- PTAB · Jun 5, 2023 · IPR2022-01437 · APJ Benjamin D M Wood · IPR · Rehearing
The Board denied SharkNinja’s rehearing request and left institution denied because the petition did not establish a reasonable likelihood of success on the Xia-Park obviousness challenge.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party challenging the decision has the burden of showing a decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 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
“articulated why it would have been obvious to modify the recovery tank of Xia’s non-wet-filter vacuum to include a strainer basket like that shown in Park’s wet-filter water vacuum. Dec. 13.2 Based on review of the disclosure of Park, the Decision found that the strainer was used to help the wet-filter mechanism work. Id. at 8–10. The Decision noted that the strainer served its purpose at two times—during recirculation of the filtering water when in use and during draining of the filtering water when finished. Id. Thus, the Decision found that the strainer’s purpose was to solve problems unique to wet-filter vacuums. Id. at 11. The Decision found insufficient evidentiary support for Petitioner’s assertion that Park suggested its strainer would be useful in devices like Xia that did not have wet filters. Id. The Decision also found insufficient evidentiary support for Petitioner’s assertion that a person of ordinary skill in the art would nevertheless recognize that Park’s strainer could be useful in devices that did not have wet filters. Id. at 12–13. Accordingly, the Decision determined that the Petition did not meet the burden for institution. Id. at 13.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”). However, we disagree that Petitioner has established the factual underpinnings required to support such a theory. Petitioner’s Request directs us to no evidence the Decision missed on this topic. As noted in the Decision, the expert testimony relies on Park or on other devices in which the strainer is used to prevent clogging of recirculation devices. Dec. 13, n.3. These devices teach no more than Park—strainers used to permit recirculation systems to operate without clogging. See id. The Petition did not identify sufficient evidence that would support a finding that a person of ordinary skill in the art would have recognized, before the date of invention, the obviousness of using Park’s strainer in Xia, a device that operates in a different way than Park. See KSR, 550 U.S. at 417 (noting a precondition of the application-of-a-known-technique rationale is that the technique used to improve a device improves the device “in the same way.”) (emphasis added).” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableDecided for patent owner
“sense” reason to combine the references, premised on testimony alleging that debris dumped from a wet vacuum tank could clog the drain. Req. Reh’g. 11–12. Petitioner does not direct our attention to where this theory of unpatentability was raised; arguments not raised cannot have been overlooked. In any event, the expert testimony cited is not entitled to persuasive weight because it is not supported by sufficient evidence or technical reasoning. Xerox Corp. et al v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (Decision Denying Institution) (precedential). As explained in the Decision, Petitioner points to no evidence that there was a known problem of drain clogs when disposing of waste water from devices like Xia, nor does Petitioner’s expert explain the reasons why a person of ordinary skill in the art would have nevertheless recognized the problem and its solution. Dec. 12 (“Petitioner has not explained why it would have been obvious to modify Xia by borrowing features that are meant to solve problems unique to water-filter vacuum cleaners”), 13 n.3 (finding that Petitioner’s expert “does not provide an explanation of why a person of ordinary skill in the art would look to add a recirculation filter to devices that do not use recirculation”). Unless there is credible evidence showing otherwise, any perceived obviousness today is only apparent in hindsight. See, e.g., Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 381 F.3d 1371, 1376 (Fed. Cir. 2004) (“Prior knowledge in the field of the invention must be supported by tangible teachings of reference materials, and the suggestion to combine references must not be derived by hindsight from knowledge of the invention itself.”); see also Leo Pharmaceutical Products, Ltd. v. Rea, 726 F.3d 1346, 1353 (Fed. Cir. 2013) (“an invention can often be the recognition of a problem itself”); Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed. Cir. 1983) (holding that a proper obviousness analysis “precludes consideration of whether the invention would have been obvious . . . after learning all about the invention”).” slip op. at 7
§ 103 obviousnesscites KSRPatents in suitUS 11,185,205 - Meridian Wildlife Services, LLC v. Safe Haven Wildlife Removal And Property Management Experts, LLCRehearing deniedPTAB · Apr 11, 2023 · IPR2022-01340 · APJ Amee A Shah · IPR · Rehearing
