- Alivecor, Inc. v. Apple Inc.Rehearing deniedPTAB · Jul 18, 2024 · IPR2024-00095 · APJ Hyun J Jung · IPR · Rehearing
The Board denied AliveCor’s rehearing request, finding no abuse of discretion in denying institution because the Petterson–Nakada combinations did not teach or suggest the claimed replacement of one user interface with another.
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 substantial evidence does not support a factual finding, 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); see also Reh’g Req. 8 (citing 37 C.F.R. § 42.71(c)). Also, 37 C.F.R. § 42.71(d) sets forth, in relevant part that: rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Our determinations regarding Nakada did not support Petitioner’s argument that Nakada’s “system is returned to the beginning state of the routine, which in the case of Petterson would be FIG. 2B.” Pet. 71; Dec. 39–40. We also stated that “the proposed combination does not address adequately Nakada’s description of powering down its display.” Id. at 40 (citing Pet. 48–50; Prelim. Resp. 25–26; Ex. 1011, Fig. 4). We, thus, determined Petitioner failed to show sufficiently that either Petterson or Nakada teaches or suggests “replacing display of the second user interface with the first user interface.” Dec. 38–41 (citing Pet. 48–50, 68–69, 70–71; Ex. 1003 ¶¶ 379, 382; Ex. 1011, Fig. 4). The “totality of the combination” lacked replacing a user interface with any other user interface. Dec. 40–41 (determining “the asserted references neither individually nor combined as proposed would have, ‘in response to detecting that the first criteria are no longer met for a second period of time that is longer than the first period of time, replac[ed] display of the second user interface with the first user interface’”); Reh’g Req. 8 (arguing “the Board overlooked the totality of the combination and Petitioner’s arguments and supporting evidence regarding the modification of Petterson that would have been obvious . . . in view of Nakada”).” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“After considering the arguments and cited evidence of the Petition, we determined that Petitioner did not show a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’533 patent. Paper 7 (“Decision” or “Dec.”). Petitioner subsequently filed a Request for Rehearing. Paper 8 (“Reh’g Req.”). For the reasons stated below, Petitioner has not shown that we abused our discretion in denying the Petition, and thus, Petitioner’s Request for Rehearing is denied.” slip op. at 2
§ 103 obviousnessPatents in suitUS 10,568,533 - Amazon.Com, Inc. v. Rensselaer Polytechnic InstituteRehearing deniedPTAB · Oct 30, 2020 · IPR2019-01069 · APJ Trevor M Jefferson · IPR · Rehearing
The Board denied Amazon’s rehearing request, leaving institution denied for claims 9–21 because the Petition did not show a reasonable likelihood of prevailing on its obviousness grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in a paper of record. 37 C.F.R. § 42.71(d) (2019) (emphasis added). When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision. Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (internal citations omitted).” slip op. at 3
- Prior constructionPrior construction adoptedDecided for patent owner
“system, e.g. how the system interprets words or phrases.” Apple IPR 6. Thus, the Apple IPR Board adopted Patent Owner’s argument that as applied to the prior art, the term “case” in “case information” requires “uses of the system contemplated by the invention, not uses of any other natural language processing system.” Apple IPR 6. The Board rejected that such prior use was found in rules regarding how the system interprets current word or phrase input. Id. We find that the Apple IPR discussed a user’s selection among possible choices, but also addressed that the “case” required use of the system of the ’798 invention. Id. at 5–6. Thus, we do not agree we misapprehended the meaning of the claim language. Req. Reh’g 2.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“to establish a reasonable likelihood of prevailing, in showing that claims 9– 21 would have been obvious over Livowsky;1 claims 10–12 and 14–16 would have been obvious over Livowsky and Shwartz;2 claims 9–21 would have been obvious over Shwartz and Livowsky; claims 9–21 would have been obvious over Shwartz and Weber;3 and claims 9–21 would have been obvious over Meng4 and Zhang.5 Dec. 17–18, 21–22, 23–24. For the reasons below, the Request for Rehearing is denied.” slip op. at 2
Claim constructionPatents in suitUS 7,177,798 - Amazon.Com, Inc. v. Rensselaer Polytechnic InstituteRehearing deniedPTAB · Oct 30, 2020 · IPR2019-01068 · APJ Trevor M Jefferson · IPR · Rehearing
The Board denied Amazon’s rehearing request, leaving in place the denial of institution on claims 1–8 because Petitioner did not show the Board misapprehended the construction or prior-art evidence.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“overlooked, and the place where each matter was previously addressed” in a paper of record. 37 C.F.R. § 42.71(d) (2019) (emphasis added). When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision. Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (internal citations omitted).” slip op. at 3
