- PTAB · Jan 21, 2020 · IPR2019-01091 · APJ Michael R Zecher · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution for claims 1, 13, 25-27, 29, 30, 32, 34-36, and 166, finding no abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs if the decision (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision.” Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015). With this in mind, we address the arguments presented by Petitioner entities in turn.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“argument because it is a new argument presented for the first time in the Request for Rehearing. Although Petitioner entities affirmatively discuss the Rackspace IPR in the Petition, they only do so in the context of explaining that the Petition is not a follow-on petition to the petition filed in the Rackspace IPR because it involves a different petitioner, different claims, different asserted grounds of unpatentability, and different arguments and evidence. See Pet. 12–13. Indeed, Petitioner entities do not address squarely Francisco’s disclosure of periodically varying the algorithm in the Petition, much less take the position that periodically varying the algorithm is an “optional” feature. See generally Pet. Petitioner entities’ failure to address Francisco’s periodically varying algorithm was the reason for our concern with the Petition, especially given that Petitioner entities bear the burden to demonstrate unpatentability. See Dec. 24–25 (explaining that Petitioner entities “do[] not address Francisco’s disclosure of ‘periodically vary[ing]’ the algorithm . . . [which] is problematic as [Petitioner entities] bear[] the burden of demonstrating . . . unpatentability” (first alteration in original) (quoting Ex. 1003, 2:43)). We did, however, further explain that, even assuming that there may be an embodiment in Francisco in which the algorithm would not be varied (a fact that Petitioner entities did not establish), we would have still exercised our discretion to deny institution given the other shortcomings of the Petition. Id. at 25. Accordingly, our Decision Denying Institution did consider the possibility of embodiments where Francisco’s algorithm would not be varied, even though Petitioner entities did not address this issue squarely in the Petition itself.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“of the claim construction arguments presented by Petitioner entities with respect to the claim term “message digest function” included arguing that the specification of the ’420 patent does not define this claim term explicitly, but that the specification “generally describes it as ‘reduc[ing] a data block B of arbitrary length to a relatively small, fixed size identifier.” Dec. 11 (citing Paper 1 (“Pet.”) 40). Petitioner entities also argued that the specification cites well-known cryptographic hash functions as examples of a “message digest function”—namely, MD4, MD5, and Secure Hash Algorithm. Id. For purposes of claim construction, Petitioner entities did not rely on the two related, but different, patents previously challenged by Rackspace and Apple that include claims reciting the claim terms “message digest function or hash function”; nor do Petitioner entities predicate their claim construction arguments presented and developed in the Petition on the positions taken by PersonalWeb in those three cases. See generally Pet. Notably, Petitioner entities do not even allege in the Request for Rehearing that our construction of the claim terms “message digest function or hash function” is incorrect. In any event, Petitioner entities do not direct us to, nor are we aware of, controlling precedent that prevents PersonalWeb from raising a claim construction argument with respect to the claim terms “message digest function or hash function” that appear in independent claim 25 of the ’420 patent merely because PersonalWeb chose not to raise the same claim construction argument when responding to previous challenges of two related, but different, patents. The cases relied on by Petitioner entities to support their new argument are distinguishable from the circumstances presented here. See Req. Reh’g 3. The Google case involved an inter partes review in which a Board panel ultimately adopted previous district court” slip op. at 5
- BurdenDecided for patent owner
