- Medivis, Inc. v. Novarad Corp.Rehearing deniedPTAB · Apr 23, 2024 · IPR2023-00042 · APJ Scott Raevsky · IPR · Rehearing
The Board denied Medivis’s rehearing request, leaving in place the decision that claims 1–6 and 11–20 were not shown unpatentable because the cited references’ public accessibility was not established.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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, a reply, or a sur-reply. Thus, a request for rehearing is not an opportunity to present new arguments or evidence or merely to disagree with the panel’s assessment of the arguments or weighing of the evidence. With this in mind, we address the arguments presented in turn.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“accessibility, except the references Chen, 3D Visualization, and 3D Slicer themselves. This is insufficient and tantamount to submitting no proof of public accessibility. To find public accessibility, we must determine that a “document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art[,] exercising reasonable diligence, can locate it.” SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008), quoted in Dec. 26–27. Petitioner has insufficiently explained, by a preponderance of the evidence, how Chen, 3D Visualization, and 3D Slicer themselves answer the question of whether they have been disseminated or otherwise made available to those of ordinary skill in the art. Thus, we did not overlook or misapprehend any evidence of public accessibility on pages 29–30 of the Petition.” slip op. at 4
- Strike new argumentNew argument disregardedOther
“declaration by reference, we exercised our discretion to address a portion of it in our Decision. Dec. 30–31. We did so because we noted that his testimony was “particularly deficient for [the 3D Slicer] reference.” Id. at 30. Petitioner now asserts that in doing so, we “misapprehended or overlooked the logic that application documentation” like 3D Slicer’s “must be accessible to potential application users because it serves to help users use the application.” Req. 7. But Petitioner’s assertion that “application documentation must be accessible to potential application users because it serves to help users use the application” is a new argument, not raised in the Petition or Reply. Even if Petitioner’s assertion were correct, it falls far short of the evidence required to prove that 3D Slicer was actually disseminated to interested members of the public. See, e.g., Weber, 92 F.4th at 1068. Thus, Petitioner’s argument fails to persuade us that we overlooked or misapprehended anything.” slip op. at 11
§ 102 anticipationPatents in suitUS 11,004,271 - Amazon.Com, Inc. v. Rensselaer Polytechnic InstituteRehearing deniedPTAB · Oct 30, 2020 · IPR2019-01069 · APJ Trevor M Jefferson · IPR · Rehearing
The Board denied Amazon’s rehearing request, leaving institution denied for claims 9–21 because the Petition did not show a reasonable likelihood of prevailing on its obviousness grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in a paper of record. 37 C.F.R. § 42.71(d) (2019) (emphasis added). When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision. Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (internal citations omitted).” slip op. at 3
- Prior constructionPrior construction adoptedDecided for patent owner
“system, e.g. how the system interprets words or phrases.” Apple IPR 6. Thus, the Apple IPR Board adopted Patent Owner’s argument that as applied to the prior art, the term “case” in “case information” requires “uses of the system contemplated by the invention, not uses of any other natural language processing system.” Apple IPR 6. The Board rejected that such prior use was found in rules regarding how the system interprets current word or phrase input. Id. We find that the Apple IPR discussed a user’s selection among possible choices, but also addressed that the “case” required use of the system of the ’798 invention. Id. at 5–6. Thus, we do not agree we misapprehended the meaning of the claim language. Req. Reh’g 2.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“to establish a reasonable likelihood of prevailing, in showing that claims 9– 21 would have been obvious over Livowsky;1 claims 10–12 and 14–16 would have been obvious over Livowsky and Shwartz;2 claims 9–21 would have been obvious over Shwartz and Livowsky; claims 9–21 would have been obvious over Shwartz and Weber;3 and claims 9–21 would have been obvious over Meng4 and Zhang.5 Dec. 17–18, 21–22, 23–24. For the reasons below, the Request for Rehearing is denied.” slip op. at 2
Claim constructionPatents in suitUS 7,177,798 - Amazon.Com, Inc. v. Rensselaer Polytechnic InstituteRehearing deniedPTAB · Oct 30, 2020 · IPR2019-01068 · APJ Trevor M Jefferson · IPR · Rehearing
