- Code200, Uab / Teso LT, Uab et al. v. Bright Data Ltd.Rehearing grantedPTAB · Oct 19, 2022 · IPR2022-00862 · APJ Sheila F Mcshane · IPR · Rehearing
On Director remand, the Board instituted inter partes review of claims 1, 2, 6–11, 13, and 15–24 on all petitioned grounds and granted joinder with IPR2021-01493.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Commerce for Intellectual Property and Director of the United States Patent and Trademark Office vacating our previous decision denying institution, remanding for further proceedings, and ordering us to reconsider joinder after reconsidering the decision denying institution. Paper 18 (“Remand Dec.”).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We consider the Director’s Memorandum, which directs that “the PTAB will not rely on the Fintiv factors to discretionarily deny institution in view of parallel district court litigation where a petition presents compelling evidence of unpatentability.” Memorandum 2. The Memorandum explains that “where the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” Id. at 4–5 (emphasis added). The Memorandum further explains that “[c]ompelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. at 4. On the current record, we determine that Petitioner’s invalidity grounds present compelling unpatentability challenges. See infra Sections IV, D–I. In particular, in our view at this stage of the proceeding, the Petition presents compelling evidence that three prior art references, including Border, which was not before the jury in the Teso litigation, anticipate many of the claims of the ’510 patent. We determine that instituting inter partes review under these circumstances “strikes a balance among the competing concerns of avoiding potentially conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable.” Memorandum 5. Accordingly, based upon our consideration of the evidence and arguments presented in the Petition, and pursuant to the directive in the Memorandum concerning compelling, meritorious challenges, we decline to exercise our discretion under § 314(a) to deny institution of inter partes review as Patent Owner requests.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“PTAB will not rely on the Fintiv factors to discretionarily deny institution in view of parallel district court litigation where a petition presents compelling evidence of unpatentability.” Memorandum 2. The Memorandum explains that “where the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” Id. at 4–5 (emphasis added). The Memorandum further explains that “[c]ompelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. at 4. On the current record, we determine that Petitioner’s invalidity grounds present compelling unpatentability challenges. See infra Sections IV, D–I. In particular, in our view at this stage of the proceeding, the Petition presents compelling evidence that three prior art references, including Border, which was not before the jury in the Teso litigation, anticipate many of the claims of the ’510 patent. We determine that instituting inter partes review under these circumstances “strikes a balance among the competing concerns of avoiding potentially conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable.” Memorandum 5. Accordingly, based upon our consideration of the evidence and arguments presented in the Petition, and pursuant to the directive in the Memorandum concerning compelling, meritorious challenges, we decline to exercise our discretion under § 314(a) to deny institution of inter partes review as Patent Owner requests.” slip op. at 13
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As discussed above, we determine that the merits of this action present a compelling unpatentability challenge. Absent joinder, a one-year bar would apply to Petitioner, and, again, the merits presented in this challenge would not be reached by the Board in a final written decision. Under these specific circumstances, we determine joinder is appropriate in the interests of justice. Because NetNut has been dismissed from the 1493 IPR, there are no longer issues of cooperation and duplication that would have to be addressed between petitioners. Additionally, pursuant to 35 U.S.C. § 316(11), maintaining the previously-set trial schedule in the 1493 IPR is not necessary when joinder is granted. See also 37 C.F.R. § 42.100(c). Thus, the schedule will be adjusted in accordance with a Revised Scheduling Order, entered concurrently with this Decision.” slip op. at 37
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,484,510 - Code200, Uab / Teso LT, Uab et al. v. Bright Data Ltd.Rehearing grantedPTAB · Oct 19, 2022 · IPR2022-00861 · APJ Sheila F Mcshane · IPR · Rehearing
