- Shopify, Inc. / Priceline.Com LLC et al. v. DDR Holdings, LLCRehearing grantedPTAB · Oct 26, 2020 · IPR2018-01014 · APJ Patrick M Boucher · IPR · Rehearing
Granted petitioner’s rehearing request and held claims 1–3, 5, 7, 8, 11–13, 15, 17, and 18 unpatentable over the listed prior-art grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Petitioner’s argument on rehearing is persuasive, particularly under the broadest-reasonable-interpretation standard of claim construction applied in this proceeding. See Dec. 12–13 (Final Written Decision noting that, for an inter partes review proceeding based on a petition filed prior to November 13, 2018, “the Board interprets claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear”). Petitioner clarifies that the Petition identifies Exhibit 1009’s buy page as corresponding to the “composite web page contain[ing] one or more selectable URLs” recited in the claim and identifies the “view cart,” “modify cart,” and “check out” pages linked to the “buy” page as corresponding to the recited “hierarchical set of additional pages.” See Req. Reh’g 11 (asserting “the Petition demonstrated that the ‘view cart,’ ‘modify cart,’ and ‘checkout’ links satisfy the second ‘wherein’ clause”). In doing so, Petitioner points us to specific portions of its Petition that we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 102 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 21; Ex. 1002 ¶ 102. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 102 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’825 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22. Petitioner thus demonstrates that the buy page shown in Exhibit 1009, i.e., the recited “composite web page,” contains one or more selectable URLs connecting the “view cart,” “modify cart,” and “check out” pages to the buy page, i.e., the recited “hierarchical set of additional web pages,” as required by the claim. Because each of those pages “pertain[s] to a subset of the product offerings in the electronic catalog,” such as those selected for purchase, Petitioner demonstrates, by a preponderance of the evidence, that each limitation of the second “wherein” clause of claim 3 is met by the Digital River Publications.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed
“the broadest-reasonable-interpretation standard of claim construction applied in this proceeding. See Dec. 12–13 (Final Written Decision noting that, for an inter partes review proceeding based on a petition filed prior to November 13, 2018, “the Board interprets claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear”). Petitioner clarifies that the Petition identifies Exhibit 1009’s buy page as corresponding to the “composite web page contain[ing] one or more selectable URLs” recited in the claim and identifies the “view cart,” “modify cart,” and “check out” pages linked to the “buy” page as corresponding to the recited “hierarchical set of additional pages.” See Req. Reh’g 11 (asserting “the Petition demonstrated that the ‘view cart,’ ‘modify cart,’ and ‘checkout’ links satisfy the second ‘wherein’ clause”). In doing so, Petitioner points us to specific portions of its Petition that we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 102 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 21; Ex. 1002 ¶ 102. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 102 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’825 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22. Petitioner thus demonstrates that the buy page shown in Exhibit 1009, i.e., the recited “composite web page,” contains one or more selectable URLs connecting the “view cart,” “modify cart,” and “check out” pages to the buy page, i.e., the recited “hierarchical set of additional web pages,” as required by the claim. Because each of those pages “pertain[s] to a subset of the product offerings in the electronic catalog,” such as those selected for purchase, Petitioner demonstrates, by a preponderance of the evidence, that each limitation of the second “wherein” clause of claim 3 is met by the Digital River Publications.” slip op. at 5
- Expert testimonyPetitioner expert creditedDecided for petitioner
“we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 102 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 21; Ex. 1002 ¶ 102. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 102 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’825 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22.” slip op. at 6
§ 103 obviousnessPatents in suitUS 8,515,825 - Shopify, Inc. / Priceline.Com LLC et al. v. DDR Holdings, LLCRehearing grantedPTAB · Oct 26, 2020 · IPR2018-01012 · APJ Patrick M Boucher · IPR · Rehearing
Granted Petitioner’s rehearing request and held claims 1–3, 5, 7–8, 11–13, 15, 17, and 18 unpatentable, including claims 4, 5, 12, and 13 over the Digital River Publications.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Petitioner’s argument on rehearing is persuasive, particularly under the broadest-reasonable-interpretation standard of claim construction applied in this proceeding. See Dec. 12–13 (Final Written Decision noting that, for an inter partes review proceeding based on a petition filed prior to November 13, 2018, “the Board interprets claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear”). Petitioner clarifies that the Petition identifies Exhibit 1009’s buy page as corresponding to the “composite web page contain[ing] one or more selectable URLs” recited in the claim and identifies the “view cart,” “modify cart,” and “check out” pages linked to the “buy” page as corresponding to the recited “hierarchical set of additional pages.”” slip op. at 5
