- PTAB · Jul 1, 2019 · IPR2018-01743 · APJ Michael W Kim · IPR · Rehearing
The Board denied rehearing of its decision denying institution of inter partes review of claims 1–25, finding Petitioner had not shown an abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3); see also Dec. 11 (citing statute). Petitioner also has the burden to “specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d).” slip op. at 3
- Prior constructionPrior construction not adoptedDecided for patent owner
“Petition for the limitation of “application . . . that include interactive services.” See generally Req. Our own review of the Petition results in the same. See generally Pet. Pages 12–17 of the Petition provide constructions for several terms, including “application,” but not for the entirety of the limitation identified above. Indeed, Petitioner relied on the Board’s previous decisions for both explicit and implicit constructions of other claim limitations. See Pet. 13–15, 86, 93, 96, 104 (citing Ex. 1004, 40–41, 137– 138, 146–147, 151–152, 157–158, 161, 171). Noticeably absent, however, is the same for “application . . . that include interactive services.” We could not have misapprehended or overlooked a claim construction that was not made. Even if we delve somewhat into the cited portion of the Board’s previous decision, however, we remain unpersuaded. Specifically, while Petitioner’s quotation of the Decision is correct, the Decision later states: “We agree that the body of claim 4 does not require applications with interactive services, but ‘interactive services’ must be one kind of application that can be requested.” Ex. 1004, 136. So, while our analysis may have been altered somewhat, we are unpersuaded that Petitioner has met its burden of showing that maintaining the same result, denial of institution on this basis, would have been an abuse of discretion.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“and, Orbitz, LLC (“Petitioner”) filed a Petition to institute an inter partes review of claims 1–25 of U.S. Patent 7,072,849 B1 (Ex. 1002, “the ’849 Patent”). Paper 2 (“Pet.”). International Business Machines Corp. (“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). On March 19, 2019, we issued a Decision Denying Institution of Inter Partes Review. Paper 8 (“Decision”). On May 1, 2019, Petitioner filed a Request for Rehearing. Paper 11 (“Req.”).1” slip op. at 2
Claim constructionPatents in suitUS 7,072,849 - PTAB · Mar 4, 2019 · IPR2016-01905 · APJ Kristina M Kalan · IPR · Rehearing
Denied Patent Owner’s rehearing request; the Final Written Decision finding claims 1–9 unpatentable stands because Patent Owner showed no overlooked or misapprehended matter.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. THE REQUEST FOR REHEARING In pertinent part, 37 C.F.R. § 42.71(d) states: 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
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation foundDecided for patent owner
“Ex. 2050 ¶ 1245). More specifically, Patent Owner asserts that Strausz contains no disclosures related to drag reduction or drag reducing polymers, and that the Holtmyer references and Inaoka do not mention or suggest that one should solve drag reduction problems based on an asphaltene precipitation study. Req. 4 (citing PO Resp. 28–29; Ex. 1009; Ex. 2050 ¶124). Patent Owner additionally argues that we overlooked that the Petition contained no evidence that a person of ordinary skill in the art would have attempted to use solubility parameters to predict drag reduction success in a complex mixture, such as crude oil, prior to the priority date of the ’250 patent, and that Petitioner’s witness testified that he could not identify anyone who had ever previously done this. Req. 6 (citing PO Resp. 30; Ex. 2050 ¶¶23, 126; Ex. 2045, 140:23–141:13). In sum, Patent Owner states that there was no evidence that it would have been obvious to a person of ordinary skill in the art to have combined such disparate references without the benefit of hindsight and the disclosure of the ’250 patent itself. Req. 4 (citing PO Resp. 28–29; Ex. 2050 ¶ 125). We considered this evidence and argument in our Final Written Decision, in which we addressed the alleged use of impermissible hindsight to combine the prior art references’ teachings. Dec. 29–30. We found that Petitioner articulated a reason having rational underpinnings for making a proposed combination of the prior art teachings of the Holtmyer Publication, the Holtmyer Patent, and Strausz, as well as Inaoka and Strausz. Id. We also addressed the drag reduction limitation, taking into account testimony of Petitioner’s witness, Dr. Epps, and concluded that the weight of the 5 Declaration of Patent Owner’s witness, Dr. Brian Dunn. evidence presented in this case indicated that there are correlations between solubility parameters and drag reduction that one of ordinary skill in the art would have used to determine whether a particular drag reducing agent (“DRA”) would be effective in a particular liquid hydrocarbon. Id. at 30–33. Thus, we found Petitioner’s articulated reasoning was effective to support its contentions of obviousness. Id. at 29–33. Patent Owner’s mere disagreement with our analysis is not a proper basis for a rehearing request, and does not persuade us that we overlooked or misapprehended the above evidence and argument that Patent Owner provided.” slip op. at 4