- Prior constructionPrior construction adoptedDecided for patent owner
“interpretation of the claim construction in the Apple IPR. See Req. Reh’g 3. The Apple IPR cites the embodiment from the ’798 patent specification (Ex. 1001, 5:36–38, 16:52–17:5). Apple IPR 5–6. The Board in the Apple IPR expressly clarified that in the case information construction “‘instances of use’ of the system [did not] mean indications cover instances of use of the system, e.g. how the system interprets words or phrases.” Apple IPR 6. Thus, the Apple IPR Board adopted Patent Owner’s argument that as applied to the prior art, the term “case” in “case information” requires “uses of the system contemplated by the invention, not uses of any other natural language processing system.” Apple IPR 6. The Board rejected that such prior use was found in rules regarding how the system interprets current word or phrase input. Id. We find that the Apple IPR discussed a user’s selection among possible choices, but also addressed that the “case” required use of the system of the ’798 invention. Id. at 5–6. Thus, we do not agree we misapprehended the meaning of the claim language. Req. Reh’g 2.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“information” to exclude clarifications from users. Id. at 5–6, 7–11. Petitioner argues that our Institution Decision adopts Patent Owner’s narrow construction and finds that “clarifying prompts” in grounds including Weber are not “case information.” Id. at 7–8. Our Institution Decision found that Petitioner did not persuasively and sufficiently assert how the prior art disclosed the “case information.” Dec 19–20. Our determination was based on the sufficiency of Petitioner’s evidence and argument in the regarding whether Weber’s prompting the user for information, which was contested by Patent Owner, teaches or suggests “information about prior instances of use of the natural language processing method.” Dec. 19–20 (emphasis added). Petitioner’s arguments does not identify any evidence we overlooked or misapprehended. Req. Reh’g 7–8. Instead, Petitioner characterizes our Institution Decision as broadly excluding user prompts. Our determination was based on the full claim construction, which is supported by the Apple IPR’s emphasis of “prior instances of use of the natural language processing method.” Apple IPR 5–6; Dec. 19–20.” slip op. at 5
Claim constructionPatents in suitUS 7,177,798 - Teradata Operations, Inc. v. Berkeley*ieorRehearing deniedPTAB · Nov 5, 2019 · CBM2019-00013 · APJ Jon B Tornquist · CBM · Rehearing
The Board denied rehearing of its decisions denying institution of CBM review of the challenged claims in four proceedings, finding no overlooked or misapprehended matter.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD FOR REHEARING Pursuant to 37 C.F.R. § 42.71(d): 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 believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion exists where a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988).” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“the relational database management system to . . . calculate” as requiring that the recited calculations be performed “in the RDBMS.” Inst. Dec. 8–10. Petitioner did not provide an express construction for this claim term in the Petition. Id. at 7. For purposes of deciding whether to institute trial, and after reviewing the claim language, the written description of the involved patents, and the relevant prosecution history, we adopted Patent Owner’s proposed construction. Id. at 8–10. Petitioner contends the construction adopted by the panel is incorrect because the claims on their face are broad enough to encompass “[a]ny use of the RDBMS,” for example using the RDBMS to” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“As explained in the Institution Decision, Petitioner’s arguments with respect to whether the challenged claims recite a technological feature that is novel and unobvious over the prior art relied on a claim construction that we did not adopt. Inst. Dec. 13–14. As such, the Petition did not adequately explain why it was not novel and obvious to use an RDBMS itself to perform the claimed profit calculations. Id. at 14. Although Petitioner disagrees with our conclusion, and now cites to disparate portions of the Petition to support its argument, a mere disagreement is not the proper basis for rehearing, and a rehearing request is not the proper vehicle to make arguments that were not clearly set forth in the Petition.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner also contends that the Board failed to consider its obviousness arguments. Req. Reh’g 14–15. We considered these arguments, but ultimately found them unpersuasive. Inst. Dec. 13–14. In short, Petitioner presumed a construction of “using the relational database management system to . . . calculate” that we did not adopt, and did not explain sufficiently why the prior art of record would have rendered the challenged claims obvious under the adopted claim construction. A request for rehearing is not an opportunity to remedy these deficiencies.” slip op. at 7