The Board denied Amazon’s rehearing request, leaving in place the denial of institution on claims 1–8 because Petitioner did not show the Board misapprehended the construction or prior-art evidence.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“overlooked, and the place where each matter was previously addressed” in a paper of record. 37 C.F.R. § 42.71(d) (2019) (emphasis added). When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision. Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (internal citations omitted).” slip op. at 3
- Prior constructionPrior construction adoptedDecided for patent owner
“interpretation of the claim construction in the Apple IPR. See Req. Reh’g 3. The Apple IPR cites the embodiment from the ’798 patent specification (Ex. 1001, 5:36–38, 16:52–17:5). Apple IPR 5–6. The Board in the Apple IPR expressly clarified that in the case information construction “‘instances of use’ of the system [did not] mean indications cover instances of use of the system, e.g. how the system interprets words or phrases.” Apple IPR 6. Thus, the Apple IPR Board adopted Patent Owner’s argument that as applied to the prior art, the term “case” in “case information” requires “uses of the system contemplated by the invention, not uses of any other natural language processing system.” Apple IPR 6. The Board rejected that such prior use was found in rules regarding how the system interprets current word or phrase input. Id. We find that the Apple IPR discussed a user’s selection among possible choices, but also addressed that the “case” required use of the system of the ’798 invention. Id. at 5–6. Thus, we do not agree we misapprehended the meaning of the claim language. Req. Reh’g 2.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“information” to exclude clarifications from users. Id. at 5–6, 7–11. Petitioner argues that our Institution Decision adopts Patent Owner’s narrow construction and finds that “clarifying prompts” in grounds including Weber are not “case information.” Id. at 7–8. Our Institution Decision found that Petitioner did not persuasively and sufficiently assert how the prior art disclosed the “case information.” Dec 19–20. Our determination was based on the sufficiency of Petitioner’s evidence and argument in the regarding whether Weber’s prompting the user for information, which was contested by Patent Owner, teaches or suggests “information about prior instances of use of the natural language processing method.” Dec. 19–20 (emphasis added). Petitioner’s arguments does not identify any evidence we overlooked or misapprehended. Req. Reh’g 7–8. Instead, Petitioner characterizes our Institution Decision as broadly excluding user prompts. Our determination was based on the full claim construction, which is supported by the Apple IPR’s emphasis of “prior instances of use of the natural language processing method.” Apple IPR 5–6; Dec. 19–20.” slip op. at 5
Claim constructionPatents in suitUS 7,177,798 - PTAB · Sep 15, 2020 · IPR2020-00282 · APJ Christopher L Ogden · IPR · Rehearing
The Board denied Samsung’s rehearing request, leaving in place the denial of institution because the petition did not show a reasonable likelihood of proving any challenged claim unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“a party requests rehearing on a decision on whether to institute inter partes review, we “review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c) (2019). There is an abuse of discretion if we have made “a clear error of judgment in weighing relevant factors or in basing [our] decision on an error of law or on clearly erroneous factual findings.” Bayer CropScience AG v. Dow AgroSciences LLC, 851 F.3d 1302, 1306 (Fed. Cir. 2017) (quoting Mentor Graphics Corp. v. Quickturn Design Sys., Inc., 150 F.3d 1374, 1377 (Fed. Cir. 1998)). In a request for rehearing, “[t]he burden of showing a decision should be modified lies with the party challenging the decision,” and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the record. 37 C.F.R. § 42.71(d).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We disagree. Nowhere in the cited passages in the Petition does Samsung argue that we should construe the term “row wrap-around connections” according to the explicit construction that Samsung now suggests for the plain and ordinary meaning. See Pet. 10–11, 25–30. Rather, Samsung argued that “Petitioners do not believe any term requires explicit construction.” Pet. 10–11. In the Reply, Samsung argued that all of the terms in the challenged claims should be construed according to their plain and ordinary meaning. See Reply 1, 4–5. However, apart from arguing that Samsung had proposed construing limitation 1C in the co-pending district court proceeding according to its plain and ordinary meaning,3 Samsung did not propose any specific construction for the phrase “row wrap-around connection,” or point to any evidence as to what the ordinary and customary meaning of that phrase was to a person of ordinary skill in the art. Therefore, we decline to adopt Samsung’s new proposed construction on rehearing.