The Board denied the petitioner’s rehearing request, leaving institution denied for claims 1–8 because the petitioner did not show the Board misapprehended or overlooked its obviousness arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“C. STANDARD FOR REHEARING The party filing a request for rehearing of a decision whether to institute has the burden of showing the decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Id. § 42.71(c)).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In our decision on institution (Paper 9, “Dec.” or “Decision”), we determined that Petitioner failed to show a reasonable likelihood of prevailing with respect to any of the Challenged Claims and denied institution of inter partes review. Petitioner filed a timely Request for Rehearing in which it asks that we institute inter partes review of the Challenged Claims. Paper 10, 1 (“Reh’g Req.” or “Request”). For the reasons that follow, we deny Petitioner’s Request.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“to “then place nets where the birds are observed flying in the building.” Reh’g Req. 4 (citing Pet. 19; Ex. 1008 ¶¶ 15, 45; Ex. 1004 ¶¶ 71, 72, 75). Brugh does not “instruct” a POSA to perform either of these actions. Rather, Brugh provides a method comprising, in relevant part, “a) determining the species of flying vertebrate inside the building; b) selecting bird netting; . . . [and] d) positioning the netting for capture based on the species of flying vertebrate and their flight characteristics utilizing the height adjustable poles to raise the netting.” Ex. 1004 ¶¶ 8–10, 15 (emphasis added). There is no “instruction” that the location of the netting is adjusted based on the flight pattern; rather, the height is adjusted. Brugh further provides for “determin[ing] how [the flying vertebrate] flies, e.g., a bat flies in a different pattern than a sparrow” and using the flight pattern “to place the netting in relationship to the position of the flying vertebrate.” Id. ¶ 45. There is no “instruction” that the determining of the flight pattern must be by observing the flying vertebrate (as opposed to researching the flight pattern of the species of the flying vertebrate) or that the netting is placed in relationship to and observed or expected position. b) “The Board’s analysis ignores common sense.” Reh’g Req. 4. Petitioner contends that the Board ignored common sense, as “at some point a POSA necessarily would have observed some species of bird flying near some perimeter walls within some building.” Reh’g Req. 4; see also id. at 6 (“It was common sense that a POSA would eventually observe a bird near a perimeter wall and place Brugh’s capture device accordingly.”), 7 (“[T]he Board . . . substitutes a rigid review of the prior art’s disclosure for common sense. . . .”)). This argument is unavailing. “[W]hile ‘common sense’ can be invoked, even potentially to supply a limitation missing from the prior art, it must still be supported by evidence and a reasoned explanation.” Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1363 (Fed. Cir. 2016). As explained above, Petitioner’s argument discounts the inventor’s discovery, in which he spent “countless hours” before discovering that birds fly along the perimeter wall of a building’s interior. Ex. 2001 ¶ 16. Further, as discussed above, Brugh does not instruct nor teach a POSA to observe flight patterns and determine or adjust the locations of the nets accordingly. We are not persuaded that the inventor’s discovery was merely “common sense,” and if it was, Petitioner should have submitted sufficient evidence to support such a finding. See Arendi, 832 F.3d at 1363. As explained in our Decision, Petitioner did not. See, e.g., Dec. 32 (“Petitioner provides insufficient evidence that bats or other flying animals are likely to fly ‘at or proximate to a perimeter wall and at or near the ceiling’ such that a POSA would find it obvious to place a net at or proximate to the perimeter of a wall within a building”). A request for rehearing under 37 C.F.R. § 42.71(d) is not an opportunity for Petitioner to simply reargue issues we previously addressed.” slip op. at 6
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Owner’s expert, Mr. Tolley, is the inventor of the ’683 patent. We considered this fact but, nevertheless, found Mr. Tolley’s testimony more persuasive than Dr. Chamberlain’s testimony. We considered the provided evidence of Mr. Chamberlain’s declaration and the support thereof and found insufficient evidentiary support for why a POSA would place at least one net at or proximate to the perimeters and at or near the ceiling of the structure. Dec. 32 (citing Ex. 1004 ¶¶ 71, 72). Id. at 33. As such, Mr. Chamberlain’s testimony is entitled to little weight. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (Aug. 24, 2022) (precedential) (denying institution and holding that a declaration is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1311 (Fed. Cir. 2000) (“Lack of factual support for expert opinion to factual determinations . . . may render the testimony of little probative value in a validity determination.”) (quotation omitted); see also Carella v. Starlight Archery & Pro Line Co., 804 F.2d 135, 138 (Fed. Cir. 1986) (“Although in some circumstances unsupported oral testimony can be sufficient to prove prior knowledge or use, it must be regarded with suspicion and subjected to close scrutiny.”). Dr. Chamberlain’s testimony that at least one net would reduce the flying area was not supported by any evidence. Dec. 34. As such, Dr. Chamberlain’s testimony was afforded little weight. 37 C.F.R. § 42.65(a).” slip op. at 11
