- PTAB · Feb 6, 2025 · IPR2024-00324 · APJ Michelle N Wormmeester · IPR · Rehearing
The Board denied Comcast’s rehearing request and left in place denial of institution after finding no abuse of discretion in its construction and compelling-merits analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 90 (Nov. 2019) (hereinafter, “CTPG”).5 In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); CTPG 90.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“discretion to deny institution due to the advanced state of parallel litigation, taking into consideration the six factors identified in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential), as well as applying guidance set forth in a Memorandum regarding the “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” issued by the Director of the U.S. Patent and Trademark Office (hereinafter, “Guidance Memo”).6 Inst. Dec. 6–43. We determined that the first five Fintiv factors favor discretionary denial,7 and that the Petition presents compelling evidence of unpatentability as to independent claims 1, 12, and 17 under the sixth Fintiv factor. Id. at 15–16, 23–43. Because “the PTAB will not deny institution based on Fintiv if there is compelling evidence of unpatentability,” we declined to exercise our discretion to deny and instituted trial. Guidance Memo 5; Inst. Dec. 15–16. In our Rehearing Decision, however, we agreed with Patent Owner that we erred in determining the claim terms “first format” and “second format” are not limited to different formats, and determined that the proper construction of these claim terms indeed requires the two formats to be different formats. Reh’g Dec. 5–9, 19. Applying the proper construction, we further determined that none of Petitioner’s asserted challenges presents compelling merits of unpatentability as to any claim of the ’751 patent, 6 Available at https://www.uspto.gov/sites/default/files/documents/interim_ proc_discretionary_denials_aia_parallel_district_court_litigation_memo_20 220621_.pdf. 7 Our analysis of the first five Fintiv factors in our First Institution Decision remains undisturbed on rehearing. contrary to our initial determination in the Institution Decision. Id. at 19–20. Having determined that the first five Fintiv factors favor discretionary denial, and that the Petition does not meet the compelling merits standard of the Guidance Memo under the sixth Fintiv factor, we modified our decision and denied institution on rehearing. Id. at 20.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“Contrary to Petitioner’s position, Patent Owner met its burden of showing that our Institution Decision should be modified. In our Institution Decision, we relied on claim differentiation when we determined that claim 1 is not limited to different first and second formats. Inst. Dec. 31. We did not consider the prosecution history, which was part of the record. See Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (“[W]e have held that a court ‘should also consider the patent’s prosecution history, if it is in evidence.’”). As we noted in our Rehearing Decision, however, the Federal Circuit has explained that “[t]he prosecution history modifies the scope of a claim term if ‘the patentee distinguished that term from prior art on the basis of a particular embodiment, expressly disclaimed subject matter, or described a particular embodiment as important to the invention.” Reh’g Dec. 8 (quoting Sentry Protection Prods., Inc. v. Eagle Mfg. Co., 400 F.3d 910, 915 (Fed. Cir. 2005)). The Federal Circuit also has explained that “[a]lthough claim differentiation is a useful analytic tool, it cannot . . . relieve any claim of limitations imposed by the prosecution history.” Id. at 13 (quoting Fenner Invs., Ltd. v. Cellco P’Ship, 778 F.3d 1320, 1327 (Fed. Cir. 2015)). In other words, we erred in not considering the prosecution history, which led to our erroneous conclusion that claim 1 is not limited to different first and second formats. See Ex. 1104, 170 (prosecution history). Our Institution Decision was based on this erroneous conclusion of law, as Patent Owner argued, and we modified it accordingly.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“claim 1. As discussed above with respect to limitation 1D, Petitioner asserted that its proposed combination of Danciu and Mahajan would have provided a system where “Danciu’s remote control would translate commands associated with a first type of media playing application to a generic format, transmit them to the controlled device, which would translate them to a command associated with a second type of media playing application for execution.” Reh’g Dec. 12–13 (quoting Pet. 31). In other words, both Danciu’s remote control and controlled device translate commands. With respect to claim 5, Petitioner asserted that Mahajan’s abstraction module could operate at Danciu’s server. Pet. 43. Even if Mahajan’s abstraction module (which translates commands) could operate at Danciu’s server, Petitioner does not adequately explain why an ordinarily skilled artisan would have had reason to modify Danciu’s system to locate Mahajan’s abstraction module at the server, especially where both Danciu’s remote control and controlled device already translate commands. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). Petitioner does not point to anything in its analysis of claim 5 that demonstrates we misapprehended or overlooked a matter.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,048,751 - Ditec Solutions, LLC v. Woblleworks, Inc.Rehearing deniedPTAB · Mar 13, 2019 · IPR2018-01414 · APJ Sheldon M Mcgee · IPR · Rehearing
