• Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Rehearing denied
  PTAB · Jan 4, 2023 · IPR2022-00182 · APJ Steven M Amundson · IPR · Rehearing

  Denied Patent Owner’s rehearing request; the Board found no abuse of discretion in instituting IPR of claims 1, 24, and 25 on the stated § 103 grounds.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d) (2022). In a rehearing request, the party challenging the decision “must specifically identify” (1) “all matters the party believes the Board misapprehended or overlooked” and (2) “the place where each matter was previously addressed” in an earlier submission. Id.; see Consolidated Trial Practice Guide at 90.3 “A rehearing request is not an opportunity for the requesting party to reargue its case or merely to express disagreement with the underlying decision.” MicroSurgical Tech., Inc. v. Regents of Univ. of Colo., PGR2021-00026, Paper 14 at 2 (PTAB Aug. 12, 2021). “Nor is it an opportunity for the moving party to present new arguments that were not in its original submissions.” Id.” slip op. at 3

  • Obviousness (§103) › Objective indicia / secondary considerations › CopyingObjective indicia no nexusDecided for petitioner

    “Patent Owner does not explain why issue preclusion permits the Board to hold the district court’s finding that Cisco “copied software functionality from the [infringed] patents” against Petitioner. See Prelim. Resp. 16, 54–56; Req. Reh’g 3, 14–15. Issue preclusion “is appropriate only if”: (1) “the issue is identical to one decided in the first action”; (2) “the issue was actually litigated in the first action”; (3) “resolution of the issue was essential to a final judgment in the first action”; and (4) the party defending against preclusion “had a full and fair opportunity to litigate the issue in the first action.” SynQor, Inc. v. Vicor Corp., 988 F.3d 1341, 1353 (Fed. Cir. 2021). Patent Owner does not address any of these requirements for issue preclusion. See Prelim. Resp. 16, 54–56; Req. Reh’g 3, 14–15.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “Regarding the policy’s whitelist processing, if the security device determines that a newly received packet with encrypted data is correlated to the hostname corresponding to the whitelisted destination domain, the security device filters the packet by forwarding it to the remote server with the whitelisted destination domain. See Ex. 1004, 7:52–59, 16:36–42; Ex. 1003 ¶ 90; see also Ex. 1004, 6:1–11. Filtering the newly received packet with encrypted data by forwarding it to the remote server with the whitelisted destination domain occurs “without having to decrypt the encrypted secure tunnel session traffic.” Ex. 1004, 5:24–27, 5:35–42, 7:1–9, 11:7–19; see Ex. 1003 ¶¶ 94, 113. Further, filtering the newly received packet with encrypted data by forwarding it to the remote server with the whitelisted destination domain results from applying a packet-filtering rule (a whitelisted destination domain) to the packet. Hence, we disagree with Patent Owner that Buruganahalli’s security devices process whitelisted packets by “forward[ing] the entire encrypted stream without . . . filtering encrypted packets.” See Req. Reh’g 10. We also disagree with Patent Owner that “encrypted packets in whitelisted sessions” are (1) “forwarded without applying any packet-filtering rules” and (2) “allowed uninspected.” See id. at 11 n.1, 13. Regarding the policy’s blacklist processing, if the security device determines that a newly received packet with encrypted data is correlated to the hostname corresponding to the blacklisted destination domain, the security device either blocks the packet (as Patent Owner contends) or filters the packet by forwarding it to a decryption engine. See Ex. 1004, 7:60–67, 9:61–67, 14:33–36, 16:43–48; Ex. 1003 ¶¶ 90–91, 94, 97, 108, 118, 127, 137; Req. Reh’g 10–11, 13. Filtering the newly received packet with encrypted data by forwarding it to a decryption engine occurs “without having to decrypt the encrypted secure tunnel session traffic.” Ex. 1004, 5:24–27, 5:35–42, 7:1–9, 11:7–19; see Ex. 1003 ¶¶ 94, 113, 135. Further, filtering the newly received packet with encrypted data by forwarding it to a decryption engine results from applying a packet-filtering rule (a blacklisted destination domain) to the packet and corresponds to limitation [1.g] and the similar limitations in claims 24 and 25. See Ex. 1003 ¶¶ 109, 134–135. The Institution Decision explained how Buruganahalli’s security devices may filter packets comprising unencrypted data and packets comprising encrypted data according to claims 1, 24, and 25 by applying a whitelist/blacklist policy to the packets. See, e.g., Inst. Dec. 57–60, 66–67, 69–71. As the Institution Decision explained and as discussed above, “for each session packets comprising unencrypted data and packets comprising encrypted data are correlated and filtered based on the hostname (destination domain) extracted from the handshake traffic, and then the correlated and filtered packets are processed separately from packets destined for other domains.” See Inst. Dec. 69–70; Ex. 1003 ¶¶ 109, 120–121, 133–135; Ex. 1004, 7:39–67, 8:55–60, 11:47–51, 14:21–33, 14:50–55, 16:32–48. Buruganahalli discloses additional filtering after forwarding a newly received packet with encrypted data to a decryption engine, e.g., as occurs in Buruganahalli’s Figure 3B embodiment. See, e.g., Ex. 1004, 6:17–22, 9:67–10:4, 12:4–64, Fig. 3B. But claims 1, 24, and 25 use the transitional term “comprising.” Ex. 1001, 25:14, 28:59, 29:29–30. Hence, the claims do not “exclude unrecited elements,” such as additional filtering after forwarding a newly received packet with encrypted data to a decryption engine. See Regeneron Pharm., Inc. v. Merus N.V., 864 F.3d 1343, 1352 (Fed. Cir. 2017) (citing Manual of Patent Examining Procedure § 2111.03).” slip op. at 8