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 105 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 23; Ex. 1002 ¶ 105. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 105 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’228 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22. Petitioner thus demonstrates that the buy page shown in Exhibit 1009, i.e., the recited “composite web page,” contains one or more selectable URLs connecting the “view cart,” “modify cart,” and “check out” pages to the buy page, i.e., the recited “hierarchical set of additional web pages,” as required by the claim. Because each of those pages “pertain[s] to a subset of the product offerings in the electronic catalog,” such as those selected for purchase, Petitioner demonstrates, by a preponderance of the evidence, that each limitation of the second “wherein” clause of claim 4 is met by the Digital River Publications.” slip op. at 6
- Expert testimonyPetitioner expert creditedDecided for petitioner
“we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 105 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 23; Ex. 1002 ¶ 105. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 105 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’228 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22.” slip op. at 6
§ 103 obviousnessPatents in suitUS 9,043,228 - Shopify, Inc. / Priceline.Com LLC et al. v. DDR Holdings, LLCRehearing grantedPTAB · Oct 26, 2020 · IPR2018-01011 · APJ Patrick M Boucher · IPR · Rehearing
Petitioner’s rehearing request was granted; claims 1–3, 5, 7, 8, 11–13, 15, 17, and 18 were held unpatentable over the listed grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“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
- Expert testimonyPetitioner expert creditedOther
“we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 107 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 25; Ex. 1002 ¶ 107. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 107 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’876 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Petitioner’s argument on rehearing is persuasive, particularly under the broadest-reasonable-interpretation standard of claim construction applied in this proceeding. See Dec. 12–13 (Final Written Decision noting that, for an inter partes review proceeding based on a petition filed prior to November 13, 2018, “the Board interprets claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear”). Petitioner clarifies that the Petition identifies Exhibit 1009’s buy page as corresponding to the “composite web page contain[ing] one or more selectable URLs” recited in the claim and identifies” slip op. at 5
§ 103 obviousnessPatents in suitUS 9,639,876 - Yamaha Golf Car Company v. Club Car, LLCRehearing grantedPTAB · Jun 26, 2018 · IPR2017-02144 · APJ Robert L Kinder · IPR · Rehearing
Rehearing was granted in all four proceedings, and review was instituted on all challenged claims and grounds, except claims 12 and 20, which were disclaimed.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“II. STANDARD OF REVIEW The party challenging a decision in a request for rehearing bears the burden of showing 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.” Id. Upon a request for rehearing, the decision on a petition will be reviewed 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. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“persuades us to grant Petitioner’s requests for rehearing and institute trial in IPR2017-02141 and IPR2017-02143. In the IPR2017-02142 and IPR2017- 02144 proceedings, which have already been instituted as to one claim, Petitioner’s requests for rehearing convince us to institute as to all claims and all grounds set forth in each petition. In particular, in order to deny institution, or partially institute, we were confronted with competing testimony of witnesses offered as experts, as well as competing prior art translations, and we resolved at least one disputed issue of material fact in favor of Patent Owner to deny each petition. See Dec. 17–20. Our own regulation, however, cautions against such an approach at the institution phase of a proceeding stating, “a genuine issue of material fact created by . . . testimonial evidence [filed by Patent Owner] will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review.” 37 C.F.R. § 42.108(c).” slip op. at 4
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached
“’569 patent was entitled to priority and adequately disclosed by the ’894 Provisional.8 Claim 11 requires “disabling golf cart movement towards the predetermined area further comprises disabling golf cart movement except in a reverse direction,” and Petitioner contends that this limitation was not adequately supported in the ’894 Provisional. Petitioner argues that we improperly weighed competing expert testimony at this phase of the proceeding to resolve the disputed issue in favor of Patent Owner. Specifically, Petitioner argues:” slip op. at 8
- Adverse judgmentAdverse judgmentOther