The Board denied Ditech’s rehearing request, leaving institution denied because the arguments did not show that the Board misapprehended or overlooked its construction of claims 1 and 13.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. THE REQUEST FOR REHEARING In pertinent part, 37 C.F.R. § 42.71(d) states: 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. Thus, a request for rehearing is not an opportunity merely to 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
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“held cake decorator extruder” as “a three-dimensional (3D) drawing device” in the ʼ444 patent’s Notice of Allowance. Req. 4; Ex. 1002, 344. When viewed in context, however, we do not share Petitioner’s view that the Examiner’s mere characterization of Young’s extruder as a three-dimensional (3D) drawing device, on its own, rises to the level of a “rejection” of Patent Owner’s arguments distinguishing 3D drawing devices from devices that deposit material in layers over time. Ex. 1002, 317–322.2 In fact, the Examiner provides no discussion whatsoever regarding the “three-dimensional” aspect of Young’s device in the Notice of Allowance, but rather focuses on Young’s internal actuators, motor, and gear train. Id. at 344. Thus, the Examiner’s isolated statement that Young’s device is a three-dimensional (3D) drawing device, without more, is not enough to 2 We disagree with Petitioner’s contention (Req. 5) that Patent Owner’s statements made during prosecution were not sufficiently “clear and unmistakable” to invoke the doctrine of prosecution disclaimer. Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1325–26 (Fed. Cir. 2003); see also Spectrum Int’l, Inc. v. Sterilite Corp., 164 F.3d 1372, 1378–79 (Fed. Cir. 1998) (explaining how “explicit statements made by a patent applicant during prosecution to distinguish a claimed invention over prior art may serve to narrow the scope of a claim” because “[b]y distinguishing the claimed invention over the prior art, an applicant is indicating what the claims do not cover.”). persuade us that the Examiner was unequivocally rejecting Patent Owner’s construction of “a three-dimensional (3D) drawing device.”” slip op. at 6
- Strike new argumentNew argument disregardedDecided for patent owner
“Thus, Petitioner’s Request raises new arguments that could have been raised in its Petition. Specifically, the prosecution histories of both the ʼ444 patent and the ʼ266 application provided ample notice to Petitioner of Patent Owner’s previous claim construction positions. Petitioner could have presented a countervailing claim construction argument in its Petition, but instead raises new arguments here in its Request. These new arguments fail the standard set forth in Rule 42.71(d) at the outset because the Board cannot overlook or misapprehend an argument that was not before it. Nevertheless, we determine that even if these arguments were timely made in the Petition or in a Board-authorized Reply, they do not persuade us that the claim construction for the phrase “three-dimensional (3D) drawing device” as set forth in our Decision was erroneous. Dec. 11.” slip op. at 5
Claim constructionPatents in suitUS 9,731,444 - Apple, Inc. v. Realtime Data LLCRehearing deniedPTAB · Aug 21, 2018 · IPR2016-01738 · APJ Georgianna W Braden · IPR · Rehearing
The Board denied Apple's rehearing request, leaving intact its decision that the proposed substitute claims were not shown patentable over the cited art because Settsu did not disclose preloading during the same boot sequence.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS 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 party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“First, as explained in the Decision, when construing the claims at issue (1) we looked at the language of the claims themselves, (2) we consulted the patent’s specification to help clarify the meaning of claim terms, because the claims “must be read in view of the specification, of which they are a part,” Trading Techs. Int’l, v. eSpeed, Inc., 595 F.3d 1340, 1352 (Fed. Cir. 2010) (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (en banc), aff’d, 517 U.S. 370 (1996)), and (3) we reviewed “the patent’s prosecution history in proceedings in which the patent has been brought back to the [US Patent and Trademark Office] for a second review” (Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015)). See Decision, 6–7.” slip op. at 3
Claim constructioncites MarkmanPatents in suitUS 8,880,862 - Apple, Inc. v. Realtime Data LLCRehearing deniedPTAB · Aug 21, 2018 · IPR2016-01737 · APJ Georgianna W Braden · IPR · Rehearing
The Board denied Apple’s rehearing request, leaving intact its finding that the prior art did not disclose the substitute claims’ preloading limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS 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 party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for patent owner
