- Mobileye Global, Inc. v. Facet Technology Corp.Rehearing deniedPTAB · Apr 22, 2025 · IPR2024-01110 · APJ Sean P O’Hanlon · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution in place on claim 15 based on the Gallagher–Lumia obviousness challenge.
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 previously addressed in a motion, an opposition, or a reply. Id. When reconsidering 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 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. 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).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“or overlooked any matter. As we explained in the Institution Decision, the ’255 patent discloses that the recited characterization profile allows the system to convert the intensity values measured by the intensity sensor into luminance values based on the sensor’s ability to sense the particular color of the measured light. Inst. Dec. 21; Ex. 1001, 11:41–48. The ’255 patent states that “the light intensity sensor’s 280 ability to sense . . . a particular color” is the “the light intensity sensor’s 280 profile for [that] particular color.” Ex. 1001, 11:45–47. The ’255 patent further states that this “[l]ight intensity sensor 280 characterization is essential for high precision computations.” Id. at 11:48–49. Thus, as we stated in the Institution Decision, the recited “characterization profile” refers to a conversion factor used to convert the measured light intensity into luminance. As this conversion factor is based on the light intensity sensor’s ability to sense the particular color of light reflected by the road sign, we agree that it is empirical information. Patent Owner fails to explain adequately how the fact that the ’255 patent discloses storing multiple conversion factors for multiple colors of measured light in a digital look-up-table (see id. at 11:56–59 (“The light intensity sensor characterization 275 is empirical information about the light intensity sensor 280 that is used to create the [look-up table] 475.”)) has any bearing on our interpretation.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Owner to the Institution Decision where we fully addressed Patent Owner’s contentions. See Inst. Dec. 29–31. As we explained, “Petitioner proposes to incorporate Lumia’s teaching of measuring luminance values into Gallagher’s system, and argues that an ordinarily skilled artisan would have had a reasonable expectation of success given Gallagher’s disclosure of determining calibration factors for each individual sensor in the array of sensors.” Id. at 30. In other words, Petitioner proposes to use Gallagher’s array of sensors to measure luminance in the manner taught by Lumia. We also explained in the Institution Decision how Lumia discloses using a video camera to measure the luminance of a road sign. Id. at 27–29. We further explained that, in the Petition, “Petitioner sets forth reasoning with rational underpinning to support its contentions that it would have been obvious to combine the teachings of Gallagher and Lumia” by, for example, “argu[ing] that implementing Lumia’s teaching of determining the luminance of traffic signs in Gallagher’s system would allow Gallagher’s system to calculate the retroreflectivity of road markers as a means of identifying any markers that do not meet minimum acceptable reflectance levels.” Id. at 30–30 (citing Pet. 46). We further explained that Petitioner’s arguments were supported by the testimony of it witness, Dr. Thorpe. Id. at 31 (citing Ex. 1003 ¶ 116).” slip op. at 7
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,335,255 - PTAB · Mar 22, 2021 · IPR2020-00336 · APJ Stacey G White · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution in place for claims 10, 12, 13, 16, and 17 because no construction error or abuse of discretion was shown.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“IV. CONCLUSION On this record, Patent Owner neither persuades us that we overlooked or misapprehended any matter, nor sufficiently shows that instituting an inter partes review of claims 10, 12, 13, 16, and 17 of the ’725 patent was an abuse of discretion. V. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Request for Rehearing is denied.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We maintain, at this stage of the proceeding, that the construction of conversational flow should not include “(for instance, the running of an application on a server as requested by a client), where some conversational flows involve more than one connection, and some even involve more than one exchange of packets between a client and a server.” As we explained in the Institution Decision, phrases beginning with “for instance,” “where some,” and “some” are “merely exemplary and non-limiting.” Inst. Dec. 31. Patent Owner does not persuade us, on this record, that omission of these phrases from our definition of “conversational flow” is, as a matter of claim construction, erroneous. See Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 811 (Fed. Cir. 2002) (holding that exemplary language “introduces an example of a broader genus rather than limiting the genus to the exemplary species”).” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“proceeding, that our construction of “conversational flow” is the result of a misunderstanding or misapprehension of the claimed invention or the prior art. IV. CONCLUSION On this record, Patent Owner neither persuades us that we overlooked or misapprehended any matter, nor sufficiently shows that instituting an inter partes review of claims 10, 12, 13, 16, and 17 of the ’725 patent was an abuse of discretion.” slip op. at 6