§ 103 obviousnessPatents in suitUS 11,064,683 - Meridian Wildlife Services, LLC v. Safe Haven Wildlife Removal And Property Management Experts, LLCRehearing deniedPTAB · Apr 11, 2023 · IPR2022-01254 · APJ Amee A Shah · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution because Petitioner did not show that the Board misapprehended or overlooked its obviousness arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“C. STANDARD FOR REHEARING The party filing a request for rehearing of a decision whether to institute has the burden of showing the decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Id. § 42.71(c)).” slip op. at 3
- BurdenInstitution denied meritsInstitution denied
“Petitioner’s argument does not give enough credit to the inventor’s discovery. Mr. Tolley, the inventor, testified that he “spent countless hours monitoring bird flights and patterns within Walmart’s facilities and other indoor structures, focusing not only on where birds typically roosted in the facilities, but also where and how they flew within the enclosures . . . and experimenting with various placements of nets based on [his] observations.” Ex. 2001 ¶ 16. We do not find Petitioner’s citation to the inventor’s testimony, in which the inventor testifies to having “spent countless hours” working on his discovery, to support Petitioner’s argument that the inventor’s discovery would have been obvious based on Brugh’s “instruct[ions to] a POSA to observe the ‘flight patterns’ of these birds” and to “place nets where the birds are observed flying in the building.” Reh’g Req. 4 (citing Ex. 1008 ¶¶ 15, 45; Ex. 1004 ¶¶ 32, 72, 75). Brugh does not “instruct” a POSA to perform either of these actions. Rather, Brugh provides a method comprising, in relevant part, “a) determining the species of flying vertebrate inside the building; b) selecting bird netting; . . . [and] d) positioning the netting for capture based on the species of flying vertebrate and their flight characteristics utilizing the height adjustable poles to raise the netting.” Ex. 1004 ¶¶ 8–10, 15 (emphasis added). There is no “instruction” that the location of the netting is adjusted based on the flight pattern; rather, the height is adjusted. Brugh further provides for “determin[ing] how [the flying vertebrate] flies, e.g., a bat flies in a different pattern than a sparrow” and using the flight pattern “to place the netting in relationship to the position of the flying vertebrate.” Id. ¶ 45. There is no “instruction” that the determining of the flight pattern must be by observing the flying vertebrate (as opposed to researching the flight pattern of the species of the flying vertebrate) or that the netting is placed in relationship to an observed or expected position.” slip op. at 7
- Expert testimonyPetitioner expert discountedDecided for patent owner
“been obvious to place at least one net ‘along a perimeter wall . . . in response to observing flight patterns in those locations’ is premised on the alleged fact” that bats and other animals tend to roost in protected locations. Dec. 36 (citing Pet. 18). We then addressed Mr. Chamberlain’s declaration and the support thereof and found insufficient support for his testimony that birds would fly or roost “in or along the perimeter of a wall within a building or structure.” Id. at 36–37 (citing Ex. 1004 ¶¶ 32, 33; Ex. 1018, 81, 85.) As such, Mr. Chamberlain’s testimony is entitled to little weight. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (Aug. 24, 2022) (precedential) (denying institution and holding that a declaration is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1311 (Fed. Cir. 2000) (“Lack of factual support for expert opinion to factual determinations . . . may render the testimony of little probative value in a validity determination.”) (quotation omitted); see also Carella v. Starlight Archery & Pro Line Co., 804 F.2d 135, 138 (Fed. Cir. 1986) (“Although in some circumstances unsupported oral testimony can be sufficient to prove prior knowledge or use, it must be regarded with suspicion and subjected to close scrutiny.”).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“The first reason was not written as observing flight patterns or, alternatively, expecting flight patterns, but as one reason resulting from “observing flight patterns,” premised on the tendency of birds to roost in a protected, expected location, such as, ostensibly, along the inside perimeter wall of a building. The second reason was that the placement of the nets along a perimeter wall and in another location would shrink the bird’s flying area and thus improve capture. The third reason was, ostensibly, that having more nets, i.e., increased net density, would increase the capture rate. The Decision addressed the first argument regarding observing flight patterns at pages 36–37, the second argument at pages 37–38, and the third argument at pages 38–39.” slip op. at 6
