than what one would expect from such an arrangement (laser ablation and singulation of solar cells with removal of gaseous material generated from the laser processing). The combination could therefore have been made with a reasonable expectation of success and without undue experimentation. EX1003,¶82. Id. at 21–23. We determine that Petitioner has provided a showing sufficient to support institution as to why a skilled artisan would have been motivated at the time of the invention to look to the laser ablation scribing system of Suutarinen to implement the solar cell backside scribing techniques of Jinno, with a reasonable expectation of success in meeting the limitations of the claimed invention.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,522,707 - Platform Science, Inc. v. Omnitracs, LLCRehearing grantedPTAB · Sep 3, 2021 · IPR2020-01612 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board granted rehearing and instituted IPR on all petition grounds for claims 1–4, 6–9, 11, 12, and 15, finding a reasonable likelihood of prevailing.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 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. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“preliminary stage, we determine that Petitioner demonstrates a reasonable likelihood of prevailing with respect to claim 1.” slip op. at 44
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The only dispute pertaining to claim construction at this stage of the proceeding is whether the phrase “a process for creating said response message,” recited in claim 1, is governed by 35 U.S.C. § 112 ¶ 6.6 Petitioner 6 As noted above, Petitioner raises a second claim construction issue in its Rehearing Request. See Req. Reh’g 12–15 (asserting that the claims require only one instance of copying information from a formatted message to a response message based on which formatted message was received). Petitioner did not raise this issue in the Petition, Patent Owner has not had an contends that the phrase should be interpreted as a means-plus-function limitation, whereas Patent Owner contends that it should not. Compare Pet. 2–7 (advocating for a means-plus-function construction), with Prelim. Resp. 9–11 (advocating for an ordinary and customary meaning). At this stage of the proceeding, the dispute between the parties regarding the construction of this claim phrase does not impact our Decision. Accordingly, we need not construe expressly any claim terms for the purpose of this Decision.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“VI. ANALYSIS Legal Standards – Anticipation “[A] claim is anticipated ‘if each and every limitation is found expressly or inherently in a single prior art reference.’” King Pharm., Inc. v. Eon Labs., Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998)). Anticipation is a question of fact, In re Gleave, 560 F.3d 1331, 1334–35 (Fed. Cir. 2009), assessed from the perspective of one of ordinary skill in the art, see Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (“the dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching that every claim element was disclosed in that single reference” (alteration in original) (quotation omitted)).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,925,308 - Neumodx Molecular, Inc. v. Handylab, Inc.Rehearing grantedPTAB · Aug 6, 2021 · IPR2020-01133 · APJ Jo-Anne M Kokoski · IPR · Rehearing
Granted Petitioner’s rehearing request and instituted review of claims 1–15 on all asserted grounds because the Petition showed a reasonable likelihood of unpatentability.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Rehearing Request and conclude that we misapprehended the law of incorporation by reference when evaluating the grounds based on Ganesan- Publ’424, and that the Petition sets forth sufficient grounds and evidence to justify institution of trial.8 We, therefore, grant Petitioner’s Rehearing 8 Because our determination that we misapprehended the law of incorporation by reference is dispositive, we need not address Petitioner’s other arguments in the Rehearing Request. Request and institute an inter partes review of claims 1–15 of the ’103 patent on all the grounds asserted in the Petition.” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“‘generally incorporates’ Ganesan-Prov’264, and did not ‘identif[y] with particularity’ any specific subject matter from Ganesan-Prov’264 . . . misapprehended the law of incorporation by reference in a way that is contrary to both Federal Circuit precedent and other Board decisions.” Req. Reh’g 10 (citing Dec. 18; Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000)). In particular, Petitioner argues that Advanced Display’s statement that “[t]o incorporate material by reference, the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents” (212 F.3d at 1282) does not mean that the host document must identify some specific subject matter or subpart of the incorporated document (such as by page/line). Rather, the quoted statement simply means that the host document must clearly identify what is being incorporated and where it can be found—even when the incorporation applies to the entire document.