- Solaredge Technologies Ltd. v. Sma Solar Technology AGRehearing grantedPTAB · Oct 25, 2022 · IPR2020-00021 · APJ Scott B Howard · IPR · Rehearing
On rehearing, the Board held claims 1–10 unpatentable as obvious: claims 1–3, 5, and 7 over AAPA and Frezzolini; claims 4, 6, and 8–10 over AAPA, Frezzolini, and Iwamura.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Updated Guidance. See Opp. Reh’g 4–8. Instead, Patent Owner argues that we correctly determined in the Final Written Decision that AAPA was the foundation or starting point of the ground. Id. However, the language that we relied upon from the Guidance Memo in the Final Written Decision has been deleted from the Updated Guidance. Compare Guidance Memo 6 (directing the PTAB to determine if the applicant admitted prior art is the foundation or starting point), with Updated Guidance (language omitted). Although we properly followed the Guidance Memo in the Final Written follow the clear and unambiguous requirements of the Updated Guidance. Moreover, Patent Owner does not direct us to any Federal Circuit case law that suggests using the foundation or starting point test of the Guidance Memo. See Opp. Reh’g 4–8. Although the Qualcomm panel was aware of the Guidance Memo (see 24 F.4th at 1373), the Federal Circuit neither discussed the test set out in the Guidance Memo, nor directed that the PTAB apply the foundation or starting point test. See 24 F.4th 1367.” slip op. at 22
- Skill levelSkill level petitioner adoptedOther
“Petitioner argues—supported by the testimony of Dr. Wood—that a person having ordinary skill in the art (“PHOSITA”) “would have had a bachelor’s degree in mechanical engineering, electrical engineering, or a similar discipline and at least two years of design experience with photovoltaic systems.” Pet. 20 (emphasis added) (citing Ex. 1011 ¶¶ 18– 22). In the Institution Decision, we adopted Petitioner’s description of a person having ordinary skill in the art, “except that we delete[d] the qualifier ‘at least’ to eliminate vagueness as to the amount of practical experience.” Inst. Dec. 15–16. Patent Owner does not address that determination. See PO Resp. Accordingly, for the reasons given in the Institution Decision, we adopt Petitioner’s proposed level of ordinary skill, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of practical experience. See Inst. Dec. 16. Therefore, a person having ordinary skill in the art would have had a bachelor’s degree in mechanical engineering, electrical engineering, or a similar discipline and two years of design experience with photovoltaic systems.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that all claim terms should be construed according to their ordinary and customary meaning at the time of the invention. Pet. 20. Patent Owner argues that two terms require explicit constructions: “the power line modem” and “the data signal coupler.” PO Resp. 20–22. Patent Owner’s proposed claim constructions limit the “power line modem” and the “data signal coupler” to DC power lines. PO Resp. 20–22. However, during the Oral Hearing, Patent Owner agreed that, consistent with the plain and ordinary meaning, the other limitations of the claims require that the components operate on DC power lines. Tr. 37:5–23. As discussed in more detail below, Petitioner’s combination of prior art references uses DC power lines. Accordingly, no express construction is needed to resolve any dispute in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Strike new argumentNew argument disregardedDecided for petitioner
“of the background knowledge possessed by a person of ordinary skill in the art.” Guidance Memo 6–7; Updated Guidance 4–5. Although Patent Owner had the opportunity to make such an argument in the Sur-reply when addressing the Guidance Memo (and by implication, the identical language of Updated Guidance), Patent Owner chose not to do so and, accordingly, forfeited the argument. See Paper 9, 7. Although Patent Owner raised the argument at the oral hearing,17 that is not enough to preserve the argument as no new arguments can by made during the Oral Hearing. See CTPG at 85– 86 (“During an oral hearing, a party . . . may only present arguments relied upon in the papers previously submitted.”); Dell, 818 F.3d at 1301 (“[T]he Board denied Acceleron its procedural rights by relying in its decision on a factual assertion introduced into the