- PTAB · Apr 25, 2025 · IPR2024-00912 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied Micron’s rehearing requests, leaving institution denied because the petitions did not show that the prior-art combinations disclose or render obvious fast-charge removal.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When rehearing a decision on institution, we do not review the merits 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 may be determined “if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000)). 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.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“It was Petitioner’s burden to establish that Seo and Nam, alone or in combination with Choi, disclose Limitation [1.D]. We are not persuaded that we misapprehended the nature of Petitioner’s argument when we determined that Petitioner did not meet that burden.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“determined that the combinations of Seo or Nam with Choi were not persuasive. Dec. 14–15, 19–20. For example, we determined that “Dr. Liu’s statement that ‘[a] POSITA would have recognized that the lateral-electrical-field-inducing voltage differential, as Seo discloses, is what Choi describes as driving the lateral fast-charge loss,’ is not supported by objective evidence or sufficient explanation as to why a POSITA would have come to that understanding” and was therefore insufficient to support Petitioner’s asserted motivation to combine Seo with Choi. Id. at 14–15. In particular, we were not persuaded that “Seo creates a large lateral electric field like the one described in Choi,” and, in any case, we disagreed that “Choi teaches that a large lateral electric field removes fast charges.” Id. at 15. Accordingly, regardless of the duration of the voltage application described in Seo, Petitioner failed to show that the combination of Seo and Choi would result in removal of fast charges. We further determined that Petitioner’s combination of Nam with Choi was problematic for similar reasons, given Petitioner’s reliance on similar arguments. See id. at 20.” slip op. at 10
- Expert testimonyPetitioner expert discountedOther
“the knowledge of one of ordinary skill in the art relating to charge-trap memory devices demonstrates fast charge removal. See Pet. 36, 81–82. And although Petitioner cites its declarant, Dr. Liu, for the proposition that “Seo discloses, and would have been understood to disclose, performing its read operation on charge-trap memories, which removes fast charges,” Dr. Liu does not cite objective evidence to support this assertion, aside from the ’342 patent itself. Id. at 36 (citing Ex. 1003 ¶ 136). Moreover, Dr. Liu’s testimony simply circles back to logic similar to that relied on with respect to the inherency theory, namely that, given certain similarities between Seo and the ’342 patent, Seo removes fast charges because the ’342 patent teaches removing fast charges, even though Seo does not explicitly teach doing so. See Ex. 1003 ¶ 136 (“[A] POSITA would have immediately understood from reading Seo that Seo is disclosing its read operation as applicable to Flash memories, including Flash charge-trap memories. And as the ’342 states, Seo’s operation would remove fast charges in a charge-trap memory.” (citing Ex. 1001, Abstract)). As already discussed, we disagree with this logic based on the lack of sufficient evidence to support its conclusion. See Dec. 13 (“Petitioner and Dr. Liu do not provide any objective evidence or explanation as to how or why a POSITA would have understood that Seo’s voltage amounts applied during Seo’s time periods operate the same way [as in the ’342 patent] on Seo’s memory device to generate fields with sufficient magnitude and duration to remove fast charges.”). Petitioner’s assertions regarding Nam suffer from the same shortcomings. See Dec. 19–20; Pet 82 (“[A] POSITA would have found that Nam’s teachings are applicable to charge-trap devices”); Ex. 1003 ¶¶ 293–298.” slip op. at 8
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,600,342 - Mobileye Global, Inc. v. Facet Technology Corp.Rehearing deniedPTAB · Apr 22, 2025 · IPR2024-01110 · APJ Sean P O’Hanlon · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution in place on claim 15 based on the Gallagher–Lumia obviousness challenge.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id. 