- Momentum Dynamics Corporation v. Witricity CorporationRehearing grantedPTAB · Mar 16, 2022 · IPR2021-01165 · APJ Jameson Lee · IPR · Rehearing
Granted petitioner’s rehearing request and instituted IPR on all challenged claims and all petition grounds, finding a reasonable likelihood that claims were obvious over Stark, with Mecke also supporting certain distance claims.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, 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 a motion, an opposition, or a reply.” Id. Because, as explained above, we do not treat Petitioner’s explanations in the Rehearing Request as belated, based on the explanations offered in the Rehearing Request, it was error to deny the Petition. Petitioner has shown that the Decision should be modified to institute inter partes review.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Response did not address this testimony. We credit this testimony of Dr. Young. This changed understanding alone is sufficient to justify a modification of the Decision to institute inter partes review, because on this record Petitioner has shown that Stark expressly discloses, in a tuned circuit environment where all frequencies are set to the same frequency, Q1 = Q2 = 1000. Because Stark’s prototype described in Chapter 7 is for tuned circuits, Stark reasonably would have suggested to one with ordinary skill in the art an implementation of its disclosed prototype, which has distance D satisfying limitation [1c], with each of Q1 and Q2 set to 1000. With the changed understanding of Figure 3-9, and the fact that Figure 3-9 shows setting Q1 = Q2 = 1000, we agree with Petitioner, on the record presented, that “it would have been obvious, to implement the same system [breadboard prototype] with Q values in the hundreds or thousands, as described with respect to limitation 1/6[d].” Pet. 36 n.8. Thus, limitations 1[c] and 1[d] would have been met together.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Response did not address this testimony. We credit this testimony of Dr. Young. This changed understanding alone is sufficient to justify a modification of the Decision to institute inter partes review, because on this record Petitioner has shown that Stark expressly discloses, in a tuned circuit environment where all frequencies are set to the same frequency, Q1 = Q2 = 1000. Because Stark’s prototype described in Chapter 7 is for tuned circuits, Stark reasonably would have suggested to one with ordinary skill in the art an implementation of its disclosed prototype, which has distance D satisfying limitation [1c], with each of Q1 and Q2 set to 1000. With the changed understanding of Figure 3-9, and the fact that Figure 3-9 shows setting Q1 = Q2 = 1000, we agree with Petitioner, on the record presented, that “it would have been obvious, to implement the same system [breadboard prototype] with Q values in the hundreds or thousands, as described with respect to limitation 1/6[d].” Pet. 36 n.8. Thus, limitations 1[c] and 1[d] would have been met together.” slip op. at 5
- Expert testimonyPetitioner expert creditedDecided for petitioner
“I note that while Figure 3-9 appears immediately under the heading “3.1.3 Physical interpretation of ω1 ≠ ω2”, this appears to be the result of a spacing issue with Stark’s figures. Stark’s pole-zero plots are part of its Section 3.1.2 (“Solution with primary and secondary tuned together”). Stark at 52; 93. This is confirmed by the MATLAB code included in Stark and used to generate these plots, which uses only a single value ωn, rather than a distinct ω1 and ω2. Stark at 237–38. Response did not address this testimony. We credit this testimony of Dr. Young. This changed understanding alone is sufficient to justify a modification of the Decision to institute inter partes review, because on this record Petitioner has shown that Stark expressly discloses, in a tuned circuit environment where all frequencies are set to the same frequency, Q1 = Q2 = 1000. Because Stark’s prototype described in Chapter 7 is for tuned circuits, Stark reasonably would have suggested to one with ordinary skill in the art an implementation of its disclosed prototype, which has distance D satisfying limitation [1c], with each of Q1 and Q2 set to 1000.” slip op. at 4
§ 103 obviousnessPatents in suitUS 7,741,734 - PTAB · Feb 22, 2016 · IPR2015-01457 · APJ Jameson Lee · IPR · Rehearing