  § 103 obviousness
  Patents in suitUS 9,917,856
• Mircosoft Corporation v. Ramzi Khalil MaaloufRehearing denied
  PTAB · Jan 5, 2021 · IPR2020-00483 · APJ Brian J Mcnamara · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving institution in place after finding no pertinent matter was overlooked or misapprehended.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the 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. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “we do not hold the Petition to recite the exact wording of Advanced Bionics that– “the Office erred in a manner material to the patentability of the challenged claims.” Nevertheless, we reviewed the challenges in the Petition and the prosecution history to assess whether Petitioner had demonstrated material error by the Office. We noted that challenged claim 29 (application claim 50) was allowed after it was amended to include 4 The Petition has been accorded a filing date of February 3, 2020. The decision in Advanced Bionics was issued on February 13, 2020 and designated precedential on March 24, 2020. command keys positioned on the handle. Dec. to Inst. 19; see also Pet. 15‒ 16 (discussing prosecution history and the Examiner’s identification of allowable subject matter). We also found persuasive Petitioner’s arguments that these same features are found in Rosenhan. Id. (referencing Pet. 31‒ 33). As a result, we determined that the Office’s failure to recognize Rosenhan discloses features that prompted the Examiner to allow the claims was an error material to the patentability of the challenged claims. Id. Patent Owner’s Request for Rehearing does not dispute the substance of this analysis. Req. Reh’g. 2–5. Patent Owner’s argument that our approach “bootstraps” reasonable likelihood of success into the analysis of Office error is incorrect. Req. Reh’g. 5. Our analysis of the Office’s error focuses on the features that led the Examiner to allow the claim. Dec. to Inst. 19. That analysis is separate and distinct from our analysis of whether Petitioner demonstrated a reasonable likelihood of success by showing the reference teaches each of the elements of the claim to a person of ordinary skill. Id. at 23–25.” slip op. at 4

  • Other 314aDecided for petitioner

    “Here, as discussed below, the Decision to Institute weighed the factors argued in the Preliminary Response concerning discretionary denial of institution under Section 314(a). Section 314(a) states “the Director may not authorize an inter partes review unless the Director determines the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Although Section 314(a) does not require the Director to institute inter partes review in any particular case (see Oil States Energy Servs., LLC v. Greene’s Energy Grp., 138 S. Ct. 1365, 1371 (2018)), the Decision to Institute concluded that the Petition in this case satisfied the requirements for institution under Section 314(a) and that the circumstances of this case do not support exercising discretion to deny Petitioner its ability under the statute to obtain inter partes review.” slip op. at 8

  Discretionary denial
  Patents in suitUS 9,503,627
• Unified Patents Inc.Rehearing denied
  PTAB · Feb 10, 2020 · IPR2019-01071 · APJ Kristen L Droesch · IPR · Rehearing

  The Board denied Unified Patents’ rehearing request, leaving in place the denial of institution because the petition did not show the JCT-VC references disclosed the claimed information and decoder.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “We are not persuaded by Petitioner’s arguments. Petitioner does not direct us to arguments in the Petition explaining that the purpose of the discussion of “skip_flag” together with “MODE_SKIP” was only to provide explanation how the prediction unit process causes the decoder to receive MODE_SKIP. A request for rehearing is not an opportunity to present new and/or improved arguments and explanations to address the application of the prior art to the claim limitations. As addressed above, the Petition asserts several times that “skip_flag” (i.e., integrated code block flag) is decoded (see Pet. 46, 73, 75) and is used to set the coding mode equal to “MODE_SKIP” (i.e., integrated code block flag information)” (see Pet. 44, 46, 73–74, 75–76), or that the coding mode is set equal to “MODE SKIP in the prediction unit based on the decoded value of “skip_flag” (Pet. 58, 79). And as pointed out in the Decision, “MODE_SKIP” does not appear in the prediction unit syntax disclosed in section 4.1.10, and the description of the semantic of “skip_flag” in section 4.2.10 is silent regarding “MODE_SKIP.” Dec. 23–24 (citing Ex. 1004 §§ 4.1.10, 4.2.10; Ex. 1005 §§ 4.1.10, 4.2.10). Instead, as we noted above, the JCT-VC References disclose that “MODE_SKIP” is set based on “slice_type” and “pred_mode.” See Dec. 24 (citing Ex. 1004 § 4.2.10, Table 4-7; Ex. 1005 § 4.2.10, Table 4-11). In other words, the disclosures of the JCT-VC References do not support Petitioner’s asserted connections between “skip_flag” and “MODE_SKIP.”” slip op. at 8

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “In the Decision, we determined: Based on the arguments presented in the Petition, we understand Petitioner to assert that the disclosures of “skip_flag” together with the disclosures of “MODE_SKIP” found in each of A205 and B205 [(the JCT-VC References)] teach the claimed “integrated code block flag information.” . . . More particularly, we understand Petitioner to assert that “skip_flag” teaches the claimed “integrated code block flag,” “MODE_SKIP” teaches the claimed “integrated code block flag information,” and that decoding “skip_flag” (i.e., integrated code block flag) is used to set or not set “MODE_SKIP” (i.e., integrated code block flag information). Dec. 22 (citing Pet. 44–47, 58–60, 66–68). We further determined that Petitioner did not establish that the JCT-VC References disclose the asserted links between skip_flag and MODE_SKIP.” Id. at 23. More specifically, we determined that “contrary to Petitioner’s assertions that ‘skip_mode’ is decoded and used to set ‘MODE_SKIP,’ [the JCT-VC References] instead disclose that ‘MODE_SKIP’ is set based on ‘slice_type’ and ‘pred_mode.’” Id. at 24 (citing Ex. 1004 § 4.2.10, Table 4-7; Ex. 1005 § 4.2.10, Table 4-11). We concluded that “Petitioner ha[d] not set forth evidence sufficient to demonstrate that the combination of A205 with Chen, and the combination of B205 with Chen, disclose, teach, or suggest ‘integrated code block flag information,’ and ‘an entropy decoder configured to decode integrated code block flag information [element 1.1],’ as recited in claim 1.” Id. at 25.” slip op. at 3

