• Mercedes-Benz USA, LLC v. Carucel Investments, L.P.Rehearing denied
  PTAB · Mar 3, 2021 · IPR2019-01298 · APJ Thomas L Giannetti · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving in place its decision that all challenged claims were unpatentable.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. A rehearing request is not an opportunity for the requesting party to reargue its case or merely to express disagreement with the Final Written Decision. Nor is it an opportunity for the moving party to present new arguments that were not in its original submissions.” slip op. at 3

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “As discussed further below, after considering all the evidence, we provided in the Final Written Decision a detailed analysis of Patent Owner’s arguments, and rejected Patent Owner’s proposed limitations for “mobile unit,” determining that the ordinary meaning should apply and no further construction was necessary. Final Dec. 14–26. D. The Final Written Decision Our analysis of “mobile unit” in the Final Written Decision was guided by Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Final Dec. 11. In summary, for the reasons that follow, we are not persuaded that our analysis of “mobile unit” under Phillips was incorrect, or that we overlooked or misapprehended Patent Owner’s arguments or evidence in that analysis.” slip op. at 5

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 7,221,904
• Mercedes-Benz USA, LLC v. Carucel Investments, L.P.Rehearing denied
  PTAB · Mar 3, 2021 · IPR2019-01404 · APJ Daniel J Galligan · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving claims 1, 4–11, and 14–23 unpatentable based on its construction of “mobile device” and findings on combining CDMA and TDMA.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. A rehearing request is not an opportunity for the requesting party to reargue its case or merely to express disagreement with the Final Written Decision. Nor is it an opportunity for the moving party to present new arguments that were not in its original submissions.” slip op. at 3

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “We disagree that we misapprehended or overlooked any matters in addressing Patent Owner’s proposed construction for “mobile device.” Rather, we provided a comprehensive analysis of the term “mobile device.” anything that was overlooked or misapprehended in this analysis, as required by 37 C.F.R. § 42.71(d). Instead, Patent Owner merely expresses its disagreement with our conclusions and proceeds to reargue points and evidence already considered and rejected in the Final Written Decision. This approach is not proper in a rehearing request. Furthermore, Patent Owner’s own arguments show the error in its proposed construction. For example, Patent Owner argues that the recited “mobile device” “must register with and be able to directly communicate with the cellular network.” PO Resp. 13; Req. Reh’g 1 n.1. Yet, Patent Owner acknowledges that “the claims of the ’023 Patent require the apparatus/movable base station to communicate directly with the cellular network (and not the ‘mobile device’).” Req. Reh’g 3 (emphasis added). As we pointed out in the Final Decision, the only claimed communication involving the mobile device is between the claimed “apparatus” (the mobile base station) and the mobile device, and Patent Owner acknowledges that this communication need not be cellular. Final Dec. 14 (citing PO Sur-reply 9). Thus, Patent Owner’s arguments undermine its proposed construction.” slip op. at 3

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundOther

    “[t]he Board erred in finding that that ‘CDMA and TDMA are not incompatible’ by improperly disregarding substantial evidence set forth by Patent Owner and its expert—that undermines any expectation of success and would have discouraged a [person of ordinary skill in the art] from attempting Petitioner’s combinations.” Req. Reh’g 14 (citing Final Dec. 79). Patent Owner does not attempt to identify any specific errors in citing pages from Patent Owner’s written submissions and testimony from its declarant. Req. Reh’g 14 n.31. We disagree that we misapprehended or overlooked any matters in this regard. Rather, we considered Patent Owner’s submissions and disagreed with them, finding instead that the record demonstrated that CDMA and TDMA can be combined, and we relied on, among other evidence, a prior art reference that expressly discloses a combination of CDMA and TDMA. Final Dec. 56–57 (citing Ex. 1033), 79. We further found that a person of ordinary skill in the art would have had reason to make the proposed combinations and would have had a reasonable expectation of success in doing so. Final Dec. 57–58, 79–81. slip op. at 6

  Claim construction§ 103 obviousness
  Patents in suitUS 7,979,023
• Juniper Networks, Inc. v. Finjan, Inc.Rehearing denied
  PTAB · Jul 16, 2019 · IPR2019-00060 · APJ Miriam L Quinn · IPR · Rehearing

  The Board granted rehearing only to address the overlooked construction dispute, but again denied institution because Jensen did not teach “mobile protection code.”