Petitioner’s rehearing request was granted, adding claims 8–10 to trial under § 103 grounds over Ejzak and Intel, and Ejzak and Cisco.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“of claim 8 which recites: “said bypass mode data indicating a bypass mode setting for said media gateway.” In the Decision, we stated: “The reference [in Ejzak] merely to ‘policy’ is unreasonably broad and not very meaningful when the limitation pertains to the bypass setting for a particular device.” Dec. 23. We questioned whether “local policy” that may apply generally to all media gateways indicates a specific bypass setting for a particular ALG, BG, or media gateway. Id. at 22. On that basis, we concluded that Petitioner failed to provide adequate explanation on how a “local policy” satisfies the bypass mode data requirement of claim 8. Id. at 23. Petitioner identifies in its rehearing request points we misapprehended in our Decision. The Petition, as filed, adequately explains the “local policy” is specific to the local ALG. Reh. Req. 9–10. Petitioner identifies testimony of Mr. Bress, referred to in the Petition, that explain why one with ordinary skill in the art would understand “local policy” of Ejzak as local and specific to the ALG. Id. at 11 (citing ¶¶ 238–43 of Ex. 1104). We agree that on the record before us, “local policy” appears to be local to the ALG and not generally applicable to all media gateways.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“in our Decision. The Petition, as filed, adequately explains the “local policy” is specific to the local ALG. Reh. Req. 9–10. Petitioner identifies testimony of Mr. Bress, referred to in the Petition, that explain why one with ordinary skill in the art would understand “local policy” of Ejzak as local and specific to the ALG. Id. at 11 (citing ¶¶ 238–43 of Ex. 1104). We agree that on the record before us, “local policy” appears to be local to the ALG and not generally applicable to all media gateways.” slip op. at 2
NonePatents in suitUS 8,687,640 - PTAB · Feb 2, 2015 · IPR2014-00221 · APJ Jameson Lee · IPR · Rehearing
The Board granted rehearing to the extent that Patent Owner may file a revised motion to exclude with the improper material removed.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“We are unpersuaded that Patent Owner’s Motion to Exclude complied with the Order dated June 20, 2014. Even as characterized in the Rehearing Request, the Motion to Exclude indisputably contained arguments alleging that Petitioner’s Reply was beyond the proper scope of a reply, and not just arguments directed solely to the evidence in support of the Reply. Nevertheless, Patent Owner’s explanation is sufficient to justify an opportunity for the Patent Owner to file a Revised Motion to Exclude, which would be the same as the Motion to Exclude but with the inappropriate material removed, as Patent Owner has offered in the Request for Rehearing.” slip op. at 3
- ExcludeMotion to exclude, grantedGranted in part
“We are unpersuaded that Patent Owner’s Motion to Exclude complied with the Order dated June 20, 2014. Even as characterized in the Rehearing Request, the Motion to Exclude indisputably contained arguments alleging that Petitioner’s Reply was beyond the proper scope of a reply, and not just arguments directed solely to the evidence in support of the Reply. Nevertheless, Patent Owner’s explanation is sufficient to justify an opportunity for the Patent Owner to file a Revised Motion to Exclude, which would be the same as the Motion to Exclude but with the inappropriate material removed, as Patent Owner has offered in the Request for Rehearing.” slip op. at 3
NonePatents in suitUS 7,991,522 - PTAB · Feb 2, 2015 · IPR2014-00222 · APJ Jameson Lee · IPR · Rehearing
The Board granted rehearing to the extent that Magna may file a revised motion to exclude with the improper material removed.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“We are unpersuaded that Patent Owner’s Motion to Exclude complied with the Order dated June 20, 2014. Even as characterized in the Rehearing Request, the Motion to Exclude indisputably contained arguments alleging that Petitioner’s Reply was beyond the proper scope of a reply, and not just arguments directed solely to the evidence in support of the Reply. Nevertheless, Patent Owner’s explanation is sufficient to justify an opportunity for the Patent Owner to file a Revised Motion to Exclude, which would be the same as the Motion to Exclude but with the inappropriate material removed, as Patent Owner has offered in the Request for Rehearing.” slip op. at 3
- ExcludeMotion to exclude, grantedGranted in part