Claim construction§ 103 obviousnessPatents in suitUS 7,882,137 - Teradata Operations, Inc. v. Berkeley*ieorRehearing deniedPTAB · Nov 5, 2019 · CBM2019-00009 · APJ Jon B Tornquist · CBM · Rehearing
The Board denied Teradata’s rehearing requests, leaving in place the denials of CBM review based on the petition’s failure to show the challenged claims unpatentable under the adopted construction.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD FOR REHEARING Pursuant to 37 C.F.R. § 42.71(d): 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 believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion exists where a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988).” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“the relational database management system to . . . calculate” as requiring that the recited calculations be performed “in the RDBMS.” Inst. Dec. 8–10. Petitioner did not provide an express construction for this claim term in the Petition. Id. at 7. For purposes of deciding whether to institute trial, and after reviewing the claim language, the written description of the involved patents, and the relevant prosecution history, we adopted Patent Owner’s proposed construction. Id. at 8–10. Petitioner contends the construction adopted by the panel is incorrect because the claims on their face are broad enough to encompass “[a]ny use of the RDBMS,” for example using the RDBMS to” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“the relational database management system to . . . calculate” as requiring that the recited calculations be performed “in the RDBMS.” Inst. Dec. 8–10. Petitioner did not provide an express construction for this claim term in the Petition. Id. at 7. For purposes of deciding whether to institute trial, and after reviewing the claim language, the written description of the involved patents, and the relevant prosecution history, we adopted Patent Owner’s proposed construction. Id. at 8–10. Petitioner contends the construction adopted by the panel is incorrect because the claims on their face are broad enough to encompass “[a]ny use of the RDBMS,” for example using the RDBMS to” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“As explained in the Institution Decision, Petitioner’s arguments with respect to whether the challenged claims recite a technological feature that is novel and unobvious over the prior art relied on a claim construction that we did not adopt. Inst. Dec. 13–14. As such, the Petition did not adequately explain why it was not novel and obvious to use an RDBMS itself to perform the claimed profit calculations. Id. at 14. Although Petitioner disagrees with our conclusion, and now cites to disparate portions of the Petition to support its argument, a mere disagreement is not the proper basis for rehearing, and a rehearing request is not the proper vehicle to make arguments that were not clearly set forth in the Petition.” slip op. at 5
Claim construction§ 103 obviousnessPatents in suitUS 7,882,137 - Teradata Operations, Inc. v. Berkley*ieorRehearing deniedPTAB · Sep 27, 2019 · CBM2019-00015 · APJ Josiah C Cocks · CBM · Rehearing
The Board denied Teradata’s rehearing request, leaving institution denied for claims 1, 3–5, and 10–26 because it had not shown the patent was not a technological invention.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A request for rehearing is not an opportunity for a petitioner to respond to an institution decision to make a better argument for any given matter than that which was initially presented in a petition. Notably, in now challenging the claim construction of the above-noted term, Petitioner does not cite or identify any portion of the Petition that was misapprehended or overlooked. Instead, Petitioner seeks to make a better case through citation to portions of the record that were not previously relied upon. For instance, Petition now points to content of the prosecution history (Ex. 1002) pertaining to claim amendments made during prosecution that Petitioner would have us infer as demonstrating that the applicant “knew” how to limit the claims to calculations “in the RDBMS” but chose not to. Req. Reh’g 2– 3. That was not an argument on which Petitioner previously relied, and thus was not an argument that we could have misapprehended or overlooked. Moreover, in now making the argument, Petitioner seemingly discounts the plain language of the claims in specifically reciting “using” the RDBMS “to independently calculate” marginal values of profit. Ex. 1001, 30:61–63. We have considered Petitioner’s arguments pertaining to claim construction, but are not persuaded that they demonstrate that we misapprehended or overlooked content of the Petition that warrants a change in the claim constructions that were identified in the Institution Decision.