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “(“Dec. on Inst.”). The panel concluded that Petitioner had not shown a reasonable likelihood of prevailing in the asserted obviousness grounds because, for a particular ground, Petitioner failed to demonstrate sufficiently that Jensen1 teaches “mobile protection code.” Dec. on Inst. 11−12.2 Petitioner has filed a Request for Rehearing. Paper 8 (“Req. Reh’g”). Petitioner argues that the scope for the claim term “mobile protection code” was in dispute, and that we “failed to resolve the key claim construction dispute between the parties.” Id. at 1. According to Petitioner, rehearing is warranted to resolve the claim construction dispute and “fix the plain error in the Institution Decision.” Id. We are persuaded that in failing to address Petitioner’s construction, we overlooked the matter raised in Petitioner’s Request for Rehearing. Nevertheless, for the reasons discussed infra, after giving due consideration to Petitioner’s argument, we are persuaded that our decision to deny institution was correct, and therefore we deny the request insofar as it calls upon us to institute trial.” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “(“Dec. on Inst.”). The panel concluded that Petitioner had not shown a reasonable likelihood of prevailing in the asserted obviousness grounds because, for a particular ground, Petitioner failed to demonstrate sufficiently that Jensen1 teaches “mobile protection code.” Dec. on Inst. 11−12.2 Petitioner has filed a Request for Rehearing. Paper 8 (“Req. Reh’g”). Petitioner argues that the scope for the claim term “mobile protection code” was in dispute, and that we “failed to resolve the key claim construction dispute between the parties.” Id. at 1. According to Petitioner, rehearing is warranted to resolve the claim construction dispute and “fix the plain error in the Institution Decision.” Id. We are persuaded that in failing to address Petitioner’s construction, we overlooked the matter raised in Petitioner’s Request for Rehearing. Nevertheless, for the reasons discussed infra, after giving due consideration to Petitioner’s argument, we are persuaded that our decision to deny institution was correct, and therefore we deny the request insofar as it calls upon us to institute trial.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “1 Protection Wrappers: A Simple and Portable Sandbox for Untrusted Applications, Proceedings on the 8th ACM SIGOPS European Workshop on Support for Composing Distributed Applications, filed in the record as Exhibit 1006. 2 We also exercised our discretion under 35 U.S.C. §§ 314(a) and 325(d) and denied institution. Petitioner does not challenge the exercise of discretion in this request for rehearing.” slip op. at 2

  • Other 314aInstitution denied discretionary otherInstitution denied

    “1 Protection Wrappers: A Simple and Portable Sandbox for Untrusted Applications, Proceedings on the 8th ACM SIGOPS European Workshop on Support for Composing Distributed Applications, filed in the record as Exhibit 1006. 2 We also exercised our discretion under 35 U.S.C. §§ 314(a) and 325(d) and denied institution. Petitioner does not challenge the exercise of discretion in this request for rehearing.” slip op. at 2

