- Samsung Display Co., Ltd. v. Solas Oled, Ltd.Rehearing deniedPTAB · Oct 25, 2021 · IPR2019-01668 · APJ Jessica C Kaiser · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1–20 unpatentable over Moran and Joo-based obviousness grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A. Standard of Review The party challenging a decision in a request for rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “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, a reply, or a sur-reply.” Id. A request for rehearing, therefore, is not an opportunity to merely disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner’s arguments regarding motivation to combine the teachings of Moran and Joo. In our Decision, we found that, “[a]s Patent Owner acknowledges (PO Sur-reply 26), Petitioner’s combination does not rely on any manufacturing techniques in Joo.” Dec. 21. We agreed with Petitioner that “creat[ing] additional touch sensitive regions on the sides of the device as taught in Joo,” provides the benefits attributed to Joo, but the benefits “are not wholly dependent upon the injection molding technique of Joo.” Id. (citing Pet. 66–67). Although we appreciate that Joo uses injection molding to form his device, we determined that the “benefits [of Joo] inure from having the touch sensitive portion on the side of the display rather than the manufacturing technique that results in that touch sensitive portion (i.e., injection molding versus bending the touch sensitive portion to wrap it around the edge of the display).” Id. at 21–22. This is consistent with Petitioner’s “Motivation to Combine” set forth in the Petition, i.e., “application of a known technique [Joo’s teaching of wrapping a touch sensor around the edges of a touchscreen display] to a piece of prior art ready for the improvement [Moran’s flexible capacitive touch sensor for a touchscreen device].” Pet. 67 (citing KSR International Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)). Indeed, in our Decision on Institution (Paper 7, 21), we expressly stated that we did not “understand Petitioner’s combination to rely on any manufacturing techniques in Joo.” Accordingly, we determine we did not change reasoning midstream as to why we agreed with Petitioner’s motivation to combine the teachings of Moran and Joo, and thus, did not misapprehend or overlook Petitioner’s motivation to combine the teachings of Moran and Joo.” slip op. at 4
- Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for petitioner
“We disagree. In our Decision, we found Dr. Wolfe’s testimony “credible and persuasive that resolving [implementation] details would have been well within the skill of a person of ordinary skill in the art.” Dec. 23 (citing Ex. 1023 ¶¶ 178–183). Dr. Wolfe provided detailed testimony supported by objective evidence on this point. See id. (citing Pet. 68); Ex. 1023 ¶¶ 182–183 (citing Ex. 1007, 8:13–21; Ex. 1012 ¶¶ 8–9; Ex. 1018, 2955, 2962; Ex. 1019 ¶¶ 25, 33, 81; Ex. 1003, 21:8–12, 27:48–28:38, 29:55– 30:33). Thus, even if Mr. Credelle’s testimony was not directly rebutted, we properly weighed Mr. Credelle’s testimony against Dr. Wolfe’s testimony. As such, we determined that a preponderance of the evidence supported Petitioner’s contention that an ordinary artisan would have known how to modify Moran to arrive at a substrate and touch sensor configured to wrap around an edge of a display. See Dec. 26. Accordingly, we are not persuaded that we overlooked or failed to consider any argument or evidence related to how the proposed modification would have been achieved.” slip op. at 6
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Not reached
“D. Constitutionality The remainder of Patent Owner’s arguments on rehearing are devoted to contesting the constitutionality of the appointments of the Administrative Patent Judges. Req. Reh’g 9–12. We decline to address Patent Owner’s constitutional challenge except to note that the constitutionality of the appointments of the Administrative Patent Judges was addressed by the U.S. Supreme Court in United States v. Arthrex, Inc., 141 S. Ct. 1970, 1986–87, 1997 (2021).” slip op. at 9