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 may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“or overlooked any matter. As we explained in the Institution Decision, the ’255 patent discloses that the recited characterization profile allows the system to convert the intensity values measured by the intensity sensor into luminance values based on the sensor’s ability to sense the particular color of the measured light. Inst. Dec. 21; Ex. 1001, 11:41–48. The ’255 patent states that “the light intensity sensor’s 280 ability to sense . . . a particular color” is the “the light intensity sensor’s 280 profile for [that] particular color.” Ex. 1001, 11:45–47. The ’255 patent further states that this “[l]ight intensity sensor 280 characterization is essential for high precision computations.” Id. at 11:48–49. Thus, as we stated in the Institution Decision, the recited “characterization profile” refers to a conversion factor used to convert the measured light intensity into luminance. As this conversion factor is based on the light intensity sensor’s ability to sense the particular color of light reflected by the road sign, we agree that it is empirical information. Patent Owner fails to explain adequately how the fact that the ’255 patent discloses storing multiple conversion factors for multiple colors of measured light in a digital look-up-table (see id. at 11:56–59 (“The light intensity sensor characterization 275 is empirical information about the light intensity sensor 280 that is used to create the [look-up table] 475.”)) has any bearing on our interpretation.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Owner to the Institution Decision where we fully addressed Patent Owner’s contentions. See Inst. Dec. 29–31. As we explained, “Petitioner proposes to incorporate Lumia’s teaching of measuring luminance values into Gallagher’s system, and argues that an ordinarily skilled artisan would have had a reasonable expectation of success given Gallagher’s disclosure of determining calibration factors for each individual sensor in the array of sensors.” Id. at 30. In other words, Petitioner proposes to use Gallagher’s array of sensors to measure luminance in the manner taught by Lumia. We also explained in the Institution Decision how Lumia discloses using a video camera to measure the luminance of a road sign. Id. at 27–29. We further explained that, in the Petition, “Petitioner sets forth reasoning with rational underpinning to support its contentions that it would have been obvious to combine the teachings of Gallagher and Lumia” by, for example, “argu[ing] that implementing Lumia’s teaching of determining the luminance of traffic signs in Gallagher’s system would allow Gallagher’s system to calculate the retroreflectivity of road markers as a means of identifying any markers that do not meet minimum acceptable reflectance levels.” Id. at 30–30 (citing Pet. 46). We further explained that Petitioner’s arguments were supported by the testimony of it witness, Dr. Thorpe. Id. at 31 (citing Ex. 1003 ¶ 116).” slip op. at 7
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,335,255 - Energysource Minerals, LLC v. Terralithium LLCRehearing deniedPTAB · Aug 26, 2021 · IPR2019-01603 · APJ Hubert C Lorin · IPR · Rehearing
The Board denied EnergySource’s rehearing request, finding no overlooked or misapprehended arguments or evidence that warranted changing the final written decision on claims 1–18.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A request for rehearing must identify specifically all matters that the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 3
- BurdenNot shown unpatentable
“In that regard, Petitioner contends that Christopher’s “aging process resulted in a reduction in ‘at least one elemental component’ (i.e., silica).” Pet. Reply 5–6 (emphasis added). However, this is not buttressed with any evidence. Petitioner has not presented any evidence showing Christopher’s “aging” process reduces “the concentration of at least one … elemental component” to support its contention that Christopher’s brine of Table 1 is a “treated” brine as claimed. Accordingly, on this record, Petitioner has not shown that the “treated” brine of the claims reads on Christopher’s “aged” brine by a preponderance of the evidence.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable
“The Petition discusses Grounds I and II on pages 27–30 of the Petition. Ground I challenges the patentability of claims 1–20 as anticipated by Christopher and Ground II challenges the patentability of claims 1–20 as anticipated and/or obvious over Christopher. Reading pages 27–30 it is plainly evident that it is focused on making the case that Christopher discloses all that is claimed. It is devoid of any reasoning with respect to the obviousness of the claims over Christopher. The Graham factors are not addressed. See Graham v. John Deere Co., 383 U.S. 1 (1966). The differences between the claimed invention and Christopher are not identified and no rationale as to why one of ordinary skill would have been led to modify Christopher to reach the claimed subject matter is provided. Rather, the entire discussion goes to explaining why, in fact, Christopher discloses all that is claimed. The Board was consistent with that position. Petitioner cites page 12–14 of the Reply as evidence that an obviousness challenge was presented. We disagree. The Reply does not add anything significant to the obviousness challenge presented in the Petition. The Reply is likewise devoid of any reasoning with respect to the obviousness of the claims over Christopher. It repeats that “Christopher teaches using air oxidation and pH modification to selectively precipitate silica, iron, and other heavy metals from a Salton Sea geothermal brine” (Reply 13, emphasis added), where “a POSITA could readily ‘tune’ these parameters to produce the desired results if such were not obtained immediately.” Id. The Board addressed that argument. See Dec. 17.” slip op. at 14