  Claim constructionDiscretionary denial
  Patents in suitUS 7,647,633
• Aver Information Inc. / Ipevo, Inc. v. Pathway Innovations And Technologies, Inc.Rehearing denied
  PTAB · May 8, 2019 · IPR2017-02108 · APJ Norman H Beamer · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, finding no overlooked or misapprehended matter in its denial of the motion to amend proposed substitute claims 21–25 and 27 as obvious.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “In our Final Decision, we construed “a video stream comprising a series of frame images” as “a series of frame images captured automatically, but not necessarily continuously at a constant rate.” Decision 14. Because this exact language was added to the claim by the motion to amend, we could not have construed it earlier. We do not agree, however, that Patent Owner was denied “an opportunity to present argument under the Board’s new construction.” Request 1. Patent Owner has long been on notice that construction of the term “video,” and the distinction between still frame images and an image made up of a video stream, was central to the case. In particular, Petitioner, relying on its expert, argued that a video image is made up of a series of still images: “The plurality of still images, which are captured, constitute the video image.” Paper 3, 9; Ex. 1020 ¶ 24; see also Paper 16, 11 (“still images make up the video image”). During cross examination, Patent Owner’s testimony supported the view that a single frame image of a video stream is essentially the same as a still frame image. Rodriguez Dep. 13:14–19, 14:6–13, 15:12–16, 16:14−20. Petitioner emphasized that only “in some scenarios, a series of frame images can form a video image. . . .” Paper 16, 10. In arguing that it would have been obvious to modify the prior art Morichika reference to use a video camera in place of a still camera, Petitioner asserted that such substitution amounted to “continuously capturing images of a target area using a video camera [to]” slip op. at 4

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “amounts to a disagreement with the Board’s findings on the motivation to combine references. Patent Owner does not demonstrate that the Board misapprehended or overlooked the applicable law. Request 6–14. Patent Owner argues, “the Board provided vague, generalized combinations and did not mention its own claim construction in its obviousness analysis, leaving the specific basis for its legal conclusion unclear.” Request 8. Patent Owner further asserts that the Board applied “a double standard” because, “the Board’s construction of ‘video stream comprising a series of frame images’ never appears in the obviousness analysis.” Request 10. We disagree with both arguments. To the contrary, the Board relied on its claim construction in its obviousness findings when it stated, “as discussed above . . . the distinction between capturing a series of still frame images and capturing a video stream of frame images, is that a video stream is made up of a series of frame images that are automatically captured.” Final Decision 44. Nothing was misapprehended or overlooked in making those determinations. Patent Owner further argues, “no motivation to entirely replace the still image camera with a video camera and separate video processor is specifically taught or suggested.” Request 9, see also Request 11. However, the Board relied on extensive teachings in the art that established such a motivation. Final Decision 35–43.” slip op. at 9

  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,508,751
• Semiconductor Components Industries, LLC (D/B/A On Semiconductor) v. Power Integrations, Inc.Rehearing denied
  PTAB · Dec 21, 2017 · IPR2016-00995 · APJ Daniel N Fishman · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving claims 26 and 27 unpatentable as anticipated by MC33362.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “review the decision for an “abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision,” and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the record. 37 C.F.R. § 42.71(d). A request for rehearing is not an opportunity to present new arguments. See id. An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for petitioner

    “arguments. Our claim construction made clear in interpreting “multi-function circuit” that we agree with Patent Owner that the circuit is separate and distinct from the recited “control circuit” in the sense that the claim recites two distinct elements. Dec. 18. However, our interpretation further determined that although we agree “that the multi-function circuit and the control circuit are separate and distinct components in the claims, the claim language does not require that the functions performed by the two distinct circuits must be similarly separate and distinct.” Id. at 22. We further observed that, contrary to Patent Owner’s assertions, the Specification of the ’908 patent mentions certain functions of the multi-function circuit that are clearly tightly coupled to the “core regulation” function of the recited “control circuit.” Id. at 24–25 (e.g., shutting down the power supply in response to detecting over-voltage or under-voltage conditions). Thus, our Decision is consistent with our interpretation of “multi-function circuit” and expressly disagrees with Patent Owner’s arguments that the functions of the two circuits must also be separate and distinct.” slip op. at 3

  Claim construction
  Patents in suitUS 6,538,908
• General Plastic Industrial Co., Ltd. v. Canon Kabushiki KaishaRehearing denied
  PTAB · Sep 6, 2017 · IPR2016-01359 · APJ Sheila F Mcshane · IPR · Rehearing

  The Board denied rehearing of the institution denials in IPR2016-01357 through IPR2016-01361, finding no abuse of discretion or overlooked issue; it granted the request for an expanded panel.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “B. Requests for Rehearing A party requesting rehearing has the burden to show a decision should be modified by specifically identifying all matters the party believes were misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 5