  • BurdenDecided for patent owner

    “the Decision addressed element 1.1 of claim 1, not element 1.6 of claim 1. See Dec. 20–25. To the extent Petitioner’s arguments apply to element 1.1 of claim 1 (the claim limitation addressed in the Decision (see Dec. 20–25)), we are not persuaded that the Decision misapprehends or overlooks arguments presented in the Petition. Petitioner cites one passage (see Pet. 24) of a ten-page section of the Petition providing summary characterizations of the disclosures of the JCT-VC References. See Pet. 18– 28. This portion does not include arguments applying the teachings of the JCT-VC References to the limitations of claim 1. We decline Petitioner’s invitation to assemble arguments from the Petition’s summary characterizations and note that Petitioner could have been, but did not, present such arguments in the Petition. For all of the forgoing reasons, we are not persuaded that, in rendering the Decision, we misapprehended or overlooked arguments presented in the Petition.” slip op. at 12

  None
  Patents in suitUS 9,544,595
• 3shape A/S / 3shape Inc. v. Align Technology, Inc.Rehearing denied
  PTAB · Dec 30, 2019 · IPR2019-00152 · APJ Neil T Powell · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request and maintained institution of review of claims 1–20, finding no overlooked or misapprehended matter.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW The applicable standard for a request for rehearing of the Institution Decision is set forth in 37 C.F.R. § 42.71(c), which provides that, [w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 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 3

  • PTAB / AIA Trials › Discretionary denialDecided for petitioner

    “Having considered the parties’ arguments, we are not persuaded that we overlooked or misapprehended Deeper, Chevron, or the principle on which those cases rest. Instead, we maintain that unlike the facts in Deeper and Chevron, the facts of the present case do not compel denying inter partes review due to considerations of efficiency. As an initial matter, in Deeper and Chevron, a reasonable likelihood of success had been shown for the challenges of only a very small proportion of the challenged claims. In Deeper, there was a reasonable likelihood of success for only two among 23 challenged claims. Deeper at 42–43. In Chevron, there was a reasonable likelihood of success for only two dependent claims among 20 challenged claims. Chevron at 11. Although we do not have a specific threshold in mind, here, there is a significantly larger portion of claim challenges for which a reasonable likelihood exists than in either Deeper or Chevron. More importantly, in our view, Patent Owner’s efficiency arguments overlook that this proceeding involves one of multiple, similar patents that Patent Owner has asserted against Petitioner, and which Petitioner has challenged in petitions for inter partes review in IPR2019-00150, IPR2019-00151, and IPR2019- 00152. In these proceedings, the asserted prior art and the issues overlap. In each proceeding, Petitioner asserts the prior art references Picard, Ishihara, Tiziani, Gmitro, and Kino. Pet. 7; IPR2019-00150, Paper 3, 7–8; IPR2019-00151, 7. In IPR2019-00150, IPR2019-00151, and IPR2019-00152 collectively, Petitioner demonstrated a reasonable likelihood of prevailing with respect to 17 of 45 challenged claims. See Dec. on Inst. 3, 28–29 (noting a reasonable likelihood of prevailing on challenge of eight claims); IPR2019-00150, Paper 11, 3, 27 (noting reasonable likelihood of prevailing on challenge of five claims); IPR2019-00151, Paper 10, 3, 28 (noting a reasonable likelihood of prevailing on challenge of four claims). Given that Petitioner has demonstrated a reasonable likelihood of prevailing on a significant portion of similar assertions of unpatentability of the claims of multiple, similar patents asserted by Patent Owner against Petitioner, we do not agree with Patent Owner’s assertion that the efficiency considerations noted in Deeper and Chevron weigh heavily in favor of denying inter partes review of the present case.” slip op. at 5