On remand, the Board instituted review of claims 1, 2, 12, 14, 15, 17–19, and 21–29 on all petitioned grounds and granted joinder with IPR2021-01492.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“General Plastic, and clarified General Plastic by stating that, “[w]here the first-filed petition . . . was discretionarily denied or otherwise was not evaluated on the merits,” a finding favoring discretionary denial under General Plastic’s factors 1–3 is limited to “when there are ‘road-mapping’ concerns under factor 3 or other concerns under factor 2.” Remand Dec. 5. The Director noted that in this case, the Board had found “no evidence of road-mapping.” Id. at 5 (citing Dec. 13). The Director added that “‘road-mapping’ concerns are minimized when, as in this case, a petitioner files a later petition that raises unpatentability challenges substantially overlapping with those in the previously-filed petition and the later petition is not refined based on lessons learned from later developments.” Id. at 5. The Director agreed with the panel’s finding that General Plastic’s factors 2, 4, and 5 “have limited relevance.” Id. at 6. The Director similarly found factor 7 to “have limited relevance” because the one-year statutory time period may be adjusted for a joined case under 35 U.S.C. § 316(a)(11). Id. (citing Dec. 16). Further, the Director disagreed with the panel’s determination on factor 6 in view of potential inefficiencies, with the Director determining that “the Board’s mission ‘to improve patent quality and restore confidence in the presumption of validity that comes with issued patents’ outweighs the impact on Board resources needed to evaluate the merits of a petition.” Id. In accordance with the evaluation of the factors, the Director found that “the Patent Owner’s concerns of fairness are outweighed by the benefits to the patent system of improving patent quality by reviewing the merits of the challenges raised in the petitions, which have not been addressed to date.” Id. The Director remanded the case to the panel for further proceedings, with direction to reconsider the institution decision and joinder. Remand Dec. 7. The Director directed that the panel “consider the Patent Owner’s remaining arguments, including those for discretionary denial under Fintiv and against the merits of the Petitioner’s patentability challenges.” Id.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“We consider the Director’s Memorandum, which directs that “the PTAB will not rely on the Fintiv factors to discretionarily deny institution in view of parallel district court litigation where a petition presents compelling evidence of unpatentability.” Memorandum 2. The Memorandum explains that “where the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” Memorandum, 4–5 (emphasis added). The Memorandum further explains that “[c]ompelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Memorandum 4. On the current record, we determine that Petitioner’s invalidity grounds present compelling unpatentability challenges. See infra Sections IV, D–H. In particular, in our view at this stage of the proceeding, the Petition presents compelling evidence that three prior art references, including Border, which was not before the jury in the Teso litigation, anticipate many of the claims of the ’319 patent. We determine that instituting inter partes review under these circumstances “strikes a balance among the competing concerns of avoiding potentially conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable.” Memorandum 5. Accordingly, based upon our consideration of the evidence and arguments presented in the Petition, and pursuant to the directive in the Memorandum concerning compelling, meritorious challenges, we decline to exercise our discretion under § 314(a) to deny institution of inter partes review as Patent Owner requests.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“On the current record, we determine that Petitioner’s invalidity grounds present compelling unpatentability challenges. See infra Sections IV, D–H. In particular, in our view at this stage of the proceeding, the Petition presents compelling evidence that three prior art references, including Border, which was not before the jury in the Teso litigation, anticipate many of the claims of the ’319 patent. We determine that instituting inter partes review under these circumstances “strikes a balance among the competing concerns of avoiding potentially conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable.” Memorandum 5. Accordingly, based upon our consideration of the evidence and arguments presented in the Petition, and pursuant to the directive in the Memorandum concerning compelling, meritorious challenges, we decline to exercise our discretion under § 314(a) to deny institution of inter partes review as Patent Owner requests.” slip op. at 14
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Petitioner is correct that its previously-filed 1266 IPR was not considered on the merits, and we note that this previous IPR challenged claims of the ’319 patent based on the same primary prior art—Crowds, Border, and MorphMix—as that asserted in the instant action. See Code200, UAB v. Luminati Networks Ltd., IPR2020-01266, Paper 5, 5–6. We agree with Petitioner that Uniloc is distinguishable from this case here because Uniloc addressed a situation after a denial of an earlier petition on the merits. Reply 2; Uniloc, 6. As discussed above, we determine that the merits of this action present a compelling unpatentability challenge. Absent joinder, a one-year bar would apply to Petitioner, and, again, the merits presented in this challenge would not be reached by the Board in a final written decision. Under these specific circumstances, we determine joinder is appropriate in the interests of justice. Because NetNut has been dismissed from the 1492 IPR, there are no longer issues of cooperation and duplication that would have to be addressed between petitioners. Additionally, pursuant to 35 U.S.C. § 316(11), maintaining the previously-set trial schedule in the 1492 IPR is not necessary when joinder is granted. See also 37 C.F.R. § 42.100(c). Thus, the schedule will be adjusted in accordance with a Revised Scheduling Order, entered concurrently with this Decision.” slip op. at 39