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“with sufficient particularity such that the entirety of Ganesan-Prov’264 is incorporated therein, and Ganesan-Prov’264 forms a part of Ganesan- Publ’424 for purposes of anticipation. Ganesan-Prov’264 “relates generally to techniques for thermal control of microfluidic devices.” Ex. 1208, 2:29– 30. Ganesan-Prov’264 teaches that “heater/sensors in accordance with the invention may be integral with a microfluidic device or separate from a microfluidic device,” and “may be formed separately from the microfluidic device.” Id. at 12:16–21 (emphases added). Ganesan-Prov’264 further teaches that “one or more heater/sensors may be formed as part of a device configured to operatively receive a microfluidic device,” and “[t]he device may include one or more heater sensors positioned to be in thermal contact with portions of the operatively received microfluidic device.” Id. at 12:21– 26. Based on these teachings, Petitioner’s declarant, Dr. Mark Burns, testifies that “the heater array of Ganesan-Publ’424 may be formed integrally with the network-containing microfluidic substrate, or may be formed separately in a testing device into which the microfluidic substrate is placed or another part of the system.” Ex. 1101 ¶ 345 (citing Ex. 1109 ¶ 79; Ex. 1208, 12:20–25).” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“to begin on April 11, 2022. Prelim. Resp. 45. We note, however, that the parties recently filed a Stipulation and Proposed Order to Extend Case Schedule, pushing the trial to December 2022, which the district court granted. Ex. 3001. Given the statutory deadlines, our latest possible date for issuance of a final written decision in this proceeding is in July, 2022, one year after we issue this decision instituting an inter partes review. 35 U.S.C. §§ 314(c), 316(a)(11); see also 37 C.F.R. § 42.100(c). Thus, our final written decision would issue at least four months before trial. “If the court’s trial date is earlier than the projected statutory deadline, the Board generally has weighed this fact in favor of exercising authority to deny institution under NHK.” Fintiv Order 9. We find that this factor weighs strongly against exercising discretion to deny institution.” slip op. at 12
§ 102 anticipationDiscretionary denialPatents in suitUS 8,415,103 - Brooks Sports, Inc. v. Herbert E. TownsendRehearing grantedPTAB · May 17, 2021 · IPR2018-00577 · APJ Hyun J Jung · IPR · Rehearing
The Board granted rehearing in part, finding challenges 8 and 9 unproven and limiting challenge 3 as to claim 6; it declined to disregard the petitioner’s expert’s entire testimony.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“37 C.F.R. § 42.71(d) sets forth, in relevant part that: A party dissatisfied with a decision may file a single 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.” slip op. at 4
- Expert testimonyPetitioner expert creditedMixed
“Dr. Shorten’s testimonies entirely. Nonetheless, in the Final Written Decision, in addressing Patent Owner’s arguments concerning the relevant art and level of ordinary skill in the art, we stated that the parties’ arguments “address what weight we should give to the testimony of the parties’ declarants” and “[f]or the reasons addressed below, the parties’ declarants both provide relevant testimony on issues being assessed dependent on the declarant’s particular background and expertise.” Final Dec. 13. We, thus, Rather, we assessed portions of the testimonies and how much weight should be given to them. In doing so, we considered Dr. Shorten’s relationship with Petitioner and the alleged conflicting testimony. Such matters go to credibility of the witness, but do not justify disregarding the testimony altogether as requested by Patent Owner. Even if there were conflicting testimonies as to whether Dr. Shorten ever tested a running shoe that has a dilatant compound in the sole, Dr. Shorten effectively corrected such discrepancy in his second declaration by testifying that his employee tested the Power Bounce shoe. See PO Sur- Reply 9. These two matters raised by Patent Owner did not rise to the level that Dr. Shorten’s entire testimony should be disregarded.” slip op. at 7
- Obviousness (§103) › Objective indicia / secondary considerationsDecided for petitioner