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “considered the arguments and precedent presented by Patent Owner, we disagree with Patent Owner’s suggestion that Petitioner’s proposed means-plus-function constructions must be substantively addressed in the Institution Decision. Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). As the Institution Decision explained, the Preliminary Response did not identify any specific reason that the differences between the parties’ proposed claim constructions would affect the ultimate analysis of the patentability of the challenged claims over the cited prior art. Dec. on Inst. 10. In particular, the Preliminary Response did not present any specific reason that the alleged teachings of the cited prior art would not meet Patent Owner’s proposed claim constructions, if we adopted Patent Owner’s proposed claim constructions over Petitioner’s. Thus, the Preliminary Response’s general disagreement regarding the correct construction of the claims did not create any controversy regarding the patentability of the challenged claims over the cited references, making it unnecessary for the Institution Decision to reach a conclusion on claim construction. Thus, the Rehearing Request does not persuade us that we overlooked or misapprehended the law by not construing the claims in the Institution Decision. To the extent Patent Owner later identifies any specific reason that the ultimate question of patentability is affected by specific claim construction issues, those issues can be resolved in the inter partes review. The Federal Circuit has noted expressly a lack of concern for “the Board adopting a construction in its final written decision, as the Board is free to do.” SAS Institute, Inc. v. ComplementSoft, LLC, 825 F.3d 1341, 1352 (Fed. Cir. 2016). Indeed, the Board may construe claim language in its final written decision, after omitting any construction of the language in a decision to institute. TQ Delta, LLC, v. DISH Network LLC, 929 F.3d 1350, 1355 (Fed. Cir. 2019). The Supreme Court’s observation that Petitioner “gets to define the contours of the proceeding” addresses the Board’s prior practice of instituting inter partes review only for a subset of the claim challenges brought by a Petitioner. See SAS, 138 S. Ct. at 1354–1355. Patent Owner does not persuade us that the Supreme Court’s SAS decision requires the Board to adopt a claim construction in its institution decision. Here, having reviewed the record evidence, including the language of the claims, the Specification of the ’901 patent, and the asserted art, we found the claim constructions and prior art mapping advanced by Petitioner sufficiently viable to demonstrate a reasonable likelihood of prevailing with respect to at least one claim challenged in the Petition. The Rehearing Request does not persuade us of error in that determination.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner

    “Petitioner failed to explain why a person of ordinary skill in the art would have placed certain components in certain relative positions, as well as how those components would have worked in those positions. The Institution Decision addressed those arguments. Inst. Dec. 25–27. The Rehearing Request does not reiterate or further explain the arguments from the Preliminary Response that Petitioner failed to explain why a person of ordinary skill in the art would have arranged the components in a certain way, or how such an arrangement would have worked. Instead, the Rehearing Request argues that the arrangement of Picard’s and Ishihara’s components proposed by Petitioner does not meet the claims. Pages 32–36 of the Preliminary Response simply did not make such an argument. For that reason alone, we find unpersuasive the Rehearing Request’s assertion that we overlooked or misapprehended arguments regarding the “illogical arrangement” of certain components. Reh’g Req. 9–13. Additionally, even if the Preliminary Response had made the arguments presented in the Rehearing Request, at this stage, we do not find Patent Owner’s arguments persuasive. In particular, we do not agree with Patent Owner’s assertion that Petitioner places at least a portion of the alleged “illumination unit” downstream of the alleged “optical system.” Instead, Petitioner’s mapping places components of the alleged “illumination unit” upstream of some components of the alleged “optical system” and downstream of one component of the alleged “optical system.” Indeed, such positioning appears in the Rehearing Request’s annotated version of Picard’s Figure 8, which shows Nipkow disk 8 upstream of the alleged optical system’s fiber optic bundle 30 and lenses 15, 321, but downstream of the alleged optical system’s separator cube 11. As Patent Owner notes, Petitioner asserts that Nipkow disk 8 forms part of the claimed “illumination unit . . . configured to generate a plurality of incident light beams.” Reh’g Req. 9–10; Pet. 20–23. Thus, Petitioner identifies a portion of the alleged illumination unit as sitting upstream of the alleged optical system’s fiber optic bundle 30 and lens 15, 32, while placing the same portion of the alleged illumination unit downstream of the alleged optical system’s separator cube 11. This arrangement of components appears to satisfy Patent Owner’s asserted requirement that the illumination unit must create the plurality of incident light beams before the optical system can focus them. Reh’g Req. 9. In particular, Petitioner asserts that Picard’s Nipkow disk 8 generates a plurality of incident light beams and that lens 15, situated downstream of Nipkow disk 8, focuses the plurality of incident light beams. Pet. 22, 25. With Nipkow disk 8 situated upstream of lens 15, any light beam produced by Nipkow disk 8 would be generated before lens 15 receives it. Because lens 15 is part of the alleged optical system, to the extent lens 15 focuses light beams from Nipkow disk 8, it seemingly would follow that the optical system focuses the plurality of incident light beams after Nipkow disk 8 (the alleged module) generates them.” slip op. at 13

  Claim construction§ 103 obviousnessDiscretionary denial
  Patents in suitUS 9,615,901
• 3shape A/S / 3shape Inc. v. Align Technology, Inc.Rehearing denied
  PTAB · Dec 30, 2019 · IPR2019-00151 · APJ Neil T Powell · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request and maintained institution of inter partes review of claims 15–30, finding no error in its institution decision.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “Decision is set forth in 37 C.F.R. § 42.71(c), which provides that, [w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 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 3