Claim constructionDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,257,319 - PTAB · Apr 7, 2022 · PGR2021-00042 · APJ Sheridan K Snedden · PGR · Rehearing
The Board granted rehearing, reversed its discretionary denial, and instituted PGR on claims 6–8 based on the threshold showing of likely lack of enablement and anticipation.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“We agree with Petitioner that a rehearing of our prior decision to deny institution is appropriate due to the changed circumstances of claims 6–8 of” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“institution is appropriate due to the changed circumstances of claims 6–8 of” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 324(a) provides that a post-grant review may not be instituted “unless the Director determines that the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” After considering the Petition and the Preliminary Response, and the evidence cited therein, we determine that Petitioner has shown that it is more likely than not that at least one of the claims challenged in the Petition is unpatentable. Therefore, we grant institution of a post-grant review.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we accept Petitioner’s proposed definition, which is supported by Dr. Lambert’s testimony (Ex. 1002 ¶ 20) and is consistent with the scope and content of the ’039 patent and the asserted prior art.” slip op. at 17
Claim construction§ 102 anticipation§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 10,808,039 - PTAB · Apr 7, 2022 · PGR2021-00030 · APJ Sheridan K Snedden · PGR · Rehearing
Granted Petitioner’s rehearing request and instituted PGR on claims 1–5, 9, and 10 based on the more-likely-than-not enablement showing and efficiency considerations.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“As acknowledged by both Petitioner and Patent Owner, this proceeding and PGR2021-00042 involve essentially identical issues. See 6 Reh’g Req. 15; Prelim. Resp. 19 n.3. In particular, we note that claims 6–8 of the ’039 patent challenged in PGR2021-00042 depend from claim 1 of the ’039 patent challenged in this proceeding, and are challenged under essentially identical written description, enablement and prior art issues. Reh’g Req. 15. Thus, our decision to institute post-grant review in PGR2021-00042 effectuates our review of issues almost identical to those in this proceeding. Petitioner further argues that this proceeding and PGR2021-00042 involve related issues, and that “considerations of efficiency . . . therefore counsel in favor of the Board reviewing the patentability of claims 1–5, 9, and 10 of the ’039 patent as well.” Id. We agree with Petitioner that, because we are to review practically the same issues of this proceeding in PGR2021-00042, considerations of efficiency (i.e., efficient use of the Board’s resources) strongly weigh in favor of also instituting trial in this proceeding. See Reh’g Req. 15. Considering all the factors together as a whole, we determine that, under the particular circumstances of this case, the interests of efficiency and integrity of the patent system weigh against exercising discretionary denial under § 324(a). Accordingly, we grant Petitioner’s Request for Rehearing and decline to exercise our discretion to deny institution. We consider the merits of the Petition with respect to the threshold for institution below.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“3. Analysis “[T]o be enabling, the specification of a patent must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation.’” Genentech Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997) (quoting In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993)) (alteration in original). “The enablement requirement ensures that the public knowledge is enriched by the patent specification to a degree at least commensurate with the scope of the claims. The scope of the claims must be less than or equal to the scope of the enablement. The scope of enablement, in turn, is that which is disclosed in the specification plus the scope of what would be known to one of ordinary skill in the art without undue experimentation.” National Recovery Techs. Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1195–96 (Fed Cir. 1999). [Although] a specification need not disclose what is well known in the art . . . , that general, oft-repeated statement is merely a rule 24 of supplementation, not a substitute for a basic enabling disclosure. . . . [W]hen there is no disclosure of any specific starting material or of any of the conditions under which a process can be carried out, undue experimentation is required; there is a failure to meet the enablement requirement that cannot be rectified by asserting that all the disclosure related to the process is within the skill of the art. It is the specification, not the knowledge of one skilled in the art, that must supply the novel aspects of an invention in order to constitute adequate enablement. Genentech Inc., 108 F.3d at 1366. Having considered the parties’ positions and evidence of record, summarized above, we determine that Petitioner has established that it is more likely than not that claims 1–5, 9, and 10 of the ’039 patent lack enablement. In particular, we are persuaded based on the record at