proceeding only at oral argument, after Acceleron could meaningfully respond.”). Just as a movant may not make a new argument in a request for rehearing, a party opposing such a request cannot raise new arguments that it did not make before. See Apple Inc. v. Taction Tech., Inc., IPR2022-00057, Paper 15 at 4 (“A request for rehearing is not an opportunity . . . to present new arguments.”) (Denying Request for Rehearing). Accordingly, because Patent Owner did not argue that the limitations taught by the AAPA were not known in the prior art in its Patent Owner Response or Sur-reply, that argument is forfeited and cannot be considered on rehearing.” slip op. at 24
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,922,048 - Blue Coat Systems, Inc. v. Finjan, Inc.Rehearing grantedPTAB · Jul 18, 2017 · IPR2016-01444 · APJ Patrick M Boucher · IPR · Rehearing
Granted Blue Coat’s rehearing request and instituted review of claims 1, 4–6, 9, 12–14, 17, 24, 35, and 37; the petition showed a reasonable likelihood of prevailing on the asserted § 103 grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“reexamination proceeding. Of particular relevance, the reexamination concluded with a Reexamination Certificate issued on November 28, 2016, including a claim for the benefit of the November 8, 1996 filing date of U.S. Provisional Appl. No. 60/030,639 (“the ’639 provisional application”). Ex. 3006 at [60]. In denying the Petition, the Prior Decision noted that “Petitioner has taken no steps to explain or respond to the effect of these developments on its argument.” Dec. 7. This remains true. Nevertheless, we agree with Petitioner that our Prior Decision gave insufficient consideration to the Petition’s assertion that “U.S. Patent No. 7,613,926 [(“the ’926 patent”), i.e., an intermediate patent in the priority chain of the ’086 patent] fails to claim priority to the ’639 provisional application and instead the earliest priority document cited in the ’926 patent is [the ’194 patent].” Pet. 5 (citing Ex. 1012, col. 1, ll. 8–32); see Req. Reh’g 4–5, 6 n.4, 7–9. For a claim of a patent to be entitled to the effective filing date of an earlier filed application, each application in the priority chain must refer to the earlier filed application. Encyclopaedia Britannica, Inc. v. Alpine Elecs. of Am., Inc., 609 F.3d 1345, 1350–52 (Fed. Cir. 2010). Accordingly, we grant Petitioner’s Rehearing Request and proceed to the merits of the Petition.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedMixed
“a formally defined safety policy” and allows checking “with certainty, that the proof is valid and hence the foreign code is safe to execute.” Ex. 1004, 107. Thus, Petitioner argues that one of ordinary skill in the art would reasonably understand Necula to teach that its proof-carrying code adds to the foreign code, consistent with the construction of “append” that we apply herein, and Petitioner articulates sufficient reasoning with rational underpinning to apply that teaching to Swimmer’s representation of DSP data. See Pet. 46–49. This is not an instance, for example, in which Petitioner relies on a characterization of the problem provided by the patent to derive its reasoning. Cf., e.g., Mintz v. Dietz & Watson, Inc., 679 F.3d 1372 (Fed. Cir. 2012). Indeed, Patent Owner’s contention that “the storage of the DSP in a database is one of the key features that distinguishes the ‘086 Patent over the prior art” dilutes the strength of its argument. The contrary positions of the parties’ declarants in their testimonial evidence creates a genuine issue of material fact, which we resolve in the light most favorable to Petitioner for purposes of this Decision. 37 C.F.R. § 42.108(c). Accordingly, we conclude that Petitioner has made a sufficient showing also with respect to these elements, and that Petitioner demonstrates a reasonable likelihood of prevailing on its challenge of claims 1 and 9. See infra Section II.E.10 (discussing limits in our weighing of Patent Owner’s Secondary Considerations evidence in this Preliminary Proceeding).” slip op. at 21
