- Foster-Miller Inc. v. Flir Detection Inc.Rehearing deniedPTAB · Oct 20, 2021 · IPR2020-00301 · APJ Meredith C Petravick · IPR · Rehearing
The Board denied Foster-Miller’s rehearing requests in both proceedings, leaving institution denied because the petition did not adequately show the challenged claim’s limitations in SuperDroid or Wang.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD A party requesting rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters it believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision, we review the decision for an abuse of discretion. See generally 37 C.F.R. § 42.71 (b)–(d). 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). A request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence. “It is not an abuse of discretion to have made an analysis or conclusion with which a party disagrees,” and “mere disagreement with the Board’s analysis or conclusion is not a proper basis for rehearing.” EMC Corp. v. PersonalWeb Techs., LLC, IPR2013-00085, Paper 29 at 4 (PTAB June 5, 2013).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner does not persuade us that we overlooked Superdroid’s disclosures. After careful consideration of the evidence presented in the Petition and the Requests for Rehearing, as stated in our Institution Decision, “it is not clear from SuperDroid’s figures h and i or the brief explanation of Steps 2 and 3 that the front end of the robot contacts and ascends the front face of the obstacle, with the support surface generating sufficient traction to climb the riser.” Inst. Dec. 14 (citing Ex. 2001 ¶¶ 26–27 (testimony of testimony of Dr. Robert H. Sturges, declarant for Patent Owner)). Petitioner provides additional argument and analysis of SuperDroid’s figures in support of its Request for Rehearing, but arguments that go beyond the analysis presented as to this limitation in the Petition could not have been misapprehended. See, e.g., Req. Reh’g 3 (providing annotated version of SuperDroid’s figure g), 6 (providing enlarged and annotated version of SuperDroid’s figure h). Petitioner’s argument is mere disagreement with our findings in the Institution Decisions regarding the disclosure of Superdroid.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for patent owner
“plain meaning of Element [1d] for the first time in its Request for Rehearing. Petitioner did not provide any explicit construction of Element [1d] in the Petition. See Pet. 10 (“no claim terms require[] construction, and all claims should be given their plain and ordinary meaning”). We could not have misapprehended an argument that was not adequately made in the Petition. In any event, Petitioner does not persuade us that the plain language of Element [1d] does not require pivoting the trailing arm while the vehicle ascends the stair. Petitioner’s argument relies upon Figs. 5G–5I of the ’752 patent to argue that Element [1d] does not require pivoting the trailing arm while the vehicle ascends the stair. Req. Reh’g 13. Petitioner’s argument, however, does not account for Figs. 5J–5O of the ’752 patent, which depict pivoting the trailing arm to push the robot vehicle upward while driving the vehicle tracks to surmount the stair nose. See Ex. 1001, 10:61–11:4, claims 2–4. Accordingly, the ’752 patent figures are consistent with reading Element [1d] to require pivoting the trailing arm while the vehicle ascends the stair. At a minimum, Petitioner’s reading of the claim required further explanation if not an explicit construction in the Petition, given that the limitation could be read consistent with the specification in a manner different that Petitioner presumed.” slip op. at 6
- BurdenDecided for patent owner
“And, as explicitly pointed out in the Institution Decision, the Petition’s explanation of how Wang meets Element [1d] is insufficient to establish that Wang’s arm pivots while ascending a stair. See Inst. Dec. 20– 21. “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)).” slip op. at 6
Claim construction§ 103 obviousnessPatents in suitUS 8,074,752 - U.S. Venture, Inc. v. Sunoco Partners Marketing & Terminals L.P.Rehearing deniedPTAB · Dec 17, 2020 · IPR2020-00728 · APJ Brent M Dougal · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution for claims 16–17 based on the Fintiv factors and its § 314(a) discretion.