this stage of the proceeding that the Specification does not enable the full scope of the claims. The Specification focuses on dolastatin/auristatin derivatives and does not describe novel ADCs having non-dolastatin/auristatin derivative drug moieties. Ex. 1001, Abstract. For example, the Specification states that “there is a clear need in the art for dolastatin/auristatin derivatives having significantly lower toxicity, yet useful therapeutic efficiency [sic]” and purports that “[t]hese and other limitations and problems of the past are addressed by the present invention.” Id. at 4:25–29 (emphasis added). Moreover, each embodiment, example, figure, and assay disclosed in the Specification appears to use a drug moiety that is a dolastatin/auristatin derivative. See, e.g., Ex. 1001, Abstract, 4:22–29, 50:56–52:30, 71:19–22, 131:23–48, Figs. 1–19, Examples 2–16. Claim 1, however, recites ADCs” slip op. at 24
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“As acknowledged by both Petitioner and Patent Owner, this proceeding and PGR2021-00042 involve essentially identical issues. See 6 Reh’g Req. 15; Prelim. Resp. 19 n.3. In particular, we note that claims 6–8 of the ’039 patent challenged in PGR2021-00042 depend from claim 1 of the ’039 patent challenged in this proceeding, and are challenged under essentially identical written description, enablement and prior art issues. Reh’g Req. 15. Thus, our decision to institute post-grant review in PGR2021-00042 effectuates our review of issues almost identical to those in this proceeding. Petitioner further argues that this proceeding and PGR2021-00042 involve related issues, and that “considerations of efficiency . . . therefore counsel in favor of the Board reviewing the patentability of claims 1–5, 9, and 10 of the ’039 patent as well.” Id. We agree with Petitioner that, because we are to review practically the same issues of this proceeding in PGR2021-00042, considerations of efficiency (i.e., efficient use of the Board’s resources) strongly weigh in favor of also instituting trial in this proceeding. See Reh’g Req. 15. Considering all the factors together as a whole, we determine that, under the particular circumstances of this case, the interests of efficiency and integrity of the patent system weigh against exercising discretionary denial under § 324(a). Accordingly, we grant Petitioner’s Request for Rehearing and decline to exercise our discretion to deny institution. We consider the merits of the Petition with respect to the threshold for institution below.” slip op. at 6
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Instituted
“skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation.’” Genentech Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997) (quoting In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993)) (alteration in original). “The enablement requirement ensures that the public knowledge is enriched by the patent specification to a degree at least commensurate with the scope of the claims. The scope of the claims must be less than or equal to the scope of the enablement. The scope of enablement, in turn, is that which is disclosed in the specification plus the scope of what would be known to one of ordinary skill in the art without undue experimentation.” National Recovery Techs. Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1195–96 (Fed Cir. 1999). [Although] a specification need not disclose what is well known in the art . . . , that general, oft-repeated statement is merely a rule 24 of supplementation, not a substitute for a basic enabling disclosure. . . . [W]hen there is no disclosure of any specific starting material or of any of the conditions under which a process can be carried out, undue experimentation is required; there is a failure to meet the enablement requirement that cannot be rectified by asserting that all the disclosure related to the process is within the skill of the art. It is the specification, not the knowledge of one skilled in the art, that must supply the novel aspects of an invention in order to constitute adequate enablement. Genentech Inc., 108 F.3d at 1366.” slip op. at 24
Claim construction§ 102 anticipation§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 10,808,039 - Samsung Electronics Co., Ltd. v. Nucurrent, Inc.Rehearing grantedPTAB · Feb 7, 2020 · IPR2019-00861 · APJ Wesley B Derrick · IPR · Rehearing
The Board granted Samsung’s rehearing request and instituted review on all challenged claims and all grounds, finding a reasonable likelihood of prevailing on the asserted obviousness grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“in an unusual place in time. As noted, the Petition was filed (March 22, 2019), and the Preliminary Response submitted (June 26, 2019), before promulgation of our 2019 Trial Practice Guide Update (July 16, 2019). At the time of filing, Petitioner could not have known of the guidance set forth in the 2019 Trial Practice Guide Update concerning multiple petitions. Although Petitioner “could, in theory, have filed a single petition including all of its grounds within the page limits,” Petitioner, acting on the guidance available to it at the time of filing, “determined that filing two separate IPR petitions allowed each asserted ground of unpatentability to be presented in a more clear and comprehensive manner.” Req. 4. Thereafter, the 2019 Trial Practice Guide Update issued on the same day as our conference call to