  • Other 314aInstitution denied discretionary otherDecided for patent owner

    “Our intent in formulating the factors was to take undue inequities and prejudices to Patent Owner into account. Thus, factor 3 is directed to Petitioner’s potential benefit from receiving and having the opportunity to study Patent Owner’s Preliminary Response, as well as our institution decisions on the first-filed petitions, prior to its filing of follow-on petitions. As discussed in our Decisions Denying Institution, we are concerned here by the shifts in the prior art asserted and the related arguments in follow-on petitions. See Dec. 11. Multiple, staggered petitions challenging the same patent and same claims raise the potential for abuse. The absence of any restrictions on follow-on petitions would allow petitioners the opportunity to strategically stage their prior art and arguments in multiple petitions, using our decisions as a roadmap, until a ground is found that results in the grant of review.14 All other factors aside, this is unfair to patent 14 The Board has addressed efficiency and potential prejudice induced by multiple petitions in multiple cases. See LG Electronics, slip op. at 12 (“The Board’s resources would be more fairly expended on first petitions rather than on a followon petition like the Petition in this case.”); Butamax Advanced Biofuels LLC v. Gevo, Case IPR2014-00581, slip op. at 12–13 (PTAB Oct. 14, 2014) (Paper 8) (“[T]he four obviousness grounds are ‘second bites at the apple,’ which use our prior decision as a roadmap to remedy Butamax’s prior, deficient challenge. owners and is an inefficient use of the inter partes review process and other post-grant review processes. Considering other factors (i.e., factors 2, 4, and 5) allows us to assess and weigh whether a petitioner should have or could have raised the new challenges earlier.” slip op. at 17

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDecided for patent owner

    “ii. Applying the Factors in These Cases As summarized above, supra Section II.B.2, we find that, in these cases, six of the seven factors weigh against institution. Petitioner disputes our findings on the issue of whether Petitioner “should have known” of the art asserted in the follow-on petitions under factor 2. We disagree with Petitioner’s characterization that invariably factor 2 could not be met because “patents or printed publications” necessarily “must be locatable by a reasonably diligent search.” Req. Reh’g 8. The relevant issue under factor 2 is not, as Petitioner has framed it, whether the prior art references relied on in the follow-on petitions constitute printed publications, but whether they could have been found with reasonable diligence. Thus, even for printed publications, a petitioner is free to explain why a reasonably diligent search could not have uncovered the newly applied prior art. See Apotex Inc. v. Wyeth LLC, IPR2015-00873, slip op. at 6 (Sept. 16, 2015) (Paper 8) (describing “[w]hat a petitioner ‘could have raised,’” as including “prior art which a skilled searcher conducting a diligent search reasonably could have been expected to discover.”). Here, the record is devoid of any explanation why Petitioner could not have found the newly asserted prior art in any earlier search(es) through the exercise of reasonable diligence.” slip op. at 19

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted

    “panels to authorize, an expanded panel. See generally 35 U.S.C. § 6; 37 C.F.R. §§ 41.1–42.412; see also AOL Inc. v. Coho Licensing LLC, Case IPR2014-00771, slip op. at 2 (PTAB Mar. 24, 2015) (Paper 12) (“[P]arties are not permitted to request, and panels do not authorize, panel expansion.”). Our standard operating procedures, however, provide the Chief Judge with discretion to expand a panel to include more than three judges. PTAB SOP 1, 1–3 (§§ II, III) (Rev. 14); see id. at 1 (introductory language explaining that the Director has delegated to the Chief Judge the authority to designate panels under 35 U.S.C. § 6); see also In re Alappat, 33 F.3d 1526, 1532 (Fed. Cir. 1994) (providing that Congress “expressly granted the Commissioner the authority to designate expanded Board panels made up of more than three Board members.”). The Chief Judge may consider panel expansions upon a “suggestion” from a judge, panel, or party in a post-grant review. Id. at 3–4; see also Apple Inc. v. Rensselaer Polytechnic Inst., Case IPR2014-00319, slip op. at 2 n.1 (PTAB Dec. 12, 2014) (Paper 20) (expanded panel) (per curiam). The standard operating procedure exemplifies some of the reasons for which” slip op. at 4

