- Cambridge Industries USA, Inc. v. Applied Optoelectronics, Inc.Rehearing deniedPTAB · Dec 19, 2025 · IPR2025-00434 · APJ Mitchell G Weatherly · IPR · Rehearing
The Board denied Petitioner’s rehearing request, leaving institution denied because Shen and Soldano did not establish a reasonable likelihood of anticipating claims 1–7.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on petition, the Board will 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 Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party challenging the decision has the burden of showing the 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).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“II. ANALYSIS In our Decision, we concluded that Petitioner had failed to carry its burden of demonstrating a reasonable likelihood of prevailing that either Shen or Soldano anticipated claims 1–7. Dec. 18, 26. Petitioner argues that we should institute review for three reasons. First, Petitioner argues that we abused our discretion by (a) “refusing” to interpret the scope of the claimed” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Owner’s interpretation of “carrier” as meaning “one or more components for supporting ROSA components such as an AWG.” Dec. 9 (quoting Pet. 11). For our analysis of Petitioner’s challenges, we referred to this interpretation of “carrier” as Petitioner’s second alternative construction. Id. We also noted that Petitioner appeared to dispute Patent Owner’s interpretation when it argued that “carrier” should mean “a ceramic or silicon substrate.” Id. (quoting Pet. 10). We referred to this interpretation of “carrier” as the first alternative construction. Id. Rather than resolve this apparent dispute about the meaning of “carrier,” we found that both of Petitioner’s anticipation challenges failed under both interpretations of “carrier.” Id. at 10–26. Because we found that Petitioner had failed to carry its burden regardless of which interpretation of “carrier” applied, we found it unnecessary to resolve the dispute over that interpretation. Id. at 9–10. For the reasons expressed in Parts II.B–C below, we maintain our conclusion that Petitioner has failed to demonstrate a reasonable likelihood of proving that either Shen or Soldano anticipates any claim under either interpretation of “carrier.” Accordingly, Petitioner fails to demonstrate an abuse of discretion in our alleged “refusal” to interpret “carrier.”” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Reh’g Req. 14. We cannot weigh Petitioner’s arguments based on its assertions about “caselaw” because Petitioner cited no cases to support its arguments. See id. Nevertheless, we infer that Petitioner intends its statements of “caselaw” to refer to the requirements to make out a case for anticipation. If so, Petitioner demonstrably miscasts what appear to be the legal principles for proving anticipation. As stated in our Decision: “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987).” Dec. 7. Making a showing that a prior art reference anticipates a patent claim thus necessarily requires proof that a single reference “expressly or inherently” describes every element of that claim and with all elements being arranged in the reference as they are in the” slip op. at 7
Claim construction§ 102 anticipationPatents in suitUS 10,379,301 - 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 - Foster-Miller Inc. v. Flir Detection Inc.Rehearing deniedPTAB · Oct 20, 2021 · IPR2020-00301 · APJ Meredith C Petravick · IPR · Rehearing
The Board denied Foster-Miller’s rehearing requests in both proceedings, leaving institution denied because the petition did not adequately show the challenged claim’s limitations in SuperDroid or Wang.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD 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, we review the decision for an abuse of discretion. See generally 37 C.F.R. § 42.71 (b)–(d). 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). A request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence. “It is not an abuse of discretion to have made an analysis or conclusion with which a party disagrees,” and “mere disagreement with the Board’s analysis or conclusion is not a proper basis for rehearing.” EMC Corp. v. PersonalWeb Techs., LLC, IPR2013-00085, Paper 29 at 4 (PTAB June 5, 2013).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner does not persuade us that we overlooked Superdroid’s disclosures. After careful consideration of the evidence presented in the Petition and the Requests for Rehearing, as stated in our Institution Decision, “it is not clear from SuperDroid’s figures h and i or the brief explanation of Steps 2 and 3 that the front end of the robot contacts and ascends the front face of the obstacle, with the support surface generating sufficient traction to climb the riser.” Inst. Dec. 14 (citing Ex. 2001 ¶¶ 26–27 (testimony of testimony of Dr. Robert H. Sturges, declarant for Patent Owner)). Petitioner provides additional argument and analysis of SuperDroid’s figures in support of its Request for Rehearing, but arguments that go beyond the analysis presented as to this limitation in the Petition could not have been misapprehended. See, e.g., Req. Reh’g 3 (providing annotated version of SuperDroid’s figure g), 6 (providing enlarged and annotated version of SuperDroid’s figure h). Petitioner’s argument is mere disagreement with our findings in the Institution Decisions regarding the disclosure of Superdroid.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for patent owner