discuss the parties’ requests for additional briefing (July 16, 2019), and these concurrent events would not have allowed the parties time to review and apply the guidance in a manner that would have permitted them to tailor their requests for additional briefing or their filing strategy to accommodate the newly-issued guidance. In the subsequent briefing by both parties, the impact of the 2019 Trial Practice Guide Update, although discussed briefly, was not the primary focus. See generally Reply; Sur-Reply. This is understandable, given the breadth of the complex estoppel issues raised in this case as well as the contemporaneous issuance of the guidance in the 2019 Trial Practice Guide Update. Thus, on account of the timing of the Petition filed in this case relative to other events, and based on the reasoning presented by Petitioner in the Request, which we discuss in more detail below, we are persuaded that we should reconsider whether to allow institution of inter partes review based on the arguments presented in the Petition.” slip op. at 11
- Parallel petitionsInstitutedInstituted
“review, addresses Lee-based grounds rooted in anticipation (and obviousness over Lee and secondary references). IPR2019-00859, Paper 1. The petition in IPR2019-00861 addresses Partovi-based grounds rooted in obviousness. IPR2019-00861, Paper 1. In the Request, Petitioner argues that there is “almost no overlap” between the Partovi-based Petition in this case and Petitioner’s Lee-based petition in IPR2019-00859 (Req. 3), noting that “all grounds of the instant Petition rely on Partovi as the primary reference while the ’859 proceeding grounds rely on Lee as the primary reference” (id. at 2). In support, Petitioner provides a table depicting the various grounds presented in the two cases, and the differences between the two. Id. at 3. Petitioner also argues that “Partovi’s teachings are not redundant of Lee’s” because the references “disclose the claimed features of the ’046 patent in different ways.” Id. More particularly, Petitioner explains that “Lee is generally focused on an inductor structure” while “Partovi contains a more complete and clear disclosure of methods and circuitry for operating inductors,” which is important because the “dependent claims involve additional circuitry used in an inductor’s operation.” Id. at 4. Although Petitioner acknowledges that it “could, in theory, have filed a single petition including all of its grounds within the page limits,” Petitioner contends that “doing so would have resulted in a reduction in the thoroughness and completeness of the analysis presented due to the large number of challenged claims.” Id. Specifically, Petitioner argues that “NuCurrent chose to assert 98 claims from four patents against Samsung in a parallel district court litigation” and that Petitioner had to file two petitions in order to address “the sheer number of claims at issue.” Id. at 5. On this record, we are persuaded that Petitioner’s arguments concerning the differences between the petitions, and Petitioner’s reasons for presenting its arguments in two petitions, as it did, merit reconsideration of our denial of institution. The differences between the petitions in this instance, as explained by Petitioner, support its position that there is a need for the Partovi reference to distinctly address certain limitations of the dependent claims. The number of claims asserted against Petitioner in corresponding litigation, as well, is a factor enumerated in the 2019 Trial Practice Guide Update as a circumstance in which more than one petition may be necessary. 2019 Trial Practice Guide Update, 26 (“circumstances in which more than one petition may be necessary” include “when the patent owner has asserted a large number of claims in litigation”). We note again that although Patent Owner was authorized to file a ten-page response to Petitioner’s Request (Dec. 5), in which it could have addressed, inter alia, Petitioner’s arguments about the differences between these Petitions or the number of claims at issue, Patent Owner did not file a response to the Request, leaving Petitioner’s contentions regarding rehearing undisputed on the present record.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)InstitutedInstituted
“Rehearing, on this record, we do not agree that proceeding to trial would be an inefficient use of Board resources. The number of Patent Owner’s patents that are being challenged is not a reason to deny institution. “[R]ecogniz[ing] the potential for abuse of the review process by repeated attacks on patents,” the Board has enumerated factors that guide its discretion as to whether to deny institution under § 314(a), “especially as to ‘follow-on’ petitions challenging the same patent as challenged previously in an IPR . . . proceeding.” Trial Practice Guide Update 9 (August 2018) (quoting General Plastic, slip op. 16–17). Although a multiplicity of grounds relying on a number of principal references addressed in a number of separate petitions may raise concerns regarding fairness in some instances, we find no such concerns here, for largely the same reasons articulated above with respect to our disposition of the Request for Rehearing. In these circumstances, as discussed above, we are not persuaded that defending against both challenges is unfair, abusive, or unduly burdensome for Patent Owner. Accordingly, we decline to exercise our discretion to deny institution under 35 U.S.C. § 314(a). See Comcast Cable Communications, LLC v. Veveo, Inc., IPR2019-00237, Paper 15 at 14–15 (PTAB Jul. 5, 2019) (instituting inter partes review on two petitions addressing the same patent).” slip op. at 29