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petition, and which we found unpersuasive. As we explained in the Institution Decision, we were not satisfied that “bulk citations” to large portions of the record provided “meaningful explanation that the prior art shows an RDBMS, itself, that is performing the necessary profit calculations.” Inst. Dec. 13–14. We were not persuaded that Petitioner’s assessment of the prior art showed adequately that the “requirements of limitation 1[d] pertaining to independent profitability calculation by an RDBMS are non-novel or obvious.” Id. at 15. Although Petitioner may disagree with our determination in that respect, mere disagreement is not the proper basis for rehearing.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“For purposes of deciding whether to institute trial, we adopted the Patent Owner’s construction of claim element 1[d(i)] (id. at 8), concluding that the construction was supported by “(1) the ’521 patent itself [see, e.g., id. at 15 (citing Ex. 1001, 10:42–47)]; (2) the testimony of Patent Owner’s declarant [see, e.g., id. at 14–16 (referencing Ex. 2001, ¶¶ 58–67, 75, 81– 85)]; and (3) the prosecution history of the ’521 patent [see, e.g., id. at 16” slip op. at 3
- BurdenDecided for patent owner
“Page 12 of the Petition, however, makes no connection between Blain’s teachings and the pertinent claim limitation 1[d]. There is no reasonable inference from the above-noted content of page 12 of the Petition that paragraph 85 of Dr. Weber’s testimony should be evaluated in the context of viewing an RDBMS as independently performing profitability calculations. We simply were not persuaded that the Petition and the applicable portions of Dr. Weber’s testimony cited therein, including paragraph 85, adequately addressed the features required by claims limitation 1[d].” slip op. at 7
Claim constructionPatents in suitUS 7,596,521 - Teradata Operations, Inc. v. Berkley*ieorRehearing deniedPTAB · Sep 27, 2019 · CBM2019-00016 · APJ Josiah C Cocks · CBM · Rehearing
The Board denied Teradata’s rehearing request and left in place denial of CBM review of claims 2, 6-9, and 27-32 because it had not shown the patent was not for a technological invention.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“(d) Rehearing. . . . The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petition, and which we found unpersuasive. As we explained in the Institution Decision, we were not satisfied that “bulk citations” to large portions of the record provided “meaningful explanation that the prior art shows an RDBMS, itself, that is performing the necessary profit calculations.” Inst. Dec. 14. We were not persuaded that Petitioner’s assessment of the prior art showed adequately that the “requirements of limitation 1[d] pertaining to independent profitability calculation by an RDBMS are non-novel or obvious.” Id. at 16. Although Petitioner may disagree with our determination in that respect, mere disagreement is not the proper basis for rehearing. We also concluded that record evidence conveyed that the claims solved a technical problem with a technical solution in providing “a distinctive software-based process that harnesses benefits to computer performance.” Id. at 17. In reaching that conclusion, we rejected Petitioner’s premise that the claims were simply directed to solving a business problem using a business solution. Petitioner does not address adequately the issue of improved computer performance, or identify any matter that we misapprehended or overlooked in determining that record evidence reasonably conveyed that such improved computer performance emerges from the method of claim 1.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“For purposes of deciding whether to institute trial, we adopted the Patent Owner’s construction of claim element 1[d(i)] (id. at 9), concluding that the construction was supported by “(1) the ’521 patent itself [see, e.g., id. at 16–17 (citing Ex. 1001, 10:42–47)]; (2) the testimony of Patent Owner’s declarant [see, e.g., id. at 15–17 (referencing Ex. 2001, ¶¶ 58–67, 75, 81–85)]; and (3) the prosecution history of the ’521 patent [see, e.g., id.” slip op. at 3
- BurdenDecided for patent owner
“Page 13 of the Petition, however, makes no connection between Blain’s teachings and the pertinent claim limitation 1[d]. There is no reasonable inference from the above-noted content of page 13 of the Petition that paragraph 85 of Dr. Weber’s testimony should be evaluated in the context of viewing an RDBMS as independently performing profitability calculations. We simply were not persuaded that the Petition and the applicable portions of Dr. Weber’s testimony cited therein, including paragraph 85, adequately addressed the features required by claims limitation 1[d].” slip op. at 7
Claim constructionPatents in suitUS 7,596,521 - Olympia Tools International, Inc. v. JPW Industries, Inc.Rehearing deniedPTAB · Aug 3, 2018 · IPR2018-00388 · APJ Ulrike W Jenks · IPR · Rehearing