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We determined that Samsung had not provided sufficient evidence of its proposed motivation to combine the two references. See Dec. 16 (“[N]either Samsung nor Dr. Wolfe supports this conclusion with any evidence on the preliminary record.” (citing In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016); 35 U.S.C. § 322(a)(3))). In particular, we found that “Dr. Wolfe does not explain how or why the combination of Barkan and Tagg would minimize RC delay or allow for the use of lengthier columns and rows of electrodes, or cite to any facts, data, or authorities to support that opinion.” Dec. 17. We stated that “there is no evidence in the record suggesting that RC delay was a recognized problem . . . or that a person of ordinary skill in the art would have understood that a connection to both sides of a row of electrodes would be a solution to that problem.” Id. We also stated that Dr. Wolfe does not “provide any detail as to how a person of ordinary skill in the art would have modified Barkan’s leads 160 to incorporate external connections such as those in Tagg.” Id. (citing Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017)).” slip op. at 13
Claim construction§ 103 obviousnessPatents in suitUS 7,821,502 - Blackberry Corp. v. Facebook, Inc.Rehearing deniedPTAB · Apr 17, 2020 · IPR2019-01593 · APJ Miriam L Quinn · IPR · Rehearing
The Board denied rehearing and left in place its discretionary denial of the petition, finding no misapprehension or oversight in its assessment of the claim 23 challenges.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“According to 37 C.F.R. § 42.71(d), “[t]he burden of showing a decision should be modified lies with the party challenging the decision,” and the “request must specifically identify all matters the party believes the Board misapprehended or overlooked.” The burden here, therefore, lies with Petitioner to show we misapprehended or overlooked the matters it requests” slip op. at 2
- Other 314aInstitution denied discretionary otherDenied
“Partes Review. Paper 7 (“Dec.”). We exercised our discretion under 35 U.S.C. § 314(a) and denied the Petition based on our determination that Petitioner has only demonstrated a reasonable likelihood of prevailing as to three claim challenges (out of 17).1 Dec. 39−40. Petitioner filed a Request for Rehearing challenging several aspects of our Decision. Paper 8 (Req. Reh’g). In particular, Petitioner challenges our determination of the scope of “Global Positioning System data” (hereinafter “GPS Data”) a term recited in independent claim 23. Req. Reh’g 3−6. Petitioner further challenges our determination concerning the term “range of acceptable values,” recited in claim 23. Id. at 10−12. Thus, Petitioner argues, based on the correct interpretation of “GPS data” and “range of acceptable values,” we should have instituted trial because it demonstrated a reasonable likelihood of prevailing as to four or five out of eight challenged claims.2 Req. Reh’g 13.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“types of information that are GPS data, such as idle time. The portions of the Specification that Petitioner now cites, however, do not show that the GPS data is not, at a minimum, location information. As we stated in our Decision, other types of data may be transmitted from the remote unit to the central location, but the GPS data does refer to location information. Dec. 9. Moreover, Petitioner points out that the Specification discusses vehicle speed, idle time, movement, and actual windshield time as examples of calculated values, arguably from GPS location and time information. Req. Reh’g 3. But the Specification actually refers to these values to determine exceptions to be logged and noted (Ex. 1001, 4:41−49, 4:65−67, 6:1−3), which proves only that the system may use non-GPS data, in combination with GPS data, to determine exceptions. We acknowledge that claim 23’s recitation of GPS data could seem, at first blush, to potentially encompass every comparison that the Specification explains. Claim 23, however, must be interpreted in a manner that accounts for the recited two-part structure. In the first part, the claim recites a first comparison that involves the GPS data; and in the second part, the claim recites the second comparison that does not mention GPS data. Our analysis of the term GPS data in our Decision did not assume that the two comparisons involved the same data, e.g., GPS data. This is where Petitioner disagrees with our assessment, because it urges us to construe GPS data as including values and information recited in the second comparison, i.e., the idle time or recited “stationary time.” Petitioner’s position cannot be correct because the claim does not require that the “stationary time” also be GPS data. Further, the comparison that claim 23 recites with respect to GPS data does not mention exceptions at all, so it does not follow that all the Specification’s descriptions of exceptions encompass GPS data. The second comparison recited in claim 23 (comparing the stationary time to a predetermined stationary time), in contrast, is expressly performed for the purpose of noting an exception. Claim 23 (“if the length of time that the remote unit remains in a stationary position is greater than the predetermined stationary time, the system notes an exception.”). Thus, Petitioner, even in arguing for the first time its claim construction position, has not shown that derived data must also be GPS data according to the plain reading of the claim language. Consequently, having reviewed Petitioner’s arguments, we are not persuaded that GPS data means data that is derived from and representative of GPS coordinates and time stamps, as argued for the first time in the Request for Rehearing.3” slip op. at 4