- BurdenInstitutedInstituted
“and 28, we discern no deficiency in Petitioner’s characterization of the cited references and the knowledge in the art, or in Petitioner’s assertions as to the reasonable inferences an ordinary artisan would have made from those references, to the extent the ground relies on AC current and voltage and the inherent characteristics of inductors for the limitation “wherein when an electrical current is propagated within at least the first conductor layer, a magnetic flux is generated within the inductor when a change occurs in at least one of a frequency, a magnitude, or a waveform shape of the propagated electrical current.” Because this showing is sufficient to demonstrate teaching of this claim element was in the prior art as alleged, we need not reach Petitioner’s alternative reasoning grounded on changes in the duty cycle as to frequency and waveform shape meeting this particular claim limitation. Thus, based on the information presented at this stage of the proceeding, Petitioner has shown sufficiently that there is a reasonable likelihood that it would prevail in establishing the unpatentability of independent claims 1 and 28 as obvious over Partovi in view of Chiang.” slip op. at 44
Claim constructionDiscretionary denialcites Phillips · KSRPatents in suitUS 9,300,046 - Samsung Electronics Co., Ltd. v. Nucurrent, Inc.Rehearing grantedPTAB · Feb 7, 2020 · IPR2019-00860 · APJ Kristina M Kalan · IPR · Rehearing
The Board granted Samsung’s rehearing request and instituted review of claims 1–8, 10, 12, 13, 15–22, and 24–30 on every asserted obviousness ground.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“On this record, we are persuaded that Petitioner’s arguments concerning the differences between the Petitions, and Petitioner’s reasons for presenting its arguments in two Petitions, as it did, merit reconsideration of our denial of institution. The differences between the Petitions in this instance, as explained by Petitioner, evince a need for the Partovi reference to distinctly address certain limitations of the dependent claims. The number of claims asserted against Petitioner in corresponding litigation, as well, is a factor enumerated in the 2019 Trial Practice Guide Update as a circumstance in which more than one petition may be necessary. 2019 Trial Practice Guide Update, 26 (“circumstances in which more than one petition may be necessary” include “when the patent owner has asserted a large number of claims in litigation”). We note again that although Patent Owner was authorized to file a ten-page response to Petitioner’s Request (Dec. 5), in which it could have addressed, inter alia, Petitioner’s arguments about the differences between these Petitions or the number of claims at issue, Patent Owner did not file a response to the Request, leaving Petitioner’s contentions regarding rehearing undisputed on the present record.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“Rehearing, on this record, we do not agree that proceeding to trial would be an inefficient use of Board resources. We also do not agree that the number of Patent Owner’s patents that are being challenged is a reason to deny institution. “[R]ecogniz[ing] the potential for abuse of the review process by repeated attacks on patents,” the Board has enumerated factors that guide its discretion as to whether to deny institution under § 314(a), “especially as to ‘follow-on’ petitions challenging the same patent as challenged previously in an IPR . . . proceeding.” Trial Practice Guide Update 9 (August 2018) (quoting General Plastic, slip op. 16–17). Although a multiplicity of grounds relying on a number of principal references addressed in a number of separate petitions may raise concerns regarding fairness in some instances, we find no such concerns here, for largely the same reasons articulated above with respect to our disposition of the Request for Rehearing. In these circumstances, as we have already discussed above, we are not persuaded that defending against both challenges is unfair, abusive, or unduly burdensome for Patent Owner. Accordingly, we decline to exercise our discretion to deny institution under 35 U.S.C. § 314(a). See Comcast Cable Communications, LLC v. Veveo, Inc., IPR2019-00237, Paper 15 at 14–15 (PTAB Jul. 5, 2019) (instituting inter partes review on two petitions addressing the same patent).” slip op. at 27
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R. § 42.100 (2019)). Under Phillips, claim terms are generally afforded “their ordinary and customary meaning,” read “in the context of the entire patent, including the specification.” Phillips, 415 F.3d at 1312–13. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner does not propose a construction for any of the limitations of the claims. Pet. 13 (citing Ex. 1002 ¶ 37). Patent Owner also declines to address the construction of the claims. See generally Prelim. Resp. We decline to construe any claim term of the ’960 patent because it is not necessary to do so in reaching our decision that Petitioner has established a reasonable likelihood that it would prevail in establishing the unpatentability of at least one challenged claim.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons set forth above, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’960 patent. Thus, we institute an inter partes review. IV. ORDER Accordingly, it is: ORDERED that Petitioner’s Request for Rehearing is granted; FURTHER ORDERED that an inter partes review is instituted on each of the grounds asserted in the Petition; and” slip op. at 49