§ 103 obviousnessPatents in suitUS 10,729,108 - Meridian Wildlife Services LLC v. Safe Haven Wildlife Removal And Property Management Experts LLCRehearing deniedPTAB · Apr 11, 2023 · IPR2022-01253 · APJ Michael L Woods · IPR · Rehearing
The Board denied Meridian’s rehearing request, leaving institution denied because the petition did not show a reasonable likelihood of prevailing on any challenged claim.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“the burden of showing a decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Id. § 42.71(c)).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We disagree with Petitioner. The Petition did not cite sufficient evidence to support a finding that a bird would have flown along the interior perimeter of an interior wall. See, e.g., Dec. 19 (“Petitioner provides no evidence that bats or other flying animals are likely to fly or roost along the inner perimeter of a structure such that a POSITA would have found it obvious to place a net along the perimeter of a wall within a building.”). Petitioner’s attempt to cite the inventor’s (Mr. Tolley’s) expert testimony is equally unavailing. See Reh’g Req. 4. We disagree with Petitioner’s assertion that Mr. Tolley’s testimony supports Petitioner’s obviousness challenge.” slip op. at 5
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“Petitioner’s fourth sub-argument is not persuasive. As explained in our Decision, Dr. Chamberlain’s testimony that birds would fly along the inner perimeter of a building is not supported by evidence. Dec. 18–19. As such, his testimony is entitled to little weight. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (Aug. 24, 2022) (precedential) (denying institution and holding that a declaration is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1311 (Fed. Cir. 2000) (“Lack of factual support for expert opinion to factual determinations, however, may render the testimony of little probative value in a validity determination.”) (quotation omitted); see also Carella v. Starlight Archery & Pro Line Co., 804 F.2d 135, 138 (Fed. Cir. 1986) (“Although in some circumstances unsupported oral testimony can be sufficient to provide prior knowledge or use, it must be regarded with suspicion and subjected to close scrutiny.”).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We disagree with Petitioner. The Petition did not cite sufficient evidence to support a finding that a bird would have flown along the interior perimeter of an interior wall. See, e.g., Dec. 19 (“Petitioner provides no evidence that bats or other flying animals are likely to fly or roost along the inner perimeter of a structure such that a POSITA would have found it obvious to place a net along the perimeter of a wall within a building.”). Petitioner’s attempt to cite the inventor’s (Mr. Tolley’s) expert testimony is equally unavailing. See Reh’g Req. 4. We disagree with Petitioner’s assertion that Mr. Tolley’s testimony supports Petitioner’s obviousness challenge.” slip op. at 5
§ 103 obviousnessPatents in suitUS 10,251,374 - Platform Science, Inc. v. XRS CorporationRehearing deniedPTAB · Dec 14, 2021 · IPR2021-00325 · APJ Neil T Powell · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because the Petition did not show a reasonable likelihood that claims 1–24 were unpatentable as obvious.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “The 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. When rehearing a decision on a” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner has not offered persuasive evidence of any suggestion in the prior art that Nehowig’s onboard computer may be used with multiple different engine control modules that communicate data in different languages. Nor has Petitioner offered persuasive evidence of any suggestion in Nehowig that its engine control module uses more than one language. Contrarily, Nehowig suggests that the onboard computer and engine control module are vehicle specific without an indication that either needs to be adaptable for use in multiple different vehicles. . . . Additionally, regardless of whether Nehowig’s ECM uses one or multiple communication protocols, Petitioner does not provide persuasive evidence that it would have been obvious to modify Nehowig’s OBC 204 to meet limitation 1A.1. Fedorchuk discloses a device configured for connecting to and communicating with a diagnostic communication port of any of a variety of vehicles using any of a number of different possible protocols, enabled by interface device 10’s ability to detect the different possible protocols. . . . Petitioner does not provide persuasive evidence that Nehowig’s OBC 204 would be connected to any ECM without OBC 204 and the ECM already configured to communicate specifically with one another using one more predesignated protocols. . . . Petitioner does not provide persuasive evidence that Nehowig’s OBC 204 would not already have dedicated provisions for communicating with the ECM in the specific protocol(s) the ECM uses. Nehowig clearly discloses that OBC 204 already can communicate with Nehowig’s ECM, apparently using whatever protocol(s) the ECM uses. [Ex. 1005] ¶ 23. Accordingly, Petitioner has not shown sufficiently a reason that a person of ordinary skill in the art would have modified Nehowig’s OBC 204 to allow it to communicate with the ECM.