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 a factual finding is not supported by substantial evidence, 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). The burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): 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 to present new arguments or evidence or merely to disagree with the panel’s assessment of the arguments or weighing of the evidence.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“the evidence laid out an approximate time frame for when the trial would likely be held. Dec. 9 (citing Ex. 2003); see also id. at 8–9 (citing PO Resp. 35; Ex. 1026) (Discussing the Court’s Procedures and timeline for trial after the docket call). Thus, we determined that this factor favored denying institution under our analysis of the factors under Fintiv. Id. at 9.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner acknowledges that the proposed combination of the references relies on “us[ing] the cumulative totals of the flow rates of the unblended components in the Hoffman compensation process” (id.), however Patent Owner identifies that Hoffman appears to teach away from using the flow rates of the unblended components in its calculations because of the uncertainty in the flow rate of the blended line. Prelim. Resp. 19, 21– 22. Contrary to Petitioner’s position, it is not Patent Owner’s burden to show why “a person of ordinary skill in the art would be discouraged from measuring flow rates upstream for use in the Hoffman compensation process” (Reh. Req. 9), but rather, Petitioner bears the burden to show why a person of ordinary skill in the art would measure flow rates upstream for use in the Hoffman compensation process in view of the all of the teachings of the references (35 U.S.C. § 314(a) (Institution only authorized if “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”)). Petitioner’s arguments do not show that we misapprehended or” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageNot reached
“argument concerning the construction of the term “in-line blending.” Id. at 13.” slip op. at 6
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 9,207,686 - PTAB · Mar 13, 2020 · IPR2019-01502 · APJ Kevin W Cherry · IPR · Rehearing
The Board denied Bentley’s rehearing request and left the denial of institution in place because the petition lacked persuasive evidence that the Porsche 959 art taught or suggested multiple subsystems.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party seeking rehearing has the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d).” slip op. at 2
- BurdenInstitution denied meritsInstitution denied
“analysis, and that under the proper claim construction the center and rear differential are separate “subsystems.” Req. 3–6. Neither party sought a construction of the “subsystem.” See Pet. 12–15 (seeking only a claim construction of the term “off-road modes”); Prelim. Resp. Instead, Petitioner chose to rely on Dr. Bower’s conclusory testimony that the differentials of the Porsche 959 met this limitation. See Pet. 20–23 (citing Ex. 1004 ¶ 48). We found such testimony to be not persuasive and entitled to no weight. See Dec. 13–14. Without any evidence to support it, we concluded that Petitioner’s conclusory explanation did not meet the “reasonable likelihood of prevailing” standard of 35 U.S.C. § 314(a). Thus, we disagree that we should have engaged in claim construction of the term “subsystem,” when Petitioner itself chose not to. Petitioner cannot salvage Dr. Bower’s conclusory analysis by requesting a claim construction after the fact.” slip op. at 2
- Expert testimonyDecided for patent owner
“analysis, and that under the proper claim construction the center and rear differential are separate “subsystems.” Req. 3–6. Neither party sought a construction of the “subsystem.” See Pet. 12–15 (seeking only a claim construction of the term “off-road modes”); Prelim. Resp. Instead, Petitioner chose to rely on Dr. Bower’s conclusory testimony that the differentials of the Porsche 959 met this limitation. See Pet. 20–23 (citing Ex. 1004 ¶ 48). We found such testimony to be not persuasive and entitled to no weight. See Dec. 13–14. Without any evidence to support it, we concluded that Petitioner’s conclusory explanation did not meet the “reasonable likelihood of prevailing” standard of 35 U.S.C. § 314(a). Thus, we disagree that we should have engaged in claim construction of the term “subsystem,” when Petitioner itself chose not to. Petitioner cannot salvage Dr. Bower’s conclusory analysis by requesting a claim construction after the fact.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached
“analysis, and that under the proper claim construction the center and rear differential are separate “subsystems.” Req. 3–6. Neither party sought a construction of the “subsystem.” See Pet. 12–15 (seeking only a claim construction of the term “off-road modes”); Prelim. Resp. Instead, Petitioner chose to rely on Dr. Bower’s conclusory testimony that the differentials of the Porsche 959 met this limitation. See Pet. 20–23 (citing Ex. 1004 ¶ 48). We found such testimony to be not persuasive and entitled to no weight. See Dec. 13–14. Without any evidence to support it, we concluded that Petitioner’s conclusory explanation did not meet the “reasonable likelihood of prevailing” standard of 35 U.S.C. § 314(a). Thus, we disagree that we should have engaged in claim construction of the term “subsystem,” when Petitioner itself chose not to. Petitioner cannot salvage Dr. Bower’s conclusory analysis by requesting a claim construction after the fact.” slip op. at 2