The Board denied rehearing and maintained denial of institution because the petition did not adequately explain why a skilled artisan would reverse Cornes’s spindle.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD FOR RECONSIDERATION 37 C.F.R. § 42.71(d) provides that [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 believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. (Emphasis added.) When reconsidering a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). A request for rehearing, however, is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“has not “sufficiently provided an articulated reason with a rational underpinning as to why reversing the spindle and mating threaded tubular member and nut in Cornes would have been obvious to a person of ordinary skill in the art.” Dec. 19 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)), see also id. at 22 (“Neither Petitioner nor its declarant, Mr. O’Banion, explains adequately why a skilled artisan would have had reason to redesign Cornes’s vise under the general theory of simple “substitution” of one known element for another. . . . [Merely reciting theory is not enough] there [still] needs to be reason why an ordinary artisan would reverse the spindle in the first place.”).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“has not “sufficiently provided an articulated reason with a rational underpinning as to why reversing the spindle and mating threaded tubular member and nut in Cornes would have been obvious to a person of ordinary skill in the art.” Dec. 19 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)), see also id. at 22 (“Neither Petitioner nor its declarant, Mr. O’Banion, explains adequately why a skilled artisan would have had reason to redesign Cornes’s vise under the general theory of simple “substitution” of one known element for another. . . . [Merely reciting theory is not enough] there [still] needs to be reason why an ordinary artisan would reverse the spindle in the first place.”).” slip op. at 3
- Expert testimonyPetitioner expert discountedDecided for patent owner
“to arrive at the claimed invention an artisan would need to do more than substitute one element for another, it would also necessitate a redesign of Cornes’s vise that requires reversing the position of the spindle. See Dec. 22. We are mindful that in order to arrive at a conclusion of obviousness it is often necessary to look at interrelated teachings including “background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418. Our Decision considered Mr. O’Banion’s testimony but we found that it was not sufficiently persuasive to explain why an artisan would have reversed the position of Cornes’s spindle in the first place. See Dec. 18 (citing InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352, 1354 (Fed. Cir. 2014)), see id. 22.” slip op. at 4
§ 103 obviousnesscites KSRPatents in suitUS 9,079,464 - Flexitallic Investments, Inc. v. Eriks N.V.Rehearing deniedPTAB · Mar 28, 2018 · IPR2017-01968 · APJ Scott C Moore · IPR · Rehearing
The Board denied Flexitallic’s rehearing request and left in place the denial of institution because the petition did not adequately show that the Bond References taught or suggested all limitations of claims 1–5.
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 believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. We review our Decision under an abuse of discretion standard. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“B. The Decision Denying Institution In the Decision, we found that Petitioner had failed to make an adequate showing that the Bond References disclose, teach, or suggest all limitations of challenged claims 1–5. Regarding claims 1, 4, and 5, we determined: Petitioner has not made an adequate showing that the Bond References disclose (expressly or inherently), teach, or suggest, “an intermediate stress gas/liquid sealing zone between the core inner surface and the flange inner surface” of the type required by claims 1, 4, and 5. Dec. 17. With respect to claims 2 and 3, we determined: Petitioner has not made an adequate showing that the Bond References disclose (expressly or inherently), teach, or suggest the step of “selecting a deformable pillow material and a deformable pillow thickness such [that] upon compression of the gasket . . . the gasket intermediate portion exhibits a stress level sufficient to preclude gas and liquid flowing through the pipe from passing radially outward beyond the gasket intermediate portion,” as required by claims 2 and 3.” slip op. at 3
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“adequate showing that the Bond References disclose, teach, or suggest all limitations of challenged claims 1–5. Regarding claims 1, 4, and 5, we determined: Petitioner has not made an adequate showing that the Bond References disclose (expressly or inherently), teach, or suggest, “an intermediate stress gas/liquid sealing zone between the core inner surface and the flange inner surface” of the type required by claims 1, 4, and 5. Dec. 17. With respect to claims 2 and 3, we determined: Petitioner has not made an adequate showing that the Bond References disclose (expressly or inherently), teach, or suggest the step of “selecting a deformable pillow material and a deformable pillow thickness such [that] upon compression of the gasket . . . the gasket intermediate portion exhibits a stress level sufficient to preclude gas and liquid flowing through the pipe from passing radially outward beyond the gasket intermediate portion,” as required by claims 2 and 3.” slip op. at 3