§ 103 obviousnesscites KSRPatents in suitUS 9,256,311 - Flex Logix Technologies, Inc. v. Venkat KondaRehearing deniedPTAB · Sep 16, 2020 · IPR2020-00261 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, leaving institution of review of claims 1–7, 11, 15–18, 20–22, 32, and 47 in place.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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). Patent Owner, as the party challenging the Decisions, has the burden of showing that the Decisions should be modified. Id. When rehearing a decision on a petition, the Board reviews the decision for an abuse of discretion. Id. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of the law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- Expert testimonyPetitioner expert creditedDecided for petitioner
“in our Decision on Institution. In the Decision, we directly addressed Patent Owner’s arguments that Dr. Baker is not qualified to testify in this proceeding because he is neither a person of ordinary skill in the art, nor an expert in the relevant art. See Dec. 7–8. In particular, we explained that there is no requirement “that the expert’s experience perfectly match the relevant field, or that the expert is a person of ordinary skill in the art.” Id. at 7. We also explained that Dr. Baker testifies as to his education and qualifications and provides his curriculum vitae. See Ex. 1002 ¶¶ 3–12; Ex. 1003. At this preliminary stage, we cannot say that Dr. Baker’s scientific, technical, and other specialized knowledge will not be helpful in understanding the evidence. See Fed. R. Evid. 702(a). On this record, we are not persuaded that Dr. Baker’s testimony should be disregarded. Id. at 8. Therefore, even if Dr. Baker were not a person of ordinary skill in the art as Patent Owner contends, it does not follow that he is unqualified to testify in these proceedings. Nothing was misapprehended or overlooked in considering Dr. Baker’s testimony.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(Ex. 2001). In the Preliminary Response, Patent Owner cited the Konda Declaration when discussing the experience and qualifications of the named inventor of the ’523 patent. Prelim. Resp. 8–9. The education level of the inventor, however, is just one of several factors that we may consider in determining the level of ordinary skill in the art. See Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (enumerating six factors that “may be considered in determining the level of ordinary skill in the art” (quoting Evt’l Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696 (Fed. Cir. 1983))). And, as Patent Owner noted in the Preliminary Response, “these factors are merely a guide to determining the level of ordinary skill in the art.” Prelim. Resp. 7–8 (citing Daiichi Sankyo, 501 F.3d at 1256). In any event, in the Decision we also considered Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art, noted the differences between them, and stated that “[o]ur determination regarding Petitioner’s challenge does not turn on the differences between Petitioner’s and Patent Owner’s definitions.” Dec. 7. Therefore, our evaluation of Petitioner’s challenges and Dr. Baker’s testimony in support thereof would have been the same under Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art. See id. (“[W]e note that our conclusions would be same under either definition.”).” slip op. at 7
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot reached
“Moreover, in the Decision, we directly addressed Patent Owner’s argument with respect to whether the ’394 provisional and ’605 PCT provided support for the claim limitation “said routing network comprising a plurality of stages y, in each sub-integrated circuit block, starting from the lowest stage of 1 to the highest stage of y, where y≧1” when y=1. Dec. 14. In particular, we found that Patent Owner’s arguments, as we understand them, are directed only to the disclosure of a network with only one stage (y=1). [Prelim. Resp.] at 15–39. Patent Owner does not address the other limitations of claim 1, and does not point to any disclosures in the priority applications that describe a sub-integrated circuit block with only one stage that also comprises pluralities of forward connecting links and backward connecting links as required by claim 1. Id. Thus, we did not overlook Patent Owner’s arguments, but rather evaluated the disclosures in the ’394 provisional and ’605 PCT and determined, on the record at this stage of the proceeding, that they do not provide sufficient written description support for the challenged claims. The parties will have the opportunity to further develop the record on these issues during trial, and the Board will evaluate the fully-developed record at the close of the evidence. D. Public Availability of the ’394 provisional” slip op. at 9
