- C&D Zodiac, Inc. v. B/E Aerospace, Inc.Rehearing deniedPTAB · Mar 9, 2018 · IPR2017-01274 · APJ Scott A Daniels · IPR · Rehearing
The Board denied C&D Zodiac’s rehearing request and left in place its denial of institution because the hypothetical forward wall limitation did not provide ascertainable claim scope.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “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 slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“In the Institution Decision, we explained that we were unable to determine the metes and bounds of the hypothetical enclosure unit limitation required by all the challenged claims. Inst. Dec. 7–12. Specifically, we found that “[a]s a whole, the claim language does not in any comprehensible way tie the relative position of the seat support to the shape of the wall, be it “substantially not flat” or, hypothetically speaking, “substantially flat.”” Inst. Dec. 10. In light of this uncertainty, we found that “Petitioner has not provided sufficient information for a determination of the scope of certain limitations, such as the ‘additional space’ and, therefore, we cannot conduct the necessary factual inquiry for determining whether the prior art meets this limitation.” Id. at 16.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In the Institution Decision, we explained that we were unable to determine the metes and bounds of the hypothetical enclosure unit limitation required by all the challenged claims. Inst. Dec. 7–12. Specifically, we found that “[a]s a whole, the claim language does not in any comprehensible way tie the relative position of the seat support to the shape of the wall, be it “substantially not flat” or, hypothetically speaking, “substantially flat.”” Inst. Dec. 10. In light of this uncertainty, we found that “Petitioner has not provided sufficient information for a determination of the scope of certain limitations, such as the ‘additional space’ and, therefore, we cannot conduct the necessary factual inquiry for determining whether the prior art meets this limitation.” Id. at 16.” slip op. at 3
Claim constructioncites MarkmanPatents in suitUS 9,365,292 - C&D Zodiac, Inc. v. B/E Aerospace, Inc.Rehearing deniedPTAB · Mar 8, 2018 · IPR2017-01273 · APJ Jennifer S Bisk · IPR · Rehearing
The Board denied rehearing of its decision denying institution because Petitioner did not show an abuse of discretion in finding claims 1–6 indefinite in scope.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “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 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In the Institution Decision, we explained that we were unable to determine the metes and bounds of the hypothetical enclosure unit limitation required by all the challenged claims. Inst. Dec. 7–9. Specifically, we found that the claim language “leaves us to compare the claimed enclosure unit with a configuration that we know nothing about, except that it has an alternative hypothetical enclosure unit with ‘a substantially flat front wall located in the substantially the same position in the cabin as the forward wall.’” Inst. Dec. 8. In light of this uncertainty, we found that “Petitioner has not provided sufficient information for a determination of the scope of the hypothetical enclosure unit limitation and, therefore, we cannot conduct the necessary factual inquiry for determining whether the prior art meets this limitation.” Id. at 9.” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“determine the metes and bounds of the hypothetical enclosure unit limitation required by all the challenged claims. Inst. Dec. 7–9. Specifically, we found that the claim language “leaves us to compare the claimed enclosure unit with a configuration that we know nothing about, except that it has an alternative hypothetical enclosure unit with ‘a substantially flat front wall located in the substantially the same position in the cabin as the forward wall.’” Inst. Dec. 8. In light of this uncertainty, we found that “Petitioner has not provided sufficient information for a determination of the scope of the hypothetical enclosure unit limitation and, therefore, we cannot conduct the necessary factual inquiry for determining whether the prior art meets this limitation.” Id. at 9.” slip op. at 3
Claim constructionPatents in suitUS 9,434,476 - PTAB · Mar 13, 2017 · IPR2016-01367 · APJ Michael J Fitzpatrick · IPR · Rehearing
The Board denied rehearing because the Petitioner did not show that the prior art disclosed an interlayer insulating film located between but not within other layers, as claims 18, 19, 30–32, 34–36, 47–49, and 51 …
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 paper of record. 37 C.F.R. § 42.71(d). And, because Petitioner seeks rehearing of our Decision denying the Petition, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“interlayer insulating film.” We denied the Petition because Petitioner had not shown how the asserted prior art disclosed or taught this limitation. Dec. 13.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Patent Owner proposed an express construction for “an interlayer insulating film.” Specifically, Patent Owner argued that it means “an insulating film located between but not within layers.” Prelim. Resp. 9. We largely agreed with Patent Owner, but we added the word “other,” yielding a construction as follows: an insulating film located between but not within other layers. Dec. 9. We determined that our construction was supported fully by intrinsic evidence and additionally by extrinsic evidence. See id. at 7–10. Based on our construction, we determined that Petitioner had not shown how the prior art discloses or teaches “an interlayer insulating film,” as required by all the challenged claims. Id. at 12–13.” slip op. at 3