“argument presented by Petitioner entities because they only presented and developed this argument in the context of addressing claim 29, which depends from independent claim 25 and further recites “wherein the first content-dependent name for the particular sequence of bits comprises a digital fingerprint of the particular sequence of bits.” See Pet. 45–47. In essence, Petitioner entities request that we search through the entire Petition to find support for their theory that Francisco discloses the “message digest function or a hash function” recited in independent claim 25 because it would have been obvious to a person of ordinary skill in the art to implement Francisco’s system using a more complex hashing algorithm. If Petitioner entities desired for us to consider one portion of the Petition as supporting arguments presented and developed in another portion of the Petition, they should have provided citations to those portions with particularity. Moreover, the obviousness argument that Petitioner entities present with respect to dependent claim 29 appears to be setting forth an alternative ground based on proposed modifications to Francisco in view of the admitted prior art of the ’420 patent and secondary references. See Pet. 45– 47 (arguing that “Francisco meets th[e] limitation” of dependent claim 29, but further arguing that it would have been obvious to implement a more complex algorithm in Francisco because the ’420 patent “acknowledges that the MD5 hash algorithm . . . is prior art” and relying on Exhibit 1009 (Langer) and Exhibit 1010 (Browne) for teachings regarding MD5). The only statutory ground the Petition identifies under 37 C.F.R. § 42.104(b)(2) is obviousness under 35 U.S.C. § 103(a) in view of the combined teachings of Wyman and Francisco. See id. at 5. The Request for Rehearing does not explain why one of ordinary skill in the art would have understood the MD5 algorithm to be taught or suggested by the teachings of Wyman or Francisco, as opposed to substituting the MD5 algorithm taught in alleged admitted prior art or secondary references for Francisco’s algorithm. Stated differently, the Request for Rehearing does not suggest that we should have granted institution on any grounds other than under § 103(a) in view of the combined teachings of Wyman and Francisco. Accordingly, Petitioner entities have not persuaded us to modify the Decision Denying Institution with respect to claims 25 or 29.” slip op. at 8
Claim constructionPatents in suitUS 8,099,420 - PTAB · Jan 21, 2020 · IPR2019-01089 · APJ Michael R Zecher · IPR · Rehearing
The Board denied rehearing and left in place the denial of institution for claims 1, 13, 25–27, 29, 30, 32, 34–36, and 166, finding no abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs if the decision (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision.” Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015). With this in mind, we address the arguments presented by Petitioner entities in turn.” slip op. at 3
- BurdenDecided for patent owner
“argument presented by Petitioner entities because they only presented and developed this argument in the context of addressing claim 29, which depends from independent claim 25 and further recites “wherein the first content-dependent name for the particular sequence of bits comprises a digital fingerprint of the particular sequence of bits.” See Pet. 42. In essence, Petitioner entities request that we search through the entire Petition to find support for their theory that Francisco discloses the “message digest function or a hash function” recited in independent claim 25 because it would have been obvious to a person of ordinary skill in the art to implement Francisco’s system using a more complex hashing algorithm. If Petitioner entities desired for us to consider one portion of the Petition as supporting arguments presented and developed in another portion of the Petition, they should have provided citations to those portions with particularity.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“because it is a new argument presented for the first time in the Request for Rehearing. As we explained in the Decision Denying Institution, the extent of the claim construction arguments presented by Petitioner entities with respect to the claim term “message digest function” included arguing that the specification of the ’420 patent does not define this claim term explicitly, but that the specification “generally describes it as ‘reduc[ing] a data block B of arbitrary length to a relatively small, fixed size identifier.” Dec. 11 (citing Paper 1 (“Pet.”) 35). Petitioner entities also argued that the specification cites well-known cryptographic hash functions as examples of a “message digest function”—namely, MD4, MD5, and Secure Hash Algorithm. Id. For purposes of claim construction, Petitioner entities did not rely on the two related, but different, patents previously challenged by Rackspace and Apple that include claims reciting the claim terms “message digest function or hash function”; nor do Petitioner entities predicate their claim construction arguments presented and developed in the Petition on the positions taken by PersonalWeb in those three cases. See generally Pet. Notably, Petitioner entities do not even allege in the Request for Rehearing that our construction of the claim terms “message digest function or hash function” is incorrect.” slip op. at 5