§ 102 anticipation§ 112 disclosurePatents in suitUS 8,269,523 - Flex Logix Technologies, Inc. v. Venkat KondaRehearing deniedPTAB · Sep 16, 2020 · IPR2020-00260 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied the Patent Owner’s rehearing requests, leaving institution in place for claims 1–7, 11, 15–18, 20–22, 32, and 47.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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). Patent Owner, as the party challenging the Decisions, has the burden of showing that the Decisions should be modified. Id. When rehearing a decision on a petition, the Board reviews the decision for an abuse of discretion. Id. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of the law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- Strike new argumentNew argument disregardedOther
“Consolidated Trial Practice Guide, 90. The Consolidated Trial Practice Guide goes on to state that “[a]bsent a showing of ‘good cause’ prior to filing the request for rehearing or in the request for rehearing itself, new evidence will not be admitted.” Id. (citing Huawei, Paper 19 at 4).” slip op. at 4
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Dr. Baker testifies as to his education and qualifications and provides his curriculum vitae. See Ex. 1002 ¶¶ 3–12; Ex. 1003. At this preliminary stage, we cannot say that Dr. Baker’s scientific, technical, and other specialized knowledge will not be helpful in understanding the evidence. See Fed. R. Evid. 702(a). On this record, we are not persuaded that Dr. Baker’s testimony should be disregarded. Id. at 8. Therefore, even if Dr. Baker were not a person of ordinary skill in the art as Patent Owner contends, it does not follow that he is unqualified to testify in these proceedings. Nothing was misapprehended or overlooked in considering Dr. Baker’s testimony.” slip op. at 6
- Skill levelOther
“(Ex. 2001). In the Preliminary Response, Patent Owner cited the Konda Declaration when discussing the experience and qualifications of the named inventor of the ’523 patent. Prelim. Resp. 8–9. The education level of the inventor, however, is just one of several factors that we may consider in determining the level of ordinary skill in the art. See Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (enumerating six factors that “may be considered in determining the level of ordinary skill in the art” (quoting Evt’l Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696 (Fed. Cir. 1983))). And, as Patent Owner noted in the Preliminary Response, “these factors are merely a guide to determining the level of ordinary skill in the art.” Prelim. Resp. 7–8 (citing Daiichi Sankyo, 501 F.3d at 1256). In any event, in the Decision we also considered Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art, noted the differences between them, and stated that “[o]ur determination regarding Petitioner’s challenge does not turn on the differences between Petitioner’s and Patent Owner’s definitions.” Dec. 7. Therefore, our evaluation of Petitioner’s challenges and Dr. Baker’s testimony in support thereof would have been the same under Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art. See id. (“[W]e note that our conclusions would be same under either definition.”).” slip op. at 7
§ 102 anticipation§ 112 disclosurePatents in suitUS 8,269,523 - Sports Nutrition Research, Ltd. v. Chemi NutraRehearing deniedPTAB · Apr 3, 2020 · DER2013-00001 · APJ Jameson Lee · DER · Rehearing
The Board denied rehearing and left in place its denial of institution because Petitioner showed no abuse of discretion in finding insufficient evidence of derivation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“On request for rehearing, the burden of showing a decision on whether to institute trial should be modified lies with the party challenging the decision. 37 C.F.R. § 42.71(d). When rehearing a decision on petition, a panel will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The request for rehearing 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). After considering the Request for Rehearing, we determine that Petitioner has not demonstrated that we abused our discretion in denying institution. For reasons discussed below, we decline to modify the Decision. Accordingly, the Request for Rehearing is denied.