Claim construction - Magellan Midstream Partners L.P. / Powder Springs Logistics, LLC v. Sunoco Partners Marketing & Terminals L.P.Rehearing deniedPTAB · May 14, 2019 · IPR2019-00025 · APJ Jon B Tornquist · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, leaving institution in place and reiterating that “gasoline” preliminarily includes refinery streams or stocks.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Patent Owner’s argument that “gasoline” is limited to “finished gasoline that may be used as fuel,” and determined that the term is broad enough to encompass the component gasoline streams of Bajek and the gasoline stocks of Hass. Dec. on Inst. 10–14, 22, 26 (“In particular, on this record, we determine that the term ‘gasoline’ is broad enough to encompass the gasoline stocks of Hass . . . .”). As this conclusion was sufficient to determine whether Petitioner demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’948 and ’548 patents, we declined to determine exactly what other types of petroleum products would be considered “gasoline” in the art. Id. at 15.” slip op. at 3
- Prior constructionPrior construction not adoptedDecided for petitioner
“[v]arious types of refined petroleum that are used as fuel.” Ex. 2004, 35. In the Institution Decision, we determined that this construction was “of limited assistance” in this proceeding because (1) the ’948 and ’548 patents were not at issue in the case when the district court rendered its claim construction, and (2) the construction was adopted at the request of the parties, and was not based on a detailed analysis of the intrinsic record. Dec. on Inst. 14. slip op. at 5
Claim constructioncites PhillipsPatents in suitUS 9,606,548 - Stage Completions Inc. / Stage Completions (USA) Corp. v. Gryphon Oilfield Solutions, LLCRehearing deniedPTAB · Feb 13, 2019 · IPR2018-00776 · APJ Benjamin D M Wood · IPR · Rehearing
The Board denied rehearing of the institution denial for claims 1–6 because the Petition had not addressed the casing-string limitation or shown that Murray disclosed it.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Because we cannot misapprehend or overlook arguments not previously made, the Board does not consider arguments made in a request for rehearing unless the request “specifically identif[ies] . . . the place where [that argument] was previously addressed in” the petition. 37 C.F.R. § 42.71(d). Petitioner does not identify where it construed the casing-string limitation, or where it asserted that Murray discloses this limitation. On the contrary, as stated above, Petitioner did not construe this casing-string term in the Petition, and did not expressly allege that Murray discloses its system of valves “in a casing string disposed in the well.” Petitioner only alleged that Murray discloses placing its valve system “in a well,” essentially disregarding the “casing string” term in its analysis. Thus, under 37 C.F.R. § 42.71(d), Petitioner’s Rehearing Request should be denied.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“challenged claim is to be construed,” and “must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(3). Petitioner stated in the Petition that each claim term “should be given their broadest reasonable plain and ordinary meaning,” but did not specify what that meaning should be. The ’727 patent does not expressly define “casing string,” so it is appropriate to “look to technical dictionaries for assistance in determining [a] term’s meaning to a person of ordinary skill.” Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005). Patent Owner provided excerpts from several technical sources that define “casing” and “casing string” as being cemented in place. See, e.g., Ex. 2004, 1 (excerpt from “Schlumberger Oilfield Glossary” defining “casing” alternatively as “[l]arge-diameter pipe lowered into an openhole and cemented in place,” and “[s]teel pipe cemented in place during the construction process to stabilize the wellbore”); Ex. 2005, 1 (excerpt from “Schlumberger Oilfield Glossary” defining “casing string” as “[a]n assembled length of steel pipe configured to suit a specific wellbore . . . sections of pipe are connected and lowered into a wellbore, then cemented in place.”); Ex. 2006, 20 (excerpt from “Oilwell Drilling and Servicing” defining “casing” as “steel pipe threaded together and cemented into a well”); Ex. 2007, 1 (stating that casing strings “are set in the well and cemented in place under specific state requirements”). Conversely, Petitioner has not provided any technical-dictionary definition of “casing” or “casing string” that does not refer to casing as being cemented in place.1 Given this evidence, we are not persuaded that Petitioner could not have reasonably foreseen that Patent Owner would propose construing casing string as being cemented in place.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not reached