“plain meaning of Element [1d] for the first time in its Request for Rehearing. Petitioner did not provide any explicit construction of Element [1d] in the Petition. See Pet. 10 (“no claim terms require[] construction, and all claims should be given their plain and ordinary meaning”). We could not have misapprehended an argument that was not adequately made in the Petition. In any event, Petitioner does not persuade us that the plain language of Element [1d] does not require pivoting the trailing arm while the vehicle ascends the stair. Petitioner’s argument relies upon Figs. 5G–5I of the ’752 patent to argue that Element [1d] does not require pivoting the trailing arm while the vehicle ascends the stair. Req. Reh’g 13. Petitioner’s argument, however, does not account for Figs. 5J–5O of the ’752 patent, which depict pivoting the trailing arm to push the robot vehicle upward while driving the vehicle tracks to surmount the stair nose. See Ex. 1001, 10:61–11:4, claims 2–4. Accordingly, the ’752 patent figures are consistent with reading Element [1d] to require pivoting the trailing arm while the vehicle ascends the stair. At a minimum, Petitioner’s reading of the claim required further explanation if not an explicit construction in the Petition, given that the limitation could be read consistent with the specification in a manner different that Petitioner presumed.” slip op. at 6
- BurdenDecided for patent owner
“And, as explicitly pointed out in the Institution Decision, the Petition’s explanation of how Wang meets Element [1d] is insufficient to establish that Wang’s arm pivots while ascending a stair. See Inst. Dec. 20– 21. “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)).” slip op. at 6
Claim construction§ 103 obviousnessPatents in suitUS 8,074,752 - 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 - 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 - U.S. Venture, Inc. v. Sunoco Partners Marketing & Terminals L.P.Rehearing deniedPTAB · Dec 17, 2020 · IPR2020-00728 · APJ Brent M Dougal · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution for claims 16–17 based on the Fintiv factors and its § 314(a) discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on institution, the Board reviews the 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): 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 to present new arguments or evidence or merely to disagree with the panel’s assessment of the arguments or weighing of the evidence.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“the evidence laid out an approximate time frame for when the trial would likely be held. Dec. 9 (citing Ex. 2003); see also id. at 8–9 (citing PO Resp. 35; Ex. 1026) (Discussing the Court’s Procedures and timeline for trial after the docket call). Thus, we determined that this factor favored denying institution under our analysis of the factors under Fintiv. Id. at 9.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner acknowledges that the proposed combination of the references relies on “us[ing] the cumulative totals of the flow rates of the unblended components in the Hoffman compensation process” (id.), however Patent Owner identifies that Hoffman appears to teach away from using the flow rates of the unblended components in its calculations because of the uncertainty in the flow rate of the blended line. Prelim. Resp. 19, 21– 22. Contrary to Petitioner’s position, it is not Patent Owner’s burden to show why “a person of ordinary skill in the art would be discouraged from measuring flow rates upstream for use in the Hoffman compensation process” (Reh. Req. 9), but rather, Petitioner bears the burden to show why a person of ordinary skill in the art would measure flow rates upstream for use in the Hoffman compensation process in view of the all of the teachings of the references (35 U.S.C. § 314(a) (Institution only authorized if “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”)). Petitioner’s arguments do not show that we misapprehended or” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageNot reached
“argument concerning the construction of the term “in-line blending.” Id. at 13.” slip op. at 6