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In essence, Petitioner is arguing that a derivation proceeding should always be instituted no matter how deficient is the initial evidence presented by Petitioner in the Petition, because both Petitioner and Respondent can submit evidence after institution of trial. We disagree. In the above-quoted argument, Petitioner is referring to hypothetical evidence “to be” developed during trial. We cannot make a decision on whether to institute trial based on non-existent evidence. We properly reviewed the evidence submitted by Petitioner and determined that that evidence does not meet the substantial evidence standard for instituting a derivation proceeding.” slip op. at 5
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for patent owner
“The constitutional arguments are without merit. The Federal Circuit has held that there is “no constitutional infirmity in [an] institution decision as the statute clearly bestows such authority on the Director pursuant to 35 U.S.C. § 314.” Arthrex, 941 F.3d at 1340. Arthrex’s reasoning likewise applies to derivation proceedings under the AIA. See 35 U.S.C. § 135(a)(1). The Decision will not be vacated. Nor will a new panel be appointed.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“of the MPEP. Paper 17, 4. These authorities, however, articulate general principles and do not support Petitioner’s assertion that the specific wherein clause at issue here represents merely an intended result and thus should not be accorded weight in determining patentability. Indeed, in Hoffer, the Court upheld the district court’s reading of the “whereby clause” at issue there as an actual limitation and not merely an intended result.3 Hoffer, 405 F.3d at 1330. “[W]hen the ‘whereby’ clause states a condition that is material to patentability, it cannot be ignored in order to change the substance of the invention.” Id. at 1329.” slip op. at 9
Claim constructionPatents in suitUS 10,869,843 - Apple Inc. v. Uniloc 2017 LLCRehearing deniedPTAB · Nov 18, 2019 · IPR2018-00884 · APJ Sean P O’Hanlon · IPR · Rehearing
The Board denied Patent Owner’s rehearing request and left intact the unpatentability of claims 1–17 and 23–25 under § 103.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. LEGAL STANDARD A request for rehearing “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). The burden of showing a decision should be modified on a request for rehearing lies with the party challenging the decision. Id.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner
“suggested by the Examiner to express more clearly the applicants’ intention to convey that the network entity is not the intended end recipient device. Final Dec. 11–12. As we explained, our interpretation that “a network entity intercepting a signaling message associated with a call between a sender device of the message and an intended recipient device of the message” means that the network entity receives the message and the network entity is not the intended end recipient device is supported by the prosecution history: [T]his interpretation is consistent with the prosecution history of the application resulting in the ’552 patent, which reveals that the patent examiner suggested using the word intercepting in the claims to further clarify the applicants’ intention to convey that “the independent claims involve a network entity receiving and filtering messages that are sent between two end users.” Ex. 1002, 364–65 (first emphasis added); see also id. at 367–68 (distinguishing an intermediate entity intercepting a communication between two end user devices, as claimed, from a prior art reference in which the intended end recipient device (a service verification apparatus) receives and makes determinations regarding the signaling message). Id. Thus, rather than ignoring the amendment “as if it had never happened” (Req. Reh’g 3), we explained our interpretation that the Examiner suggested using “intercepting” to more clearly convey that the recited network entity is not one of the intended end user devices between which the signaling message is sent. Although Patent Owner argues that the Decision “d[oes] not appear to apply the presumption that the applicant’s decision to narrow claim 1 by amendment gave rise to a general