“First, as explained in the Decision, when construing the claims at issue (1) we looked at the language of the claims themselves, (2) we consulted the patent’s specification to help clarify the meaning of claim terms, because the claims “must be read in view of the specification, of which they are a part,” Trading Techs. Int’l, v. eSpeed, Inc., 595 F.3d 1340, 1352 (Fed. Cir. 2010) (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (en banc), aff’d, 517 U.S. 370 (1996)), and (3) we reviewed “the patent’s prosecution history in proceedings in which the patent has been brought back to the [US Patent and Trademark Office] for a second review” (Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015)). See Decision, 6–7.” slip op. at 3
Claim constructioncites MarkmanPatents in suitUS 8,880,862 - Unified Patents Inc. v. Hybrid Audio, LLCRehearing deniedPTAB · Apr 7, 2017 · IPR2016-01265 · APJ Monica S Ullagaddi · IPR · Rehearing
The Board denied rehearing of its decision denying institution, finding no overlooked or misapprehended arguments and upholding its construction of “filter” to exclude QMF filters.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“(d) Rehearing. . . . 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
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“evidence when we determined that the term “filter,” in the context of the ’281 patent and its prosecution history, excludes QMF filters. See id.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Reh’g Req.”) of our Decision Denying Institution (Paper 7, “Dec.”). Petitioner requests that we reconsider our decision to deny institution of inter partes review with respect to claims 5, 12, 18, 26, 34, 41, 48, 57, 66, 71, 83, 90, 95, 100, 107, 112, 114, 116, and 120 (“the challenged claims”) and our determination that Petitioner had not demonstrated a reasonable likelihood of prevailing in showing that the challenged claims of U.S. Patent No. RE40,281 (Ex. 1001, “the ’281 patent”) would have been obvious over various combinations of Jones, Adelson, and Veldhuis. For the reasons set forth below, the request is denied. slip op. at 2
Claim construction§ 103 obviousness - Amazon.Com, Inc. / Amazon Web Services, LLC v. Personalized Media Communications, LLCRehearing deniedPTAB · Dec 9, 2016 · IPR2014-01530 · APJ Trenton A Ward · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving its final written decision on claim 6 unchanged.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS 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 party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 2
- BurdenDecided for petitioner
“Decision that “[t]o prevail in its challenges to the patentability of the claims, a petitioner must establish facts supporting its challenges by a preponderance of the evidence.” Dec. 12 (citing 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d)) (emphasis added).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“189:4–9)), require that these data modules must be part of a larger computer program. Even considering the disclosures in the specification cited by Patent Owner, we are not persuaded that the examples cited require that all data modules must be a discrete unit of a larger computer program. For example, disclosure in the specification that a data module containing the “particular cost-of-a-trimmed-pork-belly-unit” might be executed by a linked computer program to deliver personalized advertisements does not require that it must be a discrete unit of a larger computer program in all circumstances. See Req. 6–7. Yet, as we determined in the Final Written Decision, the specification does disclose that each type of module, including program modules, object modules, and data modules, is executed by a computer to perform a specific function. See Dec. 9 (citing Ex. 1003, 186:10–17, 188:35–37, 188:59–61). Accordingly, we modified our initial construction of “module” in the Decision on Institution as “a discrete unit of digital data” (Paper 8, 8) to incorporate “being executed by a computer to perform a specific function” (see Dec. 9–10). Patent Owner fails to establish persuasively how the examples of data modules in the specification are not met by a construction of “module” as “a discrete unit of digital data that is executed and/or processed to perform a specific function.”” slip op. at 5
Claim constructionPatents in suitUS 7,864,956 - Amazon.Com, Inc. / Amazon Web Services, LLC v. Personalized Media Communications, LLCRehearing deniedPTAB · Aug 31, 2016 · IPR2014-01527 · APJ Karl D Easthom · IPR · Rehearing
The Board denied the Patent Owner’s rehearing request and left in place its finding that claim 13 is unpatentable over Reiter.