- C&D Zodiac, Inc. v. B/E Aerospace, Inc.Rehearing deniedPTAB · Mar 9, 2018 · IPR2017-01274 · APJ Scott A Daniels · IPR · Rehearing
The Board denied C&D Zodiac’s rehearing request and left in place its denial of institution because the hypothetical forward wall limitation did not provide ascertainable claim scope.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision[,]” which party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“In the Institution Decision, we explained that we were unable to determine the metes and bounds of the hypothetical enclosure unit limitation required by all the challenged claims. Inst. Dec. 7–12. Specifically, we found that “[a]s a whole, the claim language does not in any comprehensible way tie the relative position of the seat support to the shape of the wall, be it “substantially not flat” or, hypothetically speaking, “substantially flat.”” Inst. Dec. 10. In light of this uncertainty, we found that “Petitioner has not provided sufficient information for a determination of the scope of certain limitations, such as the ‘additional space’ and, therefore, we cannot conduct the necessary factual inquiry for determining whether the prior art meets this limitation.” Id. at 16.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In the Institution Decision, we explained that we were unable to determine the metes and bounds of the hypothetical enclosure unit limitation required by all the challenged claims. Inst. Dec. 7–12. Specifically, we found that “[a]s a whole, the claim language does not in any comprehensible way tie the relative position of the seat support to the shape of the wall, be it “substantially not flat” or, hypothetically speaking, “substantially flat.”” Inst. Dec. 10. In light of this uncertainty, we found that “Petitioner has not provided sufficient information for a determination of the scope of certain limitations, such as the ‘additional space’ and, therefore, we cannot conduct the necessary factual inquiry for determining whether the prior art meets this limitation.” Id. at 16.” slip op. at 3
Claim constructioncites MarkmanPatents in suitUS 9,365,292 - C&D Zodiac, Inc. v. B/E Aerospace, Inc.Rehearing deniedPTAB · Mar 8, 2018 · IPR2017-01273 · APJ Jennifer S Bisk · IPR · Rehearing
The Board denied rehearing of its decision denying institution because Petitioner did not show an abuse of discretion in finding claims 1–6 indefinite in scope.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision[,]” which party “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). slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In the Institution Decision, we explained that we were unable to determine the metes and bounds of the hypothetical enclosure unit limitation required by all the challenged claims. Inst. Dec. 7–9. Specifically, we found that the claim language “leaves us to compare the claimed enclosure unit with a configuration that we know nothing about, except that it has an alternative hypothetical enclosure unit with ‘a substantially flat front wall located in the substantially the same position in the cabin as the forward wall.’” Inst. Dec. 8. In light of this uncertainty, we found that “Petitioner has not provided sufficient information for a determination of the scope of the hypothetical enclosure unit limitation and, therefore, we cannot conduct the necessary factual inquiry for determining whether the prior art meets this limitation.” Id. at 9.” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“determine the metes and bounds of the hypothetical enclosure unit limitation required by all the challenged claims. Inst. Dec. 7–9. Specifically, we found that the claim language “leaves us to compare the claimed enclosure unit with a configuration that we know nothing about, except that it has an alternative hypothetical enclosure unit with ‘a substantially flat front wall located in the substantially the same position in the cabin as the forward wall.’” Inst. Dec. 8. In light of this uncertainty, we found that “Petitioner has not provided sufficient information for a determination of the scope of the hypothetical enclosure unit limitation and, therefore, we cannot conduct the necessary factual inquiry for determining whether the prior art meets this limitation.” Id. at 9.” slip op. at 3
Claim constructionPatents in suitUS 9,434,476 - PTAB · Mar 13, 2017 · IPR2016-01367 · APJ Michael J Fitzpatrick · IPR · Rehearing
The Board denied rehearing because the Petitioner did not show that the prior art disclosed an interlayer insulating film located between but not within other layers, as claims 18, 19, 30–32, 34–36, 47–49, and 51 …