“requested, by email, “an opportunity to file a reply to the Preliminary Response to address Patent Owner’s construction of ‘casing string disposed in a well, as well as Patent Owner’s assertion that Murray does not disclose this limitation under Patent Owner’s construction.” Ex. 1020, 3 (submitted with Rehearing Request). As Petitioner did not establish good cause for submitting a reply (see 37 C.F.R. § 42.108(c)), we denied Petitioner’s request. Ex. 1020, 1. In our subsequent Decision, we construed “casing string disposed in the well” to mean “steel pipe that is cemented in place in a well bore to stabilize the wellbore,” and determined that the term “does not encompass liner with open-hole packers.” Dec. 8. We further determined that Petitioner had not persuaded us that Murray discloses this limitation. Id. at 12. As a result, we denied the Petition. Id. at 19.” slip op. at 3
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 9,611,727 - Necksgen, Inc. v. Simpson Performance Products, Inc.Rehearing deniedPTAB · Jul 25, 2018 · IPR2018-00133 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution because Petitioner did not show the asserted art taught claim 1[d] or establish motivation to combine with a reasonable expectation of success.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When considering a request for rehearing, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision was based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, 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). Additionally: “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. 37 C.F.R. § 42.71(d).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“the Preliminary Response. In our Decision, we determined that “[w]e do not need to construe expressly any claim terms for purposes of this Decision” because it did not appear, from the arguments presented, that any claim terms were in dispute. Dec. 6. When we considered the parties’ positions in reaching our Decision, we were aware that the term “tether” was defined in the ’529 patent, even though Petitioner did not state that expressly. In other words, we understood, and now explicitly determine, that the patentee acted as his own lexicographer by setting forth a specific definition for “tether” in the ’529 patent. Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (if the specification “reveal[s] a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess[,] . . . the inventor’s lexicography governs”) (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)).” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Motivation to Combine & Reasonable Expectation of Success Petitioner contends that we abused our discretion by failing to consider the appropriate claim scope when evaluating motivation to combine and reasonable expectation of success. Req. Reh’g 10–14. First, as discussed above, we did not fail to consider the appropriate claim scope. Second, we have now set forth that claim scope expressly. In light of our discussion above, our analysis regarding motivation to combine and reasonable expectation of success is no different from that which we set forth in our Decision. Dec. 11–15. Petitioner’s reiteration of the same positions set forth in Petition does not persuade us that we abused our discretion in finding that Petitioner has not established a reasonable likelihood of demonstrating that one of ordinary skill in the art would have been promoted to modify and combine the teachings as proposed by Petitioner with a reasonable expectation of success. Accordingly, we are unpersuaded by Petitioner’s argument that we abused our discretion with respect to these issues.” slip op. at 8
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,351,529 - Mentor Graphics Corporation v. In-Depth Test LLCRehearing deniedPTAB · Jul 12, 2018 · IPR2017-02094 · APJ Garth D Baer · IPR · Rehearing
The Board denied Mentor Graphics’ rehearing request, leaving intact the denial of institution on claims 1–20 over Lane and Western because the request showed no abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“III. 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 the 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 3
- PTAB / AIA Trials › Discretionary denialDenied
“The standard operating procedure exemplifies some of the reasons for which the Chief Judge may expand a panel. PTAB SOP 1, 3 (§ III.A). For example, an expanded panel may be appropriate when “[t]he proceeding or AIA Review involves an issue of exceptional importance” or when “[c]onsideration by an expanded panel is necessary to secure and maintain uniformity of the Board’s decisions.” Id. (§ III.A.1, 2). In this case, the Chief Judge has considered Petitioner’s suggestion for an expanded panel, but has determined that an expanded panel is not warranted.” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Decided for patent owner