  Claim constructionDiscretionary denial
  Patents in suitUS 8,909,094
• General Plastic Industrial Co., Ltd. v. Canon Kabushiki KaishaRehearing denied
  PTAB · Sep 6, 2017 · IPR2016-01357 · APJ Sheila F Mcshane · IPR · Rehearing

  The Board denied rehearing of the institution denials in five proceedings, finding no abuse of discretion or overlooked issue; it granted the request to expand the panel.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “B. Requests for Rehearing A party requesting rehearing has the burden to show a decision should be modified by specifically identifying all matters the party believes were misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 5

  • Other 314aInstitution denied discretionary otherDecided for patent owner

    “prejudices to Patent Owner into account. Thus, factor 3 is directed to Petitioner’s potential benefit from receiving and having the opportunity to study Patent Owner’s Preliminary Response, as well as our institution decisions on the first-filed petitions, prior to its filing of follow-on petitions. As discussed in our Decisions Denying Institution, we are concerned here by the shifts in the prior art asserted and the related arguments in follow-on petitions. See Dec. 11. Multiple, staggered petitions challenging the same patent and same claims raise the potential for abuse. The absence of any restrictions on follow-on petitions would allow petitioners the opportunity to strategically stage their prior art and arguments in multiple petitions, using our decisions as a roadmap, until a ground is found that results in the grant of review.14 All other factors aside, this is unfair to patent” slip op. at 17

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for patent owner

    “prejudices to Patent Owner into account. Thus, factor 3 is directed to Petitioner’s potential benefit from receiving and having the opportunity to study Patent Owner’s Preliminary Response, as well as our institution decisions on the first-filed petitions, prior to its filing of follow-on petitions. As discussed in our Decisions Denying Institution, we are concerned here by the shifts in the prior art asserted and the related arguments in follow-on petitions. See Dec. 11. Multiple, staggered petitions challenging the same patent and same claims raise the potential for abuse. The absence of any restrictions on follow-on petitions would allow petitioners the opportunity to strategically stage their prior art and arguments in multiple petitions, using our decisions as a roadmap, until a ground is found that results in the grant of review.14 All other factors aside, this is unfair to patent” slip op. at 17

  • BurdenDecided for patent owner

    “of the seven factors weigh against institution. Petitioner disputes our findings on the issue of whether Petitioner “should have known” of the art asserted in the follow-on petitions under factor 2. We disagree with Petitioner’s characterization that invariably factor 2 could not be met because “patents or printed publications” necessarily “must be locatable by a reasonably diligent search.” Req. Reh’g 8. The relevant issue under factor 2 is not, as Petitioner has framed it, whether the prior art references relied on in the follow-on petitions constitute printed publications, but whether they could have been found with reasonable diligence. Thus, even for printed publications, a petitioner is free to explain why a reasonably diligent search could not have uncovered the newly applied prior art. See Apotex Inc. v. Wyeth LLC, IPR2015-00873, slip op. at 6 (Sept. 16, 2015) (Paper 8) (describing “[w]hat a petitioner ‘could have raised,’” as including “prior art which a skilled searcher conducting a diligent search reasonably could have been expected to discover.”). Here, the record is devoid of any explanation why Petitioner could not have found the newly asserted prior art in any earlier search(es) through the exercise of reasonable diligence.” slip op. at 19

  Claim constructionDiscretionary denial
  Patents in suitUS 9,046,820
• Palo Alto Networks, Inc. v. Finjan, Inc.Rehearing denied
  PTAB · May 19, 2017 · IPR2015-01979 · APJ Miriam L Quinn · IPR · Rehearing