Claim constructionPatents in suitUS 6,665,725 - Mercedes-Benz USA, LLC v. Carucel Investments, L.P.Rehearing deniedPTAB · 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 PhillipsPatents in suitUS 7,221,904 - PTAB · Feb 3, 2021 · IPR2020-01024 · APJ Jeffrey S Smith · IPR · Rehearing
The Board denied the Patent Owner’s rehearing request, leaving institution in place after finding no overlooked or misapprehended matter concerning claim construction or the prior-art obviousness showing.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made 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). The burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): (d) Rehearing. . . . 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. For the reason discussed below, Patent Owner’s Request for” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“preambles of claims 1, 5, and 22 are not like the preamble in the claim in Bio-Rad. Here, unlike Bio-Rad, the preamble recitation of “for use” in the preamble term “for use in a public transportation facility” expresses an intended use. See Opp. 8. Further, in Bio-Rad, the preamble recited a “method for conducting a reaction in plugs in a microfluidic system,” where the terms “a reaction” and “a microfluidic system” were recited in the body of the claim, and were intertwined with other preamble terms such as “conducting.” Bio-Rad, 967 F.3d at 1371. Here, the body of each independent claim does not recite “public transportation facility.” See Opp. 7. Further, the claim term “high voltage power source” is not intertwined with the claim term “for use in a public transportation facility,” because the “high voltage power source” is structurally complete by itself. Here, as in Catalina, “deletion of the disputed phrase [“for use in a public transportation facility”] from the preamble of Claim 1 does not affect the structural definition or operation of the [claimed apparatus] itself.” Catalina, 289 F.3d at 810; accord Opp. 8. In particular, the location or supply of the high voltage power source does not affect the structural definition or operation of the claimed “first power input adapted to be connected to the first standard high voltage power source,” nor any other limitation recited in the body of the claim of the LED light fixture itself. Also here, as in Catalina, “the specification, in its entirety, does not make the location of the [high voltage power source] an additional structure for the claimed [high voltage power source].” Id.; see Decision at 9–11; accord Opp. 3–4. Patent Owner does not show that the Decision overlooked or misapprehended Catalina or Bio-Rad. We deny rehearing on this basis.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Patent Owner’s contentions are inconsistent with the claims and the Specification. The claims do not separately recite “a high voltage power source” and “a voltage of 450 to 1000 Volts.” Rather, claim 1 recites “a high voltage power source having a voltage of 450 to 1000 Volts.” The Specification discloses that the high voltage power “source 34 can be 450- 1000V direct current.” Ex. 1002, 5:39–40. In reciting “a high voltage power source having a voltage of 450 to 1000 Volts,” claim 1 expressly limits the “high voltage power source” to the disclosed embodiment of a “source [that] can be 450-1000V direct current,” and excludes other embodiments of power sources having a voltage outside of this range. Further, the Specification discloses that the “source,” not the third rail, “can be 450-1000V,” without describing a specific structure that provides the voltage. Ex. 1002, 5:39–40. Contrary to Patent Owner’s contention, the Specification itself describes the high voltage power source in terms of what source can be. Id. Thus, the Decision’s construction of this term is consistent with its usage in the context of the Specification. See Phillips, 415 F.3d at 1315 (Fed. Cir. 2005) (“The words of patent claims have the meaning and scope with which they are used in the specification and the prosecution history. The best indicator of claim meaning is its usage in context.”) (internal citations omitted). Patent Owner does not show that we overlooked or misapprehended the meaning of the claimed “high voltage power source having a voltage of 450-1000 Volts” as used in context of the Specification. We deny rehearing on this basis.” slip op. at 8
Claim constructioncites PhillipsPatents in suitUS 10,190,760 - PTAB · Dec 21, 2020 · IPR2020-00337 · APJ Charles J Boudreau · IPR · Rehearing