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The applicable standard for a rehearing request is set forth in 37 C.F.R. § 42.71(d), which provides the following: A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply. For the reasons provided below, we deny Patent Owner’s request for” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Claim 13 refers to two remote sources: “[c] transmitting at least a portion of said data from said first remote data source to said receiver station” and “[d] transmitting from a second remote source to said receiver station a signal which controls said receiver station.” See FWD 6. The claim construction at issue applies to the second remote source, which requires transmitting a signal, as opposed to the first remote data source, which requires transmitting data. See FWD 6, 38–39, 59–60. In the Final Written Decision, we adopted Petitioner’s contention that the term “remote” in the “second remote source” encompasses the “remote” controls disclosed in the prior art of record, based in part on a description of such remote controls (as a “remote keyboard”) in the background of the ’243 patent. See FWD 20–23.2 These ubiquitous remote control devices, described in the ’243 patent and prior art at the time, constitute evidence of one plain meaning of the term “remote.” See id. For example, as part of our analysis of the “second remote source” with respect to the prior art, we found that “the ’243 patent . . ., consistent with the normal meaning of a ‘remote’ control device, does not preclude Summers’s “‘hand-held remote control device of any suitable known form.’” See FWD 59 (quoting Ex. 1010, 6:35–36).” slip op. at 4
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“based on later-filed new matter describing a term of the claim)). Contrary to Patent Owner’s arguments, the Rehearing Request fails to distinguish PowerOasis. Reh’g Req. 15. Faced with Petitioner’s prima facie evidence that claim 13 is not entitled to priority to the earlier-filed ’490 patent (see Pet. 9–13 (citing Ex. 1005, 1043, 984–1044), see infra note 10), Patent Owner did not come forward and show with sufficient evidence or persuasive argument that the ’490 patent supports the disputed term with materially the same breadth that the ’243 patent supports it. See PO Resp. 13–149; PowerOasis, 522 F.3d at 1305–06 (holding that the “district court . . . correctly placed the burden on [patentee] PowerOasis to come forward with evidence to prove entitlement to claim priority [from a CIP application] to an earlier filing date”). Of course, notwithstanding “shifting burden[s]” of “going forward with evidence” regarding priority, and assuming Patent Owner came forward with “sufficient evidence” or “persuasive argument,” Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008) (“the phrase ‘going forward with evidence’ . . . mean[s] both producing additional evidence and presenting persuasive argument”), the burden of showing unpatentability, including a lack of priority, remains with 9 Patent Owner’s argument that “the Examiner [in the ’243 patent Reexamination, infra note 10] subsequently dropped all rejections of claim 13 [after finding a lack of priority to the ’490 patent] that relied on prior art references post-dating the 1981 priority date” does not mention that the Examiner ultimately deemed the issue moot because no intervening references were relied upon, as discussed below. See PO Resp. 13–14; FWD 32 (citing Ex. 1005, 139). 18 Petitioner. See id. at 1327–28 (discussing PowerOasis). Petitioner satisfies its burden of persuasion even if Patent Owner met its burden of going forward, because the weight of evidence shows that Patentee effectively broadened the scope of claim 13 relative the earlier-filed ’490 patent.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for petitioner
“basis for claiming the present subject matter.” Ex. 1004, 127 (emphasis added, quoting Applicant’s Supplemental Response and Amendment (Dec. 5, 1997)), see also id. at 76 (Supplemental Response cover sheet); FWD 30 (similar quotation). This disclaimer virtually duplicates an earlier response by Patentee making the same clear disclaimer. See Ex. 1004, 192 (corresponding to Applicant’s Amendment (July 8, 1997), id. at 143 (Amendment cover sheet)). Contrary to Patent Owner’s current characterization, this was not “a single mistake” (Reh’g Req. 9)––it was a concerted, well-reasoned argument that Patentee advanced on the two separately noted occasions during prosecution. See Ex. 1004, 127, 192. Patent Owner’s clear and repeated arguments stressing that Schneller does not apply, based on a lack of written description support, does not carry any evidentiary hallmarks of a mere “misstatement” or “obvious mistake,” contrary to the arguments now advanced by Patent Owner. See Reh’g Req. 3, 9. Advancing its disclaimer argument in a “detailed, consistent, and repeated” fashion in two separate Office Action responses (Ex. 1004, 127, 192) shows it was no mistake. See Springs Window Fashions LP, 323 F.3d 989, 995 (Fed. Cir. 2003) (“The statements distinguishing Pluber were detailed, consistent, and repeated. A reasonable competitor would have believed that the applicant’s disclaiming statements were not a mere mistake.”) (emphasis added). In other words, the Schneller doctrine, as Patentee persuasively twice argued during prosecution, required “a basis for claiming the present subject matter”––i.e., that doctrine requires written description support in the earlier 29 filed 1981 application (for the rejected claims) in order to support the double patenting rejection, and Patentee specifically stated it did not claim the priority benefit under 35 § U.S.C. 120. See supra note 14; Ex. 1004, 127, 192. In response to Applicant’s Supplemental Response (December 5, 1997) that included the disclaimer argument, the Examiner withdrew its Schneller based double patenting rejection. Ex. 1004, 63 (Final Office Action (Dec. 23, 1997), withdrawing the Schneller based rejection “[i]n view of further analysis and applicant’s arguments”); Ex. 1004, 212, 221 (Office Action (June 7, 1995) rejecting all of the original claims under Schneller, claims 3–33).” slip op. at 29