“In its Response in regard to secondary considerations, Patent Owner argued that “Petitioner’s expert tried and failed in 1985 to create shoes that had a dilatant compound in the sole.” PO Resp. 61. Petitioner replied that “Dr. Shorten explains there was not a failed attempt, but a reasonable decision to not to try because better materials were available.” Pet. Reply 27 (citing Ex. 1071 at ¶¶ 164–170). In his Reply Declaration, Dr. Shorten testified that Silly Putty in a shoe component “does not perform better than EVA [(ethyl vinyl acetate)],” that “it performed worse,” and that “[g]iven the additional cost and weight compared to EVA, Silly Putty does not provide a better option.” Ex. 1071 ¶ 170. We stated in the Final Written Decision that Petitioner replied that its declarant “explains there was not a failed attempt, but a reasonable decision to not to try because better materials were available.” Final Dec. 70 (citing Pet. Reply 27). Also, as pointed out in the Final Written Decision, Dr. Shorten testified that “Silly Putty is heavy and costly compared to EVA, a benchmark material,” “[g]iven the additional cost and weight compared to EVA, Silly Putty does not provide a better option,” and “I don’t think it has any -- in the form we see it in, you know, the patent referenced in the Townsend, I don’t think there’s any commercial value there personally.” Id. (citing Ex. 1071 (Shorten Reply Dec.) ¶¶ 164, 170; Ex. 2009 (Shorten “[b]ased on the record, a preponderance of the evidence persuades us that others tried but decided for economic reasons that using a dilatant compound in a shoe was an unattractive option.” Final Dec. 70. Thus, the Final Written Decision provided grounds for disregarding Petitioner’s Expert’s testimony with respect to his conclusion in 1985 to the extent that it conflicts with the later testimony. The fact that Dr. Shorten clarified or corrected his earlier testimony does not mean that we should disregard his later testimony, because there is nothing in the record to hold against the veracity of later testimonies, other than that earlier inconsistent testimony itself.” slip op. at 9
§ 103 obviousnessPatents in suitUS 7,490,416 - Axonics Modulation Technologies, Inc. v. Medtronic, Inc.Rehearing grantedPTAB · May 14, 2021 · IPR2020-00712 · APJ James A Tartal · IPR · Rehearing
The Board granted Patent Owner leave to file Dr. Mihran’s cross-examination testimony as an exhibit, finding it could not have been obtained earlier and that the interests of justice supported admission.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“To the extent Patent Owner’s request for leave did not specifically encompass relief pursuant to Rule 42.123(b) and, therefore, lies outside of a proper request for rehearing, we find in the interests of efficiency in the proceedings that we may consider whether Patent Owner’s Request satisfies Rule 42.123(b), in light of the arguments advanced by both parties, rather than, for example, require Patent Owner to refile its request for leave pursuant to Rule 42.123(b). We further find that Patent Owner’s arguments sufficiently show that the cross-examination testimony of Dr. Mihran could not have been obtained earlier (by virtue of it being cross-examination testimony). Petitioner’s contention that Patent Owner had “unfettered access” to Dr. Mihran does not suggest that the cross-examination testimony to be filed as an exhibit, based on questioning by Petitioner, could have been obtained earlier. See Resp. 9. Further, we are persuaded that the interests-of-justice support allowing the cross-examination testimony to be entered in the record as an exhibit, including the interests of allowing each party to rely on evidence developed during trial to support or attack the credibility of a declarant. See Ultratec, Inc. v. CaptionCall LLC, 872 F.3d 1267, 1273 (Fed. Cir. 2017) (“[N]o reasonable fact finder would refuse to consider evidence of inconsistent sworn testimony. Moreover, any such inconsistencies would likely bear on the overall credibility of the expert.”). We considered Petitioner’s argument that Patent Owner seeks to use improperly the cross-examination testimony to support its sur-reply, because “Dr. Mihran developed new arguments and opinions that Patent Owner would like to advance.” Id. at 7–8. To be clear, we make no finding on whether any testimony in the transcript of Dr. Mihran’s cross-examination may be properly relied on by Patent Owner in support of the sur-reply in each case and do not limit Petitioner’s ability to contest Patent Owner’s use of the cross-examination testimony. To the extent Patent Owner relies on the cross-examination testimony in support of its sur-replies, Petitioner may dispute whether such reliance is proper. Petitioner may also choose to request leave to file additional briefing to respond to arguments advanced by Patent Owner citing the cross-examination testimony of Dr. Mihran. We, therefore, conclude that the interests-of-justice favor allowing Patent Owner to file the cross-examination testimony of Dr. Mihran as an exhibit.” slip op. at 7
- Additional discoveryAdditional discovery, grantedGranted