“We are unpersuaded that Patent Owner’s Motion to Exclude complied with the Order dated June 20, 2014. Even as characterized in the Rehearing Request, the Motion to Exclude indisputably contained arguments alleging that Petitioner’s Reply was beyond the proper scope of a reply, and not just arguments directed solely to the evidence in support of the Reply. Nevertheless, Patent Owner’s explanation is sufficient to justify an opportunity for the Patent Owner to file a Revised Motion to Exclude, which would be the same as the Motion to Exclude but with the inappropriate material removed, as Patent Owner has offered in the Request for Rehearing.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“We are unpersuaded that Patent Owner’s Motion to Exclude complied with the Order dated June 20, 2014. Even as characterized in the Rehearing Request, the Motion to Exclude indisputably contained arguments alleging that Petitioner’s Reply was beyond the proper scope of a reply, and not just arguments directed solely to the evidence in support of the Reply. Nevertheless, Patent Owner’s explanation is sufficient to justify an opportunity for the Patent Owner to file a Revised Motion to Exclude, which would be the same as the Motion to Exclude but with the inappropriate material removed, as Patent Owner has offered in the Request for Rehearing. In the interest of avoiding further confusion and non-compliance, a joint telephone conference call will be held to confirm precisely what content will be removed from the Revised Motion to Exclude, what revised opposition will be filed by Petitioner, and what revised reply will be filed by Patent Owner.” slip op. at 3
NonePatents in suitUS 8,386,114 - PTAB · Feb 2, 2015 · IPR2014-00220 · APJ Jameson Lee · IPR · Rehearing
The Board granted rehearing to allow the Patent Owner to file a revised motion to exclude with improper material removed.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“We are unpersuaded that Patent Owner’s Motion to Exclude complied with the Order dated June 20, 2014. Even as characterized in the Rehearing Request, the Motion to Exclude indisputably contained arguments alleging that Petitioner’s Reply was beyond the proper scope of a reply, and not just arguments directed solely to the evidence in support of the Reply. Nevertheless, Patent Owner’s explanation is sufficient to justify an opportunity for the Patent Owner to file a Revised Motion to Exclude, which would be the same as the Motion to Exclude but with the inappropriate material removed, as Patent Owner has offered in the Request for Rehearing.” slip op. at 3
- ExcludeMotion to exclude, grantedGranted
“We are unpersuaded that Patent Owner’s Motion to Exclude complied with the Order dated June 20, 2014. Even as characterized in the Rehearing Request, the Motion to Exclude indisputably contained arguments alleging that Petitioner’s Reply was beyond the proper scope of a reply, and not just arguments directed solely to the evidence in support of the Reply. Nevertheless, Patent Owner’s explanation is sufficient to justify an opportunity for the Patent Owner to file a Revised Motion to Exclude, which would be the same as the Motion to Exclude but with the inappropriate material removed, as Patent Owner has offered in the Request for Rehearing.” slip op. at 3
NonePatents in suitUS 7,859,565 - PTAB · Feb 2, 2015 · IPR2014-00227 · APJ Jameson Lee · IPR · Rehearing
The Board granted rehearing to the extent that Magna may file a revised motion to exclude with the improper material removed.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“We are unpersuaded that Patent Owner’s Motion to Exclude complied with the Order dated June 20, 2014. Even as characterized in the Rehearing Request, the Motion to Exclude indisputably contained arguments alleging that Petitioner’s Reply was beyond the proper scope of a reply, and not just arguments directed solely to the evidence in support of the Reply. Nevertheless, Patent Owner’s explanation is sufficient to justify an opportunity for the Patent Owner to file a Revised Motion to Exclude, which would be the same as the Motion to Exclude but with the inappropriate material removed, as Patent Owner has offered in the Request for Rehearing.” slip op. at 3
- ExcludeMotion to exclude, grantedGranted in part
“We are unpersuaded that Patent Owner’s Motion to Exclude complied with the Order dated June 20, 2014. Even as characterized in the Rehearing Request, the Motion to Exclude indisputably contained arguments alleging that Petitioner’s Reply was beyond the proper scope of a reply, and not just arguments directed solely to the evidence in support of the Reply. Nevertheless, Patent Owner’s explanation is sufficient to justify an opportunity for the Patent Owner to file a Revised Motion to Exclude, which would be the same as the Motion to Exclude but with the inappropriate material removed, as Patent Owner has offered in the Request for Rehearing.” slip op. at 3
NonePatents in suitUS 7,877,175
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.