Claim constructionDiscretionary denialcites Phillips · KSRPatents in suitUS 8,680,960 - Palo Alto Networks, Inc. v. Finjan, Inc.Rehearing grantedPTAB · May 19, 2017 · IPR2016-00151 · APJ Miriam L Quinn · IPR · Rehearing
The Board clarified the construction of “a call to a first function” but left unchanged its determination that claims 1–8, 10, and 11 were not shown unpatentable over Ross.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“proceeding. Paper 51 (“Final Dec.”). On April 14, 2017, Palo Alto Networks, Inc. (“Petitioner”) filed a Request for Rehearing. Paper 52 (Req. Reh’g.). Petitioner’s Request urges the Board to review the construction of “a call to a first function” for consistency with the construction given to the same term in our Final Written Decision in IPR2015-01979.2 We agree with Petitioner that the construction of “a call to a first function” must be consistent with our determination in IPR2015-01979. Accordingly, we hereby modify our Final Written Decision in this proceeding to reflect that the construction for the term “a call to a first function” means “a statement or instruction in the content, the execution of which causes the function to provide a service.” That construction remains, however, consistent with our analysis and determinations made in our Final Written Decision, and therefore requires no modification of our conclusions. For example, at page 8 of that Decision we stated that “we determine that the ‘call’ is a statement or instruction in the content, the execution of which causes the function to provide a service.” Final Dec. 8. Accordingly, the last sentence of the first paragraph in page 9 of the Final Written Decision is modified to repeat what we stated earlier in page 8 of the Decision: “we determine that a ‘call to a first function’ means a statement or instruction in the content, the execution of which causes the function to provide a service.”” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Petitioner advocates. The word “call” is recited in claim 1 as a noun, and is the statement or instruction included in the content that causes the first function to provide a service. Final Dec. 7; Ex. 1001, 17:34−36. The word “invoking” appears elsewhere in the claim in connection with the transmission of the call’s input, which occurs “when the first function is invoked.” Ex. 1001, 17:39−40. The claim language is straightforward: the received content includes a call to a first function, and when that same first function is invoked, the function’s input is transmitted to the security computer. In summary, Petitioner’s request urges us to view the claim construction as allowing the call included in the received content to request the services of a function different from the function in the call statement or instruction. To illustrate, if the content states “call function X” but instead, during runtime, function Y is invoked, Petitioner asserts that this scenario would be a “call” to function Y, and therefore meet the claim. As stated above, however, the claim language does not support this reading. The call to the first function must be included in the content, and it is the same first function that is invoked later in the claim. Our claim construction does not change the plain reading of the claim language. Therefore, the execution of the statement or instruction included in the content must cause the function identified in the statement or instruction to provide a service. To illustrate, if the content states “call function X,” during runtime, function X must be invoked. Ross,3 as we discuss in our Final Written Decision, does not do this. See Final Dec. 17−19 (concluding that Ross invokes indirectly the hook function without any need to include a call to that hook function).” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“construction as allowing the call included in the received content to request the services of a function different from the function in the call statement or instruction. To illustrate, if the content states “call function X” but instead, during runtime, function Y is invoked, Petitioner asserts that this scenario would be a “call” to function Y, and therefore meet the claim. As stated above, however, the claim language does not support this reading. The call to the first function must be included in the content, and it is the same first function that is invoked later in the claim. Our claim construction does not change the plain reading of the claim language. Therefore, the execution of the statement or instruction included in the content must cause the function identified in the statement or instruction to provide a service. To illustrate, if the content states “call function X,” during runtime, function X must be invoked. Ross,3 as we discuss in our Final Written Decision, does not do this. See Final Dec. 17−19 (concluding that Ross invokes indirectly the hook function without any need to include a call to that hook function).” slip op. at 4
Claim construction§ 103 obviousnessPatents in suitUS 8,141,154
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.