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 9,207,686 - Satco Products, Inc. v. Seoul Semiconductor Co., LtdRehearing deniedPTAB · Dec 8, 2020 · IPR2020-00248 · APJ Jeffrey W Abraham · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution because Petitioner did not show that Sanga disclosed the claimed spacer-layer bandgap requirement.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“support of its assertion that Sanga’s n-side multilayer has a bandgap lower than a GaN layer. Reh’g Req. 10–12. For example, Petitioner attempts to rely on an annotated figure from Exhibit 2005, an exhibit submitted by Patent Owner with its Preliminary Response. Reh’g Req. 10–12. Although we did refer to Exhibit 2005 in our Decision (Dec. 13–14), Petitioner did not rely on Exhibit 2005 in its Petition, and the annotated figure Petitioner presents in the Rehearing Request, along with the corresponding arguments, are entirely new. A request for rehearing is not an opportunity to present new arguments or evidence. See 37 C.F.R. § 42.71(d). Even if we were to consider Petitioner’s newly annotated figure and the accompanying discussion in the Rehearing Request, we note that it is composed entirely of attorney argument. Reh’g Req. 10–12. There is no testimony from Petitioner’s declarant regarding the figure, the annotations, or conclusions drawn therefrom. We further note that none of the alleged superlattice structures shown on Figure 26 of Ex. 2005 match the composition of Sanga’s GaN/In0.03Ga0.97N n-side multilayer 10 in Example 1 that Petitioner relies upon. As such, on the present record, we are not persuaded by Petitioner’s ultimate conclusion that “regardless of the precise bandgap of the multilayer structure, even very low indium content in part of a superlattice structure causes the bandgap of the overall structure to be lower than the ~3.5eV bandgap of a GaN layer.” Reh’g Req. 12.” slip op. at 9
- BurdenDecided for patent owner
“We further note that for purposes of the bandgap requirement of the spacer layer limitation, Petitioner relies on the specific barrier layer, spacer layer, and quantum well layer described for Example 1. Pet. 35–36 (comparing the bandgap of the In0.03Ga0.97N layer of Example 1 with the GaN barrier layer of Example 1 and the In0.3Ga0.7N quantum well layer of Example 1). Example 1 does not expressly include an n-side multilayer structure with an InxGa1-xN/InyGa1-yN configuration, wherein each layer contains indium and x<y≤ 0.1. Therefore, Petitioner’s analysis of the bandgap requirement for claim 9, which expressly relies on Sanga Example 1, requires replacing the actual spacer layer in Example 1 with a different layer, while keeping the barrier layer and quantum well layer the same for purposes of bandgap comparison. Petitioner, however, has not provided adequate justification for doing so. Petitioner’s citation to Sanga’s general disclosure of “a multilayer having a periodic structure repeating InxGa1-xN/InyGa1-yN (0≦x<y<1)” in support of its InGaN/InGaN stack argument is unhelpful. Reh’g Req. 3. We acknowledge that this statement discloses the use of stacked InGaN layers of varying indium composition in general. But Petitioner does not direct us to bandgap values for this generic periodic structure, and to arrive at the bandgap requirement of the spacer layer limitation of claim 9, Petitioner refers back to Example 1, and its analysis of the bandgap values of the specific barrier layer, spacer layer, and quantum well layer disclosed therein. As such, we are not persuaded this general disclosure of Sanga cures the deficiencies discussed above.” slip op. at 6
- Strike new argumentNew argument disregardedDecided for patent owner
“In its Rehearing Request, Petitioner presents new arguments in support of its assertion that Sanga’s n-side multilayer has a bandgap lower than a GaN layer. Reh’g Req. 10–12. For example, Petitioner attempts to rely on an annotated figure from Exhibit 2005, an exhibit submitted by Patent Owner with its Preliminary Response. Reh’g Req. 10–12. Although we did refer to Exhibit 2005 in our Decision (Dec. 13–14), Petitioner did not rely on Exhibit 2005 in its Petition, and the annotated figure Petitioner presents in the Rehearing Request, along with the corresponding arguments, are entirely new. A request for rehearing is not an opportunity to present new arguments or evidence. See 37 C.F.R. § 42.71(d). Even if we were to consider Petitioner’s newly annotated figure and the accompanying discussion in the Rehearing Request, we note that it is composed entirely of attorney argument. Reh’g Req. 10–12. There is no testimony from Petitioner’s declarant regarding the figure, the annotations, or conclusions drawn therefrom. We further note that none of the alleged superlattice structures shown on Figure 26 of Ex. 2005 match the composition of Sanga’s GaN/In0.03Ga0.97N n-side multilayer 10 in Example 1 that Petitioner relies upon. As such, on the present record, we are not persuaded by Petitioner’s ultimate conclusion that “regardless of the precise bandgap of the multilayer structure, even very low indium content in part of a superlattice structure causes the bandgap of the overall structure to be lower than the ~3.5eV bandgap of a GaN layer.” Reh’g Req. 12.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“bandgap requirement to the spacer layer as a whole, but Patent Owner argued that this requirement should be construed such that it requires all the layers comprising the spacer layer to meet the bandgap requirement. Reh’g Req. 6. Petitioner, however, never identifies any particular matter that we misapprehended or overlooked in connection with this argument. Furthermore, Petitioner did not propose a construction of the bandgap requirement in the Petition (Pet. 7–20), and Patent Owner argued that Petitioner’s arguments fail regardless of how the bandgap limitation is construed (Prelim. Resp. 36). In this regard, we note that in our Decision we determined that we did not need to construe the bandgap requirement. Dec. 6.” slip op. at 7