“Petitioner’s failure to take a clear position on the term “outlier” is grounds alone for denying the Petition. See 37 C.F.R. § 42.104(b)(3) (requiring a petition to “identify . . . [h]ow the challenged claim is to be construed”).” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Based on the disclosure of Lane to remove from the data set “bad data points” consisting of “all data more than sigma*std away from the mean of all measured data” (Ex. 1012, 51: table 18), we determine that a person of ordinary skill, upon reading the reference, would be led in a direction divergent from the path that was taken by the applicant, which requires the identification of outliers. Alternatively, even if a person of ordinary skill in the art were to combine Lane and Western as Petitioner asserts, Petitioner fails to show how that combination would result in the subject matter of any challenged claim. More specifically, Petitioner fails to account sufficiently for Lane’s teaching that “all data more than sigma*std away from the mean of all measured data is rejected as bad data points” prior to plotting SQC charts and, thus, how potential outliers would survive the “sorting sigma” step long enough to be identified, if Lane were modified (based on the teachings of Western) to chart individual measurements as proposed by Petitioner.” slip op. at 5
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 6,792,373 - Icon Health & Fitness, Inc. v. Nautilus, Inc.Rehearing deniedPTAB · Oct 27, 2017 · IPR2017-00493 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution because the Petition failed to identify corresponding structure and show the prior art disclosed the same or equivalent structures.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW Pursuant to 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 We did not undertake an analysis to determine whether the equivalent structure was shown in the prior art because Petitioner failed to do so in the first instance: “By not identifying a corresponding structure, material, or acts in the ’542 patent specification, Petitioner does not show where that structure, material, or acts or its equivalent is disclosed by Maresh-I.” Dec. 18 (citing 37 C.F.R. § 42.104(b)(4) (“The petition must specify where each element of the claim is found in the prior art . . . relied upon.”)). 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, and the place where each matter was addressed previously in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d).” slip op. at 3
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“In particular, we first construed “right means,” “left means,” “second end portion support,” “first support,” “second support,” “first member,” and “second member” as invoking § 112, ¶ 6, because none of the terms has a sufficiently definite meaning as a name for structure. Dec. 7–15. Second, with respect to independent claims 1, 46, 75, and 86, we found that Petitioner did not identify corresponding structure, material, or acts in the specification for performing each of the recited functions. See id. at 17–18 (discussing Maresh-I), 19–21 (discussing Stearns). With respect to independent claims 91, 94, 97, and 100, we found that even if we accepted Petitioner’s identification of the alleged corresponding structure, material, or acts, Petitioner’s analysis failed to show that the prior art structures were the same or equivalent. Id. at 18 (discussing Maresh-I), 20–21 (discussing Stearns). Rather, Petitioner’s analysis focused entirely on the functional language of these claim elements without identifying and addressing the corresponding structure. Id. at 18 (discussing Maresh-I), 20–21 (discussing Stearns).1” slip op. at 2
- BurdenNot shown unpatentable
“We disagree. Petitioner did not do either. First, Petitioner did not identify any portion of the specification describing corresponding structure in the Petition. Second, there is no mention of tracks or swing arms in the discussion of Maresh-I and Stearns at pages 14, 15, and 40 of the Petition, let alone any argument that the structures identified in either reference are equivalent. See Pet. 14, 15, 40. Accordingly, we did not misapprehend or overlook whether Petitioner complied with these requirements for means-plus-function claim terms; Petitioner did not. Petitioner’s Alleged Analysis and Evidence Regarding the Same or Equivalent Structures” slip op. at 7
Claim constructionPatents in suitUS 7,341,542 - Icon Health & Fitness, Inc. v. Nautilus, Inc.Rehearing deniedPTAB · Oct 27, 2017 · IPR2017-00494 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution because the Petition did not explain how the prior-art structures were the same as or equivalent to the claimed structures.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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, and the place where each matter was addressed previously in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“focuses on the functional language of these claim limitations and fails to explain how the structures of Maresh-I and Stearns are the same as, or equivalent to, those identified in the ’219 patent. Dec. 15–16. For example, Petitioner’s discussion of Maresh-I equates the claimed “first means” and “second means” with Maresh-I’s “radially displaced pins of cranks 760,” but fails to make any argument explaining how these are the same or equivalent structures. See Pet. 13–14. Petitioner also points to paragraphs 37 and 90 of Mr. Ganaja’s declaration where he testifies that Maresh-I’s radially displaced pins are crank arms and that a connection between rollers 2023 and cranks 2020 is the crank arm in Stearns. Req. Reh’g 5–6 (discussing Ex. 1006 ¶ 37), 6 (discussing Ex. 1006 ¶ 90). There is no question that Mr. Ganaja’s testimony in these paragraphs addresses the issues that we found lacking in the Petition. The problem for Petitioner, however, is that the Petition itself did not include these arguments equating the structures as Mr. Ganaja did. Citing to these paragraphs of Mr. Ganaja’s declaration without providing any explanation of the significance thereof in the Petition itself is insufficient. See 37 C.F.R. § 42.6(3) (“Arguments must not be incorporated by reference from one document into another document.”). See also DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.”).” slip op. at 4