  The Board denied Palo Alto Networks’ rehearing request, leaving intact the finding that Khazan does not teach the second function limitation for claims 1 and 4.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “In sum, we are not persuaded that Petitioner’s arguments show an abuse of discretion in deciding the issue presented. Rather, we view Petitioner’s arguments as expressing a disagreement with our findings concerning Khazan’s disclosure. In our Final Written Decision we stated the reasons why we disagree with Petitioner’s view of Khazan, and are not persuaded by Petitioner’s rehearing request that the passages cited and explained during rehearing should alter our findings that Khazan does not teach invoking the second function with the input, only if that input is deemed safe. We reiterate our conclusion that Khazan invokes the target function, with its parameters as stated above, before any pre-monitoring code verifies those parameters. Final Dec. 49−53. Therefore, Khazan does not teach invoking the second function with the input, only if such invocation is deemed safe.” slip op. at 8

  • Prior constructionOther

    “B. CLAIM CONSTRUCTION ISSUE Petitioner argues that claim construction for the term “call to a first function” should be consistent across proceedings addressing the patent-at-issue. Req. Reh’g 13−14. We agree with Petitioner’s contention that the claim construction should be consistent. Petitioner, however, does not allege that the construction we have given the term in this proceeding should be altered or modified in any way. Accordingly, we have not been directed to any particular issue that we misapprehended or overlooked in this proceeding concerning the claim construction of a “call to a first function.”” slip op. at 9

  Claim construction
  Patents in suitUS 8,141,154
• Toyota Motor Corporation v. Blitzsafe Texas, LLCRehearing denied
  PTAB · Aug 31, 2016 · IPR2016-00419 · APJ Hung H Bui · IPR · Rehearing

  The Board denied Toyota’s rehearing request, leaving in place the denial of institution for claims 49–57, 62–64, 66, 68, 70, 71, 73–80, 94, 95, 97, 99–103, 106, 109–111, 113, 115, and 120 because Ohmura did …

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “We have reviewed Petitioner’s request for rehearing and carefully considered Petitioner’s arguments. However, we are not persuaded that the Board misapprehended or overlooked Petitioner’s arguments presented with respect to the patentability of claims 49–57, 62–64, 66, 68, 70, 71, 73–80, 94, 95, 97, 99–103, 106, 109–111, 113, 115, and 120 of the ’342 patent.” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “In contrast, all challenged claims of the ’342 patent require (1) “the portable device” to play (i.e., decode) an audio file, and (2) “the integration subsystem” to receive “audio generated by the portable device.” As explained in the Decision, we referred to the requirement that audio generated by the portable device as the result of playing the audio file as “the audio generated by the portable device” limitation, which was consistent with Dr. Thomas Matheson’s Declaration at ¶¶ 50–53. Decision 23; see also Matheson’s Declaration (Ex. 1120 ¶¶ 50–53).” slip op. at 5

  • Strike new argumentNew argument disregardedDenied

    “Second, Petitioner identifies numerous portions of Ohmura, for the first time, that it did not identify in the Petition or Reply. In particular, Petitioner contends the Board “misapprehended or overlooked the cited portions of Ohmura that disclose the functions of the construed ‘integration subsystem.’” See Req. Reh’g 10. However, we could not have misapprehended or overlooked portions of Ohmura that were not presented in the Petition or Reply. A request for rehearing is not an opportunity to present new arguments.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “As explained in the Decision, we rejected Petitioner’s proposed construction of “integration subsystem” because Petitioner’s proposed construction required the claimed “integration subsystem” to be a microprocessor or processor programmed to perform a method for wirelessly integrating a portable device for use with a car audio/video system, shown in FIG. 24. Decision 13–15. Instead, we construed the term “integration subsystem” as performing the functions as expressly defined by the Specification of the ’342 patent. Id. at 15 (citing Ex. 1101, 8:64–9:3).” slip op. at 7

  Claim construction
  Patents in suitUS 8,155,342
• Palo Alto Networks, Inc. v. Finjan, Inc.Rehearing denied
  PTAB · May 20, 2016 · IPR2015-02000 · APJ Thomas L Giannetti · IPR · Rehearing