“encompass relief pursuant to Rule 42.123(b) and, therefore, lies outside of a proper request for rehearing, we find in the interests of efficiency in the proceedings that we may consider whether Patent Owner’s Request satisfies Rule 42.123(b), in light of the arguments advanced by both parties, rather than, for example, require Patent Owner to refile its request for leave pursuant to Rule 42.123(b). We further find that Patent Owner’s arguments sufficiently show that the cross-examination testimony of Dr. Mihran could not have been obtained earlier (by virtue of it being cross-examination testimony). Petitioner’s contention that Patent Owner had “unfettered access” to Dr. Mihran does not suggest that the cross-examination testimony to be filed as an exhibit, based on questioning by Petitioner, could have been obtained earlier. See Resp. 9. Further, we are persuaded that the interests-of-justice support allowing the cross-examination testimony to be entered in the record as an exhibit, including the interests of allowing each party to rely on evidence developed during trial to support or attack the credibility of a declarant. See Ultratec, Inc. v. CaptionCall LLC, 872 F.3d 1267, 1273 (Fed. Cir. 2017) (“[N]o reasonable fact finder would refuse to consider evidence of inconsistent sworn testimony. Moreover, any such inconsistencies would likely bear on the overall credibility of the expert.”). We considered Petitioner’s argument that Patent Owner seeks to use improperly the cross-examination testimony to support its sur-reply, because “Dr. Mihran developed new arguments and opinions that Patent Owner would like to advance.” Id. at 7–8. To be clear, we make no finding on whether any testimony in the transcript of Dr. Mihran’s cross-examination may be properly relied on by Patent Owner in support of the sur-reply in each case and do not limit Petitioner’s ability to contest Patent Owner’s use of the cross-examination testimony. To the extent Patent Owner relies on the cross-examination testimony in support of its sur-replies, Petitioner may dispute whether such reliance is proper. Petitioner may also choose to request leave to file additional briefing to respond to arguments advanced by Patent Owner citing the cross-examination testimony of Dr. Mihran. We, therefore, conclude that the interests-of-justice favor allowing Patent Owner to file the cross-examination testimony of Dr. Mihran as an exhibit.” slip op. at 7
NonePatents in suitUS 8,738,148 - Axonics Modulation Technologies, Inc. v. Medtronic, Inc.Rehearing grantedPTAB · May 14, 2021 · IPR2020-00680 · APJ James A Tartal · IPR · Rehearing
The Board granted Patent Owner leave to file Dr. Mihran’s cross-examination testimony as an exhibit, finding it could not have been obtained earlier and admission served the interests of justice.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“encompass relief pursuant to Rule 42.123(b) and, therefore, lies outside of a proper request for rehearing, we find in the interests of efficiency in the proceedings that we may consider whether Patent Owner’s Request satisfies Rule 42.123(b), in light of the arguments advanced by both parties, rather than, for example, require Patent Owner to refile its request for leave pursuant to Rule 42.123(b). We further find that Patent Owner’s arguments sufficiently show that the cross-examination testimony of Dr. Mihran could not have been obtained earlier (by virtue of it being cross-examination testimony). Petitioner’s contention that Patent Owner had “unfettered access” to Dr. Mihran does not suggest that the cross-examination testimony to be filed as an exhibit, based on questioning by Petitioner, could have been obtained earlier. See Resp. 9. Further, we are persuaded that the interests-of-justice support allowing the cross-examination testimony to be entered in the record as an exhibit, including the interests of allowing each party to rely on evidence developed during trial to support or attack the credibility of a declarant. See Ultratec, Inc. v. CaptionCall LLC, 872 F.3d 1267, 1273 (Fed. Cir. 2017) (“[N]o reasonable fact finder would refuse to consider evidence of inconsistent sworn testimony. Moreover, any such inconsistencies would likely bear on the overall credibility of the expert.”). We considered Petitioner’s argument that Patent Owner seeks to use improperly the cross-examination testimony to support its sur-reply, because “Dr. Mihran developed new arguments and opinions that Patent Owner would like to advance.” Id. at 7–8. To be clear, we make no finding on whether any testimony in the transcript of Dr. Mihran’s cross-examination may be properly relied on by Patent Owner in support of the sur-reply in each case and do not limit Petitioner’s ability to contest Patent Owner’s use of the cross-examination testimony. To the extent Patent Owner relies on the cross-examination testimony in support of its sur-replies, Petitioner may dispute whether such reliance is proper. Petitioner may also choose to request leave to file additional briefing to respond to arguments advanced by Patent Owner citing the cross-examination testimony of Dr. Mihran. We, therefore, conclude that the interests-of-justice favor allowing Patent Owner to file the cross-examination testimony of Dr. Mihran as an exhibit.” slip op. at 7
- Additional discoveryAdditional discovery, grantedGranted