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“misapprehended that the Petition identified a particular proposed combination. We acknowledged Petitioner’s proposed combination. See Dec. 25–26 (“Petitioner then describes a scenario, argued ‘[t]o achieve this goal [of not having the official enter the vehicle],’ where the official ‘will provide a cable to the driver to plug into the EOBR’ . . . . Based on this, Petitioner concludes ‘[t]herefore, the combined system of Nehowig and Fedorchuk implementing the DOT regulations discloses transferring the hours of service information from the OBC to a safety assurance officer’s computer via a data cable.’”). And, even had we overlooked or misapprehended it, the outcome would not change. Again, the basis for the Decision is that Petitioner failed to explain adequately and persuasively why a person of ordinary skill in the art would arrange the data flow in this manner. Dec. 27. In view of the foregoing, we are not persuaded of any error in our Decision that the Petition did not demonstrate a reasonable likelihood of establishing obviousness of limitation 1B.1. See Dec. 27–28. IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated that we abused our discretion in not instituting an inter partes review of the challenged claims of the ’575 patent.” slip op. at 19
§ 103 obviousnessPatents in suitUS 10,255,575 - Platform Science, Inc. v. XRS CorporationRehearing deniedPTAB · Aug 26, 2021 · IPR2021-00323 · APJ Ken B Barrett · IPR · Rehearing
The Board denied rehearing of its decision denying institution on claims 1–24, finding no abuse of discretion in its conclusion that the Petition inadequately explained the proposed data flow.
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. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Dec. 13. We determined that “Petitioner does not explain adequately and persuasively why, in such circumstances—where the portable unit could directly transmit the report to the inspector—a person of ordinary skill in the art would see a reason to configure the system in a seemingly awkward way where the report is sent to the onboard system and then sent to the inspector.” Id. at 14.” slip op. at 7
§ 103 obviousnessPatents in suitUS 8,626,568 - Choirock Contents Factory Co., Ltd. v. Spin Master Ltd.Rehearing deniedPTAB · Jun 22, 2020 · IPR2019-00901 · APJ Hyun J Jung · IPR · Rehearing
The Board denied Spin Master’s rehearing request and left institution of IPR on claims 1–5 in place, finding no overlooked or misapprehended matter or abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a single request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believed 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). We review our Decision under an abuse of discretion standard. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if based on an erroneous interpretation of law, if a factual finding is not supported by” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“(PTAB Apr. 2, 2019), Petitioner and the prior petitioner have a relationship (i.e., that Petitioner is a real party in interest (“RPI”), or is in privy, with the prior petitioner), and that relationship is relevant to the analysis of General Plastic factor 1. Decision 13. However, as also noted in the Decision, General Plastic does not mandate any particular weighing of the factors or that the Board deny institution when any specific factors weigh in favor of a patent owner. Id. at 14–15. Instead, General Plastic explicitly states that “there may be circumstances where multiple petitions . . . against the same claims of a patent should be permitted, and that such a determination is dependent on the facts at issue in the case.” General Plastic at 18. As indicated in the Decision: [I]n addition to the factors addressed above, Choirock’s Petition was filed on March 29, 2019, and a joint motion to terminate IPR2018-01672 was filed on April 16, 2019, which was granted on April 29, 2019. The sequence of events leading to the termination of IPR2018-01672 indicates that Patent Owner knew of Choirock’s instant Petition and, thus, should have filed updated mandatory notices in that proceeding to make the Board aware that there was a petition related to IPR2018- 01672, so that the Board could have better determined if termination as to all parties in IPR2018-01672 was appropriate. Patent Owner also filed its mandatory notices in this case the day before the parties in IPR2018-01672 filed a joint motion