Claim constructionPatents in suitUS 9,716,210 - Unified Patents Inc. v. Synchview Technologies, LLCRehearing deniedPTAB · May 28, 2020 · IPR2019-00470 · APJ Monica S Ullagaddi · IPR · Rehearing
The Board denied rehearing and maintained denial of institution because the record lacked evidence to determine the scope of “DVR” and whether the prior art met that limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“In summary, the record does not include sufficient information for a determination of the claim scope of “DVR.” It is Petitioner’s burden to show, in the Petition, “[h]ow the challenged claim is to be construed” and “[h]ow the construed claim is unpatentable.” 37 C.F.R. § 42.104(b)(3)–(4). Without such an explanation of Petitioner’s position and supporting evidence, we cannot conduct the necessary factual inquiry for determining whether Petitioner has shown a reasonable likelihood in demonstrating that the prior art meets this limitation. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) (reversing the Board’s decision of obviousness because it relied on “what at best are speculative assumptions as to the meaning of the claims”).” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In summary, the record does not include sufficient information for a determination of the claim scope of “DVR.” It is Petitioner’s burden to show, in the Petition, “[h]ow the challenged claim is to be construed” and “[h]ow the construed claim is unpatentable.” 37 C.F.R. § 42.104(b)(3)–(4). Without such an explanation of Petitioner’s position and supporting evidence, we cannot conduct the necessary factual inquiry for determining whether Petitioner has shown a reasonable likelihood in demonstrating that the prior art meets this limitation. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) (reversing the Board’s decision of obviousness because it relied on “what at best are speculative assumptions as to the meaning of the claims”). We are unable to conclude, therefore, that there is a reasonable likelihood that Petitioner would prevail in demonstrating the unpatentability of any of the challenged claims.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In summary, the record does not include sufficient information for a determination of the claim scope of “DVR.” It is Petitioner’s burden to show, in the Petition, “[h]ow the challenged claim is to be construed” and “[h]ow the construed claim is unpatentable.” 37 C.F.R. § 42.104(b)(3)–(4). Without such an explanation of Petitioner’s position and supporting evidence, we cannot conduct the necessary factual inquiry for determining whether Petitioner has shown a reasonable likelihood in demonstrating that the prior art meets this limitation. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) (reversing the Board’s decision of obviousness because it relied on “what at best are speculative assumptions as to the meaning of the claims”).” slip op. at 5
Claim constructionPatents in suitUS 6,788,882 - PTAB · Mar 13, 2020 · IPR2019-01502 · APJ Kevin W Cherry · IPR · Rehearing
The Board denied Bentley’s rehearing request and left the denial of institution in place because the petition lacked persuasive evidence that the Porsche 959 art taught or suggested multiple subsystems.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party seeking rehearing has the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d).” slip op. at 2
- BurdenInstitution denied meritsInstitution denied
“analysis, and that under the proper claim construction the center and rear differential are separate “subsystems.” Req. 3–6. Neither party sought a construction of the “subsystem.” See Pet. 12–15 (seeking only a claim construction of the term “off-road modes”); Prelim. Resp. Instead, Petitioner chose to rely on Dr. Bower’s conclusory testimony that the differentials of the Porsche 959 met this limitation. See Pet. 20–23 (citing Ex. 1004 ¶ 48). We found such testimony to be not persuasive and entitled to no weight. See Dec. 13–14. Without any evidence to support it, we concluded that Petitioner’s conclusory explanation did not meet the “reasonable likelihood of prevailing” standard of 35 U.S.C. § 314(a). Thus, we disagree that we should have engaged in claim construction of the term “subsystem,” when Petitioner itself chose not to. Petitioner cannot salvage Dr. Bower’s conclusory analysis by requesting a claim construction after the fact.” slip op. at 2
- Expert testimonyDecided for patent owner