  • PTAB / AIA Trials › Discretionary denialDecided for petitioner

    “Having considered the parties’ arguments, we are not persuaded that we overlooked or misapprehended Deeper, Chevron, or the principle on which those cases rest. Instead, we maintain that unlike the facts in Deeper and Chevron, the facts of the present case do not compel denying inter partes review due to considerations of efficiency. As an initial matter, in Deeper and Chevron, a reasonable likelihood of success had been shown for the challenges of only a very small proportion of the challenged claims. In Deeper, there was a reasonable likelihood of success for only two among 23 challenged claims. Deeper at 42–43. In Chevron, there was a reasonable likelihood of success for only two dependent claims among 20 challenged claims. Chevron at 11. Although we do not have a specific threshold in mind, here, there is a larger portion of claim challenges for which a reasonable likelihood exists than in either Deeper or Chevron. More importantly, in our view, Patent Owner’s efficiency arguments overlook that this proceeding involves one of multiple, similar patents that Patent Owner has asserted against Petitioner, and which Petitioner has challenged in petitions for inter partes review in IPR2019-00150, IPR2019-00151, and IPR2019- 00152. In these proceedings, the asserted prior art and the issues overlap. In each proceeding, Petitioner asserts the prior art references Picard, Ishihara, Tiziani, Gmitro, and Kino. Pet. 7; IPR2019-00150, Paper 3, 7–8; IPR2019-00152, Paper 3, 7. In IPR2019-00150, IPR2019-00151, and IPR2019-00152 collectively, Petitioner demonstrated a reasonable likelihood of prevailing with respect to 17 of 45 challenged claims. See Dec. on Inst. 3, 28 (noting reasonable likelihood of prevailing on challenge of four claims); IPR2019-00150, Paper 11, 3, 27 (noting reasonable likelihood of prevailing on challenge of five claims); IPR2019-00152, Paper 11, 3, 28–29 (noting a reasonable likelihood of prevailing on challenge of eight claims). Given that Petitioner has demonstrated a reasonable likelihood of prevailing on a significant portion of similar assertions of unpatentability of the claims of multiple, similar patents asserted by Patent Owner against Petitioner, we do not agree with Patent Owner’s assertion that the efficiency considerations noted in Deeper and Chevron weigh heavily in favor of denying inter partes review of the present case.” slip op. at 5

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “Patent Owner does not persuade us that we misapprehended the law. Having considered the arguments and precedent presented by Patent Owner, we disagree with Patent Owner’s suggestion that Petitioner’s proposed means-plus-function constructions must be substantively addressed in the Institution Decision. Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). As the Institution Decision explained, the Preliminary Response did not identify any specific reason that the differences between the parties’ proposed claim constructions would affect the ultimate analysis of the patentability of the challenged claims over the cited prior art. Dec. on Inst. 10. In particular, the Preliminary Response did not present any specific reason that the alleged teachings of the cited prior art would not meet Patent Owner’s proposed claim constructions, if we adopted Patent Owner’s proposed claim constructions over Petitioner’s. Thus, the Preliminary Response’s general disagreement regarding the correct construction of the claims did not create any controversy regarding the patentability of the challenged claims over the cited references, making it unnecessary for the Institution Decision to reach a conclusion on claim construction. Thus, the Rehearing Request does not persuade us that we overlooked or misapprehended the law by not construing the claims in the Institution Decision. To the extent Patent Owner later identifies any specific reason that the ultimate question of patentability is affected by specific claim construction issues, those issues can be resolved in the inter partes review. The Federal Circuit has noted expressly a lack of concern for “the Board adopting a construction in its final written decision, as the Board is free to do.” SAS Institute, Inc. v. ComplementSoft, LLC, 825 F.3d 1341, 1352 (Fed. Cir. 2016). Indeed, the Board may construe claim language in its final written decision, after omitting any construction of the language in a decision to institute. TQ Delta, LLC, v. DISH Network LLC, 929 F.3d 1350, 1355 (Fed. Cir. 2019). The Supreme Court’s observation that Petitioner “gets to define the contours of the proceeding” addresses the Board’s prior practice of instituting inter partes review only for a subset of the claim challenges brought by a Petitioner. See SAS, 138 S. Ct. at 1354–1355. Patent Owner does not persuade us that the Supreme Court’s SAS decision requires the Board to adopt a claim construction in its institution decision. . Here, having reviewed the record evidence, including the language of the claims, the Specification of the ’448 patent, and the asserted art, we found the claim constructions and prior art mapping advanced by Petitioner sufficiently viable to demonstrate a reasonable likelihood of prevailing with respect to at least one claim challenged in the Petition. The Rehearing Request does not persuade us of error in that determination.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation foundDecided for petitioner

    “presented in the Rehearing Request, at this stage, we do not find Patent Owner’s arguments persuasive. In particular, we do not agree with Patent Owner’s assertion that Petitioner places at least a portion of the alleged “illumination unit” downstream of the alleged “optical system.” Instead, Petitioner’s mapping places components of the alleged “illumination unit” upstream of some components of the alleged “optical system” and downstream of one component of the alleged “optical system.” Indeed, such positioning appears in the Rehearing Request’s annotated version of Picard’s Figure 8, which shows Nipkow disk 8 upstream of the alleged optical system’s fiber optic bundle 30 and lenses 15, 321, but downstream of the alleged optical system’s separator cube 11. As Patent Owner notes, Petitioner asserts that Nipkow disk 8 forms part of the claimed “illumination unit . . . configured to generate a plurality of incident light beams.” Reh’g Req. 9–10; Pet. 18–21. Thus, Petitioner identifies a portion of the alleged illumination unit as sitting upstream of the alleged optical system’s fiber optic bundle 30 and lens 15, 32, while placing the same portion of the alleged illumination unit downstream of the alleged optical system’s separator cube 11. This arrangement of components appears to satisfy Patent Owner’s asserted requirement that the illumination unit must create the plurality of incident light beams before the optical system can focus them. Reh’g Req. 9. In particular, Petitioner asserts that Picard’s Nipkow disk 8 generates a plurality of incident light beams and that lens 15, situated downstream of Nipkow disk 8, focuses the plurality of incident light beams. Pet. 20–21, 23–24. With Nipkow disk 8 situated upstream of lens 15, any light beam produced by Nipkow disk 8 would be generated before lens 15 receives it. Because lens 15 is part of the alleged optical system, to the extent lens 15 focuses light beams from Nipkow disk 8, it seemingly would follow that the optical system focuses the plurality of incident light beams after Nipkow disk 8 (the alleged module) generates them. For these reasons, we are not persuaded that it was an abuse of discretion to institute review of claim 15 based on the arrangement of components proposed by 1 Although Patent Owner’s annotated version of Picard’s Figure 8 does not identify Picard’s lens 15 as part of the alleged optical system, the Petition asserts that it forms part of the optical system and serves to focus the plurality of incident light beams. Pet. 23–24. Petitioner. Patent Owner’s argument rests on a claim interpretation that requires that the claimed “optical system” be positioned, in its entirety, downstream of the claimed “illumination unit.” At this stage, neither party has fully addressed the correctness of Patent Owner’s claim interpretation. We, therefore, do not decide at this stage whether Patent Owner’s claim interpretation is correct and make no final determination as to whether Petitioner’s proposed arrangement of components falls within the scope of the claim.” slip op. at 13