- Expert testimonyPetitioner expert discountedDecided for patent owner
“First and foremost, Petitioner does not provide any citation to the Petition or Dr. Green’s Declaration to demonstrate that it previously argued that limitation 1.3 requires a “flange” that “extends radially inward along the entire circumferential inner surface of the core.” See Reh. Req. 5. We could not have misapprehended or overlooked an argument that Petitioner failed to make. 37 C.F.R. 42.71(d). We also note that claim limitation 1.3 does not recite a flange that extends “along the entire circumferential surface of the core” (see Ex. 1001, 8:60–62), and that the claim construction portion of the Petition did not argue that limitation 1.3 should be construed to require a flange that extends radially inward “along the entire circumferential surface of the core” (see Pet. 14–20). In addition, Petitioner fails to identify any testimony from Dr. Green that the Bond References teach or suggest a flange that extends radially inward “along the entire circumferential inner surface of the core” of the type Petitioner now seemingly concedes is necessary for those references to teach or suggest an “intermediate zone.” See Reh. Req. 5. Though Dr. Green testifies regarding a single-projection embodiment in which the projection “extend[s] radially inward from the core inner surface,” Dr. Green never testifies that the single projection of this embodiment extends radially inward “along the entire circumferential inner surface of the core.” See Ex. 1012 ¶¶ 97–99. Our Decision did not overlook or misapprehend Dr. Green’s testimony. To the contrary, we considered and analyzed Dr. Green’s testimony, and determined that Dr. Green’s opinions were not adequately supported by the evidence of record. See Dec. 16–17 (analyzing the portions of the Bond References cited by Dr. Green, and rejecting Dr. Green’s assertion that these portions of the Bond References disclose, teach or suggest a flange that extends radially inward “along the entire circumferential inner surface of the core.”) Petitioner’s argument that we improperly disregarded Dr. Green’s testimony thus has no merit.” slip op. at 5
§ 103 obviousnessPatents in suitUS 9,388,924 - PTAB · Sep 12, 2017 · IPR2016-00502 · APJ James J Mayberry · IPR · Rehearing
The Board denied Valeo’s rehearing request, leaving its final written decision that claims 1–13 were unpatentable on grounds other than the Nester obviousness grounds unchanged.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the party challenging the decision[,]” which party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“such as the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for improvement, an express motivation to combine references may not be necessary under the Court’s flexible analysis. See KSR Int’l Co., 550 U.S. at 417. Valeo fails, however, to characterize its obviousness position as falling under these cases, nor do we read Valeo’s position as advocating a simple substitution or applying a known technique to a reference ready for improvement. See Pet. 41–42; Ex. 1002 ¶¶ 121–123. Instead, Valeo advocates substituting in Nester’s over-tuned pendulum absorber for Sudau’s even-tuned compensation flywheel, without explaining how such a substitution would be “simple.” See Ex. 1002 ¶ 120. Although Nester’s pendulum absorber may represent a “known technique,” Valeo fails to adequately explain why Sudau’s torque converter is so apparently “ready for improvement” that a person having ordinary skill in the art would need no further motivation to make the substitution.” slip op. at 13
- Expert testimonyPetitioner expert discountedDecided for patent owner
“unavailing. As an initial point, Valeo fails to identify where it relied on Dr. Shaw’s deposition testimony specifically quoted at page 6 of the Request in a motion, opposition, or reply, and we cannot discern independently where Valeo relied on this testimony. See 37 C.F.R. § 42.71(d). We cannot overlook facts that were not presented to us. Further, we find that Dr. Shaw’s testimony that Nester’s over-tuning addresses multiple effects is from the perspective of a co-author—Dr. Shaw is not testifying about what the actual reference discloses, but instead what the over-tuning may address based on his knowledge of the underlying testing. See Ex. 2013, 292:11– 297:24 (containing deposition testimony about the underlying testing and results, not specific disclosures in Nester). Our analysis in the Final Written Decision weighed already that evidence of record and found that Nestor’s over-tuning addressed non-linear effects only, and we are unpersuaded that the above-identified testimony affects dispositively the outcome of that weighing.” slip op. at 8
§ 103 obviousnessPatents in suitUS 8,161,740
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.