- Expert testimonyOther
“Petitioner cites footnote 3 [sic. 1] in the Petition but it merely states “mg/kg=(g/L*1000)/1.18kg/L due to the density of Salton Sea geothermal brines.” There is no evidence cited to support it. Petitioner cites “Reply, 3; Ex. 2025, 337:5-9” and “337:5-13” (Req. 6) but the Reply does not cite to those lines in Dr. Gallup’s Declaration. See Pet. Reply 3 (“Ex. 2025, 336:3-5-337:2”). We were unable to locate these lines of testimony in the Reply. The Board could not have misapprehended or overlooked evidence demonstrating Petitioner’s 1.18 kg/L density that was not before it.” slip op. at 11
§ 103 obviousnesscites GrahamPatents in suitUS 9,644,126 - PTAB · Mar 22, 2021 · IPR2020-00336 · APJ Stacey G White · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution in place for claims 10, 12, 13, 16, and 17 because no construction error or abuse of discretion was shown.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“IV. CONCLUSION On this record, Patent Owner neither persuades us that we overlooked or misapprehended any matter, nor sufficiently shows that instituting an inter partes review of claims 10, 12, 13, 16, and 17 of the ’725 patent was an abuse of discretion. V. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Request for Rehearing is denied.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We maintain, at this stage of the proceeding, that the construction of conversational flow should not include “(for instance, the running of an application on a server as requested by a client), where some conversational flows involve more than one connection, and some even involve more than one exchange of packets between a client and a server.” As we explained in the Institution Decision, phrases beginning with “for instance,” “where some,” and “some” are “merely exemplary and non-limiting.” Inst. Dec. 31. Patent Owner does not persuade us, on this record, that omission of these phrases from our definition of “conversational flow” is, as a matter of claim construction, erroneous. See Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 811 (Fed. Cir. 2002) (holding that exemplary language “introduces an example of a broader genus rather than limiting the genus to the exemplary species”).” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“proceeding, that our construction of “conversational flow” is the result of a misunderstanding or misapprehension of the claimed invention or the prior art. IV. CONCLUSION On this record, Patent Owner neither persuades us that we overlooked or misapprehended any matter, nor sufficiently shows that instituting an inter partes review of claims 10, 12, 13, 16, and 17 of the ’725 patent was an abuse of discretion.” slip op. at 6
Claim constructionPatents in suitUS 6,665,725 - Mercedes-Benz USA, LLC v. Carucel Investments, L.P.Rehearing deniedPTAB · Mar 3, 2021 · IPR2019-01404 · APJ Daniel J Galligan · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1, 4–11, and 14–23 unpatentable based on its construction of “mobile device” and findings on combining CDMA and TDMA.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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. A rehearing request is not an opportunity for the requesting party to reargue its case or merely to express disagreement with the Final Written Decision. Nor is it an opportunity for the moving party to present new arguments that were not in its original submissions.” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We disagree that we misapprehended or overlooked any matters in addressing Patent Owner’s proposed construction for “mobile device.” Rather, we provided a comprehensive analysis of the term “mobile device.” anything that was overlooked or misapprehended in this analysis, as required by 37 C.F.R. § 42.71(d). Instead, Patent Owner merely expresses its disagreement with our conclusions and proceeds to reargue points and evidence already considered and rejected in the Final Written Decision. This approach is not proper in a rehearing request. Furthermore, Patent Owner’s own arguments show the error in its proposed construction. For example, Patent Owner argues that the recited “mobile device” “must register with and be able to directly communicate with the cellular network.” PO Resp. 13; Req. Reh’g 1 n.1. Yet, Patent Owner acknowledges that “the claims of the ’023 Patent require the apparatus/movable base station to communicate directly with the cellular network (and not the ‘mobile device’).” Req. Reh’g 3 (emphasis added). As we pointed out in the Final Decision, the only claimed communication involving the mobile device is between the claimed “apparatus” (the mobile base station) and the mobile device, and Patent Owner acknowledges that this communication need not be cellular. Final Dec. 14 (citing PO Sur-reply 9). Thus, Patent Owner’s arguments undermine its proposed construction.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundOther