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“be considered under 35 U.S.C. § 312 because Petitioner has failed to name all real parties in interest, as required by the statute.” Prelim. Resp. 9. The parties agree that, on June 12, 2016, Symantec Corporation (“Symantec”) announced that it was acquiring Petitioner. Pet. 13; Prelim. Resp. 9. The Petition discloses that “[t]he transaction is expected to close in the third quarter of 2016,” and that “[a]s of the filing date of this petition the transaction has not been executed.” Pet. 13. The Petition further represents that “Symantec has not controlled or had the ability to control the filing of this petition, whether through funding or strategy.” Id. As noted above, Petitioner expressly identified Symantec as a real party in interest before any decision on institution of an inter partes review was made. Paper 8, 2. Patent Owner contends that “Symantec had control over the filing of the Petition during the period between the announcement of the acquisition and the closing of the acquisition,” which it asserts occurred on August 1, 2016. Prelim. Resp. 9. Patent Owner also contends that it “understands from the underlying litigation that ‘Blue Coat Systems, Inc.’ no longer exists 1 A petition to accept an unintentionally delayed claim of priority for the ’926 patent, claiming the benefit of U.S. Patent Appl. No. 08/790,097 which was filed January 29, 1997, was dismissed by the Office on June 13, 2017. Exs. 1027, 3007. A renewed petition was filed on June 16, 2017. Ex. 3008. At this time, the Office has not ruled on the renewed petition, and that pending petition accordingly does not affect our determination of the challenged claims’ effective filing date for purposes of this Decision. as an entity, or at least goes by ‘Blue Coat Systems LLC’ for at least the last two months.” Id. at 10. We have reviewed the evidence provided by Patent Owner and find it insufficient to support Patent Owner’s allegation that Petitioner has failed to comply with 35 U.S.C. § 312(a) or 37 C.F.R. § 42.8(a)(3). That evidence is, at best, suggestive regarding an issue that is not jurisdictional. Lumentum Holdings, Inc. v. Capella Photonics, Inc., Case IPR2015-00739, slip op. (PTAB Mar. 4, 2016) (Paper 38) (precedential).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“1. “Downloadable” Every challenged independent claim recites a “Downloadable,” and Petitioner contends that “[t]he broadest reasonable interpretation of the term ‘downloadable’ includes ‘an executable application program, which is downloaded from a source computer and run on a destination computer.’” Pet. 15. Petitioner’s proposed construction parallels a statement made in the Specification of the ’194 patent. Ex. 1012, col. 1, ll. 44–47. Patent Owner “does not dispute” this proposed construction, which we adopt for purposes of this Decision. Prelim. Resp. 5. 2. “database” Challenged independent claim 42 recites “a database of Downloadable security profiles.” Petitioner contends that “[t]he broadest reasonable interpretation of the term ‘database’ includes ‘a collection of interrelated data organized according to a database schema to serve one or more applications.’” Pet. 15. Patent Owner also “does not dispute” this proposed construction, but argues that “the practical import of Petitioner’s proposed construction for the term ‘database,’ is that log files, such as Swimmer’s audit trail, do not fall within the scope of the claims.” Prelim. Resp. 5–6. That is, Patent Owner contends that “logging functionality is distinct from storing in a database, which allows DSP to be efficiently retrieved from the database,” as compared with the “record-keeping” functionality of an “event log.” Id. at 7. Patent Owner’s argument was considered by the panel in IPR2015- 01892, which concluded that, “[t]o the extent that construction would exclude a log file consisting of an ‘unstructured collection of data on a computer,’ . . . [an] unstructured log file would not be a database,” but the construction does not “necessarily exclude[] all log files from being databases.” 1892 Dec. 16 (emphasis in original). We agree with the reasoning expressed in the Final Written Decision of IPR2015-01892. Id. at 12–17. For purposes of this Decision, we adopt Petitioner’s proposed construction.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,079,086 - Hamamatsu Corporation v. Sionyx, LLCRehearing grantedPTAB · May 26, 2017 · IPR2016-01910 · APJ Monica S Ullagaddi · IPR · Rehearing
Rehearing was granted for claims 9, 24, and 25 because Petitioner did not show their process limitations lacked patentable weight; it was denied for claims 1, 4, 5, 7, 8, and 13.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): (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