to terminate. Thus, based on the facts of this proceeding and IPR2018- 01672, we are not convinced that Choirock is engaged in abusive, strategic serial petitioning, the situation meant to be addressed by General Plastic. On balance, the factors weigh in favor of declining to exercise our discretion under § 314(a) to deny institution. Further, the facts of this proceeding and IPR2018-01672 do not persuade us that Patent Owner has been prejudiced. Decision 15 (emphasis added). Thus, despite the fact that there is a RPI or privy relationship between Petitioner and the prior petitioner, we considered the aforementioned facts of this proceeding, and concluded that General Plastic factor 1 did not weigh in favor of exercising our discretion to deny institution. Id. at 13, 15.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“The present paper presents a separate and distinct basis for denial of institution than application of the General Plastic factors. Whether a petitioner should be permitted to obtain institution of an IPR substantially the same as a prior-filed IPR—to which the party was an RPI or privy—is a fundamental basis for denial of institution, as discussed in detail below. Because Choirock was an RPI and privy with Mattel for the Mattel IPR, Choirock should be prohibited from obtaining institution of a second IPR. For purposes of a clear record, Spin Master brings a second basis for denial of institution under either or both of §§ 314(a) and 325(d) due to Choirock being an RPI and privy with Mattel for the Mattel IPR. As such, the arguments and evidence presented in this paper should be fully considered by the Board. (Paper 14 at 2). The Board overlooked this argument. In the Institution Decision, the Board only provided an analysis applying the General Plastic factors but failed to consider whether or not an RPI/privy should be permitted to file a substantially identical IPR Petition. (Paper 17 at 10-16). Reh. Req. 7–8 (emphasis added). We do not agree that we overlooked this argument. Instead, in the Decision, we rejected this argument and refused to adopt a per se rule that an RPI or privy of a previous petitioner is automatically barred from filing a substantially identical petition. Decision 13 (“Patent Owner does not point us to any rule or case law that prevents an RPI or privy of a previous petitioner, who is not barred under § 315(b), from filing its own petition or that prevents an RPI or privy from joining a proceeding.”).” slip op. at 10
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“On September 26, 2019, we issued a Decision Granting Institution of Inter Partes Review. Paper 17 (“Decision” or “Dec.”). In the Decision, we: (1) instituted an IPR of the ’508 patent; and (2) denied Petitioner’s Motion for Joinder because the proceeding which Petitioner sought to join (i.e., IPR2018-01672) had been terminated and was no longer pending before the Board.4 Id. at 2.” slip op. at 3
Discretionary denialPatents in suitUS 9,975,058 - Choirock Contents Factory Co., Ltd. v. Spin Master Ltd.Rehearing deniedPTAB · Jun 22, 2020 · IPR2019-00900 · APJ Hyun J Jung · IPR · Rehearing
The Board denied Spin Master’s rehearing request, leaving institution in place because it had not shown that the Board misapprehended or overlooked an issue or abused its discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a single request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believed 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 3
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“(PTAB Apr. 2, 2019), Petitioner and the prior petitioner have a relationship (i.e., that Petitioner is a real party in interest (“RPI”), or is in privy, with the prior petitioner), and that relationship is relevant to the analysis of General Plastic factor 1. Decision 13. However, as also noted in the Decision, General Plastic does not mandate any particular weighing of the factors or that the Board deny institution when any specific factors weigh in favor of a patent owner. Id. at 14–15. Instead, General Plastic explicitly states that “there may be circumstances where multiple petitions . . . against the same claims of a patent should be permitted, and that such a determination is dependent on the facts at issue in the case.” General Plastic at 18. As indicated in the Decision: [I]n addition to the factors addressed above, Choirock’s Petition was filed on March 29, 2019, and a joint motion to terminate IPR2018-01672 was filed on April 16, 2019, which was granted on April 29, 2019. The sequence of events leading to the termination of IPR2018-01672 indicates that Patent Owner knew of Choirock’s instant Petition and, thus, should have filed updated mandatory notices in that proceeding to make the Board aware that there was a petition related to IPR2018- 01672, so that the Board could have better determined if termination as to all parties in IPR2018-01672 was appropriate. Patent Owner also filed its mandatory notices in this case the day before the parties in IPR2018-01672 filed a joint motion to terminate. Thus, based on the facts of this proceeding and IPR2018- 01672, we are not convinced that Choirock is engaged in abusive, strategic serial petitioning, the situation meant to be addressed by General Plastic. On balance, the factors weigh in favor of declining to exercise our discretion under § 314(a) to deny institution. Further, the facts of this proceeding and IPR2018-01672 do not persuade us that Patent Owner has been prejudiced. Decision 15 (emphasis added). Thus, despite the fact that there is a RPI or privy relationship between Petitioner and the prior petitioner, we considered the aforementioned facts of this proceeding, and concluded that General Plastic factor 1 did not weigh in favor of exercising our discretion to deny institution. Id. at 13, 15.” slip op. at 6