“[t]he Board erred in finding that that ‘CDMA and TDMA are not incompatible’ by improperly disregarding substantial evidence set forth by Patent Owner and its expert—that undermines any expectation of success and would have discouraged a [person of ordinary skill in the art] from attempting Petitioner’s combinations.” Req. Reh’g 14 (citing Final Dec. 79). Patent Owner does not attempt to identify any specific errors in citing pages from Patent Owner’s written submissions and testimony from its declarant. Req. Reh’g 14 n.31. We disagree that we misapprehended or overlooked any matters in this regard. Rather, we considered Patent Owner’s submissions and disagreed with them, finding instead that the record demonstrated that CDMA and TDMA can be combined, and we relied on, among other evidence, a prior art reference that expressly discloses a combination of CDMA and TDMA. Final Dec. 56–57 (citing Ex. 1033), 79. We further found that a person of ordinary skill in the art would have had reason to make the proposed combinations and would have had a reasonable expectation of success in doing so. Final Dec. 57–58, 79–81. slip op. at 6
Claim construction§ 103 obviousnessPatents in suitUS 7,979,023 - PTAB · Feb 9, 2021 · IPR2020-00892 · APJ Hyun J Jung · IPR · Rehearing
The Board denied Wildcat Licensing WI LLC’s rehearing request, finding no abuse of discretion or overlooked matter in granting institution of the challenges.
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). Also, 37 C.F.R. § 42.71(d) sets forth, in relevant part 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” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“As we determined in the Decision, Petitioner showed a reasonable likelihood of prevailing with respect to at least one of the challenged claims in its challenges based on IBM. Petitioner argued that “IBM’s ‘[H]all effect sensor’ indicates tool ‘TORQUE’ to IBM’s controller 6 so that IBM’s controller requires IBM’s tool to achieve the ‘set torque’ at each fastening location in the ‘correct process sequence.’” Pet. 35 (citing Ex. 1003, 81– 82). Petitioner also argued that IBM teaches that an operator “must also wait for the set torque to be achieved on each screw before moving onto the next screw.” Id. at 38 (citing Ex. 1003, 82) (emphases added). Petitioner’s declarant opined that “IBM’s microcontroller 6 measures the applied torque with ‘a [H]all effect sensor.’” Ex. 1002 ¶ 111 (citing Ex. 1003, 81–82). Petitioner’s arguments and declarant testimony found support in the preliminary record. As quoted in the Decision, IBM itself states that “controller circuit 6 . . . sense[s] when correct torque is achieved by linking As discussed in the Decision, IBM also states that that “[t]he problem is to ensure that four screws 5 fixing two product parts 3 & 4 together are tightened to a specific torque in a specific sequence.” Dec. 19–20 (quoting from Ex. 1003, 82) (emphasis added); see also Ex. 1002 ¶¶ 52–53 (asserting what IBM teaches). Also, the only figure of IBM shows “TORQUE” being sent to controller circuit 6. Ex. 1003, 81; see also Ex. 1002 ¶ 108 (“IBM diagrammatically illustrates the tool’s sensed ‘TORQUE’ as a signal input being received by IBM’s microcontroller 6 from the torque-sensing ‘[H]all effect sensor in the driver 11’ ([Ex. 1003] p. 82).”). Thus, Petitioner’s arguments, Petitioner’s declarant testimony, and IBM itself sufficiently showed at the preliminary stage that IBM senses or measures correct torque by linking into a Hall effect sensor in driver 11. Pet. 35–36; Ex. 1002 ¶¶ 52–53, 108; Ex. 1003, 82. Further, Patent Owner’s arguments for IBM raised a factual question regarding what IBM teaches or suggests to one of ordinary skill in the art, and such issues are best decided on a full record. See Prelim. Resp. 26–49. We agree that Patent Owner does not have a burden to show IBM does not measure torque; however, for purposes of institution, Petitioner sufficiently showed that IBM senses or measures torque.