Claim constructionPatents in suitUS 8,099,420 - Donner Technology, LLC v. Pro Stage Gear, LLCRehearing deniedPTAB · Dec 9, 2019 · IPR2018-00707 · APJ John A Hudalla · IPR · Rehearing
The Board denied the petitioner’s rehearing request, leaving claims 5, 7, 8, 18, 20, and 21 not shown unpatentable on the challenged obviousness grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. See 37 C.F.R. § 42.71(d).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“construction of the phrase ‘above the surface,’ then the Board’s construction cannot be reasonably discerned.” Req. Reh’g 8. If that were the case, Petitioner contends we “must articulate and explain [our] construction for the purposes of judicial review.” Id. at 9. Yet Petitioner failed to explain in the Petition how the cited references teach the “above the surface” limitations of claims 5 and 18 under any construction of these limitations, including the one implied in footnote 8 of the Petition. See Pet. 55 n.8, 69 n.10. Petitioner did not specify any dispute regarding the meaning of the term “the surface” and neither did Patent Owner. See, e.g., id. at 8–9 (no terms proposed by Petitioner for construction), 55 (Petitioner’s analysis for claim 18 referring to earlier analysis relative to the “effect mounting surface”); Paper 26, 34–41, 43 (no arguments in Patent Owner’s Response based on an interpretation of “the surface”); Paper 34, 16–17 (Petitioner in its Reply referring to arguments in the Petition for “above the surface”). As such, we did not expressly construe “above the surface.” See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). In addition, Petitioner purports to construe “above the surface” for the first time. See Req. Reh’g 2, 7 (stating that the plain and ordinary meaning of “above the surface” is “above the ground” or “above the area to provide spacing for cables to run underneath the frame”). Petitioner could have, but did not, put forth such constructions in its Petition. See 37 C.F.R. ordinary meaning of “above the surface” in the Request for Rehearing (see Req. Reh’g 7), Petitioner’s arguments come too late. And Petitioner never previously attempted to associate the recited “surface” with “the ground” or “the area to provide spacing for cables to run underneath the frame.” Contrary to Petitioner’s new constructions, and as explained above, Petitioner previously associated the recited “surface” with “the effect mounting surface.” See Pet. 55 n.8 (“the ’023 Patent provides no support for the frame in Claim 15 being supported above the effect mounting surface in Claim 18” (bold emphasis added)), 69 n.10 (referring to footnote 8).” slip op. at 5
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“of the “above the surface” limitation was framed by its statement in the Petition that claims 5 and 18 are invalid “under 35 U.S.C. § 112, second paragraph, because the ’023 Patent provides no support for the frame . . . being supported above the effect mounting surface.” Pet. 55 n.8 (italics in original; bolding emphasis added), 69 n.10 (referring to footnote 8); see also Final Dec. 51 n.12 (quoting same). Thus, Petitioner associated the “surface” in the recitation “above the surface” with the “effect mounting surface” recited in base claims 2 and 15. Despite this association, Petitioner’s obviousness analysis made no attempt to show that Arseneault’s higher backwall (i.e., the “frame base,” see Pet. 51–53, 55–56) supports SCC-700’s cross members A–D (i.e., the “frame,” see id. at 50) above the units board of SCC-700 (i.e., the “effects mounting surface,” see Pet. 46–47).1 Rather, Petitioner addressed only the “frame base supporting the frame” and “allowing the cable to pass beneath the frame” limitations of claims 5 and 18. See Pet. 54–55, 69–70. Thus, we determined that Petitioner’s analysis “d[id] not establish that Arseneault teaches ‘a frame base supporting the 1 As we acknowledged, Petitioner’s analysis for claim 18 builds upon its anticipation analysis for claim 15 and its analysis for the recited “frame” in claim 1. See Final Dec. 51–52.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“3 We also considered Petitioner’s argument from its Reply that an ordinarily skilled artisan “could have easily made a rigid connection between the cross members and end-members using the same fasteners that are disclosed in Carter.” Final Dec. 72 (citing Paper 34, 24; Ex. 1051 ¶ 26). We were not persuaded by this rationale because Petitioner did not provide a reason why an ordinarily skilled artisan would have made such a connection. See id. at 75. Petitioner does not contest this determination in its Request for Rehearing.” slip op. at 9
Claim construction§ 103 obviousnessPatents in suitUS 6,459,023 - PTAB · Mar 22, 2019 · IPR2017-01099 · APJ Sharon Fenick · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding it had not shown that the Board overlooked or misapprehended any matter in the final written decision.
