- General Plastic Industrial Co., Ltd. v. Canon Kabushiki KaishaRehearing deniedPTAB · 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 denialPatents in suitUS 8,909,094 - General Plastic Industrial Co., Ltd. v. Canon Kabushiki KaishaRehearing deniedPTAB · 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 denialPatents in suitUS 9,046,820 - General Plastic Industrial Co., Ltd. v. Canon Kabushiki KaishaRehearing deniedPTAB · May 19, 2016 · IPR2015-01966 · APJ Sheila F Mcshane · IPR · Rehearing
The Board denied rehearing and maintained its decision not to institute review of claims 1, 7–9, and 16 because neither challenge showed a reasonable likelihood of success.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION A party requesting rehearing has the burden to show a decision should be modified by specifically identifying all matters the party believes the Board 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 be indicated 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. 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). We address the General Plastic’s contentions outlined above, first with respect to the anticipation challenge and, then with respect to the obviousness challenge.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“construe[] [the claims at issue] to require that the recited sealing member must be of a one-piece or inseparable construction” or fail to apprehend that General Plastic was asserting that its anticipation challenge was based on a “part-time” analysis. See Req. Reh’g 2–3, 4–5. As explained in the Decision, we considered General Plastic’s assertion under the scenario where power transmitting member and fixed cover of the container are alleged “integrally combined”—that is, the “part-time” circumstances depicted in Figure 6 of Matsuoka—and found that the evidence was insufficient to support that view under the circumstances. See Dec. 15–18. Failure of General Plastic’s challenge does not equate to a requirement that the sealing member has to be of one-piece or inseparable construction, but instead reflects that, based on the evidence and argument presented and developed in the Petition, we did not find a reasonable likelihood that General Plastic would prevail on the anticipation challenge. As the Decision discusses, the Petition contains inconsistent mapping of the prior art onto the claim elements, and, contrary to General Plastic’s view of elements being “integrally combined,” Matsuoka instead discloses that the rotary power transmitting member is a part of copier, and not the toner container, and is detachable from the toner container.1 Id. at 17–18. This evidence is incongruent with a determination that General Plastic would have had a reasonable likelihood of prevailing on its anticipation challenge.” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“construe[] [the claims at issue] to require that the recited sealing member must be of a one-piece or inseparable construction” or fail to apprehend that General Plastic was asserting that its anticipation challenge was based on a “part-time” analysis. See Req. Reh’g 2–3, 4–5. As explained in the Decision, we considered General Plastic’s assertion under the scenario where power transmitting member and fixed cover of the container are alleged “integrally combined”—that is, the “part-time” circumstances depicted in Figure 6 of Matsuoka—and found that the evidence was insufficient to support that view under the circumstances. See Dec. 15–18. Failure of General Plastic’s challenge does not equate to a requirement that the sealing member has to be of one-piece or inseparable construction, but instead reflects that, based on the evidence and argument presented and developed in the Petition, we did not find a reasonable likelihood that General Plastic would prevail on the anticipation challenge. As the Decision discusses, the Petition contains inconsistent mapping of the prior art onto the claim elements, and, contrary to General Plastic’s view of elements being “integrally combined,” Matsuoka instead discloses that the rotary power transmitting member is a part of copier, and not the toner container, and is detachable from the toner container.1 Id. at 17–18. This evidence is incongruent with a determination that General Plastic would have had a reasonable likelihood of prevailing on its anticipation challenge.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“did not overlook or misapprehend that the engagement claw portion 443 of the rotary power transmitting member can be decoupled from rotary shaft portion 442 and gear 47. Req. Reh’g. 12–14. We also did not overlook or misapprehend Dr. Spingett’s statements concerning the removal of the engagement claw portion 443. Req. Reh’g. 14 (citing Ex. 1007 ¶ 72). The issue as to whether one of ordinary skill in the art would have envisioned the possibility of a disengagement problem between the rotary power transmitting member and fixed cover in the first place underlies the motivation, according to Dr. Springer, for testing the removal of the engagement claw portion. See Ex. 1007 ¶¶ 71, 72. Thus, we determined that the evidence on the possibility of disengagement problem between the rotary power transmitting member and fixed cover was insufficient to support why one of ordinary skill in the art would have modified Matsuoka in the manner alleged in the Petition. See Dec. 20. Even after considering General Plastics new twist on the same arguments in this Request of Rehearing, our view remains the same. We, therefore, are not persuaded that we misapprehended or overlooked any matter in making our determination that General Plastic did not establish a reasonable likelihood of prevailing on its obviousness challenge as to claims 1, 7–9, and 16 of the ’820 patent.” slip op. at 6
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,046,820
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.