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the party challenging the decision,” which party “must specifically 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). And, because Petitioner seeks rehearing of our Decision denying the Petition, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“interlayer insulating film.” We denied the Petition because Petitioner had not shown how the asserted prior art disclosed or taught this limitation. Dec. 13.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Patent Owner proposed an express construction for “an interlayer insulating film.” Specifically, Patent Owner argued that it means “an insulating film located between but not within layers.” Prelim. Resp. 9. We largely agreed with Patent Owner, but we added the word “other,” yielding a construction as follows: an insulating film located between but not within other layers. Dec. 9. We determined that our construction was supported fully by intrinsic evidence and additionally by extrinsic evidence. See id. at 7–10. Based on our construction, we determined that Petitioner had not shown how the prior art discloses or teaches “an interlayer insulating film,” as required by all the challenged claims. Id. at 12–13.” slip op. at 3
- BurdenDecided for patent owner
“It was Petitioner’s affirmative duty to explain how the challenged claims should be construed and how, as so construed, they are unpatentable. See 37 C.F.R. § 42.104(b)(3)–(4). Petitioner did not do this. The Petition states: Wollesen discloses an interlayer insulating film (e.g., dielectric layer 9) formed on the semiconductor substrate (1).3 Ex. 1006, FIG. 1. The dielectric layer 9 is an “interlayer” insulating film, as it is an electrically insulating film positioned between the conducting layers 8 and 10 in the semiconductor device. Ex. 1005, ¶ 65.” slip op. at 4
Claim constructioncites Phillips - Hologic, Inc. v. Enzo Life Sciences, Inc.Rehearing deniedPTAB · Mar 13, 2017 · IPR2016-00822 · APJ Michael J Fitzpatrick · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution in place because it found sufficient evidence that the non-patent references were prior art for institution purposes.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“§ 42.62(a) states that “the Federal Rules of Evidence shall apply to a proceeding,” and that “a proceeding” is defined in § 42.2 to include the preliminary proceeding prior to institution. Id. at 6. Patent Owner then concludes incorrectly, however, that it was entitled to an evidentiary ruling during the preliminary proceeding. Id. at 6–7. Although the Federal Rules of Evidence apply to the instant proceeding,7 a party is not entitled to an evidentiary ruling prior to institution. Indeed, our regulations create a postinstitution procedure for challenging evidence and ruling on those challenges. See 37 C.F.R. § 42.64. This post-institution procedure expressly applies to pre-institution evidence. Id. at 42.64(b)(1) (“Any objection to evidence submitted during a preliminary proceeding must be filed within ten business days of the institution of the trial.”). The Board’s procedure allows for curing of alleged evidentiary defects through the timely service of supplemental evidence. Id. at 42.64(b)(2). Ultimately, “[a] motion to exclude must be filed to preserve any objection.” Id. at 42.64(c). Motions to exclude in the instant inter” slip op. at 5
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Petitioner has made a sufficient showing that each of these references qualify as prior art printed publications. For example, Fish appears to be an article from the journal Arthritis and Rheumatism and bears a “March 1981” publication date on the cover of the volume as well as the cover page of the article. Ex. 1006, cover page and 534. Sato appears to be an article from the journal Radiation Research and bears a publication date of 1981. Ex. 1034, 646. Gilham appears to be an article published in a book titled Immobilized Biochemicals and Affinity Chromatography, which includes a copyright date of 1974 and an indication that it contains most of the papers presented in a “Symposium on Affinity Chromatography and Immobilized Biochemicals” held November 7–9, 1973. Ex. 1019, second page after cover (“Library of Congress Cataloging in Publication Data”). VPK appears to be an article from the journal Experimental Cell Research and is dated October 1982. Ex. 1008, cover page. Noyes appears to be