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 › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed patent owner constructionDecided for patent owner
“We adopted Patent Owner’s proposed construction for “proxy server” (“an intermediate server that accepts requests from the device and acts on behalf of the device”) and determined that no construction of the term “acts as proxy” was necessary in light of that construction. Dec. 16–18. Patent Owner argues, without further explanation, that we “overlooked or misapprehended the fact that Patent Owner explained in its proposed claim construction that a proxy server must actually service requests.” Reh. Req. 3. Nevertheless, we considered this argument as part of our treatment of Patent Owner’s “proxy server” construction argument, wherein we adopted Patent Owner’s claim construction of that term. PO Resp. 8–9; Dec. 16–18. Patent Owner also argues that we “failed to apply the requirement that a proxy server accept a request on behalf of the issuer, and then, if necessary, re-issue the request.” Reh. Req. 3 (citing PO Resp. 8, 51). However, we did not adopt any such “requirement” in our construction of “proxy server.” Nor is this argument found in Patent Owner’s claim construction arguments or its arguments relating to whether a VPN gateway” slip op. at 7
- Strike new argumentNew argument consideredDecided for petitioner
“Although 37 C.F.R. § 42.23(b) prohibits new issues presented for the first time in reply, the reply may respond to arguments made on an already contested issue with appropriate new evidence. Intelligent Bio-Systems v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (citing 37 C.F.R. § 42.23(b)). As set forth in the Final Written Decision, we found that Petitioner’s arguments, including those listed in Paper 33 (Patent Owner’s List of Improper Supplemental Reply Arguments), related to arguments made in the Patent Owner Preliminary Response, which were incorporated by reference into Patent Owner’s Supplemental Response. Final Written Decision 61–62. Patent Owner does not present any reasoning or argument that persuades us that in making this determination we misapprehended or overlooked any arguments or evidence.” slip op. at 6
Claim constructionPatents in suitUS 9,042,306 - PTAB · Feb 4, 2019 · IPR2017-01495 · APJ Amanda F Wieker · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no misapprehended or overlooked matter in its construction of “pump” or its obviousness ruling for claims 24–27.
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 not presented previously.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“In our Final Written Decision, we noted that neither party proposed an express construction of “pump” during the course of trial. Dec. 60. Thus, we treated the term in accordance with its plain and ordinary meaning as “a device that raises, transfers, or compresses fluids . . . esp. by suction or pressure or both.” Id. (citing Ex. 3001). Understanding a “pump” to be a device that transfers fluid is consistent with the term’s usage in the specification, and is consistent with the parties’ arguments during trial. See Ex. 1001, 2:19–20 (describing “pumps used for movement of corrosive agents”); 19:46–67 (describing “a water pump wherein the motor is used to heat water flowing through the pump”); 20:44–45 (explaining that “fluid transported by the pump can circulate through apertures formed in the encapsulant”); Pet. 55 (describing Gould as grinding material and pumping it through an impeller chamber and out of a conduit); PO Resp. 56 (arguing that a pump “would push fluid through the device”); Pet. Reply 26 (arguing that “impeller 30 of Gould imparts a motion to the fluid to pump it through the fluid pathway”); Tr. 60 (Petitioner’s counsel arguing that impeller 30 “is used to impel the fluid and waste through the pump,” and “acts as a centrifugal pump and drives fluid out and down from the system”).” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for patent owner
“In light of these teachings, we concluded that a person of ordinary skill in the art would have found it obvious to make Zimmerman’s monolithic body from injection-molded thermoplastic, as taught by Neal, to achieve heat conductivity and sealing—goals that Zimmerman also expressly sought to achieve—as well as the other benefits taught by Neal. Dec. 22–25; see, e.g., id. at 24 (“Neal explains that using injection-molded thermoplastic as an encapsulating material allows for appropriate thermal conductivity, as well as hermetic sealing. These are the same properties sought to be realized by Zimmerman’s epoxy resin sheath.” (citing Ex. 1104, 6:26–46, 9:5–20, 18:4–10)). Moreover, as we recognized in our Decision, Stephan and Neal “explicitly teach that their housing and monolithic body, respectively, may be made from either a thermoset[, as taught by Zimmerman,] or an injection-molded thermoplastic material.” Id. at 23 (emphasis added). Thus, we concluded that the use of injection-molded thermoplastic, as taught by Stephan and Neal, was a mere predictable substitution for the thermoset taught by Zimmerman. Id. at 25 (citing Ex. 1132 ¶¶ 78–79).” slip op. at 7
Claim construction§ 103 obviousnessPatents in suitUS 7,928,348 - PTAB · Feb 4, 2019 · IPR2017-01538 · APJ Amanda F Wieker · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving intact the finding that claims 24–27 were unpatentable as obvious over Konishi and the Umeda, Raible, and Neal ground.