disclaimer of the territory between the original claim and the amended claim” (Req. Reh’g 4 (citing Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 740, (2002)), Patent Owner does not identify the alleged “disclaimer of the territory,” and thus fails to specifically identify how we allegedly erred. See 37 C.F.R. § 42.71(d). Nor are we apprised that we misapprehended or overlooked any matter by Patent Owner’s assertions regarding the applicants’ comments about the amendment. See Req. Reh’g 4. Patent Owner characterizes the comments as “distinguish[ing] ‘intercepting’ in this context from the disclosure in a cited reference2 directed to merely receiving a message at a network entity.” Id. This characterization is incomplete, as the reference describes a “service request [that] is sent from the service-used apparatus directly to the service-provider apparatus, not to some other apparatus.” Ex. 1002, 368 (emphasis added). As we explained in the Decision, the applicants “distinguish[ed] an intermediate entity intercepting a communication between two end user devices, as claimed, from a prior art reference in which the intended end recipient device (a service verification apparatus) receives and makes determinations regarding the signaling message.” Final Dec. 12 (citing Ex. 1002, 367–68).” slip op. at 4
- Expert testimonyPatent owner expert discountedDecided for petitioner
“Patent Owner’s declarant is entitled to little weight: Dr. Easttom’s declaration testimony interpreting “receiving” fails to consider the full disclosure and prosecution history of the ’552 patent, as explained above, and, thus is not entitled to substantial weight. See, e.g. Ex. 2001 ¶¶ 8–9; see also PO Resp. 6 (citing same). Additionally, Patent Owner hindered or prevented Petitioner from cross-examining Dr. Easttom, further undermining the weight given to Dr. Easttom’s testimony. See, e.g., Pet. Reply 2–6; Exs. 1011–24. Final Dec. 12 n.9.” slip op. at 7
- Strike new argumentNew argument disregardedDecided for petitioner
“[t]he intercepting of call control server 112 at least includes seizing a message, which is not sent directly . . . from a client 104 to the server 112, 2 US 2003/0177363 (“Yokota”). and obstructing the message from progress while authentication processes are performed.” Req. Reh’g 5 (citing Paper 14, 4–5 (PO Sur-Reply)). Although Patent Owner cites to its Sur-Reply, we see no argument there regarding “seizing” and “obstruction.” As this was not an argument on which Patent Owner previously relied, it was not an argument that we could have misapprehended or overlooked. slip op. at 5
Claim constructionPatents in suitUS 8,539,552 - Apple Inc. v. Uniloc 2017 LLCRehearing deniedPTAB · Jul 9, 2019 · IPR2018-00294 · APJ Sean P O’Hanlon · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no error in its construction of “displaying real-time data” in the final written decision finding claims 1–32 unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. LEGAL STANDARD A request for rehearing “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). The burden of showing a decision should be modified on a request for rehearing lies with the party challenging the decision. Id.” slip op. at 2
- Prior constructionPrior construction adoptedDecided for patent owner
“III. ANALYSIS In the Decision, we construed “displaying real time data” consistent with the construction issued by the U.S. Court of Appeals for the Federal Circuit, our reviewing court, in Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075 (Fed. Cir. 2009) (Ex. 1023) to mean “displaying data without intentional delay, given the processing limitations of the system and the time required to accurately measure the data.” Final Dec. 10; see also Ex. 1023, 14. We further determined that, because “our review of the ’759 patent and the evidence of record does not reveal a broader construction, . . . the Federal Circuit’s construction comports with not only the Phillips standard, but also the broadest reasonable interpretation.”2 Final Dec. 10.” slip op. at 2
Claim constructionPatents in suitUS 6,736,759 - Apple Inc. v. Uniloc 2017 LLCRehearing deniedPTAB · Feb 1, 2019 · IPR2018-01027 · APJ Sean P O’Hanlon · IPR · Rehearing
The Board denied Apple’s rehearing request, leaving in place the denial of institution because the Petition failed to show a reasonable likelihood of prevailing on claims 4 and 19.