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019- 01469, Paper 6 at 7–11 (PTAB. Feb. 13, 2020) (Decision Denying Institution) (precedential). Req. Reh’g 13–15 (citing Prelim. Resp. 54–64; Dec. 27). Specifically, Petitioner contends that the Decision “conflates or overlooks the two separate requirements in the first part of Advanced Bionics’ framework (art or arguments)” because we concluded “only that ‘Petitioner’s arguments were not previously presented to the Office.’” Id. at 14. However, even assuming arguendo, that substantially the same art was previously presented to the Office, the record and Petitioner sufficiently show that the Examiner materially erred for the reasons discussed in the Board decision reversing the rejection based on Gass alone. The record also shows that the Examiner did not address that error subsequently before allowing the claims. Specifically, the Examiner failed to identify the Office. Additionally, as discussed in the Decision, Petitioner’s demonstration of a reasonable likelihood of prevailing on its challenges based on IBM, as well as the Federal Circuit’s determination in SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018) were considered in our analysis of determining whether to institute review. Dec. 28–29. We determined that our discretion to deny institution under 35 U.S.C. § 325(d) was not sufficiently implicated so that § 325(d)’s statutory purpose would be undermined by instituting on all of Petitioner’s challenges. Id. at 28–29. Further, even if exercise of our discretion under § 325(d) to deny the challenges based on Gass was warranted, the record provided no reason for extending our discretion under § 325(d) to the IBM-based challenges to deny the entire Petition under the circumstances presented in this proceeding. Id. at 29.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“The Decision also considered the prior Board decision regarding a rejection based on Gass. Dec. 30 (discussing Ex. 1018). As discussed above and in the Decision, the preliminary record did not indicate that Gass teaches away from the challenged claims. Thus, we do not agree that the Decision overlooked or misapprehended the prior Board decision regarding the rejection based on Gass and overlooked or misapprehended that Petitioner did not establish a reasonable likelihood of prevailing on its challenges based on Gass.” slip op. at 9
§ 103 obviousnessDiscretionary denial - PTAB · Dec 21, 2020 · IPR2020-00337 · APJ Charles J Boudreau · IPR · Rehearing
Denied Patent Owner’s request to reverse institution of review of claims 1–3, 7, 16, and 18; Patent Owner did not show an erroneous construction or abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We maintain, at this stage of the proceeding, that the construction of conversational flow should not include “(for instance, the running of an application on a server as requested by a client), where some conversational flows involve more than one connection, and some even involve more than one exchange of packets between a client and a server.” As we explained in the Institution Decision, phrases beginning with “for instance,” “where some,” and “some” are “merely exemplary and non-limiting.” Inst. Dec. 29. Patent Owner does not persuade us, on this record, that omission of these phrases from our definition of “conversational flow” is, as a matter of claim construction, erroneous. See Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 811 (Fed. Cir. 2002) (holding that exemplary language “introduces an example of a broader genus rather than limiting the genus to the exemplary species”).” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“We nevertheless preliminarily construed “conversational flow” as a “sequence of packets that are exchanged in any direction as a result of an activity.” Inst. Dec. 29. We explained that we saw no “reason to include the additional phrases of the prior Board and district court constructions”— namely, the phrases “for instance, the running of an application on a server as requested by a client,” “where some conversational flows involve more than one connection,” and “some even involve more than one exchange of packets between a client and a server.” Id. (emphases added). We maintain, at this stage of the proceeding, that the construction of conversational flow should not include “(for instance, the running of an application on a server as requested by a client), where some conversational flows involve more than one connection, and some even involve more than one exchange of packets between a client and a server.” As we explained in the Institution Decision, phrases beginning with “for instance,” “where some,” and “some” are “merely exemplary and non-limiting.” Inst. Dec. 29. Patent Owner does not persuade us, on this record, that omission of these phrases from our definition of “conversational flow” is, as a matter of claim construction, erroneous. See Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 811 (Fed. Cir. 2002) (holding that exemplary language “introduces an example of a broader genus rather than limiting the genus to the exemplary species”).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION On this record, Patent Owner neither persuades us that we overlooked or misapprehended any matter, nor sufficiently shows that instituting an inter partes review of claims 1–3, 7, 16, and 18 of the ’646 patent was an abuse of discretion. V. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Request for Rehearing is denied.” slip op. at 6