- BurdenDecided for patent owner
“It was Petitioner’s affirmative duty to explain how the challenged claims should be construed and how, as so construed, they are unpatentable. See 37 C.F.R. § 42.104(b)(3)–(4). Petitioner did not do this. The Petition states: Wollesen discloses an interlayer insulating film (e.g., dielectric layer 9) formed on the semiconductor substrate (1).3 Ex. 1006, FIG. 1. The dielectric layer 9 is an “interlayer” insulating film, as it is an electrically insulating film positioned between the conducting layers 8 and 10 in the semiconductor device. Ex. 1005, ¶ 65.” slip op. at 4
Claim constructioncites Phillips - Under Armour, Inc. v. Adidas AGRehearing deniedPTAB · Feb 29, 2016 · IPR2015-01532 · APJ Justin Busch · IPR · Rehearing
The Board denied Under Armour’s rehearing request, leaving in place the denial of institution on claim 17 for anticipation by Bouve and, alternatively, Kim.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “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 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Petitioner argues it just needs to show “that Kim discloses storing data that falls within the scope of the plain words ‘a length of the route.’” We agree with Petitioner that the plain meaning of “a length of the route” is the appropriate construction because, on this record, we find no reason to give the phrase a special meaning. The Petition, however, did not present persuasive argument that the plain meaning of “a length of the route” encompasses Kim’s total altitude distance.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“users needed to manually estimate route distances between points of interest. Pet. 17–18 (quoting Ex. 1004, 1:28–35). The Petition asserted “Bouve improved upon the prior art system by maintaining route length information in a database.” Id. at 18 (emphasis added). In support of that assertion, the Petition pointed to Bouve’s disclosure that “The processors . . . compute the mileage indication, along the retrieved travel route(s), for each individual item of travel information which is retrieved from the data bases,” and concluded that Bouve computes mileage information along a route and route length between points of interest using route length information stored in a database. Id. (quoting Ex. 1004, 8:18–22 (underlining added). The Petition, however, failed to identify any disclosure in Bouve that “route length information” is maintained in a database. The Petition also argued Bouve discloses recommending a route “based on that stored length of a route” because Bouve allows a user to select the shortest route between two points. Id. at 19.” slip op. at 3
Claim construction§ 102 anticipationPatents in suitUS 8,652,009 - PTAB · Jul 13, 2013 · IPR2013-00054 · APJ Howard B Blankenship · IPR · Rehearing
The Board denied rehearing of its refusal to institute review of claims 1-3, 5, 6, 10, 12-14, 16, 17, 21, 23-26, 28, 29, and 33 because the petition did not establish a reasonable likelihood of …
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Petitioner‟s allegations in the Petition did not comply with 37 C.F.R. § 42.104(b)(4)1, we should treat the Petition as incomplete under § 42.106(a)(1), issue a Notice of Incomplete Petition under § 42.106(b), and provide one month to correct the deficiency. Req. Reh‟g 1-2. We are not persuaded by the argument that Petitioner, having failed to meet its statutory burden of proof initially, should now be given a second opportunity on the merits based on supposed procedural deficiencies in the petition, as filed. Petitioner‟s argument confuses minimum procedural compliance with 35 U.S.C. § 312(a), necessary to obtain a filing date, with the statutory threshold requirements of § 314(a). Under the statute, the” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner has the burden of proving unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e). However, the USPTO determines whether a petition for inter partes review meets the minimum procedural requirements of the statute without regard to the substance or merits of the challenge.” slip op. at 3
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight. 37 C.F.R. § 41.65(a). The U.S. Court of Appeals for the Federal Circuit discounts expert testimony that is not based on the underlying facts or data:” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Sherman Decl. 51. Notably absent from the testimony is an explanation of how specific references might be combined to arrive at the claimed invention; e.g., by combining and applying specific teachings in the references to a claim. See ActiveVideo Networks, 694 F.3d at 1328 (“This testimony is generic and bears no relation to any specific combination of prior art elements. It also fails to explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does.”).” slip op. at 5
Claim construction§ 103 obviousnessPatents in suitUS 8,051,287
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.