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“The relevant inquiry is not whether the Specification has support for an “enhanced response,” but whether the Specification supports construing the claim term “interact with” to mean an “enhanced response and/or filtering.” Even assuming, without deciding, for the purposes of this decision, that diffusing, redirecting, and absorbing electromagnetic radiation results in an increased quantum efficiency that could be considered to provide an enhanced response to electromagnetic radiation, Patent Owner fails to demonstrate persuasively that one of ordinary skill in the art would understand from the description in the ’591 patent Specification that the claim term “interacting with” is defined as “providing an enhanced response and/or filtering.” Furthermore, we are unable to discern a portion of the Specification of the ’591 patent that discloses such an equivalency. Not only does the ’591 patent not define “interact with,” the Abstract of the ’591 patent discloses that “[i]n one aspect, the textured region is operable to facilitate generation of an electrical signal from the detection of infrared electromagnetic radiation” and “[i]n another aspect, interacting with electromagnetic radiation further includes increasing the semiconductor substrate’s effective absorption wavelength as compared to a semiconductor substrate lacking a textured region.” Ex. 1001, Abstract (emphasis added). This passage suggests that, at least in one aspect, “interact[ing] with” electromagnetic radiation includes merely generating electrons from photons, which is not an “enhanced response” and/or “filtering,” as required by Patent Owner’s proffered claim construction.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableMixed
“position with sufficient evidence that demonstrates that the processes recited in claims 9, 24, and 25 do not impart structural and functional differences to the product. Moreover, Petitioner does not point to citations in the ’591 patent, testimonial evidence, or any other record evidence to support its position that the structure or functionality of the textured region resulting from the chemical etching or lasing processes recited in claims 9, 24, and 25 would be the same as the structure or functionality of a roughened surface produced by a mechanical polishing process as disclosed in Nakashiba. Rather, Petitioner provides only conclusory statements regarding its position. Given that Petitioner has not demonstrated sufficiently that the limitations recited in claims 9, 24, and 25 are not entitled to patentable weight, and in light of Petitioner’s concession that “Nakashiba does not disclose that the roughened surface S1 is formed by either lasing (in particular using short duration laser pulses) or chemical etching, as recited in claims 9, 24, and 25 of the ‘591 Patent,” we determine Petitioner has not met its burden of demonstrating a reasonable likelihood of prevailing with respect to showing that claims 9, 24, and 25 are anticipated under 35 U.S.C. § 102 by Nakashiba.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstitution denied meritsMixed
“Upon review of the record, we determine Petitioner did not support its position with sufficient evidence that demonstrates that the processes recited in claims 9, 24, and 25 do not impart structural and functional differences to the product. Moreover, Petitioner does not point to citations in the ’591 patent, testimonial evidence, or any other record evidence to support its position that the structure or functionality of the textured region resulting from the chemical etching or lasing processes recited in claims 9, 24, and 25 would be the same as the structure or functionality of a roughened surface produced by a mechanical polishing process as disclosed in Nakashiba. Rather, Petitioner provides only conclusory statements regarding its position. Given that Petitioner has not demonstrated sufficiently that the limitations recited in claims 9, 24, and 25 are not entitled to patentable weight, and in light of Petitioner’s concession that “Nakashiba does not disclose that the roughened surface S1 is formed by either lasing (in particular using short duration laser pulses) or chemical etching, as recited in claims 9, 24, and 25 of the ‘591 Patent,” we determine Petitioner has not met its burden of demonstrating a reasonable likelihood of prevailing with respect to showing that claims 9, 24, and 25 are anticipated under 35 U.S.C. § 102 by Nakashiba.” slip op. at 6