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 not presented previously.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“of this term most closely aligns with Dr. Trumper’s testimony that a “plumbing fitting” is “something that connects plumbing,” wherein such fittings have been used for hundreds of years to functionally connect pump components. Dec. 14 (citing Ex. 2007, 25:25–26:2, 62:5–72:24 (examples); Ex. 1002 ¶¶ 106–107). Thus, in the absence of any limiting language in the ’348 patent specification, we determined that the broadest reasonable construction of this term is “a connector that couples conduits together in a fluid-tight manner.” Id.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Konishi discloses various types of thermoplastics that may be ‘used to seal the stator core, etc.’ [i.e., the claimed monolithic body]. Konishi also discloses that injection molding is an exemplary method of sealing the stator core. Thus, we determine that a POSITA, aware of Konishi’s teachings that injection-molding and thermoplastic materials may be used to seal the stator core, would have found such use obvious. Dec. 27 (citing Ex. 1003 ¶¶ 16, 30–31, 37–38). Consistent with Konishi’s express disclosures, we also explained that Dr. Trumper testified that such” slip op. at 7
Claim construction§ 103 obviousnessPatents in suitUS 7,928,348 - Unified Patents Inc. v. Red Rock Analytics, LLCRehearing deniedPTAB · Feb 28, 2018 · IPR2017-01490 · APJ John D Hamann · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution because Petitioner did not show that the Board misapprehended “calibration cycle” or abused its discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW The applicable standard for a request for rehearing is set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a 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. When reconsidering a decision on institution, we review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined 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. See 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). III.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“calibration cycle.” E.g., Ex. 1001, 11:66–67 (emphasis added). We found that how the calibration cycle is referred to in this limitation (i.e., signal includes it) underscores that the calibration cycle is a feature of the calibration RF signal itself. Dec. 15–16. Rather than addressing this claim 1 U.S. Patent No. 6,940,916 B1 (issued Sept. 6, 2005) (Ex. 1003, “Warner”). 2 We do not address further Warner’s teachings because Petitioner’s arguments are predicated on our having misapprehended the meaning of “calibration cycle,” which we did not. In an inter partes review, the petitioner has the burden to show why the patent it challenges is unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015)(citation omitted).” slip op. at 4
- BurdenNot shown unpatentable
“signal includes a calibration cycle.” Ex. 1001, 11:56–12:5 (claim 1), 12:22– 54 (claim 7), 13:18–49 (claim 16), 13:63–14:30 (claim 22), 14:65–15:32 (claim 32), 15:46–62 (claim 38), 16:12–44 (claim 44), 17:8–37 (claim 53), 17:52–18:19 (claim 59), 18:52–19:18 (claim 69) (emphasis added). In denying the Petition, we found that Petitioner did not establish that the prior art disclosed or rendered obvious this limitation. Dec. 8–19. More specifically, we found that the calibration cycle relates to a feature of the calibration radio frequency (“RF”) signal (i.e., the signal includes), rather than simply requiring having a calibration process occur, as Petitioner submitted. Id. at 15–19. Our reasoning underlying this finding related to (A) the language of the limitation, (B) the language of dependent claims, and (C) the ’313 Patent’s Specification. Id.” slip op. at 3
Claim constructionPatents in suitUS 7,346,313 - PTAB · Dec 6, 2017 · IPR2017-01098 · APJ Sharon Fenick · IPR · Rehearing
The Board denied T-Mobile’s rehearing requests, leaving in place the denial of institution for the challenged claims because it found no abuse of discretion in its preliminary construction.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party requesting rehearing bears the burden of showing an abuse of discretion, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 3
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownDecided for patent owner