“9 On April 27, 2018, Club Car (Patent Owner) filed a statutory disclaimer under 35 U.S.C. § 253 for claim 12 of the ’569 patent. See IPR2017-02144, Paper 22, Exhibit B (Disclaimer of claim 12). Because claim 12 has been disclaimed, we need not issue a final written decision addressing the patentability of this claim.” slip op. at 10
§ 102 anticipationPatents in suitUS 7,480,569 - Yamaha Golf Car Company v. Club Car, LLCRehearing grantedPTAB · Jun 26, 2018 · IPR2017-02142 · APJ Robert L Kinder · IPR · Rehearing
Granted Yamaha’s rehearing requests and instituted review of all challenged claims on all petition grounds in IPR2017-02141 through IPR2017-02144, except two disclaimed claims.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“burden of showing 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.” Id. Upon a request for rehearing, the decision on a petition will be reviewed 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. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005). III. ANALYSIS One set of arguments made by Petitioner in each proceeding persuades us to grant Petitioner’s requests for rehearing and institute trial in IPR2017-02141 and IPR2017-02143. In the IPR2017-02142 and IPR2017- 02144 proceedings, which have already been instituted as to one claim, Petitioner’s requests for rehearing convince us to institute as to all claims and all grounds set forth in each petition. In particular, in order to deny institution, or partially institute, we were confronted with competing testimony of witnesses offered as experts, as well as competing prior art translations, and we resolved at least one disputed issue of material fact in favor of Patent Owner to deny each petition. See Dec. 17–20. Our own regulation, however, cautions against such an approach at the institution phase of a proceeding stating, “a genuine issue of material fact created by . . . testimonial evidence [filed by Patent Owner] will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review.” 37 C.F.R. § 42.108(c).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“persuades us to grant Petitioner’s requests for rehearing and institute trial in IPR2017-02141 and IPR2017-02143. In the IPR2017-02142 and IPR2017- 02144 proceedings, which have already been instituted as to one claim, Petitioner’s requests for rehearing convince us to institute as to all claims and all grounds set forth in each petition. In particular, in order to deny institution, or partially institute, we were confronted with competing testimony of witnesses offered as experts, as well as competing prior art translations, and we resolved at least one disputed issue of material fact in favor of Patent Owner to deny each petition. See Dec. 17–20. Our own regulation, however, cautions against such an approach at the institution phase of a proceeding stating, “a genuine issue of material fact created by . . . testimonial evidence [filed by Patent Owner] will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review.” 37 C.F.R. § 42.108(c).” slip op. at 4
- Adverse judgmentOther
“9 On April 27, 2018, Club Car (Patent Owner) filed a statutory disclaimer under 35 U.S.C. § 253 for claim 12 of the ’569 patent. See IPR2017-02144, Paper 22, Exhibit B (Disclaimer of claim 12). Because claim 12 has been disclaimed, we need not issue a final written decision addressing the patentability of this claim.” slip op. at 10
- Expert testimonyDecided for petitioner
“persuades us to grant Petitioner’s requests for rehearing and institute trial in IPR2017-02141 and IPR2017-02143. In the IPR2017-02142 and IPR2017- 02144 proceedings, which have already been instituted as to one claim, Petitioner’s requests for rehearing convince us to institute as to all claims and all grounds set forth in each petition. In particular, in order to deny institution, or partially institute, we were confronted with competing testimony of witnesses offered as experts, as well as competing prior art translations, and we resolved at least one disputed issue of material fact in favor of Patent Owner to deny each petition. See Dec. 17–20. Our own regulation, however, cautions against such an approach at the institution phase of a proceeding stating, “a genuine issue of material fact created by . . . testimonial evidence [filed by Patent Owner] will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review.” 37 C.F.R. § 42.108(c).” slip op. at 4
NonePatents in suitUS 7,239,965 - Yamaha Golf Car Company v. Club Car, LLCRehearing grantedPTAB · Jun 26, 2018 · IPR2017-02143 · APJ Robert L Kinder · IPR · Rehearing
Granted rehearing and instituted review on all asserted grounds for all challenged claims in IPR2017-02141 through IPR2017-02144, except the two disclaimed claims.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“II. STANDARD OF REVIEW The party challenging a decision in a request for rehearing bears the burden of showing 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.” Id. Upon a request for rehearing, the decision on a petition will be reviewed 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. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“persuades us to grant Petitioner’s requests for rehearing and institute trial in IPR2017-02141 and IPR2017-02143. In the IPR2017-02142 and IPR2017- 02144 proceedings, which have already been instituted as to one claim, Petitioner’s requests for rehearing convince us to institute as to all claims and all grounds set forth in each petition. In particular, in order to deny institution, or partially institute, we were confronted with competing testimony of witnesses offered as experts, as well as competing prior art translations, and we resolved at least one disputed issue of material fact in favor of Patent Owner to deny each petition. See Dec. 17–20. Our own regulation, however, cautions against such an approach at the institution phase of a proceeding stating, “a genuine issue of material fact created by . . . testimonial evidence [filed by Patent Owner] will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review.” 37 C.F.R. § 42.108(c).” slip op. at 4