- Other 314aDecided for petitioner
“We do not agree that we overlooked this argument. Instead, in the Decision, we rejected this argument and refused to adopt a per se rule that an RPI or privy of a previous petitioner is automatically barred from filing a substantially identical petition. Decision 13 (“Patent Owner does not point us to any rule or case law that prevents an RPI or privy of a previous petitioner, who is not barred under § 315(b), from filing its own petition or that prevents an RPI or privy from joining a proceeding.”). After considering Patent Owner’s arguments for rehearing, we determine Patent Owner has not carried its burden of showing that we misapprehended or overlooked any matter or that the Decision granting institution of inter partes review was an abuse of discretion.” slip op. at 11
Discretionary denialPatents in suitUS 9,868,073 - Choirock Contents Factory Co., Ltd. v. Spin Master Ltd.Rehearing deniedPTAB · Jun 22, 2020 · IPR2019-00897 · APJ Hyun J Jung · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no overlooked or misapprehended matter and no abuse of discretion in instituting review.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“37 C.F.R. § 42.71(d), which provides: A party dissatisfied with a decision may file a single request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believed 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). We review our Decision under an abuse of discretion standard. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if based on an erroneous interpretation of law, if a factual finding is not supported by” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“(PTAB Apr. 2, 2019), Petitioner and the prior petitioner have a relationship (i.e., that Petitioner is a real party in interest (“RPI”), or is in privy, with the prior petitioner), and that relationship is relevant to the analysis of General Plastic factor 1. Decision 13. However, as also noted in the Decision, General Plastic does not mandate any particular weighing of the factors or that the Board deny institution when any specific factors weigh in favor of a patent owner. Id. at 14–15. Instead, General Plastic explicitly states that “there may be circumstances where multiple petitions . . . against the same claims of a patent should be permitted, and that such a determination is dependent on the facts at issue in the case.” General Plastic at 18. As indicated in the Decision: [I]n addition to the factors addressed above, Choirock’s Petition was filed on March 29, 2019, and a joint motion to terminate IPR2018-01672 was filed on April 16, 2019, which was granted on April 29, 2019. The sequence of events leading to the termination of IPR2018-01672 indicates that Patent Owner knew of Choirock’s instant Petition and, thus, should have filed updated mandatory notices in that proceeding to make the Board aware that there was a petition related to IPR2018- 01672, so that the Board could have better determined if termination as to all parties in IPR2018-01672 was appropriate. Patent Owner also filed its mandatory notices in this case the day before the parties in IPR2018-01672 filed a joint motion to terminate. Thus, based on the facts of this proceeding and IPR2018- 01672, we are not convinced that Choirock is engaged in abusive, strategic serial petitioning, the situation meant to be addressed by General Plastic. On balance, the factors weigh in favor of declining to exercise our discretion under § 314(a) to deny institution. Further, the facts of this proceeding and IPR2018-01672 do not persuade us that Patent Owner has been prejudiced. Decision 15 (emphasis added). Thus, despite the fact that there is a RPI or privy relationship between Petitioner and the prior petitioner, we considered the aforementioned facts of this proceeding, and concluded that General Plastic factor 1 did not weigh in favor of exercising our discretion to deny institution. Id. at 13, 15.