- BurdenDecided for patent owner
“construction issue. Patent Owner explicitly addressed the construction of the term, a fact we acknowledged in our Decision. Dec. 8 (citing Prelim. Resp. 29−30). Petitioner did not address the scope of the term explicitly or implicitly. And it was not apparent from any of the now-cited portions of the Petition that Petitioner contended a scope of the term to include data that is derived from and representative of GPS coordinates and time stamps. Petitioner’s argument attempts to characterize its omission of a contention regarding claim construction as an oversight on our part. The argument is not persuasive as it is Petitioner’s burden to show in the Petition its contentions regarding how the challenged claim is to be construed and how, so construed, the claim is rendered obvious by the asserted references. See 37 C.F.R. § 42.104(b)(3)−(4). Therefore, we could not have either overlooked Petitioner’s position on claim construction, since none was provided, or misapprehended a position of claim scope not made explicit.” slip op. at 3
Claim constructionDiscretionary denialPatents in suitUS 6,356,841 - Unified Patents Inc. v. Uniloc 2017 LLCRehearing deniedPTAB · Aug 16, 2019 · IPR2019-00480 · APJ Miriam L Quinn · IPR · Rehearing
The Board denied Unified Patents’ rehearing request, leaving institution denied because Petitioner did not show a persuasive reason to combine Boykin with the other asserted references.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“point out that we misapprehended Petitioner’s contentions or its evidence. First, we did not adopt Patent Owner’s arguments wholesale and noted only that the arguments presented highlighted the flaw in Petitioner’s case that there was no persuasive reason a person of ordinary skill in the art would have made the asserted combination. Dec. on Inst. 19. Second, we did not misapprehend the Madisetti testimony on the matter of reasons to combine. The Madisetti testimony repeats verbatim the Petition, and we considered all the arguments and evidence presented in the Petition. Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (“Nothing in the [federal] rules [of evidence] or in our jurisprudence requires the fact finder to credit the unsupported assertions of an expert witness.”). Now, if Petitioner’s arguments on rehearing are instead directed to whether we should credit Dr. Madisetti because there is no opposing expert testimony, the argument does not show either legal or factual error. We did not find the Petition persuasive, which also means that we did not find Dr. Madisetti’s testimony persuasive. Just because an expert regurgitates attorney argument does not make the argument either persuasive or worthy of blind acceptance when counter testimony does not exist. Third, Petitioner has the burden to show that the reasons to combine are reasonable and this includes explaining sufficiently and factually supporting stated contentions in light of evidence or facts to the contrary. Neither the Petition nor Dr. Madisetti explains how Boykin’s technique, such as the free distribution of media without a key purchase, fits in with the contention that a person of ordinary skill in the art would have combined Boykin’s teachings with key-encrypted file” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“(“Dec. on Inst.”). The panel concluded that Petitioner had not shown a reasonable likelihood of prevailing in the asserted obviousness grounds because Petitioner’s arguments concerning Boykin1 were not persuasive and that a person of ordinary skill in the art would not have had reason to combine Boykin’s teachings with the other asserted references. Dec. on Inst. 14−21. Petitioner has filed a Request for Rehearing. Paper 9 (“Req. Reh’g”). Petitioner argues several points, but in particular, Petitioner argues that our Decision misapprehended Boykin in concluding that the Petition failed to show an adequate reason to combine. Id. at 9. According to Petitioner, Boykin supports the contention Petitioner presented in the Petition that Boykin triggers the incentive of awarding users with points or credits, which a person of ordinary skill in the art would find beneficial. Id. Petitioner then points to Dr. Vijay Madisetti’s testimony of the alleged benefit. Id. (citing Ex. 1004 ¶ 116). Petitioner faults our Decision for weighing Patent Owner’s arguments, which Petitioner criticizes as constituting attorney argument, and concludes that our Decision’s reasoning misapprehends that Boykin would provide a benefit despite our determination that a person of ordinary skill in the art would not derive the alleged benefit given the teachings of the other asserted references.” slip op. at 2