- Adverse judgmentOther
“9 On April 27, 2018, Club Car (Patent Owner) filed a statutory disclaimer under 35 U.S.C. § 253 for claim 12 of the ’569 patent. See IPR2017-02144, Paper 22, Exhibit B (Disclaimer of claim 12). Because claim 12 has been disclaimed, we need not issue a final written decision addressing the patentability of this claim.” slip op. at 10
NonePatents in suitUS 7,480,569 - Yamaha Golf Car Company v. Club Car, LLCRehearing grantedPTAB · Jun 26, 2018 · IPR2017-02141 · APJ Robert L Kinder · IPR · Rehearing
The Board granted rehearing and instituted review of all challenged claims on all petition grounds in four proceedings, except claims 12 and 20, which had been disclaimed.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“burden of showing 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.” Id. Upon a request for rehearing, the decision on a petition will be reviewed 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. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“persuades us to grant Petitioner’s requests for rehearing and institute trial in IPR2017-02141 and IPR2017-02143. In the IPR2017-02142 and IPR2017- 02144 proceedings, which have already been instituted as to one claim, Petitioner’s requests for rehearing convince us to institute as to all claims and all grounds set forth in each petition. In particular, in order to deny institution, or partially institute, we were confronted with competing testimony of witnesses offered as experts, as well as competing prior art translations, and we resolved at least one disputed issue of material fact in favor of Patent Owner to deny each petition. See Dec. 17–20. Our own regulation, however, cautions against such an approach at the institution phase of a proceeding stating, “a genuine issue of material fact created by . . . testimonial evidence [filed by Patent Owner] will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review.” 37 C.F.R. § 42.108(c).” slip op. at 4
NonePatents in suitUS 7,239,965 - FMC Technologies, Inc. v. Onesubsea IP UK LimitedRehearing grantedPTAB · Apr 19, 2018 · IPR2016-00907 · APJ Michelle N Wormmeester · IPR · Rehearing
On rehearing, the Board held claims 36 and 37 unpatentable as obvious over Kelly and Fenton, Kelly, Bednar, and Fenton, and Clair and Fenton.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“III. STANDARD OF REVIEW 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 that we review.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“sensors, as described by Fenton, are expressly enumerated as being processing apparatus in dependent claim 29.” Id. at 28 (cited by Req. Reh’g 5). The ’306 patent indeed teaches that a processing apparatus may include a temperature, pressure, or flow sensor. Ex. 1001, claim 29 (“the processing apparatus is chosen from at least one of: . . . measurement apparatus; temperature measurement apparatus; flow rate measurement apparatus . . .”); accord id. at claim 37. Accordingly, we also agree that Fenton’s sensors correspond to the recited “processing apparatus.” Petitioner further explained that “[m]odifying Kelly’s subsea choke assembly by adding one or more temperature sensors, pressure sensors, or flow meters as taught by Fenton would provide information related to fluid flow through the assembly and allow more precise control of the choke to achieve desired flow characteristics.” Pet. 27 (emphases added) (cited by Req. Reh’g 1). In light of our current understanding of Petitioner’s argument, based on the record, we find that the combination of Kelly and Fenton teaches a “diverter assembly,” a “choke,” and a “processing apparatus,” and that Petitioner’s proffered reasoning for modifying Kelly’s choke assembly to include Fenton’s temperature sensors, pressure sensors, or flow meters in order to allow for more precise control of the choke is sufficient to support the legal conclusion of obviousness. See Pet. 27–28.” slip op. at 8
§ 103 obviousnessPatents in suitUS 8,573,306 - Neil Ziegmann / N.P.Z., Inc. v. Carlis G. StephensRehearing grantedPTAB · Sep 6, 2017 · IPR2015-01860 · APJ Michael W Kim · IPR · Rehearing