- Obviousness (§103) › Analogous artAnalogous artDecided for patent owner
“In the Final Written Decision, we considered this evidence and argument, and found that Strausz was reasonably pertinent to one of the problems confronting the inventors of the ’250 patent, namely, solubility. Dec. 34. We explained that it was known prior to the ’250 patent that solubility of the drag reducing polymer in the liquid hydrocarbon was necessary to achieve drag reduction, and was an important requirement in preparing a more effective drag reducing polymer. Id. Thus, the inventors of the ’250 patent would have been concerned about whether the drag reducing polymer was soluble in the liquid hydrocarbon the polymer was treating. Id. We found Strausz, which is the source of the solubility parameter ranges recited in the ’250 patent, to be reasonably pertinent to this problem. Id. Patent Owner’s argument to the contrary does not persuade us that we overlooked or misapprehended that Strausz is reasonably pertinent to a problem with which the inventors of the ’250 patent were concerned.” slip op. at 5
- Strike new argumentNew argument disregardedDecided for petitioner
“reinforces the patentability of Claims 1–9 and shows that there is no disclosure in the Holtmyer references that suggests anything about the claimed asphaltenes, and there was no motivation to make the combination with Strausz.” Req. 2–3. Patent Owner does not direct us to any evidence or argument it previously made describing how a specific claim construction of the term asphaltene reinforces the patentability of claims 1–9, or how it shows that there would have been no reason to combine the teachings in the Holtmyer references with the teachings in Strausz. Thus, Patent Owner presents a new argument, and a request for rehearing is not an opportunity to present new arguments or evidence. Patent Owner also has not directed us to a claim construction that we misapprehended or overlooked. Patent Owner provided no claim construction analysis in its Response. See PO Resp., passim. Patent Owner directs us to a footnote in a section of the Patent Owner Response regarding Dr. Epps’s testimony, and argues we should have interpreted that footnote as a proposed claim construction. Req. 2–3, 11–12; see PO Resp. 12 n.5. Although Patent Owner could have developed an argument about claim construction of the term “asphaltene” in its Patent Owner Response, Patent Owner chose not to do so. Patent Owner’s choice to not include a proposed construction analysis of the term “asphaltene” prejudices Petitioner, because Petitioner has not been provided adequate notice and opportunity to address whether or how the term “asphaltene” should be construed, and hinders the Board’s ability to discern the argument and provide proper relief. We do not find Patent Owner’s request to sua sponte engage in claim construction of the term “asphaltene” recited in this footnote as a proxy for a proper claim construction analysis. Id.” slip op. at 7
Claim construction§ 103 obviousnessPatents in suitUS 8,450,250 - L’Oréal USA, Inc. v. Liqwd, Inc.Rehearing deniedPTAB · Oct 18, 2018 · PGR2018-00024 · APJ Christopher M Kaiser · PGR · Rehearing
The Board denied rehearing, leaving in place its denial of institution because Petitioner did not show an abuse of discretion in construing “bleach powder” or assessing written-description support.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). We “review [our] decision for an abuse of discretion.” Id. § 42.71(c). In addition, we may not consider an argument made in a request for rehearing unless the request “specifically identif[ies] . . . the place where [that argument] was previously addressed in a motion, an opposition, or a reply.” Id. § 42.71(d). After considering the Request for Rehearing, we determine that Petitioner has not demonstrated that we abused our discretion in denying institution. Accordingly, we deny the Request for Rehearing. slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“reconsider the issue of our construction of “bleach powder.” The parties agree that the specification of the ’954 patent does not contain an express definition of “bleach powder,” so we are required to give the term its “ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure.” Translogic, 504 F.3d at 1257; see Pet. 27–28 (arguing that, “[a]bsent any . . . clear intent, the BRI