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.” A request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). Further, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not shown unpatentable
“contentions, we recognized that the data in Richardson’s buffers is acquired during and indicative of multiple footfalls. See Dec. 14–15 (reproducing and discussing Richardson’s Figure 13a). The inconsistency we noted was not in regard to the number of footfalls within Richardson’s buffer data; rather, it was in regard to the Petitioner’s assertions regarding the teaching of Harris. Petitioner relied on Harris to teach “that a moving average is often used in data analysis ‘to smooth the curve of a data series and make general trends more visible.’” Pet. 45 (quoting Ex. 1011, 243); Dec. 16. Harris explains that “[e]ach point on a moving average curve is generally calculated by averaging the value for the current period plus a fixed number of prior periods” and “the greater the number of intervals, the smoother the moving average curve.” Ex. 1011, 243 (emphases added); Dec. 17. Thus, Harris teaches that a greater number of data points used in the calculation of the moving average results in a smoother curve. Petitioner contradicts this teaching of Harris by reducing the number of data points used to calculate the moving average: “applying a moving average of accelerations with a smaller sample size (i.e., one stepping period), as disclosed in Richardson, would be beneficial to Pasolini in that it would yield a smoother acceleration threshold.” Pet. 45. We remain persuaded that Harris does not support Petitioner’s contention that it would have been obvious to use a smaller sample size to generate a smoother moving average. Accordingly, Petitioner’s assertions do not persuade us that we misapprehended the application of Harris to the combination of Fabio, Pasolini, and Richardson.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“contentions, we recognized that the data in Richardson’s buffers is acquired during and indicative of multiple footfalls. See Dec. 14–15 (reproducing and discussing Richardson’s Figure 13a). The inconsistency we noted was not in regard to the number of footfalls within Richardson’s buffer data; rather, it was in regard to the Petitioner’s assertions regarding the teaching of Harris. Petitioner relied on Harris to teach “that a moving average is often used in data analysis ‘to smooth the curve of a data series and make general trends more visible.’” Pet. 45 (quoting Ex. 1011, 243); Dec. 16. Harris explains that “[e]ach point on a moving average curve is generally calculated by averaging the value for the current period plus a fixed number of prior periods” and “the greater the number of intervals, the smoother the moving average curve.” Ex. 1011, 243 (emphases added); Dec. 17. Thus, Harris teaches that a greater number of data points used in the calculation of the moving average results in a smoother curve. Petitioner contradicts this teaching of Harris by reducing the number of data points used to calculate the moving average: “applying a moving average of accelerations with a smaller sample size (i.e., one stepping period), as disclosed in Richardson, would be beneficial to Pasolini in that it would yield a smoother acceleration threshold.” Pet. 45. We remain persuaded that Harris does not support Petitioner’s contention that it would have been obvious to use a smaller sample size to generate a smoother moving average. Accordingly, Petitioner’s assertions do not persuade us that we misapprehended the application of Harris to the combination of Fabio, Pasolini, and Richardson.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We disagree with Petitioner’s interpretation of “based on” as used in the ’723 patent. Notably, Petitioner did not offer such an interpretation in the Petition. See Pet. 10–11. Thus, Petitioner appears to present an improper new argument in its Request. Moreover, Petitioner’s proposed interpretation is inconsistent with how the term is used in the ’723 patent. As set forth in the ’723 patent, “based on” is used to convey that the referenced criteria is actively considered rather than allowing for any passive relationship as suggested by Petitioner. For example, the ’723 patent sets forth that a threshold “based on” the orientation of the sensor requires active consideration of the sensor orientation in setting the threshold. Ex. 1001, 13:24–36. This consideration may be in the form of using a variable threshold having a larger value when a sensor axis is closely aligned to gravity and progressively lower values as an axis most closely aligned with gravity is moved out of line with gravity, and implemented using a data structure, comparison to a virtual axis, or by performing trigonometric calculations. Id.” slip op. at 11
Claim construction§ 103 obviousnessPatents in suitUS 8,712,723 - Apple Inc. v. Uniloc 2017 LLCRehearing deniedPTAB · Feb 1, 2019 · IPR2018-01026 · APJ Sean P O’Hanlon · IPR · Rehearing
The Board denied Apple's rehearing request, leaving in place the denial of institution because the petition failed to show a reasonable likelihood of proving claim 5 unpatentable.