Claim constructionPatents in suitUS 6,771,646 - Rimfrost As v. Aker Biomarine AsRehearing deniedPTAB · Oct 1, 2020 · IPR2018-00295 · APJ John E Schneider · IPR · Rehearing
The Board denied Patent Owner’s rehearing request and left in place its finding that proposed substitute claims 49–56 were unpatentable over the cited combinations including Randolph.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. LEGAL STANDARD 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 burden of showing a decision should be modified on a request for rehearing lies with the party challenging the decision. Id.” slip op. at 4
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“We next turn to the guidance the POP provided in Hunting Titan. First, the POP held that “the Board may, in certain rare circumstances, raise a ground of unpatentability that a petitioner did not advance, or insufficiently developed, against substitute claims proposed in a motion to amend.” Id. at 4. The rare circumstances exemplified in the decision include cases where the petitioner has ceased to participate in the proceeding; where the petitioner has not opposed the motion to amend; or “where certain evidence of unpatentability has not been raised by the petitioner, but is readily identifiable and persuasive such that the Board should take it up in the interest of supporting the integrity of the patent system, notwithstanding the adversarial nature of the proceedings.” Id. at 12–13. The POP also held that where the Board intends to raise a new ground of unpatentability in connection with a motion to amend, the patent owner must be given notice and an opportunity to address the proposed new grounds. Id. 15.” slip op. at 6
- Strike new argumentNew argument consideredDecided for petitioner
“We next turn to the guidance the POP provided in Hunting Titan. First, the POP held that “the Board may, in certain rare circumstances, raise a ground of unpatentability that a petitioner did not advance, or insufficiently developed, against substitute claims proposed in a motion to amend.” Id. at 4. The rare circumstances exemplified in the decision include cases where the petitioner has ceased to participate in the proceeding; where the petitioner has not opposed the motion to amend; or “where certain evidence of unpatentability has not been raised by the petitioner, but is readily identifiable and persuasive such that the Board should take it up in the interest of supporting the integrity of the patent system, notwithstanding the adversarial nature of the proceedings.” Id. at 12–13. The POP also held that where the Board intends to raise a new ground of unpatentability in connection with a motion to amend, the patent owner must be given notice and an opportunity to address the proposed new grounds. Id. 15.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundTeaching away not foundDecided for petitioner
“We are not persuaded that our Decision was in error. As Petitioner points out, Dr. Tallon testified about the motivation to combine the various references. Supp. Resp. 7–8. Specifically, Dr. Tallon testified that astaxanthin was a known “potent antioxidant,” and that a person of ordinary skill in the art would have been motivated to combine krill oil of the cited references because of the health benefits associated with, inter alia, see also MTA Opp. 24–25 (Petitioner’s argument as to motivation to combine). With respect to the amount of astaxanthin ester, we are not convinced that Randolph teaches away from the claimed range. While Randolph does teach that the amount of astaxanthin may be 1% or greater, in the same paragraph Randolph states that the amount of astaxanthin is typically from about 0.5 mg to 50 mg. Ex. 1011 ¶ 44. Thus, while Randolph may teach high amounts of astaxanthin, it also teaches lower amounts that yield astaxanthin ester amounts within the range recited in the proposed substitute claims. Similarly, other teachings in the art do not dissuade one skilled in the art from using lower amounts of astaxanthin ester. A reference does not teach away “if it merely expresses a general preference for an alternative invention but [does] not criticize, discredit or otherwise discourage investigation into the claimed invention.” Depuy Spine v. Medtronic Sofmaor, 567 F.3d 1314, 1327 (Fed. Cir. 2009). Patent Owner has not pointed to nor have we discerned any teaching in the art that would dissuade one skilled in the art from using a lower amount of astaxanthin ester. As discussed above, Randolph specifically teaches lower amounts of astaxanthin, which in turn teaches lower amounts of astaxanthin ester. Ex. 1011 ¶ 44; Ex. 1086 ¶¶ 199–202.” slip op. at 18
§ 103 obviousnessPatents in suitUS 9,320,765 - American National Manufacturing Inc v. Sleep Number Corporation F/K/A Select Comfort CorporationRehearing deniedPTAB · Sep 24, 2020 · IPR2019-00500 · APJ Scott A Daniels · IPR · Rehearing