an article from the journal Cell and is dated July 1975. Ex. 1007, 301. Finally, Ramachandran appears to be an article from the journal Biotechnology and Bioengineering and is dated 1975. Thus, each of these references bears a date prior to the earliest possible effective filing date for the challenged claims (i.e., Jan. 27, 1983). See Ex. 1001, 1:19; 35 U.S.C. § 120. Moreover, the references are either journal articles or excerpts from a book, and thus appear to have been publicly disseminated. Petitioner has made sufficient showing that these documents qualify as prior art printed publications. After institution, Patent Owner may, if it chooses to do so, continue to challenge the sufficiency or admissibility of the evidence. See 35 U.S.C. § 311(b); 37 C.F.R. § 42.64(b).” slip op. at 4
- ExcludeNot reached
“§ 42.62(a) states that “the Federal Rules of Evidence shall apply to a proceeding,” and that “a proceeding” is defined in § 42.2 to include the preliminary proceeding prior to institution. Id. at 6. Patent Owner then concludes incorrectly, however, that it was entitled to an evidentiary ruling during the preliminary proceeding. Id. at 6–7. Although the Federal Rules of Evidence apply to the instant proceeding,7 a party is not entitled to an evidentiary ruling prior to institution. Indeed, our regulations create a postinstitution procedure for challenging evidence and ruling on those challenges. See 37 C.F.R. § 42.64. This post-institution procedure expressly applies to pre-institution evidence. Id. at 42.64(b)(1) (“Any objection to evidence submitted during a preliminary proceeding must be filed within ten business days of the institution of the trial.”). The Board’s procedure allows for curing of alleged evidentiary defects through the timely service of supplemental evidence. Id. at 42.64(b)(2). Ultimately, “[a] motion to exclude must be filed to preserve any objection.” Id. at 42.64(c). Motions to exclude in the instant inter” slip op. at 5
§ 102 anticipationPatents in suitUS 7,064,197 - Hologic, Inc. v. Enzo Life Sciences, Inc.Rehearing deniedPTAB · Mar 10, 2017 · IPR2016-00820 · APJ Michael J Fitzpatrick · IPR · Rehearing
The Board denied Enzo’s rehearing request, leaving institution on all petition grounds in place because it found no abuse of discretion in its treatment of the references as prior art for institution.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“§ 42.62(a) states that “the Federal Rules of Evidence shall apply to a proceeding,” and that “a proceeding” is defined in § 42.2 to include the preliminary proceeding prior to institution. Id. at 6 (emphasis added). Patent Owner then concludes incorrectly, however, that it was entitled to an evidentiary ruling during the preliminary proceeding. Id. at 6–7. Although the Federal Rules of Evidence apply to the instant proceeding,6 a party is not entitled to an evidentiary ruling prior to institution. Indeed, our regulations create a post-institution procedure for challenging evidence and ruling on those challenges. See 37 C.F.R. § 42.64. This post-institution procedure expressly applies to pre-institution evidence. Id. at 42.64(b)(1) (“Any objection to evidence submitted during a preliminary proceeding must be filed within ten business days of the institution of the trial.”). The Board’s procedure allows for curing of alleged evidentiary defects through the timely service of supplemental evidence. Id. at 42.64(b)(2). Ultimately, “[a] motion to exclude must be filed to preserve any objection.” Id. at 42.64(c). Motions to exclude in the instant inter partes review are not due until April 24, 2017 (Paper 19), with any evidentiary ruling occurring thereafter. Typically, panels rule on motions to exclude in their final written decisions.” slip op. at 5
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Petitioner has made a sufficient showing that each of these references qualify as prior art printed publications. For example, Fish appears to be an article from the journal Arthritis and 1 Falk Fish, et al., “A Sensitive Solid Phase Microradioimmunoassay For Anti-Double Stranded DNA Antibodies,” Arthritis and Rheumatism, Vol. 24, No. 3, 534–43 (March 1981). 2 P. T. Gilham, “Immobilized Polynucleotides and Nucleic Acids,” Immobilized Biochemicals and Affinity Chromatography, 173–85 (1974). 3 A. C. Van Prooijen-Knegt, et al. “In Situ Hybridization of DNA Sequences in Human Metaphase Chromosomes Visualized by an Indirect Fluorescent Immunocytochemical Procedure,” Experimental Cell Research, Vol. 141, 397–407 (Oct. 1982). 