Denied Patent Owner’s request to reverse institution of review of claims 1–3, 7, 16, and 18; Patent Owner did not show an erroneous construction or abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We maintain, at this stage of the proceeding, that the construction of conversational flow should not include “(for instance, the running of an application on a server as requested by a client), where some conversational flows involve more than one connection, and some even involve more than one exchange of packets between a client and a server.” As we explained in the Institution Decision, phrases beginning with “for instance,” “where some,” and “some” are “merely exemplary and non-limiting.” Inst. Dec. 29. Patent Owner does not persuade us, on this record, that omission of these phrases from our definition of “conversational flow” is, as a matter of claim construction, erroneous. See Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 811 (Fed. Cir. 2002) (holding that exemplary language “introduces an example of a broader genus rather than limiting the genus to the exemplary species”).” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“We nevertheless preliminarily construed “conversational flow” as a “sequence of packets that are exchanged in any direction as a result of an activity.” Inst. Dec. 29. We explained that we saw no “reason to include the additional phrases of the prior Board and district court constructions”— namely, the phrases “for instance, the running of an application on a server as requested by a client,” “where some conversational flows involve more than one connection,” and “some even involve more than one exchange of packets between a client and a server.” Id. (emphases added). We maintain, at this stage of the proceeding, that the construction of conversational flow should not include “(for instance, the running of an application on a server as requested by a client), where some conversational flows involve more than one connection, and some even involve more than one exchange of packets between a client and a server.” As we explained in the Institution Decision, phrases beginning with “for instance,” “where some,” and “some” are “merely exemplary and non-limiting.” Inst. Dec. 29. Patent Owner does not persuade us, on this record, that omission of these phrases from our definition of “conversational flow” is, as a matter of claim construction, erroneous. See Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 811 (Fed. Cir. 2002) (holding that exemplary language “introduces an example of a broader genus rather than limiting the genus to the exemplary species”).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION On this record, Patent Owner neither persuades us that we overlooked or misapprehended any matter, nor sufficiently shows that instituting an inter partes review of claims 1–3, 7, 16, and 18 of the ’646 patent was an abuse of discretion. V. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Request for Rehearing is denied.” slip op. at 6
Claim constructionPatents in suitUS 6,771,646 - PTAB · Dec 8, 2020 · IPR2020-00486 · APJ Kristi L R Sawert · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, leaving institution in place for claims 1, 2, 13–17, 19, 20, 31, 33, 34, 42, 44, 48, and 49.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters it believes the Board 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 petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We nevertheless preliminary construed “conversational flow” as a “sequence of packets that are exchanged in any direction as a result of an activity.” Id. at 30. We explained that we saw no “reason to include the additional phrases of the prior Board and district court constructions”— namely, the phrases “for instance, the running of an application on a server as requested by a client,” “where some conversational flows involve more than one connection,” and “some even involve more than one exchange of packets between a client and a server.” Id. at 30 (emphases added). We maintain, at this stage of the proceeding, that the construction of conversational flow should not include “(for instance, the running of an application on a server as requested by a client), where some conversational flows involve more than one connection, and some even involve more than one exchange of packets between a client and a server.” As we explained in the Institution Decision, phrases beginning with “for instance,” “where some,” and “some” are “merely exemplary and non-limiting.” Id. Patent Owner does not persuade us, on this record, that omission of these phrases from our definition of “conversational flow” is, as a matter of claim construction, erroneous. See Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 811 (Fed. Cir. 2002) (holding that exemplary language “introduces an example of a broader genus rather than limiting the genus to the exemplary species”).” slip op. at 3
Claim constructionPatents in suitUS 6,954,789 - PTAB · Dec 8, 2020 · IPR2020-00339 · APJ Kristi L R Sawert · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, finding no abuse of discretion in instituting review of the challenged claims based on its preliminary construction of “conversational flow.”