Claim construction§ 102 anticipationPatents in suitUS 8,680,591 - Boston Scientific Corporation v. Uab Research FoundationRehearing grantedPTAB · Mar 7, 2016 · IPR2015-00918 · APJ James A Worth · IPR · Rehearing
Rehearing was granted, and IPR was instituted on anticipation of claims 1–20 by KenKnight ’967; no other grounds were instituted.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“II. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“background art in which two other patents described “pacing or pretreatment pulses” delivered through the same electrodes as defibrillation. Id. (citing Ex. 1002, 7). We recognize that Patent Owner has not yet had an opportunity to introduce testimonial evidence as to whether a person of ordinary skill would understand the ’261 Application to disclose the use of pacing (in addition to pretreatment pulses) through an electrode with the claimed positioning. At this stage of the proceeding, we determine that Petitioner has shown a reasonable likelihood of prevailing on its assertion that the patentee was not in possession of the claimed configuration of electrodes at the time of the filing of the ’261 Application. As such, Petitioner has demonstrated a reasonable likelihood of prevailing on its related assertion that the claims of the ’563 patent cannot benefit from the priority from the ’261 Application. Thus, Petitioner has demonstrated a reasonable likelihood of prevailing on its assertion that KenKnight ’967 is prior art to the ’563 patent.” slip op. at 11
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedReference is prior artDecided for petitioner
“Application (from .01 or .05 to 1 or 2 Joules) is greater than the value of a typical pacing pulse (0.000025 Joules). See Pet. 12; Ex. 1006 ¶¶ 132–133; compare Ex. 1002, 12:29–31, with Ex. 1006 ¶ 66). We credit Dr. Benditt’s testimony that the smallest disclosed energy for the auxiliary pulse in the ’261 Application is about ten thousand times stronger than a pacing pulse, and a person of ordinary skill in the art would understand that such a pulse does not correspond to a pacing pulse. Id. Based on this difference, and based on our claim construction, we conclude that Petitioner has established a reasonable likelihood that the “auxiliary” pulses disclosed in the ’261 Application are not antitachycardia pacing energies, and do not otherwise qualify as antitachycardia pacing. Patent Owner, nevertheless, asserts that the ’261 Application states the intent to treat ventricular tachycardia (see supra), i.e., “[t]he present invention may be used to treat all forms of cardiac tachyarrythmias, including ventricular fibrillation, with defibrillation (including cardioversion) shocks or pulses.” See Opposition 3 (quoting Ex. 1002, 7:4– 9). However, the intent to treat ventricular tachycardia by itself is not enough because the claims require antitachycardia pacing as the treatment for tachycardia. In this regard, Petitioner correctly observes that the disclosure of the ’261 Application describes in large part defibrillation in combination with cardioversion shocks, including in the above passage relied on by Patent Owner. In other words, the above passage discloses defibrillation and cardioversion but does not necessarily include pacing.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“D. Anticipation by KenKnight ’967 1. Claims 1, 3–7, 9–14, and 16–20 Relying on the Declaration of Dr. Benditt, Petitioner sets forth argument and evidence as to how KenKnight ’967 would anticipate each element of claims 1, 3–7, 9–14, and 16–20. Pet. 25–48. Patent Owner does not appear to dispute in its Preliminary Response that KenKnight ’967, if prior art, would anticipate claims 1, 3–7, 9–14, and 16–20. As above, we determine that there is a reasonable likelihood that KenKnight ’967 is prior art to the ’563 patent. Further, based on our own independent review of KenKnight ’967, we determine that Petitioner has shown a reasonable likelihood of prevailing on its assertion that KenKnight ’967 would anticipate claims 1, 3–7, 9–14, and 16–20.4” slip op. at 11
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 6,266,563
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.