  The Board denied Palo Alto Networks’ rehearing request, leaving in place the denial of institution for claims 1–22 because it showed no overlooked or misapprehended matter.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically 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 › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “least the following reasons. Under our rules a petition must set forth, for each claim challenged, “[h]ow the challenged claim is to be construed.” 37 C.F.R. § 42.104(b)(3). As we pointed out in our Decision, the Petition did not proffer a specific construction for the term “file cache.” Decision 6. Instead, Petitioner proposed the following blanket construction for all terms: “the BRI for every claim term to be its plain and ordinary meaning.” Pet. 12 (footnote omitted). Petitioner provided no further explanation or support for its proposal. Nor does Petitioner provide a construction for “file cache” in the rehearing request, or any explanation why the Board’s construction is incorrect. Thus, while Petitioner contends that the Patent Owner’s construction adopted by the Board is “unsupported by the ʼ731 patent claims, specification, or even any extrinsic evidence,” Petitioner provides no details as to what was allegedly overlooked or misapprehended by the Board. Req. Reh’g 7. Petitioner’s argument is unavailing because it shifts the burden of advancing a claim construction from the petitioner to the Board. The AIA statute is clear that the burden lies with Petitioner to demonstrate a reasonable likelihood of prevailing before an inter partes review is instituted. 35 U.S.C. § 314(a). Consequently, our rules require the petition to set forth a claim construction. See supra. Having failed to present a specific construction for “file cache” in its Petition, or to convince the Board that the term needed no further construction, Petitioner did not discharge its burden and therefore is not in a position to complain now that the Board chose an alternative construction presented by Patent Owner.” slip op. at 3

  • Strike new argumentNew argument disregardedDecided for patent owner

    “This argument could not have been overlooked or misapprehended because it was not presented in the Petition. The Petition’s argument on this issue was one paragraph long and raised two points. Pet. 12. First, Petitioner asserted that neither the parent nor grandparent applications disclosed a file cache because “the word ‘cache’ does not appear in either application.” Id. The second argument was that Patent Owner “tacitly admitted during prosecution” that the challenged claims were not entitled to the earlier date. Id. Both arguments were addressed by the Board in the Decision on Institution, at pages 11–13. The rehearing request cites no discussion in the Petition of the current assertion that the known Downloadables are lists. Moreover, the evidence relied on by Patent Owner to support this argument does not contradict the Board’s finding that the ’194 patent described a file cache. Patent Owner relies on the ʼ194 patent itself, which states: “A Downloadable is an executable application program, which is downloaded from a source computer and run on the destination computer.” Ex. 2001, col. 1, ll. 44–47. Thus, Petitioner’s argument that a “known Downloadable” is just a list and not a file is not supported by the ʼ194 patent. A rehearing request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed. See supra. It is not an opportunity to present new arguments. Petitioner’s argument that known Downloadables are lists was not raised by in the Petition and is not proper in a rehearing request.” slip op. at 6

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “because it was not presented in the Petition. The Petition’s argument on this issue was one paragraph long and raised two points. Pet. 12. First, Petitioner asserted that neither the parent nor grandparent applications disclosed a file cache because “the word ‘cache’ does not appear in either application.” Id. The second argument was that Patent Owner “tacitly admitted during prosecution” that the challenged claims were not entitled to the earlier date. Id. Both arguments were addressed by the Board in the Decision on Institution, at pages 11–13. The rehearing request cites no discussion in the Petition of the current assertion that the known Downloadables are lists. Moreover, the evidence relied on by Patent Owner to support this argument does not contradict the Board’s finding that the ’194 patent described a file cache. Patent Owner relies on the ʼ194 patent itself, which states: “A Downloadable is an executable application program, which is downloaded from a source computer and run on the destination computer.” Ex. 2001, col. 1, ll. 44–47. Thus, Petitioner’s argument that a “known Downloadable” is just a list and not a file is not supported by the ʼ194 patent.” slip op. at 6

  Claim construction§ 102 anticipation
  Patents in suitUS 7,418,731

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.