4 Barbara E. Noyes, et al., “Nucleic Acid Hybridization Using DNA Covalently Coupled to Cellulose,” Cell, Vol. 5, 301–10 (July 1975). 5 K. B. Ramachandran, et al., “Effects of Immobilization of the Kinetics of Enzyme-Catalyzed Reactions. I. Glucose Oxidase in a Recirculation Reactor System,” Biotechnology and Bioengineering, Vol. XVIII, 669–84 (1976). Rheumatism and bears a “March 1981” publication date on the cover of the volume as well as the cover page of the article. Ex. 1006, cover page and 534. Gilham appears to be an article published in a book titled Immobilized Biochemicals and Affinity Chromatography, which includes a copyright date of 1974 and an indication that it contains most of the papers presented in a “Symposium on Affinity Chromatography and Immobilized Biochemicals” held November 7–9, 1973. Ex. 1019, second page after cover (“Library of Congress Cataloging in Publication Data”). VPK appears to be an article from the journal Experimental Cell Research and is dated October 1982. Ex. 1008, cover page. Noyes appears to be an article from the journal Cell and is dated July 1975. Ex. 1007, 301. Finally, Ramachandran appears to be an article from the journal Biotechnology and Bioengineering and is dated 1975. Thus, each of these references bears a date prior to the earliest possible effective filing date for the challenged claims (i.e., Jan. 27, 1983). See Ex. 1001, 1:19; 35 U.S.C. § 120. Moreover, the references are either journal articles or excerpts from a book, and thus appear to have been publicly disseminated. Petitioner has made sufficient showing that these documents qualify as prior art printed publications. After institution, Patent Owner may, if it chooses to do so, continue to challenge the sufficiency or admissibility of the evidence. See 35 U.S.C. § 311(b); 37 C.F.R. § 42.64(b).” slip op. at 3
§ 102 anticipationPatents in suitUS 7,064,197 - Gopro, Inc. v. Contour IP Holding LLCRehearing deniedPTAB · Feb 16, 2017 · IPR2015-01080 · APJ Justin T Arbes · IPR · Rehearing
The Board denied GoPro’s rehearing request, leaving intact its determination that claims 1, 2, and 11–30 were not shown unpatentable because the GoPro Catalog was not proven publicly accessible.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“the Reply and at the oral hearing. Mere disagreement with a decision is not a proper basis for rehearing when a party’s arguments were considered and addressed in the decision. As we stated in the Final Decision, although some cases, such as In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989), refer simply to “the public interested in the art,” the majority of cases define the standard as accessibility to persons interested and ordinarily skilled in the art. Dec. 19–21. We remain persuaded that the appropriate standard is that set forth in Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016): “A reference will be considered publicly accessible if it was ‘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’” (citation omitted).2” slip op. at 4
- BurdenDecided for patent owner
“decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
§ 102 anticipationPatents in suitUS 8,890,954 - Gopro, Inc. v. Contour IP Holding LLCRehearing deniedPTAB · Feb 16, 2017 · IPR2015-01078 · APJ Justin T Arbes · IPR · Rehearing
The Board denied GoPro’s rehearing request, leaving its determination that claims 1–20 were not shown unpatentable because the GoPro Catalog was not proven to be a publicly accessible prior art printed publication.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Analysis The party requesting rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
- BurdenNot shown unpatentable
“out in the Final Decision, and emphasize again, that Petitioner provided no underlying facts or evidence to substantiate this, other than Mr. Jones’s bare statement that Petitioner “continued to distribute and otherwise make available the GoPro Catalog to [Petitioner’s] actual and potential customers, dealers and retailers through its website, direct mail, and other means of distribution.” See Dec. 22 n.8; Ex. 1012 ¶ 11; Ex. 1022 ¶ 10. We are not persuaded that simply stating that a document was available “by mail” or “on a website,” without additional detail, is sufficient to demonstrate public accessibility of a reference. See Blue Calypso, 815 F.3d at 1349–50 (analyzing the underlying facts regarding a report posted on a website, including the lack of evidence that anyone “viewed or downloaded” the report or that “a query of a search engine” would have led