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Patent Owner additionally argues: Spin Master presented a second argument, independent from the General Plastic analysis, that the present IPR should be denied because Choirock is an RPI/privy of Mattel and filed a substantially identical petition to Mattel: The present paper presents a separate and distinct basis for denial of institution than application of the General Plastic factors. Whether a petitioner should be permitted to obtain institution of an IPR substantially the same as a prior-filed IPR—to which the party was an RPI or privy—is a fundamental basis for denial of institution, as discussed in detail below. Because Choirock was an RPI and privy with Mattel for the Mattel IPR, Choirock should be prohibited from obtaining institution of a second IPR. For purposes of a clear record, Spin Master brings a second basis for denial of institution under either or both of §§ 314(a) and 325(d) due to Choirock being an RPI and privy with Mattel for the Mattel IPR. As such, the arguments and evidence presented in this paper should be fully considered by the Board. (Paper 14 at 2). The Board overlooked this argument. In the Institution Decision, the Board only provided an analysis applying the General Plastic factors but failed to consider whether or not an RPI/privy should be permitted to file a substantially identical IPR Petition. (Paper 17 at 10-16).” slip op. at 10
Discretionary denialPatents in suitUS 8,500,508 - Baker Hughes, A GE Company, LLC / Baker Hughes Oilfield Operations, LLC v. Packers Plus Energy Services, Inc.Rehearing deniedPTAB · Mar 11, 2020 · IPR2016-00650 · APJ Carl M Defranco Jr · IPR · Rehearing
The Board denied Baker Hughes’s rehearing request, leaving intact its decision that claims 14 and 17–26 were not shown unpatentable as obvious over the Thomson-Echols grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing of a Board decision has the burden to show that the decision should be modified. Pursuant to 37 C.F.R. § 42.71(d), the rehearing request must identify, specifically, 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. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. In re Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir. 2000).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“version of Thomson’s Figure 3 (Ex. 1002, 10) to show how Thomson’s configuration of sliding sleeves and packers meets the limitations of the challenged claims. See, e.g., Pet. 25–26, 26, 34, 39 (depicting various annotations of Thomson’s Figure 3). Importantly, each of Baker Hughes’s annotations of Figure 3 depicts a cement casing as part of its proposed modification of the Thomson system. See id. Elsewhere, Baker Hughes relies expressly on Thomson’s cement casing in mapping “Thomson’s retrievable packers” to the claimed set of packers—“Compression of the packing elements causes them to extrude out to fill and seal the annulus between the tubing string and the casing, as in the above excerpt of Figure 3.” Id. at 39 (emphasis added); see also Ex. 1006 ¶ 71 (Baker Hughes’s expert testifying that “[a]s the packing elements [of Thomson] compress, they extrude outward to fill the annulus between the tubing string and the casing to seal against fluid flow past the packer”) (emphasis added). But, while repeatedly relying on Thomson’s Figure 3 in support of its obviousness theories, Baker Hughes fails to explain why a skilled artisan would have removed or ignored the casing shown in Thomson’s Figure 3 in favor of using an open wellbore. That clear and unequivocal omission by Baker Hughes was critical to our finding of a lack of a reason to combine Thomson and Echols. Thus, we are not persuaded that we misapprehended Baker Hughes’s obviousness contentions, which relied expressly on Thompson’s casing as shown in Thomson’s Figure 3.” slip op. at 3
- Strike new argumentNew argument disregardedNot reached
“now modifes its reason for why a skilled artisan would have added injection points to Thomson’s system—“getting stimulation fluid into the annulus in a longer zone takes less time when there are more openings through which fluid can be injected into the annulus . . . a longer zone of like diameter has a greater volume, which plainly can be filled more quickly with more injection points.” Reh’g Req. 6 (emphasis added). This argument, advanced by Baker Hughes for the first time as a reason to add Echol’s sleeves to Thomson’s system, is directed to improving the efficiency by which Thomson’s system operates. That Baker Hughes’s argument is new is shown by the simple fact that Baker Hughes fails to identify the place where this argument was previously made in its Petition or Reply. See id. Indeed, as expressed in the Petition and Reply, the reason given for adding injection points to Thomson’s system was “to provide additional fractures . . . to improve porosity and thus production from the formation.” Pet. 33 (citing Ex. 1006 ¶ 79); Reply 1 (same). Nowhere in either of those papers does Baker Hughes mention efficiency in filling the annulus as a reason to modify Thomson. Thus, we could not have misunderstood or overlooked an argument not previously made, nor must we consider this new argument on rehearing. See 37 C.F.R. § 42.71(d) (“The request must specifically identify . . . the place where each matter was previously addressed in a motion, an opposition, or a reply.”).” slip op. at 6
§ 103 obviousnessPatents in suitUS 6,907,936
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.