must be consistent with the interpretation that those skilled in the art would reach,” then offering no particular construction of “bleach powder”); Prelim. Resp. 29–30 (“A person of ordinary skill in the art would have understood that bleach powder combines persulfates with alkalinizing compounds . . . in a fine dry particulate form.” (citing only sources outside the ’954 patent)). In arguments that we may consider, the parties draw our attention to six sources of evidence about the ordinary understanding in the art of “bleach powder.” Req. 2–5 (citing Ex. 1039, 48:9–49:9); Prelim. Resp. 29– 30 (citing Ex. 1002, 15:45–65; Ex. 1011, 17; Ex. 2005, 6; Ex. 2007, 3; Ex. 2012 ¶¶ 34–36). There is evidence that supports Patent Owner’s view that the ordinary meaning of “bleach powder” is a powder that contains an alkalizing agent in addition to persulfates, as opposed to merely a persulfate powder. A textbook called “Hair Preparations” by Thomas Clausen and others states that, at least in paste bleaches, “a bleach powder” is used that “consists of a peroxodisulfate, an alkalinizing agent,” and other ingredients. Ex. 1011, 17. In the context of cream and gel bleaches, this reference teaches that “[p]eroxosulfate . . . can be added as a bleaching powder” but is silent about whether the “bleaching powder” contains any additional ingredients. Id. In a book chapter on “Hair Coloring” by Keith C. Brown, a “bleach booster” powder is discussed that “is usually a mixture of ammonium and potassium persulfates” and that has “metasilicates mixed in with the persulfates” to provide “[a]lkaline pH.” Ex. 2005, 6. Against this evidence is the testimony of Dr. Borish that “powder lighteners” or “bleach powders” include “persulfate salts.” Ex. 1039, 48:9–49:9. But Dr. Borish does not state affirmatively that the persulfate salt is all that is required for a powder to be a bleach powder, only that a persulfate salt is a necessary component of a bleach powder. Id. Accordingly, his testimony does not outweigh the evidence that, to a person of ordinary skill in the art, a bleach powder contains both a persulfate salt and an alkalizing agent. We are not persuaded, therefore, that we abused our discretion by construing “bleach powder” to require both of those components.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“After considering the Request for Rehearing, we determine that Petitioner has not demonstrated that we abused our discretion in denying institution. Accordingly, we deny the Request for Rehearing.” slip op. at 2
Claim constructionPatents in suitUS 9,668,954 - Snap-On Inc. v. Milwaukee Electric Tool CorporationRehearing deniedPTAB · Jan 25, 2016 · IPR2015-01244 · APJ Grace Karaffa Obermann · IPR · Rehearing
The Board denied the petitioner’s rehearing request, leaving in place institution on claims 1–6 and 8–19 for obviousness over Fohr, Sato, and Hallaj.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS We review our decision for an abuse of discretion. 37 C.F.R. § 42.71(c). Petitioner bears the burden of showing that the decision should be modified, by specifically identifying all matters Petitioner “believes the Board misapprehended or overlooked.” Id. at § 42.71(d). The central argument presented in the rehearing request is that the Board misapprehended or overlooked the broadest reasonable interpretation of the average discharge current limitation, which appears in each of the independent claims of the ’510 patent. Ex. 1005, claims 1, 9, 10, 12, 14–16,” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“ordinary and customary meaning, as would be understood by a person of ordinary skill in the art in the context of the entire disclosure of the patent. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Each argument presented in the request for rehearing depends upon a contention that the broadest reasonable interpretation of the average discharge current limitation includes “currents approaching infinity.” Rehearing Req. 10. We did not overlook or misapprehend that contention. Dec. 13 (treating Petitioner’s view that claim 1 recites “an open-ended average battery pack discharge current range from 20 amps up to infinity”) (quoting Pet. 20). We considered and rejected it based on the information presented. Id. at 13–16.” slip op. at 3
Claim constructionPatents in suitUS 7,999,510 - Snap-On Inc. v. Milwaukee Electric Tool CorporationRehearing deniedPTAB · Jan 25, 2016 · IPR2015-01242 · APJ Grace Karaffa Obermann · IPR · Rehearing