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.” A request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). Further, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“contentions, we recognized that the data in Richardson’s buffers is acquired during and indicative of multiple footfalls. See Dec. 14 (reproducing and discussing Richardson’s Figure 13a). The inconsistency we noted was not in regard to the number of footfalls within Richardson’s buffer data; rather, it was in regard to the Petitioner’s assertions regarding the teaching of Harris. Petitioner relied on Harris to teach “that a moving average is often used in data analysis ‘to smooth the curve of a data series and make general trends more visible.’” Pet. 40 (quoting Ex. 1011, 243); Dec. 16. Harris explains that “[e]ach point on a moving average curve is generally calculated by averaging the value for the current period plus a fixed number of prior periods” and “the greater the number of intervals, the smoother the moving average curve.” Ex. 1011, 243 (emphases added); Dec. 16. Thus, Harris teaches that a greater number of data points used in the calculation of the moving average results in a smoother curve. Petitioner contradicts this teaching of Harris by reducing the number of data points used to calculate the moving average: “applying a moving average of accelerations with a smaller sample size (i.e., one stepping period), as disclosed in Richardson, would be beneficial to Pasolini in that it would yield a smoother acceleration threshold.” Pet. 40. We remain persuaded that Harris does not support Petitioner’s contention that it would have been obvious to use a smaller sample size to generate a smoother moving average. Accordingly, Petitioner’s assertions do not persuade us that we misapprehended the application of Harris to the combination of Fabio, Pasolini, and Richardson.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“contentions, we recognized that the data in Richardson’s buffers is acquired during and indicative of multiple footfalls. See Dec. 14 (reproducing and discussing Richardson’s Figure 13a). The inconsistency we noted was not in regard to the number of footfalls within Richardson’s buffer data; rather, it was in regard to the Petitioner’s assertions regarding the teaching of Harris. Petitioner relied on Harris to teach “that a moving average is often used in data analysis ‘to smooth the curve of a data series and make general trends more visible.’” Pet. 40 (quoting Ex. 1011, 243); Dec. 16. Harris explains that “[e]ach point on a moving average curve is generally calculated by averaging the value for the current period plus a fixed number of prior periods” and “the greater the number of intervals, the smoother the moving average curve.” Ex. 1011, 243 (emphases added); Dec. 16. Thus, Harris teaches that a greater number of data points used in the calculation of the moving average results in a smoother curve. Petitioner contradicts this teaching of Harris by reducing the number of data points used to calculate the moving average: “applying a moving average of accelerations with a smaller sample size (i.e., one stepping period), as disclosed in Richardson, would be beneficial to Pasolini in that it would yield a smoother acceleration threshold.” Pet. 40. We remain persuaded that Harris does not support Petitioner’s contention that it would have been obvious to use a smaller sample size to generate a smoother moving average. Accordingly, Petitioner’s assertions do not persuade us that we misapprehended the application of Harris to the combination of Fabio, Pasolini, and Richardson.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We disagree with Petitioner’s interpretation of “based on” as used in the ’508 patent. Notably, Petitioner did not offer such an interpretation in the Petition. See Pet. 8–10. Thus, Petitioner appears to present an improper new argument in its Request. Moreover, Petitioner’s proposed interpretation is inconsistent with how the term is used in the ’508 patent. As set forth in the ’508 patent, “based on” is used to convey that the referenced criteria is actively considered rather than allowing for any passive relationship as suggested by Petitioner. For example, the ’508 patent sets forth that a threshold “based on” the orientation of the sensor requires active consideration of the sensor orientation in setting the threshold. Ex. 1001, 13:20–33. This consideration may be in the form of using a variable threshold having a larger value when a sensor axis is closely aligned to gravity and progressively lower values as an axis most closely aligned with gravity is moved out of line with gravity, and implemented using a data structure, comparison to a virtual axis, or by performing trigonometric calculations. Id.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 7,653,508 - Bungie, Inc. v. Acceleration Bay, LLCRehearing deniedPTAB · Jun 29, 2018 · IPR2017-01600 · APJ Marc S Hoff · IPR · Rehearing