to it). For example, Petitioner does not tell us the website to which it is referring from 2009, identify or provide a copy of the specific web page from which the GoPro Catalog allegedly could have been downloaded, or explain in any detail how someone could have obtained a hard copy via mail. Without supporting evidence from Petitioner, we are unable to determine how potential availability online or by mail impacts the analysis, and are left only with Petitioner’s evidence regarding the 2009 Tucker Rocky Dealer Show, as explained in the Final Decision. See Dec. 22–28 & n.8. It was Petitioner’s burden to prove unpatentability by a preponderance of the evidence, including proving that the GoPro Catalog qualifies as a prior art printed publication under 35 U.S.C. § 102(b). See Pet. 24; 35 U.S.C. § 316(e); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1375–80 (Fed. Cir. 2016); Blue Calypso, 815 F.3d at 1348–51 (affirming Board decision that the petitioner “failed to carry its burden of proving public accessibility” of an asserted reference); Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378–79 (Fed. Cir. 2015) (“In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ and that burden never shifts to the patentee. ‘Failure to prove the matter as required by the applicable standard means that the party with the burden of persuasion loses on that point—thus, if the fact trier of the issue is left uncertain, the party with the burden loses.’” (citations omitted)). The limited evidence and argument provided by Petitioner during trial did not suffice to meet that burden, for the reasons explained in the Final Decision. See Dec. 19–28.” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“proof that Petitioner physically provided a copy of the GoPro Catalog to someone at the 2009 Tucker Rocky Dealer Show that was of ordinary skill in the art. Rather, as Patent Owner correctly points out, we found no evidence that persons of ordinary skill in the art would have been in attendance at—or even aware of—the 2009 Tucker Rocky Dealer Show, such that they could have obtained a copy there. See Dec. 25–28; Opp. 2, 8–13. This is a factor supporting Patent Owner’s position that the GoPro Catalog was not sufficiently accessible to persons interested and of ordinary skill in the art. See Dec. 25–28; Paper 30, 10–13. Again, Petitioner provided no evidence during trial that the 2009 Tucker Rocky Dealer Show was advertised to or open to the general public, such that the public would have known about the show and could have obtained a copy of the GoPro Catalog there, and Patent Owner presented some evidence to the contrary. Dec. 23–25 (citing Exs. 2001, 2002, 1012 ¶ 5). Further, as explained in the Final Decision, the 2009 Tucker Rocky Dealer Show primarily pertained to motorcycles and other action sports vehicles and was directed to sales and marketing personnel, but a person of ordinary skill in the art for purposes of the ’694 patent is someone with a technical background with digital video cameras. Id. at 18–19, 22–28 (citing Exs. 1012, 2001).” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Other
“inconsistent” with our Decision on Institution (Paper 8, “Dec. on Inst.”). Req. Reh’g 4, 7, 12–14. Petitioner is incorrect. At the institution stage, the standard for institution is “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition,” and we look for only a threshold showing that an asserted reference is prior art. See 35 U.S.C. § 314(a); Dec. on Inst. 13. At the final decision stage, however, a petitioner has the burden of providing unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e). There is no inconsistency between finding a reasonable likelihood of prevailing at the time of institution and less than a preponderance of the evidence in a final decision. Indeed, at institution, “the Board is considering the matter preliminarily without the benefit of a full record.” Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016). “The Board is free to change its view of the merits after further development of the record, and should do so if convinced its initial inclinations were wrong. To conclude otherwise would collapse these two very different analyses into one . . . .” Id. We stated in the Decision on Institution that our finding of a threshold showing by Petitioner was “[b]ased on the current record.” Dec. on Inst. 17 (“The fact that we institute an inter partes review on a not fully developed record is not dispositive of the ultimate legal conclusion as to whether the GoPro Catalog qualifies as prior art. That conclusion will be based on a preponderance of the fully developed record evidence.”). slip op. at 6