- BurdenNot shown unpatentable
“point out that we misapprehended Petitioner’s contentions or its evidence. First, we did not adopt Patent Owner’s arguments wholesale and noted only that the arguments presented highlighted the flaw in Petitioner’s case that there was no persuasive reason a person of ordinary skill in the art would have made the asserted combination. Dec. on Inst. 19. Second, we did not misapprehend the Madisetti testimony on the matter of reasons to combine. The Madisetti testimony repeats verbatim the Petition, and we considered all the arguments and evidence presented in the Petition. Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (“Nothing in the [federal] rules [of evidence] or in our jurisprudence requires the fact finder to credit the unsupported assertions of an expert witness.”). Now, if Petitioner’s arguments on rehearing are instead directed to whether we should credit Dr. Madisetti because there is no opposing expert testimony, the argument does not show either legal or factual error. We did not find the Petition persuasive, which also means that we did not find Dr. Madisetti’s testimony persuasive. Just because an expert regurgitates attorney argument does not make the argument either persuasive or worthy of blind acceptance when counter testimony does not exist. Third, Petitioner has the burden to show that the reasons to combine are reasonable and this includes explaining sufficiently and factually supporting stated contentions in light of evidence or facts to the contrary. Neither the Petition nor Dr. Madisetti explains how Boykin’s technique, such as the free distribution of media without a key purchase, fits in with the contention that a person of ordinary skill in the art would have combined Boykin’s teachings with key-encrypted file” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“point out that we misapprehended Petitioner’s contentions or its evidence. First, we did not adopt Patent Owner’s arguments wholesale and noted only that the arguments presented highlighted the flaw in Petitioner’s case that there was no persuasive reason a person of ordinary skill in the art would have made the asserted combination. Dec. on Inst. 19. Second, we did not misapprehend the Madisetti testimony on the matter of reasons to combine. The Madisetti testimony repeats verbatim the Petition, and we considered all the arguments and evidence presented in the Petition. Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (“Nothing in the [federal] rules [of evidence] or in our jurisprudence requires the fact finder to credit the unsupported assertions of an expert witness.”). Now, if Petitioner’s arguments on rehearing are instead directed to whether we should credit Dr. Madisetti because there is no opposing expert testimony, the argument does not show either legal or factual error. We did not find the Petition persuasive, which also means that we did not find Dr. Madisetti’s testimony persuasive. Just because an expert regurgitates attorney argument does not make the argument either persuasive or worthy of blind acceptance when counter testimony does not exist. Third, Petitioner has the burden to show that the reasons to combine are reasonable and this includes explaining sufficiently and factually supporting stated contentions in light of evidence or facts to the contrary. Neither the Petition nor Dr. Madisetti explains how Boykin’s technique, such as the free distribution of media without a key purchase, fits in with the contention that a person of ordinary skill in the art would have combined Boykin’s teachings with key-encrypted file” slip op. at 3
§ 103 obviousnessPatents in suitUS 8,606,856 - Apple Inc. / LG Electronics, Inc. v. Uniloc 2017 LLCRehearing deniedPTAB · Aug 9, 2019 · IPR2018-00361 · APJ Miriam L Quinn · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1, 2, 6-9, 12, 14, and 15 unpatentable over Riggins and Devarakonda and claim 20 not shown unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified lies with the party challenging the decision,” and the “request must specifically identify all matters the party believes the Board misapprehended or overlooked.” The burden here, therefore, lies with Patent Owner to show we misapprehended or overlooked the matter it requests that we review. We are not persuaded that Patent Owner has shown that we misapprehended or overlooked the matter raised in the Request for Rehearing.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
§ 103 obviousnessPatents in suitUS 6,216,158 - Juniper Networks, Inc. v. Finjan, Inc.Rehearing deniedPTAB · Jul 16, 2019 · IPR2019-00060 · APJ Miriam L Quinn · IPR · Rehearing
The Board granted rehearing only to address the overlooked construction dispute, but again denied institution because Jensen did not teach “mobile protection code.”