“encompass relief pursuant to Rule 42.123(b) and, therefore, lies outside of a proper request for rehearing, we find in the interests of efficiency in the proceedings that we may consider whether Patent Owner’s Request satisfies Rule 42.123(b), in light of the arguments advanced by both parties, rather than, for example, require Patent Owner to refile its request for leave pursuant to Rule 42.123(b). We further find that Patent Owner’s arguments sufficiently show that the cross-examination testimony of Dr. Mihran could not have been obtained earlier (by virtue of it being cross-examination testimony). Petitioner’s contention that Patent Owner had “unfettered access” to Dr. Mihran does not suggest that the cross-examination testimony to be filed as an exhibit, based on questioning by Petitioner, could have been obtained earlier. See Resp. 9. Further, we are persuaded that the interests-of-justice support allowing the cross-examination testimony to be entered in the record as an exhibit, including the interests of allowing each party to rely on evidence developed during trial to support or attack the credibility of a declarant. See Ultratec, Inc. v. CaptionCall LLC, 872 F.3d 1267, 1273 (Fed. Cir. 2017) (“[N]o reasonable fact finder would refuse to consider evidence of inconsistent sworn testimony. Moreover, any such inconsistencies would likely bear on the overall credibility of the expert.”). We considered Petitioner’s argument that Patent Owner seeks to use improperly the cross-examination testimony to support its sur-reply, because “Dr. Mihran developed new arguments and opinions that Patent Owner would like to advance.” Id. at 7–8. To be clear, we make no finding on whether any testimony in the transcript of Dr. Mihran’s cross-examination may be properly relied on by Patent Owner in support of the sur-reply in each case and do not limit Petitioner’s ability to contest Patent Owner’s use of the cross-examination testimony. To the extent Patent Owner relies on the cross-examination testimony in support of its sur-replies, Petitioner may dispute whether such reliance is proper. Petitioner may also choose to request leave to file additional briefing to respond to arguments advanced by Patent Owner citing the cross-examination testimony of Dr. Mihran. We, therefore, conclude that the interests-of-justice favor allowing Patent Owner to file the cross-examination testimony of Dr. Mihran as an exhibit.” slip op. at 7
- Strike new argumentNot reached
“allowing the cross-examination testimony to be entered in the record as an exhibit, including the interests of allowing each party to rely on evidence developed during trial to support or attack the credibility of a declarant. See Ultratec, Inc. v. CaptionCall LLC, 872 F.3d 1267, 1273 (Fed. Cir. 2017) (“[N]o reasonable fact finder would refuse to consider evidence of inconsistent sworn testimony. Moreover, any such inconsistencies would likely bear on the overall credibility of the expert.”). We considered Petitioner’s argument that Patent Owner seeks to use improperly the cross-examination testimony to support its sur-reply, because “Dr. Mihran developed new arguments and opinions that Patent Owner would like to advance.” Id. at 7–8. To be clear, we make no finding on whether any testimony in the transcript of Dr. Mihran’s cross-examination may be properly relied on by Patent Owner in support of the sur-reply in each case and do not limit Petitioner’s ability to contest Patent Owner’s use of the cross-examination testimony. To the extent Patent Owner relies on the cross-examination testimony in support of its sur-replies, Petitioner may dispute whether such reliance is proper. Petitioner may also choose to request leave to file additional briefing to respond to arguments advanced by Patent Owner citing the cross-examination testimony of Dr. Mihran. We, therefore, conclude that the interests-of-justice favor allowing Patent Owner to file the cross-examination testimony of Dr. Mihran as an exhibit.” slip op. at 7
NonePatents in suitUS 8,457,758 - Axonics Modulation Technologies, Inc. v. Medtronic, Inc.Rehearing grantedPTAB · May 14, 2021 · IPR2020-00678 · APJ James A Tartal · IPR · Rehearing
The Board granted Patent Owner leave to file Dr. Mihran’s cross-examination testimony as an exhibit in each proceeding, finding that it could not have been obtained earlier and that admission served the interests of justice.