“analysis, and that under the proper claim construction the center and rear differential are separate “subsystems.” Req. 3–6. Neither party sought a construction of the “subsystem.” See Pet. 12–15 (seeking only a claim construction of the term “off-road modes”); Prelim. Resp. Instead, Petitioner chose to rely on Dr. Bower’s conclusory testimony that the differentials of the Porsche 959 met this limitation. See Pet. 20–23 (citing Ex. 1004 ¶ 48). We found such testimony to be not persuasive and entitled to no weight. See Dec. 13–14. Without any evidence to support it, we concluded that Petitioner’s conclusory explanation did not meet the “reasonable likelihood of prevailing” standard of 35 U.S.C. § 314(a). Thus, we disagree that we should have engaged in claim construction of the term “subsystem,” when Petitioner itself chose not to. Petitioner cannot salvage Dr. Bower’s conclusory analysis by requesting a claim construction after the fact.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached
“analysis, and that under the proper claim construction the center and rear differential are separate “subsystems.” Req. 3–6. Neither party sought a construction of the “subsystem.” See Pet. 12–15 (seeking only a claim construction of the term “off-road modes”); Prelim. Resp. Instead, Petitioner chose to rely on Dr. Bower’s conclusory testimony that the differentials of the Porsche 959 met this limitation. See Pet. 20–23 (citing Ex. 1004 ¶ 48). We found such testimony to be not persuasive and entitled to no weight. See Dec. 13–14. Without any evidence to support it, we concluded that Petitioner’s conclusory explanation did not meet the “reasonable likelihood of prevailing” standard of 35 U.S.C. § 314(a). Thus, we disagree that we should have engaged in claim construction of the term “subsystem,” when Petitioner itself chose not to. Petitioner cannot salvage Dr. Bower’s conclusory analysis by requesting a claim construction after the fact.” slip op. at 2
Claim construction - Corning Incorporated v. Panduit Corp.Rehearing deniedPTAB · Jan 16, 2020 · IPR2019-00775 · APJ Michelle N Ankenbrand · IPR · Rehearing
Denied Corning’s rehearing request; the Board maintained its denial of institution because the petition did not show a reasonable likelihood that claims 1–4 were obvious on any asserted ground.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“institute an inter partes review, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c) (2018). 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
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Request for Rehearing (Paper 16, “Rehearing Request” or “Reh’g Req.”) of our Decision denying institution of an inter partes review (Paper 15, “Decision” or “Dec.”) of claims 1–4 of U.S. Patent No. 8,351,027 B2 (“the ’027 patent,” Ex. 1001). In the Decision, we found that Petitioner failed to provide sufficient evidence to show that the combined teachings of the prior art would have rendered obvious the limitation of claim 1 that requires “choosing for use in a communications network those optical fibers in which the result of subtracting the peak delay at the first radius from the peak delay at the second radius is a negative number” (“the choosing step”). Dec. 23–25, 29–30, 32. We, thus, determined that Petitioner did not establish a reasonable likelihood of prevailing in showing that claims 1–4 of the ’027 patent would have been obvious based on any asserted ground. Id. at 25–26, 30–33.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot reached
“negative slopes. See Ex. 1006, Figs. 2, 3. Petitioner failed to explain why one of ordinary skill in the art at the time of the invention, without using the ’027 patent as a template, would have elected to consider only some selected data in Abbott, while ignoring other data, or would have elected to choose an optical fiber based on such consideration. See Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (“To draw on hindsight knowledge of the patented invention, when the prior art does not contain or suggest that knowledge, is to use the invention as a template for its own reconstruction—an illogical and inappropriate process by which to determine patentability.” (citing W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983))); see also Dec. 25 (concluding that Petitioner’s argument appears to be the product of hindsight). Instead, Petitioner merely cited to the conclusory opinion of its expert declarant. Pet. 44 (citing Ex. 1005 ¶ 164).” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“legal error by construing claim 1” of the ’027 patent “as requiring the slope to always be negative.” Reh’g Req. 4, 6–8. We made no such construction. In fact, we determined that no claim term required express construction, expressly or implicitly. Dec. 7. In arguing that we committed legal error, Petitioner points to statements in Patent Owner’s briefing, see Reh’g Req. 6– 9, but does not identify anything in our Decision that indicates we construed the choosing step of claim 1 as requiring that the DMD slope should always be negative. Consequently, Petitioner’s assertion of legal error is unsupported.” slip op. at 7
Claim construction§ 103 obviousnessPatents in suitUS 8,351,027
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.