The Board denied Snap-On’s rehearing request, leaving review instituted on claims 1–8 and 10–11 over Fohr, Sato, and Hallaj; it found no error in declining the Johnson anticipation ground.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS We review our decision for an abuse of discretion. 37 C.F.R. § 42.71(c). Petitioner bears the burden of showing that the decision should be modified, by specifically identifying all matters Petitioner “believes the Board misapprehended or overlooked.” Id. at § 42.71(d). The central argument presented in the rehearing request is that the Board misapprehended or overlooked the broadest reasonable interpretation of the average discharge current limitation of claim 1, highlighted below:” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“ordinary and customary meaning, as would be understood by a person of ordinary skill in the art in the context of the entire disclosure of the patent. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Each argument presented in the request for rehearing depends upon a contention that the broadest reasonable interpretation of the average discharge current limitation includes “currents approaching infinity.” Rehearing Req. 10. We did not overlook or misapprehend that contention. Dec. 13 (treating Petitioner’s view that claim 1 recites “an open-ended average battery pack discharge current range from 20 amps up to infinity”) (quoting Pet. 20). We considered and rejected it based on the information presented. Id. at 13–14.” slip op. at 3
Claim constructionPatents in suitUS 7,554,290 - PTAB · Mar 10, 2015 · IPR2014-01249 · APJ James T Moore · IPR · Rehearing
The Board denied rehearing, leaving institution in place on the previously instituted claims and grounds; it rejected the challenges to denying claims 8–14 on Grounds 1 and 3 and other proposed grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW In a request for rehearing, the dissatisfied party must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously. 37 C.F.R. § 42.71(d). Upon a request for rehearing, the decision on a petition will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“We disagree with Petitioner’s assertion, and reading of the rules and statute. The appropriate rule, 37 C.F.R. § 42.104(b)(3), is not to be read in isolation, but also in conjunction with other Board rules, including 37 C.F.R. § 42.1(b), which requires the rules to be interpreted for securing the just, speedy, and inexpensive resolution of every proceeding. Requiring identification of the means, and sufficient means, avoids institution of a trial where the scope of the means-plus-function claims cannot be determined with precision. The trial potentially would be delayed and ultimately potentially incapable of decision on the merits of the grounds. Consequently, the panel has the discretion to determine if the trial might stray into grounds outside of the statutory authority provided for inter partes review proceedings.” slip op. at 3
- Other 314aInstitution denied discretionary otherDecided for patent owner
“First, it is a long-standing part of jurisprudence that the tribunal has discretion in the conduct of its proceedings. The language of § 314 provides us with discretion in that it expressly states that review “may not” be authorized in certain situations, but it does not require that a review “shall” be instituted in any situation. 35 U.S.C. § 314(a). In addition, we direct Petitioner’s attention to 35 U.S.C. § 316(b), which provides our rules are to take into account the “regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings.” Board trial rule 108 provides that the Board may “deny some or all grounds for unpatentability for some or all of the challenged claims.” 37 C.F.R. § 42.108(b). Petitioner’s position does not consider that the Board is charged with securing the just, speedy, and inexpensive resolution of every proceeding. 37 C.F.R. § 42.1(b). Trials are no exception; 37 C.F.R. § 42.100(c) requires us to administer proceedings such that the final written determination in an inter partes review be issued one year after the date of institution, except that the review may be extended by not more than six months for good cause shown. Our decision to proceed on a streamlined grouping of grounds, as opposed to all eleven, yet encompassing all claims, is a meaningful exercise of that discretion in administering the proceeding. Thus, we are not persuaded of error or an abuse of discretion in our decision not to institute those additional grounds.” slip op. at 5
- PTAB / AIA Trials › §315(e) estoppelNot reached
“The question of estoppel is premature at this point. Petitioner has not established the underlying conditions precedent with any persuasive evidence or argument that the Petitioner will be estopped ultimately. Presently, the trial is moving forward on all claims with the Petitioner having carried the initial burden on institution. Moreover, estoppel is but one of the many issues to be considered in litigation strategy, and we do not presume to make one factor so heavily weighted so as intrude into the province of counsel in making decisions as to how to proceed.” slip op. at 6
Claim constructionDiscretionary denialPatents in suitUS 6,362,850
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.