  Claim construction§ 103 obviousnessDiscretionary denial
  Patents in suitUS 8,638,448
• Panasonic Avionics Corp. v. Linksmart Wireless Technology, LLCRehearing denied
  PTAB · Oct 8, 2019 · IPR2019-00043 · APJ Brian J Mcnamara · IPR · Rehearing

  The Board denied Panasonic’s rehearing request and left in place its denial of institution because the cited art did not teach the claimed redirection server.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “rehearing of our Decision Denying Institution of inter partes review of U.S. Patent RE46,459 (the ’459 patent) entered as Paper 7 (“Decision” or “Dec.”) on May 14, 2019. See Paper 8 (“Req. Reh’g.”). When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the 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. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “redirecting a packet, i.e., one in which the NAS removes the request for the Subscriber’s packet and places it in a new packet to be sent to server 14. Req. Reh’g. 5–6 (citing Pet. 71, 78). Petitioner refers to this second technique as an address-replacement approach. Id. at 5. According to Petitioner, Malkin’s address replacement approach is consistent with our analysis that the ’459 patent requires modifying a request to access a destination on the network by changing the requested destination. Id. at 5–6 (citing Dec. 18). Petitioner overlooks that our analysis of Malkin is independent of how server 14 is accessed. Our Decision states, “When the NAS detects a user attempting unauthorized access, Malkin routes the user’s request to redirection server 14 within ISP 16.” Dec. 17 (emphasis added). We also stated that “Malkin either allows network access for authorized user requests or blocks network access for unauthorized user requests, but it does not redirect a request to another location on the network.” Id. (emphasis added). As our construction requires that the claimed redirection server perform some function other than allowing or blocking access to a network, i.e., redirecting the user to a network location that is different from the requested network location, we concluded that Malkin, which blocks access to the network, does not disclose the claimed redirection server. Id. at 17–18.” slip op. at 5

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “redirection server” means “a server operable to control network access by applying the following actions: block, allow, direct.” Pet. 15. We explained that a prior panel of the Board construed “redirection server” as “requiring[ing] some sort of redirection functionality” and that “blocking and allowing are ‘further’ functions of the redirection server.” Dec. 10. We agreed that “‘redirection’ requires the server perform a redirection function as distinguished from merely blocking or allowing user access, i.e., there must be some form of redirection of the user’s request.” Id. at 11. We phrased the construction of “redirection server” to mean a server that “at least must be capable of redirecting a user to a network location that is different from the network location in the user’s request.” Dec. 12. Our slip op. at 3

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “the user’s rule set correlated to a temporarily assigned network address. As an initial matter, we note that the Petition (i) cites Abraham as disclosing denying or allowing transmission of IP packets and (ii) argues it would have been obvious to augment the network server’s ability to deny or allow packets, as disclosed by Abraham, with Malkin’s packet redirection technique, thereby making Abraham’s network server a redirection server. Pet. 30–31. According to Petitioner, “it would have been obvious for Abraham’s network server to redirect packets that are blocked, as described by Malkin.” Id. at 32. As discussed above, because Malkin’s packet redirection technique is a blocking technique that fails to disclose Abraham does not alter our decision to deny institution. See also Dec. 18 (“As we are persuaded that Petitioner has not demonstrated the references disclose a redirection server as that term is properly construed within the meaning of the challenged claims, we conclude that Petitioner has not demonstrated a likelihood that it will prevail on its challenge to any of the claims.”).” slip op. at 6

  Claim construction§ 103 obviousness
• Cisco Systems, Inc. v. Centripetal Networks, Inc.Rehearing denied
  PTAB · Oct 7, 2019 · IPR2018-01506 · APJ Brian J Mcnamara · IPR · Rehearing

  The Board denied Cisco’s rehearing request, leaving intact the denial of institution because Cisco did not show that Ingate was a prior art printed publication.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “The burden of showing a decision should be modified lies with the party challenging the decision. 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 reconsidering an institution decision, we look for an abuse of discretion, which may be found if there was (1) an erroneous interpretation of law, (2) a factual finding not supported by substantial evidence, or (3) unreasonable judgment in weighing relevant factors. See 37 C.F.R. § 42.71(c); Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); The Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). For the reason discussed below, Petitioner’s Request for Rehearing is denied.” slip op. at 2