The Board denied ANM’s rehearing request, but amended the Final Written Decision to clarify that the declarants testified the products “read on” the claims.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. THE REQUEST FOR REHEARING In pertinent part, 37 C.F.R. § 42.71(d) states: 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. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. Moreover, “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).” slip op. at 2
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusOther
“copying and nexus is consistent with ANM’s position that neither Dr. Abraham nor Dr. Edwards states an opinion as to infringement. Dr. Edwards’s testimony explains his analysis of several versions of ANM’s source code and comparison with the claims of the ’154 patent, concluding that “at least Version 1.8, Version 1.97, and Version 2.0 of ANM’s source code read on the software-related limitations of claims 1–19 of the ‘154 Patent and claims 1–18 of the ‘747 Patent.” Ex. 2029 ¶ 41. Dr. Abraham performed a physical review of various ANM air controllers, and determined “that ANM’s products sold with Gen 3 Arco and Gen 3 Koge air controllers read on the claimed mechanical related elements of (i.e. structural components of) the ‘154 and ‘747 Patents.” Ex. 2027 ¶ 29. Thus, Dr. Abraham and Dr. Edwards testimony is more accurately that ANM’s software and air controllers “read on” on the claims of the ’154 patent.” slip op. at 3
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“Substitute Claims Proposed in the Amendment 23–41 Substitute Claims: Motion to Amend Granted 23–25, 30–31, 38–41 Substitute Claims: Motion to Amend Denied 27, 28, 32–37 Substitute Claims: Not Reached 26, 29” slip op. at 6
§ 103 obviousnessPatents in suitUS 9,737,154 - Flex Logix Technologies, Inc. v. Venkat KondaRehearing deniedPTAB · Sep 16, 2020 · IPR2020-00260 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied the Patent Owner’s rehearing requests, leaving institution in place for claims 1–7, 11, 15–18, 20–22, 32, and 47.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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). Patent Owner, as the party challenging the Decisions, has the burden of showing that the Decisions should be modified. Id. When rehearing a decision on a petition, the Board reviews the decision for an abuse of discretion. Id. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of the law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- Strike new argumentNew argument disregardedOther
“Consolidated Trial Practice Guide, 90. The Consolidated Trial Practice Guide goes on to state that “[a]bsent a showing of ‘good cause’ prior to filing the request for rehearing or in the request for rehearing itself, new evidence will not be admitted.” Id. (citing Huawei, Paper 19 at 4).” slip op. at 4
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Dr. Baker testifies as to his education and qualifications and provides his curriculum vitae. See Ex. 1002 ¶¶ 3–12; Ex. 1003. At this preliminary stage, we cannot say that Dr. Baker’s scientific, technical, and other specialized knowledge will not be helpful in understanding the evidence. See Fed. R. Evid. 702(a). On this record, we are not persuaded that Dr. Baker’s testimony should be disregarded. Id. at 8. Therefore, even if Dr. Baker were not a person of ordinary skill in the art as Patent Owner contends, it does not follow that he is unqualified to testify in these proceedings. Nothing was misapprehended or overlooked in considering Dr. Baker’s testimony.” slip op. at 6
- Skill levelOther
“(Ex. 2001). In the Preliminary Response, Patent Owner cited the Konda Declaration when discussing the experience and qualifications of the named inventor of the ’523 patent. Prelim. Resp. 8–9. The education level of the inventor, however, is just one of several factors that we may consider in determining the level of ordinary skill in the art. See Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (enumerating six factors that “may be considered in determining the level of ordinary skill in the art” (quoting Evt’l Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696 (Fed. Cir. 1983))). And, as Patent Owner noted in the Preliminary Response, “these factors are merely a guide to determining the level of ordinary skill in the art.” Prelim. Resp. 7–8 (citing Daiichi Sankyo, 501 F.3d at 1256). In any event, in the Decision we also considered Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art, noted the differences between them, and stated that “[o]ur determination regarding Petitioner’s challenge does not turn on the differences between Petitioner’s and Patent Owner’s definitions.” Dec. 7. Therefore, our evaluation of Petitioner’s challenges and Dr. Baker’s testimony in support thereof would have been the same under Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art. See id. (“[W]e note that our conclusions would be same under either definition.”).” slip op. at 7
§ 102 anticipation§ 112 disclosurePatents in suitUS 8,269,523
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.