Claim construction§ 102 anticipationcites Phillips · MarkmanPatents in suitUS 5,887,243 - Amazon.Com, Inc. / Amazon Web Services, LLC v. Personalized Media Communications, LLCRehearing deniedPTAB · Jul 22, 2016 · IPR2014-01534 · APJ Georgianna W Braden · IPR · Rehearing
The Board denied Patent Owner’s request for rehearing, finding no overlooked or misapprehended matter in its constructions of the challenged claim terms.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS 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 party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“First, as explained in the Decision, when construing the claims at issue (1) we looked at the language of the claims themselves, (2) we consulted the patent’s specification to help clarify the meaning of claim terms, because the claims “must be read in view of the specification, of which they are a part,” Trading Techs. Int’l, v. eSpeed, Inc., 595 F.3d 1340, 1352 (Fed. Cir. 2010) (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (en banc), aff’d, 517 U.S. 370 (1996)), and (3) we reviewed “the patent’s prosecution history in proceedings in which the patent has been brought back to the [US Patent and Trademark Office] for a second review” (Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015)). See Decision, 20–22.” slip op. at 3
- Prior constructionPrior construction not adoptedDecided for petitioner
“issue (1) we looked at the language of the claims themselves, (2) we consulted the patent’s specification to help clarify the meaning of claim terms, because the claims “must be read in view of the specification, of which they are a part,” Trading Techs. Int’l, v. eSpeed, Inc., 595 F.3d 1340, 1352 (Fed. Cir. 2010) (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (en banc), aff’d, 517 U.S. 370 (1996)), and (3) we reviewed “the patent’s prosecution history in proceedings in which the patent has been brought back to the [US Patent and Trademark Office] for a second review” (Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015)). See Decision, 20–22. Second, contrary to Patent Owner’s arguments, we considered the ex parte appeal decision rendered by another panel of the Board. Decision, 19– 20 (discussing Ex parte Harvey, No. 2007-1837 (BPAI Mar. 20, 2009) (Ex. 2001, 18, 39)). The prior decision of another panel of the Board in Harvey, however, construed the claim element “generating an image by processing at least one user specific subscriber datum,” but did not construe the claim element “generating information to complete said incomplete processor instructions”; it thus interpreted a different claim phrase than what is at issue here. See id. at 19–20 (citing Ex. 2001, 38–40).” slip op. at 3
Claim constructioncites MarkmanPatents in suitUS 7,827,587 - Amazon.Com, Inc. / Amazon Web Services, LLC v. Personalized Media Communications, LLCRehearing deniedPTAB · Sep 29, 2015 · IPR2014-01532 · APJ Trenton A Ward · IPR · Rehearing
The Board denied the Patent Owner’s rehearing request, leaving the institution decision unchanged, because it found no overlooked evidence or argument on claim construction.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS 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 party challenging a decision bears the burden of showing the decision should be modified. Id. When rehearing a decision on a petition, a panel will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- Prior constructionPrior construction not adoptedDecided for patent owner
“Contrary to Patent Owner’s arguments, the prior decisions of other panels of the Board appear to have relied upon characterizations of the invention and the specification provided by Patent Owner. See e.g., Ex. 2001, 67–68, 91. Those decisions did not rely on the same respective part of the lengthy specification relied upon here, as described in the next paragraph. See id.; see also Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 978 (Fed. Cir. 2014) (Although prosecution history serves as intrinsic evidence, the “court also observes that the PTO is under no obligation to accept a claim construction proffered as a prosecution history disclaimer, which generally only binds the patent owner.”) We previously considered the arguments made by Patent Owner regarding the construction of “decrypting,” and, as stated in the Decision, we determined Patent Owner failed to establish a “significant distinction between encryption/decryption and scrambling/unscrambling.” Dec. on Inst., 25. More particularly, we determined that “the ’304 patent Specification expressly equates the two by stating that ‘decryptors, 107, 224, and 231, may be conventional descramblers, well, known in the art, that descramble analog television transmissions.’” Id. (quoting Ex. 1004, 160:34–37) (emphasis added). Thus, Patent Owner fails to establish that the Board misapprehended and/or overlooked any evidence or argument regarding the construction of “decrypting,” and merely argues that the Board should have been more persuaded by the evidence in the record. See Req. Reh’g. 3–9.” slip op. at 3
Claim constructionPatents in suitUS 7,801,304
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.