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters it believes the Board 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 petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“the sequence of packets that are exchanged in any direction as a result of an activity (for instance, the running of an application on a server as requested by a client), where some conversational flows involve more than one connection, and some even involve more than one exchange of packets between a client and a server.” slip op. at 3
Claim constructionPatents in suitUS 6,954,789 - Quest USA Corp. v. Popsockets LLCRehearing deniedPTAB · Oct 5, 2020 · IPR2018-00497 · APJ Christa P Zado · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving in place its final decision that claims 9–11, 16, and 17 are unpatentable as anticipated by Grinfas.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Under 37 C.F.R. § 42.71(d), “[t]he 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.” For the reasons discussed below, we deny the Rehearing Request.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We decline to reconsider our construction. In the Final Decision, we declined to use the phrase “pleated folds” in our construction—a phrase that is not used anywhere in the ’031 patent—and instead adopted the terminology actually used in the patent, i.e., hinges, flexural hinges, and flexural membranes. Final Dec. 21–22. We cited portions of the ’031 patent that use the term “accordion,” noting the patent consistently describes an “accordion” as having “flexural hinges or flexural membranes that include hinges that facilitate extending/expanding and collapsing the accordion.” Id. at 20 (citing Ex. 1001, 5:50–53, 5:56–67, 6:7–16). As discussed in the Final Decision, Patent Owner provided insufficient basis to “replace the term actually used in the Specification [to describe accordions] . . . with a term that is not used in the Specification.” Id. at 20–21. Consistent with the use of the term “accordion” in the ’031 patent, we interpreted “accordion” as “a structure that has hinges, such as flexural hinges or flexural membranes, that fold so as to facilitate extending/expanding and collapsing of the accordion.” Id. at 19. We are not persuaded we erred in adopting a construction that uses the phrase “flexural hinges or flexural membranes” rather than one that uses the phrase “pleated folds.” See id. at 19–24 (explaining that the intrinsic evidence supports our adopted construction of “accordion”).” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency foundDecided for petitioner
“inherently discloses the recited use in the claim limitation “a securing element for attaching the socket to the back of the portable media player or portable media player case.” Req. Reh’g 4 (citing Final Dec. 59–60). Patent Owner suggests that we arrived at this conclusion based on our understanding that “Patent Owner did not dispute that this element is inherently disclosed.” Id. (citing Final Dec. 59–60).1 Contrary to Patent Owner’s suggestion, our finding that Grinfas provides inherent disclosure was not based on whether Patent Owner disputed this issue. Rather, it was based on the evidence and arguments provided by Petitioner. Final Dec. 60– 64. For example, we credited the testimony of Petitioner’s expert, Dr. Glenn E. Vallee, Ph.D., that the securing structures in Grinfas were inherently capable of attaching to the back of a telephone because it was supported by 1 We note that the cited portion of our Final Decision addressed whether certain elements in Grinfas (e.g., adhesive pad 46, fastenable straps 54, and attachment portion 92) are “securing elements”—i.e., whether they are securing or fastening—but it did not address whether Grinfas inherently discloses how such elements are used—i.e., whether they are inherently capable of fastening to the back of a portable media player. That issue is addressed at pages 62–68 of our Final Decision. the record. Final Dec. 63–64 (citing Ex. 1004 ¶ 67; Ex. 1005, 8:3–9, Figs. 4A–B). The Rehearing Request does not acknowledge or address the explanation provided in the Final Decision, much less identify what we might have misapprehended or overlooked in finding Dr. Vallee’s testimony to be credible and supported by the record. Req. Reh’g 4. For the foregoing reasons, Patent Owner has not shown that we misapprehended or overlooked any matter in finding Grinfas discloses a securing element inherently capable of being attached to the back of a portable media player.” slip op. at 9
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“We did not provide an express construction of the term “accordion” in the Decision Instituting Inter Partes Review, finding that no terms required express construction at that time. Paper 8, 8 (“Inst. Dec.” or “Institution Decision”). However, we rejected Patent Owner’s preliminary proposal that an “accordion” must be a “structure with pleated folds so as to collapse like the bellows of a musical accordion,” explaining the ’031 patent describes accordions as having flexural hinges that allow the walls of the accordion to fold up generally in parallel to each other, rather than stacking on top of one another. Inst. Dec. 22–26. Citing numerous disclosures in the ’031 patent describing an “accordion” as a structure having flexural hinges, we preliminarily determined “the term ‘accordion’ includes structures that have flexural hinges.’” Id. at 24 (citing Ex. 1001, 1:45–48, 5:50–53, 6:7–31, Fig. 3A, Fig. 3B, Fig. 5). Accordingly, we determined on the preliminary record that the term “accordion” did not preclude the structure in Grinfas, which has flexural hinges that flex and fold. Id. at 24–25. Therefore, our Decision on Institution gave Patent Owner notice and the opportunity to address our interpretation of an “accordion” as including structures that have flexural hinges. Id. at 24. During trial, although Patent Owner maintained its position that “accordion” should be construed as having “pleated folds,” PO Resp. 5, Patent Owner agreed with our preliminary determination that the term “accordion” may include structures with flexural