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “Although Mr. Beer states that he has “personal knowledge regarding the content and publishing of the Ingate reference,” Mr. Beer does not assert that, except for his authorship, he had any role in publishing the Ingate reference. Ex. 1012, Beer Dec. ¶¶ 3–6. Mr. Beer does not state that he personally placed the Ingate reference on Ingate’s publically accessible website. Id. Mr. Beer offers no testimony as to what the legend “Ingate – Partner Information Guide” means or how the Ingate reference would have been published on the website, such that it would have been accessible to the public in the relevant time frame. Id. Mr. Beer provides no information about Ingate’s procedures for reviewing and approving articles prior to publication on Ingate’s website. Mr. Beer also does not describe how such articles were posted to the website, e.g., Mr. Beer does not describe procedures Ingate followed to load the reference to a publically accessible location, to assign a link to that location, who was responsible for carrying out such procedures, how long such procedures would have taken, how the reference would have been known to the public, or how an interested person would search for the Ingate reference. Dec. 17–18. Mr. Beer’s testimony that the Ingate reference was accessible at the website provides insufficient facts from which we can conclude the Ingate reference was accessible to interested members of the public. Although the Rehearing Request criticizes our Decision as focused on “indexing” (Req. Reh’g 9–10), our comments on indexing concern the factual deficiencies in Mr. Beer’s declaration concerning how a member of the public would have known about or located the Ingate reference: Mr. Beer’s Declaration also fails to address how, or if, the Ingate reference was indexed, or who was responsible for such indexing, such that interested members of the relevant public could obtain the information. For example, Mr. Beer’s declaration is silent about whether the website included any search feature or how keywords or other indicia would have been assigned to the Ingate reference to facilitate its identification by an interested person.” slip op. at 5

  § 102 anticipation
  Patents in suitUS 9,137,205
• 3shape A/S / 3shape Inc. v. Align Technology, Inc.Rehearing denied
  PTAB · Oct 2, 2019 · IPR2019-00150 · APJ Neil T Powell · IPR · Rehearing

  The Board denied the Patent Owner’s rehearing request, leaving institution in place for claims 17–25 based on the grounds identified in the institution decision.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW The applicable standard for a request for rehearing of the Institution Decision is set forth in 37 C.F.R. § 42.71(c), which provides that, [w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 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 3

  • PTAB / AIA Trials › Discretionary denialDecided for petitioner

    “2018) (informative). Reh’g Req. 3–5. Patent Owner contends that the Institution Decision “misapprehends or overlooks that efficiency considerations, such as those outlined in Deeper and Chevron, weigh strongly in favor of denial of this case.” Id. at 4–5. In support of this contention, Patent Owner argues that “[a]ccording to the Board’s decision on institution, [Petitioner] has demonstrated, at best a reasonable likelihood of prevailing on five of the 14 claims challenged in its petition based on only one of four asserted grounds.” Id. at 4. Consequently, Patent Owner contends, instituting inter partes review on all challenges and all claims would not use the limited time and resources of the Board efficiently (id.), as in Deeper and Chevron. See Deeper at 41–43; Chevron at 10–11. In its Opposition, Petitioner argues that Patent Owner misstates this case’s facts, which Petitioner asserts differ significantly from those in Chevron and Deeper. Opp. 1–2. Petitioner notes that, contrary to Patent Owner’s assertion that the Institution Decision found a reasonable likelihood of prevailing on five out of fourteen challenged claims, we actually found a reasonable likelihood of prevailing on five out of nine challenged claims. Id. at 1. Petitioner also argues that each of Deeper and Chevron involved a far different proportion of claims for which a reasonable likelihood of prevailing had been demonstrated. Id. at 1–2. Having considered the parties’ arguments, we are not persuaded that we overlooked or misapprehended Deeper, Chevron, or the principle on which those cases rest. Instead, we maintain that unlike the facts in Deeper and Chevron, the facts of the present case do not compel denying inter partes review due to considerations of efficiency. In both Deeper and Chevron, a reasonable likelihood of success had been shown for the challenges of only a very small proportion of the challenged claims. In Deeper, there was a reasonable likelihood of success for only two among 23 challenged claims. Deeper at 42–43. In Chevron, there was a reasonable likelihood of success for only two dependent claims among 20 challenged claims. Chevron at 11. Petitioner correctly observes that, in both Deeper and Chevron, a reasonable likelihood was shown for only a subset of claims within a ground. Opp. 2; Deeper at 15, 35, 52–43; Chevon, 4, 11. Here, consistent with Petitioner’s correct observations, the Institution Decision found a reasonable likelihood of Petitioner prevailing on five of nine challenged claims (Dec. on Inst. 3, 27), which is a majority of the challenged claims and all of the claims challenged in Petitioner’s ground based on Picard and Ishihara. Therefore, we disagree with Patent Owner’s position that Deeper and Chevron weigh heavily in favor of denying inter partes review of the present case.” slip op. at 4