The Board denied Bungie’s rehearing request and maintained denial of institution because Francis and Gilbert did not show a reasonable likelihood of obviousness for claims 1–5, 7, 8, and 11–13.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A. Principles of Law When rehearing a decision on institution, we 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 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 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“B. Discussion In our Decision, we concluded that the information presented did not show a reasonable likelihood that Petitioner would prevail in establishing that claims 1–5, 7, 8, and 11–13 are rendered obvious by Francis1 and Gilbert.2 Dec. 13. Specifically, we determined that the combination of Francis and Gilbert, taken together, did not disclose “identifying a pair of participants of the network that are connected wherein [1] a seeking participant contacts a fully connected portal computer, [2] which in turn sends an edge connection request to [3] a number of randomly selected neighboring participants to which the seeking participant is to connect.” Dec. 9–12.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“overlooked any points made in the Petition. In our Decision, we explicitly referred to pages 53–55 of the Petition in discussing Francis’s teaching of “rendezvous hosts,” and Petitioner’s argument that modifying Francis’s rendezvous host with the features of Gilbert’s portal computer would provide some messaging efficiencies. Dec. 11. We concluded that Petitioner “fails to explain sufficiently why it would have been obvious to combine Francis and Gilbert to have a seeking participant contact a fully connected portal computer as claimed.” Id. at 11–12.” slip op. at 6
§ 103 obviousnessPatents in suitUS 6,910,069 - Cisco Systems, Inc. / Arris Group, Inc. v. TQ Delta, LLCRehearing deniedPTAB · Mar 28, 2018 · IPR2016-01007 · APJ Trevor M Jefferson · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no overlooked or misapprehended matter in its claim construction, obviousness analysis, or handling of reply evidence and argument.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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 party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. With this in mind, we address the arguments presented by Patent Owner.” slip op. at 2
- Strike new argumentNew argument consideredDecided for petitioner
“on evidence and argument that Patent Owner objected to as being improper new reply arguments. Req, Reh’g 9–10. Patent Owner does not identify any specific evidence cited in the Final Written Decision that rely on improper new reply arguments from Petitioner. Patent Owner argues that we abused our discretion by authorizing it to” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Patent Owner’s issue is based on a sentence in the claim construction analysis of “during Showtime” in the Final Written Decision that states, “[w]e are not persuaded by Patent Owner’s negative construction, which excludes initialization from normal communication.” The “not” in that sentence is a mistake. In an Errata mailed concurrently herewith, we correct that sentence in the Final Written Decision to read “[w]e are persuaded by Patent Owner’s negative construction, which excludes initialization from normal communication.” The construction in the Final Written Decision is consistent with our discussion that notes that “[t]he parties agree that ‘during Showtime’ is a term of art that encompasses normal communication, which follows the completion of initialization and handshaking, for known DSL standards and protocols.” Dec. 8 (citing PO Resp. 6–7; Reply 10; Kiaei Decl. ¶ 43). Our Final Written Decision also noted that “[t]here is also no dispute that ‘during Showtime’ is intended to distinguish initialization and training.” Dec. 9 (citing PO Resp. 7–8; Reply 9; Tr. 21:19–23:11).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Patent Owner also argues that we overlooked its argument, in its Preliminary Response, that it would not have been obvious to combine Milbrandt with ANSI T1.413. Req. Reh’g 6–7. We addressed this argument in our Final Written Decision and found it unpersuasive.2 Dec. 32–34. Contrary to Patent Owner’s arguments (Req. Reh’g 6–7), we addressed Patent Owner’s arguments and did not rely on impermissible evidence. Our Final Written Decision noted that Patent Owner’s argument did not comport with the express text of ANSI T1.413 and credited the Petitioner’s argument and evidence in support of the combination. Dec. 33–34 (citing Ex. 1011, 9:31–34; Ex. 1100 ¶ 38; Ex. 1009 ¶¶ 86–87; Ex. 1011, 9:31–34).” slip op. at 5
Claim construction§ 103 obviousnessPatents in suitUS 8,432,956
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.