RulingsRehearing decision- RehearingRehearing, deniedDenied
“(“Dec. on Inst.”). The panel concluded that Petitioner had not shown a reasonable likelihood of prevailing in the asserted obviousness grounds because, for a particular ground, Petitioner failed to demonstrate sufficiently that Jensen1 teaches “mobile protection code.” Dec. on Inst. 11−12.2 Petitioner has filed a Request for Rehearing. Paper 8 (“Req. Reh’g”). Petitioner argues that the scope for the claim term “mobile protection code” was in dispute, and that we “failed to resolve the key claim construction dispute between the parties.” Id. at 1. According to Petitioner, rehearing is warranted to resolve the claim construction dispute and “fix the plain error in the Institution Decision.” Id. We are persuaded that in failing to address Petitioner’s construction, we overlooked the matter raised in Petitioner’s Request for Rehearing. Nevertheless, for the reasons discussed infra, after giving due consideration to Petitioner’s argument, we are persuaded that our decision to deny institution was correct, and therefore we deny the request insofar as it calls upon us to institute trial.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“(“Dec. on Inst.”). The panel concluded that Petitioner had not shown a reasonable likelihood of prevailing in the asserted obviousness grounds because, for a particular ground, Petitioner failed to demonstrate sufficiently that Jensen1 teaches “mobile protection code.” Dec. on Inst. 11−12.2 Petitioner has filed a Request for Rehearing. Paper 8 (“Req. Reh’g”). Petitioner argues that the scope for the claim term “mobile protection code” was in dispute, and that we “failed to resolve the key claim construction dispute between the parties.” Id. at 1. According to Petitioner, rehearing is warranted to resolve the claim construction dispute and “fix the plain error in the Institution Decision.” Id. We are persuaded that in failing to address Petitioner’s construction, we overlooked the matter raised in Petitioner’s Request for Rehearing. Nevertheless, for the reasons discussed infra, after giving due consideration to Petitioner’s argument, we are persuaded that our decision to deny institution was correct, and therefore we deny the request insofar as it calls upon us to institute trial.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“1 Protection Wrappers: A Simple and Portable Sandbox for Untrusted Applications, Proceedings on the 8th ACM SIGOPS European Workshop on Support for Composing Distributed Applications, filed in the record as Exhibit 1006. 2 We also exercised our discretion under 35 U.S.C. §§ 314(a) and 325(d) and denied institution. Petitioner does not challenge the exercise of discretion in this request for rehearing.” slip op. at 2
- Other 314aInstitution denied discretionary otherInstitution denied
“1 Protection Wrappers: A Simple and Portable Sandbox for Untrusted Applications, Proceedings on the 8th ACM SIGOPS European Workshop on Support for Composing Distributed Applications, filed in the record as Exhibit 1006. 2 We also exercised our discretion under 35 U.S.C. §§ 314(a) and 325(d) and denied institution. Petitioner does not challenge the exercise of discretion in this request for rehearing.” slip op. at 2
Claim constructionDiscretionary denialPatents in suitUS 7,647,633 - Juniper Networks, Inc. v. Parity Networks, LLCRehearing deniedPTAB · Jun 17, 2019 · IPR2018-01643 · APJ Jeffrey S Smith · IPR · Rehearing
The Board denied Juniper’s rehearing request, leaving institution denied because the Petition did not explain how Schwartz taught the claimed virtual output queues.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW Section 37 C.F.R. § 42.71(d) states the following: 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 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundOther
“The Petition did not explain how the background section of Schwartz teaches “virtual output queues” as claimed. Nor did the Petition explain how the teachings of the background section of Schwartz would have been modified to teach “establishing at each input port, a number of virtual output queues equal to the number of output ports” as claimed, especially in light of Schwartz’s discouragement of quadratically increasing the number of queues as the number of input/output ports increases. See Para-Ordnance Mfg., Inc. v. SGS Importers Int’l, Inc. 73 F.3d 1085, 1090 (Fed. Cir. 1995) (“A reference may be said to teach away when a person of ordinary skill, upon [examining] the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.”). To the contrary, the Petition relied on Schwartz’s disclosure that the invention “avoid[s] the quadradic increase in packet queues, relative to increasing numbers of input/output ports” and “provides for the linear increase in packet queues, relative to increasing numbers of input/output ports.” See Pet. 29 (quoting Ex. 1004, 3:2–13). The Petition did not explain how providing a linear increase in packet queues relative to increasing numbers of input/output ports teaches “establishing at each input port, a number of virtual output queues equal to the number of output ports.”” slip op. at 6
§ 103 obviousnessPatents in suitUS 6,831,891 - Huawei Device Co., Ltd. v. Optis Wireless Technology, LLCRehearing deniedPTAB · Apr 3, 2019 · IPR2018-00658 · APJ John P Pinkerton · IPR · Rehearing
The Board denied rehearing and left in place the denial of institution on claim 1 because JVT-B045 did not teach or suggest the claimed periphery-based determining function.