- BurdenDecided for patent owner
“focuses on the functional language of these claim limitations and fails to explain how the structures of Maresh-I and Stearns are the same as, or equivalent to, those identified in the ’219 patent. Dec. 15–16. For example, Petitioner’s discussion of Maresh-I equates the claimed “first means” and “second means” with Maresh-I’s “radially displaced pins of cranks 760,” but fails to make any argument explaining how these are the same or equivalent structures. See Pet. 13–14. Petitioner also points to paragraphs 37 and 90 of Mr. Ganaja’s declaration where he testifies that Maresh-I’s radially displaced pins are crank arms and that a connection between rollers 2023 and cranks 2020 is the crank arm in Stearns. Req. Reh’g 5–6 (discussing Ex. 1006 ¶ 37), 6 (discussing Ex. 1006 ¶ 90). There is no question that Mr. Ganaja’s testimony in these paragraphs addresses the issues that we found lacking in the Petition. The problem for Petitioner, however, is that the Petition itself did not include these arguments equating the structures as Mr. Ganaja did. Citing to these paragraphs of Mr. Ganaja’s declaration without providing any explanation of the significance thereof in the Petition itself is insufficient. See 37 C.F.R. § 42.6(3) (“Arguments must not be incorporated by reference from one document into another document.”). See also DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.”). Accordingly, we did not misapprehend or overlook discussion in the Petition regarding these structures.” slip op. at 4
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“In particular, we first construed “first means” and “second means” as invoking § 112, ¶ 6, as proposed by Petitioner and Patent Owner. Dec. 9. Second, we found that even if we accepted Petitioner’s identification of the alleged corresponding structure, material, or acts, Petitioner’s analysis failed to show that the prior art structures were the same or equivalent. Id. at 15– 16 (discussing Maresh-I and Stearns). Rather, Petitioner’s analysis focused entirely on the functional language of these claim elements without addressing the corresponding structure. Id.” slip op. at 2
Claim constructionPatents in suitUS 7,632,219 - Icon Health & Fitness, Inc. v. Nautilus, Inc.Rehearing deniedPTAB · Oct 27, 2017 · IPR2017-00490 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied rehearing, finding no overlooked or misapprehended matter in its § 112, ¶ 6 construction and its determination that Petitioner’s prior-art analysis was deficient.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW Pursuant to 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, and the place where each matter was addressed previously in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d).” slip op. at 3
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“In particular, we first construed “second portion support” as invoking § 112, ¶ 6, because it did not have a sufficiently definite meaning as a name for structure. Dec. 7–10. Second, we found that Petitioner did not identify corresponding structure, material, or acts in the specification for performing the recited function of guiding the second portions of the right and left foot engagement members to follow a forward-rearward reciprocating motion in response to the user moving the user’s feet with striding steps during the striding exercise as the right and left crank arms reciprocally lift and lower the first portions of the right and left foot engagement members. Id. at 11–12 (quoting Ex. 1001, 22:65–23:4). Third, we determined that Petitioner’s analysis was deficient because it did not identify where the same structure, material, or acts or their equivalents were found in the prior art.1 Id. at 12–13.” slip op. at 2
- BurdenNot shown unpatentable
“§ 112, ¶ 6, because it did not have a sufficiently definite meaning as a name for structure. Dec. 7–10. Second, we found that Petitioner did not identify corresponding structure, material, or acts in the specification for performing the recited function of guiding the second portions of the right and left foot engagement members to follow a forward-rearward reciprocating motion in response to the user moving the user’s feet with striding steps during the striding exercise as the right and left crank arms reciprocally lift and lower the first portions of the right and left foot engagement members. Id. at 11–12 (quoting Ex. 1001, 22:65–23:4). Third, we determined that Petitioner’s analysis was deficient because it did not identify where the same structure, material, or acts or their equivalents were found in the prior art.1 Id. at 12–13.” slip op. at 2
Claim constructionPatents in suitUS 6,689,019
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.