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“To the extent Patent Owner’s request for leave did not specifically encompass relief pursuant to Rule 42.123(b) and, therefore, lies outside of a proper request for rehearing, we find in the interests of efficiency in the proceedings that we may consider whether Patent Owner’s Request satisfies Rule 42.123(b), in light of the arguments advanced by both parties, rather than, for example, require Patent Owner to refile its request for leave pursuant to Rule 42.123(b). We further find that Patent Owner’s arguments sufficiently show that the cross-examination testimony of Dr. Mihran could not have been obtained earlier (by virtue of it being cross-examination testimony). Petitioner’s contention that Patent Owner had “unfettered access” to Dr. Mihran does not suggest that the cross-examination testimony to be filed as an exhibit, based on questioning by Petitioner, could have been obtained earlier. See Resp. 9. Further, we are persuaded that the interests-of-justice support allowing the cross-examination testimony to be entered in the record as an exhibit, including the interests of allowing each party to rely on evidence developed during trial to support or attack the credibility of a declarant. See Ultratec, Inc. v. CaptionCall LLC, 872 F.3d 1267, 1273 (Fed. Cir. 2017) (“[N]o reasonable fact finder would refuse to consider evidence of inconsistent sworn testimony. Moreover, any such inconsistencies would likely bear on the overall credibility of the expert.”). We considered Petitioner’s argument that Patent Owner seeks to use improperly the cross-examination testimony to support its sur-reply, because “Dr. Mihran developed new arguments and opinions that Patent Owner would like to advance.” Id. at 7–8. To be clear, we make no finding on whether any testimony in the transcript of Dr. Mihran’s cross-examination may be properly relied on by Patent Owner in support of the sur-reply in each case and do not limit Petitioner’s ability to contest Patent Owner’s use of the cross-examination testimony. To the extent Patent Owner relies on the cross-examination testimony in support of its sur-replies, Petitioner may dispute whether such reliance is proper. Petitioner may also choose to request leave to file additional briefing to respond to arguments advanced by Patent Owner citing the cross-examination testimony of Dr. Mihran. We, therefore, conclude that the interests-of-justice favor allowing Patent Owner to file the cross-examination testimony of Dr. Mihran as an exhibit.” slip op. at 7
- Additional discoveryAdditional discovery, grantedGranted
“encompass relief pursuant to Rule 42.123(b) and, therefore, lies outside of a proper request for rehearing, we find in the interests of efficiency in the proceedings that we may consider whether Patent Owner’s Request satisfies Rule 42.123(b), in light of the arguments advanced by both parties, rather than, for example, require Patent Owner to refile its request for leave pursuant to Rule 42.123(b). We further find that Patent Owner’s arguments sufficiently show that the cross-examination testimony of Dr. Mihran could not have been obtained earlier (by virtue of it being cross-examination testimony). Petitioner’s contention that Patent Owner had “unfettered access” to Dr. Mihran does not suggest that the cross-examination testimony to be filed as an exhibit, based on questioning by Petitioner, could have been obtained earlier. See Resp. 9. Further, we are persuaded that the interests-of-justice support allowing the cross-examination testimony to be entered in the record as an exhibit, including the interests of allowing each party to rely on evidence developed during trial to support or attack the credibility of a declarant. See Ultratec, Inc. v. CaptionCall LLC, 872 F.3d 1267, 1273 (Fed. Cir. 2017) (“[N]o reasonable fact finder would refuse to consider evidence of inconsistent sworn testimony. Moreover, any such inconsistencies would likely bear on the overall credibility of the expert.”). We considered Petitioner’s argument that Patent Owner seeks to use improperly the cross-examination testimony to support its sur-reply, because “Dr. Mihran developed new arguments and opinions that Patent Owner would like to advance.” Id. at 7–8. To be clear, we make no finding on whether any testimony in the transcript of Dr. Mihran’s cross-examination may be properly relied on by Patent Owner in support of the sur-reply in each case and do not limit Petitioner’s ability to contest Patent Owner’s use of the cross-examination testimony. To the extent Patent Owner relies on the cross-examination testimony in support of its sur-replies, Petitioner may dispute whether such reliance is proper. Petitioner may also choose to request leave to file additional briefing to respond to arguments advanced by Patent Owner citing the cross-examination testimony of Dr. Mihran. We, therefore, conclude that the interests-of-justice favor allowing Patent Owner to file the cross-examination testimony of Dr. Mihran as an exhibit.” slip op. at 7
NonePatents in suitUS 7,774,069 - Grünenthal GmbH v. Antecip Bioventures II LLCRehearing grantedPTAB · Nov 10, 2020 · PGR2018-00092 · APJ Sheridan K Snedden · PGR · Rehearing
The Board granted the petitioner’s rehearing request, vacated the final written decision, and will issue a revised decision after overlooking Varenna 2012 in Grounds 5–7.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“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 (1) “specifically identify all matters the party believes the Board misapprehended or overlooked” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768.” slip op. at 2
NonePatents in suitUS 9,820,999
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.