“We determined in our preliminary construction that the disclosed structure only supports the use of a single wireless network card. Dec. 12– 14. Although the district court cited column 31, lines 22–24 of the ’306 Patent in its analysis of the disclosed structure for the communication module limitation (Ex. 2001, 34), we determined that that portion of the ’306 Patent specification is not related to the identified function for the communication module limitation. Dec. 12–13.” slip op. at 4
- Skill levelOther
“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown.” Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (internal quotation omitted). Consistent with Okajima, the level of ordinary skill in this case is reflected not only by the information presented by the parties, but also by the prior art of record. Although both parties proposed definitions for the applicable level of ordinary skill in the art. (Pet. 12; Ex. 1003 ¶¶ 31–36; Prelim. Resp. 12), neither party specifically explained how any proposed level of ordinary skill in the art would impact the analysis presented. See Genzyme Therapeutic Products L.P. v. Biomarin Pharm. Inc., 825 F.3d 1360, 1371–72 (Fed. Cir. 2016). Having considered the arguments with slip op. at 8
Claim constructioncites PhillipsPatents in suitUS 8,559,369 - PTAB · Dec 6, 2017 · IPR2017-01099 · APJ Sharon Fenick · IPR · Rehearing
The Board denied T-Mobile’s rehearing requests, finding no abuse of discretion in its preliminary construction of the communication module limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“may “deny some or all grounds for unpatentability for some or all of the challenged claims.” 37 C.F.R. § 42.108(b). When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs if a decision is based 2 See IPR2017-01098, Papers 12, 14; IPR2017-01099, Papers 11 (“Institution Decision” or “Dec.”), 14 (“Req. Reh’g”). Unless otherwise specified, we refer to papers filed in IPR2017-01099 and, with respect to the specification of the patents, to U.S. Pat. No. 9,042,306 (Ex. 1002) (“the ’306 patent”). The written description of U.S. Pat. No. 8,559,369 (the “’369 patent”) is substantively identical. 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.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party requesting rehearing bears the burden of showing an abuse of discretion, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for patent owner
“We determined in our preliminary construction that the disclosed structure only supports the use of a single wireless network card. Dec. 12– 14. Although the district court cited column 31, lines 22–24 of the ’306 Patent in its analysis of the disclosed structure for the communication module limitation (Ex. 2001, 34), we determined that that portion of the ’306 Patent specification is not related to the identified function for the communication module limitation. Dec. 12–13.” slip op. at 4
- Skill levelOther
“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown.” Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (internal quotation omitted). Consistent with Okajima, the level of ordinary skill in this case is reflected not only by the information presented by the parties, but also by the prior art of record. Although both parties proposed definitions for the applicable level of ordinary skill in the art. (Pet. 12; Ex. 1003 ¶¶ 31–36; Prelim. Resp. 12), neither party specifically explained how any proposed level of ordinary skill in the art would impact the analysis presented. See Genzyme Therapeutic Products L.P. v. Biomarin Pharm. Inc., 825 F.3d 1360, 1371–72 (Fed. Cir. 2016). Having considered the arguments with 3 We dispute Petitioner’s characterization of what was “recognized” in our Institution Decision, which clearly notes that the functionality is disclosed in the ’306 Patent as being performed “using only a single wireless network card” and “using a single Wireless NIC.” Dec. 12, quoting ’306 Patent at 11:47-48, 24:28 (emphases in Dec.). respect to the level of ordinary skill, we do not find them persuasive that our preliminary construction was based on an erroneous conclusion of law, a factual finding was not supported by substantial evidence, or there was an unreasonable judgment in weighing relevant factors. slip op. at 8
Claim constructioncites PhillipsPatents in suitUS 9,042,306 - 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
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.