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 1 In Ground 1, Petitioner asserts claim 1 is unpatentable under 35 U.S.C. § 103 over the combination of H.324, H.263, and JVT-B045. Pet. 47–66. where each matter was addressed previously 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). An abuse of discretion may be indicated 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. 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). With this in mind, we address the arguments presented by Petitioner.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“limitation [1i] that recites a “determining unit configured to determine a predictive value for the number of non-zero coefficients included in the current block based on the number of non-zero coefficients included in a decoded block located on a periphery of the current block.”2 We also examined Dr. Schonfeld’s testimony that a person of ordinary skill would understand that “the last coded 4x4 block” mentioned in the JVT-B045 proposal is a “neighboring block that is located on the periphery of the block being currently coded” in view of Patent Owner’s examples demonstrating that JVT-B045’s “last coded block” would oftentimes not be located on a “periphery of the current block.” Decision 18. We concluded that Patent Owner’s analysis persuasively rebuts Dr. Schonfeld’s testimony. Id. at 18– 19. We also found it is irrelevant that the last coded block of JVT-B045 would “sometimes” be “located on a periphery of the current block.” Id. at 19. In that regard, the Decision states that because claim 1 is an apparatus claim that is “configured to” determine a value based on information in a decoded block “located on a periphery of the current block,” an apparatus programmed to perform the algorithm disclosed by JVT-B045 would be configured to seek information from the “‘last coded block’ (a temporal relationship), which is different from the claimed apparatus configured to 2 This is the complete limitation, whereas a short-hand version was used on page 17 of the Decision that omitted the words “the number of” preceding each use of the term “non-zero coefficients.” provide information based on a spatial relationship—a decoded block ‘located on a periphery of the current block.’” Id. Thus, we determined that Petitioner had not shown a reasonable likelihood of success on Ground 1 because it did not reasonably demonstrate that configuring a determining unit based on the “last coded block” of JVT-B045 taught or suggested configuring a determining unit based on a decoded block “located on a periphery of the current block.”” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“limitation [1i] that recites a “determining unit configured to determine a predictive value for the number of non-zero coefficients included in the current block based on the number of non-zero coefficients included in a decoded block located on a periphery of the current block.”2 We also examined Dr. Schonfeld’s testimony that a person of ordinary skill would understand that “the last coded 4x4 block” mentioned in the JVT-B045 proposal is a “neighboring block that is located on the periphery of the block being currently coded” in view of Patent Owner’s examples demonstrating that JVT-B045’s “last coded block” would oftentimes not be located on a “periphery of the current block.” Decision 18. We concluded that Patent Owner’s analysis persuasively rebuts Dr. Schonfeld’s testimony. Id. at 18– 19. We also found it is irrelevant that the last coded block of JVT-B045 would “sometimes” be “located on a periphery of the current block.” Id. at 19. In that regard, the Decision states that because claim 1 is an apparatus claim that is “configured to” determine a value based on information in a decoded block “located on a periphery of the current block,” an apparatus programmed to perform the algorithm disclosed by JVT-B045 would be configured to seek information from the “‘last coded block’ (a temporal relationship), which is different from the claimed apparatus configured to 2 This is the complete limitation, whereas a short-hand version was used on page 17 of the Decision that omitted the words “the number of” preceding each use of the term “non-zero coefficients.” provide information based on a spatial relationship—a decoded block ‘located on a periphery of the current block.’” Id. Thus, we determined that Petitioner had not shown a reasonable likelihood of success on Ground 1 because it did not reasonably demonstrate that configuring a determining unit based on the “last coded block” of JVT-B045 taught or suggested configuring a determining unit based on a decoded block “located on a periphery of the current block.”” slip op. at 4
§ 103 obviousnessPatents in suitUS 7,769,238
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.