hinges, id. at 19–20. However, Patent Owner argued that not all structures with flexural hinges are “accordions,” because there were well-known non-accordion structures that have flexural hinges. Id. at 20. In accordance with Patent Owner’s argument that not all structures having flexural hinges are “accordions,” in the Final Decision we clarified that the flexural hinges fold “so as to facilitate extending/expanding and collapsing of the accordion.” Final Dec. 20, 22–23. This clarification did not violate the APA or due process because it did not alter any requirements in the claims, which recite that the accordion is capable of extending (i.e., extending/expanding) and retracting (i.e., collapsing). See Ex. 1001, 7:65–8:3 (claim 9). Moreover, the outcome of the Final Decision would have been the same regardless of the clarification that not all structures with flexural hinges are an “accordion.” The clarifying language in our construction in the Final Decision clarifies that structures not present in Grinfas would not meet our construction of “accordion.” Accordingly, had we not included the clarification, the outcome of our Final Decision would have been the same.” slip op. at 11
Claim construction§ 102 anticipationPatents in suitUS 8,560,031 - PTAB · Sep 16, 2020 · IPR2018-00755 · APJ Hyun J Jung · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1, 3, 5, 7, 10, and 25 unpatentable under each of three §103 combinations; claim 8 was not shown unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“the burden of showing a decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d); see also Req. Reh’g 1 (quoting from the rule). Therefore, Patent Owner bears the burden of establishing that we misapprehended or overlooked the matters that it requests that we review.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“Also, the body of independent claims 1 and 25 recite structurally complete inventions, and do not rely on the word “token,” from the preamble, for any antecedent basis of terms in the body of the claim. The deletion of this preamble language would not affect the structure of the claimed inventions and confirms that the language of the preamble, which names the machine or manufacture claimed as a token, and states its intended use, is not limiting. See Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358-59 (Fed. Cir. 2010). Further, because the bodies of the claims, reciting an “integrated circuit chip” (claim 1) and “storage section” (claim 25), fully define the structure of the claimed tokens and do not rely on the “token” name of the invention to recite the limitations of their structural components, the term the meaning of the claims. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). Because the term “token” does not require construction, and is of no significance in determining the meaning of the claim language, we did not adopt Patent Owner’s additional limitation of a token being required to begin play of a game. B. Whether the Board misapprehended Lee and the showing that the Board” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableDecided for petitioner
“Final Written Decision, which finds that each of the combinations (Levy and Lee, Katoh and Lee, and Mawle and Lee) discloses the limitations of claims 1, 3, 5, 7, 10, and 25 (Final Dec. 19–33, 36–48, 50–62, 64–65), that one of ordinary skill in the art would have combined the references in the manner asserted by Petitioner and as claimed (id. at 34–35, 48–49, 62–65), and thus,” slip op. at 6
Claim construction§ 103 obviousnessPatents in suitUS 7,338,377 - PTAB · Sep 16, 2020 · IPR2018-00754 · APJ Hyun J Jung · IPR · Rehearing
The Board denied Patent Owner’s rehearing request and left in place its determination that claim 9 was unpatentable over White and Lee under § 103(a).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The party filing a request for rehearing of a final written decision has the burden of showing a decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d); see also Req. Reh’g 1 (quoting from the rule). Therefore, Patent Owner bears the burden of establishing that we misapprehended or overlooked the matters that it requests that we review.” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“In our Final Written Decision, we explained that the Specification does not support Patent Owner’s proposed interpretation of the term “token” as being disk-shaped, and determined that “we need only determine that the term ‘token’ does not include an ‘action figure.’” Final Dec. 11–12. The full record indicated to us that, even if we adopted Patent Owner’s proposed interpretation of “token” as an “item required to begin play of a game,” Petitioner had still shown by a preponderance of the evidence that claim 9 is unpatentable over White and Lee. As described in our Final Written Decision, we found that “the teachings of White related to tag 5 in base portion 4a of character 4 used in the toy of Figure 1 support Petitioner’s argument that character 4 teaches a ‘game piece with built-in IC chip.’” Final Dec. 32. We understood that “Petitioner is proposing to modify White so that tag 5 is detachable and results in a ‘token with built-in IC chip,’” so that “the modified White character 4 would have base 4a with detachable tag 5 received in recessed portion 3.” Id. at 37 (citing Pet. 65–66; Dec. to Inst. 23; Pet. Reply 24); see also id. at 41–42 (determining that” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“We also found that “Lee . . . supports Petitioner’s declarant testimony that one of ordinary skill in the art would have modified White so that its tag 5 is detachable in the same manner as Lee so that ‘various action figures can be used with the token.’” Final Dec. 42 (citing Ex. 1002 ¶ 150). Petitioner, thus, showed by a preponderance of the evidence that Lee teaches or suggests a method of attaching a component to a figure that one of ordinary skill in the art would have applied to White’s tag 5 for the reason asserted by Petitioner.” slip op. at 9
Claim construction§ 103 obviousnessPatents in suitUS 7,001,276
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.