§ 102 anticipationPatents in suitUS 8,896,694 - Under Armour, Inc. v. Adidas AGRehearing deniedPTAB · Feb 29, 2016 · IPR2015-01532 · APJ Justin Busch · IPR · Rehearing
The Board denied Under Armour’s rehearing request, leaving in place the denial of institution on claim 17 for anticipation by Bouve and, alternatively, Kim.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision[,]” which party “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). slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Petitioner argues it just needs to show “that Kim discloses storing data that falls within the scope of the plain words ‘a length of the route.’” We agree with Petitioner that the plain meaning of “a length of the route” is the appropriate construction because, on this record, we find no reason to give the phrase a special meaning. The Petition, however, did not present persuasive argument that the plain meaning of “a length of the route” encompasses Kim’s total altitude distance.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“users needed to manually estimate route distances between points of interest. Pet. 17–18 (quoting Ex. 1004, 1:28–35). The Petition asserted “Bouve improved upon the prior art system by maintaining route length information in a database.” Id. at 18 (emphasis added). In support of that assertion, the Petition pointed to Bouve’s disclosure that “The processors . . . compute the mileage indication, along the retrieved travel route(s), for each individual item of travel information which is retrieved from the data bases,” and concluded that Bouve computes mileage information along a route and route length between points of interest using route length information stored in a database. Id. (quoting Ex. 1004, 8:18–22 (underlining added). The Petition, however, failed to identify any disclosure in Bouve that “route length information” is maintained in a database. The Petition also argued Bouve discloses recommending a route “based on that stored length of a route” because Bouve allows a user to select the shortest route between two points. Id. at 19.” slip op. at 3
Claim construction§ 102 anticipationPatents in suitUS 8,652,009 - PTAB · Jul 13, 2013 · IPR2013-00054 · APJ Howard B Blankenship · IPR · Rehearing
The Board denied rehearing of its refusal to institute review of claims 1-3, 5, 6, 10, 12-14, 16, 17, 21, 23-26, 28, 29, and 33 because the petition did not establish a reasonable likelihood of …
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Petitioner‟s allegations in the Petition did not comply with 37 C.F.R. § 42.104(b)(4)1, we should treat the Petition as incomplete under § 42.106(a)(1), issue a Notice of Incomplete Petition under § 42.106(b), and provide one month to correct the deficiency. Req. Reh‟g 1-2. We are not persuaded by the argument that Petitioner, having failed to meet its statutory burden of proof initially, should now be given a second opportunity on the merits based on supposed procedural deficiencies in the petition, as filed. Petitioner‟s argument confuses minimum procedural compliance with 35 U.S.C. § 312(a), necessary to obtain a filing date, with the statutory threshold requirements of § 314(a). Under the statute, the” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner has the burden of proving unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e). However, the USPTO determines whether a petition for inter partes review meets the minimum procedural requirements of the statute without regard to the substance or merits of the challenge.” slip op. at 3
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight. 37 C.F.R. § 41.65(a). The U.S. Court of Appeals for the Federal Circuit discounts expert testimony that is not based on the underlying facts or data:” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Sherman Decl. 51. Notably absent from the testimony is an explanation of how specific references might be combined to arrive at the claimed invention; e.g., by combining and applying specific teachings in the references to a claim. See ActiveVideo Networks, 694 F.3d at 1328 (“This testimony is generic and bears no relation to any specific combination of prior art elements. It also fails to explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does.”).” slip op. at 5
Claim construction§ 103 obviousnessPatents in suitUS 8,051,287
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.