The Board granted rehearing in part, reaffirmed denial of IPR under § 325(d), and granted the request for an expanded panel.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“[dissatisfied] party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d). Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Moreover, as the moving party, the burden of persuasion falls on Petitioner. 37 C.F.R. § 42.20(c). When rehearing a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise 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).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“arguments” is self-evident, so we focus on the next part, “substantially the same prior art or arguments.” 35 U.S.C. § 325(d) (emphasis added). We conclude that a set of prior art or arguments may be considered “substantially the same” if they are “cumulative to or substantially overlap with issues previously considered by the Office with respect to the patent.” 157 CONG. REC. S1375 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl). In order for a party to bring this issue to the Office’s attention, the focus of the “substantially” analysis should be on the differences (or lack thereof) between the prior art and arguments presented in the petition, and those “previously . . . presented to the Office.” A party making assertions relevant to Section 325(d) should identify such differences (or lack thereof), whether substantive or procedural, and explain the relevance of those differences (or lack thereof).” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Taker Magazine (Ex. 1027) and the Declaration of Neil Ziegmann (Ex. 1024) that purportedly show that the Examiner’s determination was erroneous. We note that Mr. Ziegmann’s testimony is discounted, in that he is an interested party in this proceeding. Cf. Finnigan Corp. v. ITC, 180 F.3d 1354, 1369 (Fed. Cir. 1999) (“[T]he level of interest of the testifying witness is an important consideration when such testimony is offered to corroborate another witness’s testimony.”). Moreover, even when accorded some weight, we are unpersuaded that the Fur Taker advertisement and Mr. Ziegmann’s testimony come close to showing that the Examiner’s determination concerning nexus was erroneous. In particular, the vast majority of the evidence concerning secondary considerations in the prosecution history has not been challenged by Petitioner, and, thus, for the reasons set forth above, is treated as undisputed fact. To hold otherwise would allow Petitioner to make an end-run around Section 325(d) by merely submitting any piece of new evidence, no matter how minor or inconsequential.” slip op. at 27
Discretionary denialPatents in suitUS 8,881,447 - Prime Focus Creative Services Canada Inc. v. Legend3d, Inc.Rehearing grantedPTAB · May 16, 2017 · IPR2016-01491 · APJ Kamran Jivani · IPR · Rehearing
Granted petitioner’s rehearing request and instituted review of claims 1, 3, 5, 16, and 19 as obvious over Sandrew alone; other proposed grounds remained unauthorized.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“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 lies with the party challenging the decision.” Id. “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“clearly presented, we nonetheless overlooked Petitioner’s alternative reliance on Sandrew alone in as teaching or suggesting the claimed copying, particularly when taken in context of the anticipation ground based on Sandrew for which we instituted review. As stated in our Decision, Petitioner has shown a reasonable likelihood of prevailing on its challenge to claims 1, 3, 5, 16, and 19 as anticipated by Sandrew. Dec. on Inst. 14. Petitioner’s anticipation challenge based on Sandrew, therefore, identified where it contends each element of claims 1, 3, 5, 16, and 19 of the ’941 patent is disclosed by Sandrew. Pet. 15–25. Petitioner’s obviousness challenge based on Sandrew alone relies upon these same contentions. Id. at 25–26. As such and based on the foregoing discussion, we find that Petitioner’s obviousness analysis relying on Sandrew alone shows a reasonable likelihood of prevailing only as to claims 1, 3, 5, 16, and 19.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“Petitioner fails to explain in the record before us how or why one of ordinary skill in the art would combine the teachings of Sandrew, Yuille, and various other references to arrive at the elements recited in claims 4, 11– 13, and 24. For instance, the Petition asserts, and the Request repeats, the following: “Yuille discloses express mathematical algorithms that can almost be cut and copied into the method of Sandrew to yield the invention of the ‘941 Patent.” Reh’g Req. 3 (quoting Pet. 36) (emphasis omitted). As Petitioner recognizes in the Request, this argument is directed to the copying of claim 1, and specifically to meeting an allegation that Sandrew and Yuille together teach automated copying, assuming automation is required by claim 1. Id. at 3–5. Setting aside whether claim 1 actually requires automated copying, as well as whether the alleged combination teaches or suggests automated copying, Petitioner’s articulated rationale to combine the teachings of Sandrew and Yuille does not address how or why one of ordinary skill in the art would combine their respective teachings not directed to automated copying. For instance, Petitioner fails to address why one would combine the teachings of Yuille with Sandrew to account for the following limitations: (1) the reshaping recited in claims 4, 6–10, and 24; (2) the moving and reshaping of a second mask comprising a polygon, curve, or both recited in claim 11; and (3) the polygon and Bezier curve animation recited in claims 12 and 13. See Pet. 27–34, 42–45. Because Petitioner’s articulated rationale is divorced from the specific limitations required by the claims, we determine Petitioner has not shown a reasonable likelihood of prevailing on its assertion that each of claims 4, 6–13, and 24 are obvious over the combination of Sandrew, Yuille, and various other references.” slip op. at 6
§ 103 obviousnessPatents in suitUS 9,286,941
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.