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “Patent Owner does not persuade us that we misapprehended the law. Having considered the arguments and precedent presented by Patent Owner, we disagree with Patent Owner’s suggestion that Petitioner’s proposed means-plus-function constructions must be substantively addressed in the Institution Decision. Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). As the Institution Decision explained, the Preliminary Response did not identify any specific reason that the differences between the parties’ proposed claim constructions would affect the ultimate analysis of the patentability of the challenged claims over the cited prior art. Dec. on Inst. 10. In particular, the Preliminary Response did not present any specific reason that the alleged teachings of the cited prior art would not meet Patent Owner’s proposed claim constructions, if we adopted Patent Owner’s proposed claim constructions over Petitioner’s. Thus, the Preliminary Response’s general disagreement regarding the correct construction of the claims did not create any controversy regarding the patentability of the challenged claims over the cited references, making it unnecessary for the Institution Decision to reach a conclusion on claim construction. For this reason alone, the Rehearing Request does not persuade us that we overlooked or misapprehended the law by not construing the claims in the Institution Decision. To the extent Patent Owner later identifies any specific reason that the ultimate question of patentability is affected by specific claim construction issues, those issues can be resolved in the inter partes review. The Federal Circuit has noted expressly a lack of concern for “the Board adopting a construction in its final written decision, as the Board is free to do.” SAS Institute, Inc. v. ComplementSoft, LLC, 825 F.3d 1341, 1352 (Fed. Cir. 2016). Indeed, the Board may construe claim language in its final written decision, after omitting any construction of the language in a decision to institute. TQ Delta, LLC, v. DISH Network LLC, 929 F.3d 1350, 1355 (Fed. Cir. 2019). The Supreme Court’s observation that Petitioner “gets to define the contours of the proceeding” addresses the Board’s prior practice of instituting inter partes review only for a subset of the claim challenges brought by a Petitioner. See SAS, 138 S. Ct. at 1354–1355. Patent Owner does not persuade us that the Supreme Court’s SAS decision requires the Board to adopt a claim construction in its institution decision. .” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Additionally, even if the Preliminary Response had made the arguments presented in the Rehearing Request, at this stage, we do not find Patent Owner’s arguments persuasive. In particular, we do not agree with Patent Owner’s assertion that Petitioner places the alleged “module” downstream of the alleged “optical system.” Instead, Petitioner’s mapping places the alleged “module” upstream of some components of the alleged “optical system” and downstream of one component of the alleged “optical system.” Indeed, such positioning appears in the Rehearing Request’s annotated version of Picard’s Figure 8, which shows Nipkow disk 8 upstream of the alleged optical system’s fiber optic bundle 30 and lenses 15, 321, but downstream of the alleged optical system’s separator cube 11. As Patent Owner notes, Petitioner asserts that Nipkow disk 8 corresponds to the claimed “module . . . configured to 1 Although Patent Owner’s annotated version of Picard’s Figure 8 does not identify Picard’s lens 15 as part of the alleged optical system, the Petition asserts that it forms part of the optical system and serves to focus the plurality of incident light beams. Pet. 29. generate a plurality of incident light beams.” Reh’g Req. 9–10; Pet. 25–26. Thus, Petitioner identifies the alleged module as sitting upstream of the alleged optical system’s fiber optic bundle 30 and lens 15, 32, while placing the alleged module downstream of the alleged optical system’s separator cube 11. This arrangement of components appears to satisfy Patent Owner’s asserted requirement that the module must create the plurality of incident light beams before the optical system can focus them. Reh’g Req. 8–9. In particular, Petitioner asserts that Picard’s Nipkow disk 8 generates a plurality of incident light beams and that lens 15, situated downstream of Nipkow disk 8, focuses the plurality of incident light beams. Pet. 25–26, 29. With Nipkow disk 8 situated upstream of lens 15, any light beam produced by Nipkow disk 8 would be generated before lens 15 receives it. Because lens 15 is part of the alleged optical system, to the extent lens 15 focuses light beams from Nipkow disk 8, it seemingly would follow that the optical system focuses the plurality of incident light beams after Nipkow disk 8 (the alleged module) generates them.” slip op. at 12

  Claim construction§ 103 obviousnessDiscretionary denial
  Patents in suitUS 8,638,447
• Delphi Technologies, LLC v. Microchip Technology Inc.Rehearing denied
  PTAB · Dec 11, 2018 · IPR2017-00864 · APJ Daniel N Fishman · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving claims 1, 3–5, 7–9, 11–15, and 18–21 unpatentable because their scope did not require the buffer to store the specified information.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “party challenging the decision,” and, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the record. 37 C.F.R. § 42.71(d). III. DISCUSSION Patent Owner’s Request does not identify any arguments that we “misapprehended or overlooked” let alone “specifically identify” all such matters. Thus, Patent Owner’s Request fails to comply with our rules. Despite this failure of Patent Owner’s Request, we address the substance of Patent Owner’s argument as follows.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “misapprehended any argument. Furthermore, we are unpersuaded that our Decision was in error regarding independent claims 1, 3, 7, 18, and 23 because these claims have a different scope than claims 17, 22, and 24. As Patent Owner correctly noted, our construction of “dedicated USB connection” is “a USB connection that may include some shared physical communication path and includes a buffer for maintaining dedicated address, configuration and response information for the connection.” Dec. 33. Thus, a dedicated USB connection must include a buffer that is capable of storing/maintaining “dedicated address, configuration and response information” regardless of whether such data is actually stored/maintained therein.” slip op. at 3

  Claim construction
  Patents in suitUS 7,523,243
• Delphi Technologies, LLC v. Microchip Technology Inc.Rehearing denied
  PTAB · Dec 11, 2018 · IPR2017-00861 · APJ Daniel N Fishman · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving claim 25 unpatentable because its ACR data limitation did not distinguish its scope and the Board had not misapprehended or overlooked the controller argument.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “party challenging the decision,” and, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the record. 37 C.F.R. § 42.71(d). III. DISCUSSION Patent Owner’s Request does not identify any arguments that we “misapprehended or overlooked” let alone “specifically identify” all such matters. Thus, Patent Owner’s Request fails to comply with our rules. Despite this failure of Patent Owner’s Request, we address the substance of Patent Owner’s arguments below.” slip op. at 2

  • BurdenDecided for patent owner

    “party challenging the decision,” and, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the record. 37 C.F.R. § 42.71(d). III. DISCUSSION Patent Owner’s Request does not identify any arguments that we “misapprehended or overlooked” let alone “specifically identify” all such matters. Thus, Patent Owner’s Request fails to comply with our rules. Despite this failure of Patent Owner’s Request, we address the substance of Patent Owner’s arguments below.” slip op. at 2

  None
  Patents in suitUS 7,627,708

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.