- 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 - Google LLC v. Metarail, Inc.Rehearing deniedPTAB · Aug 25, 2025 · IPR2024-01270 · APJ Frances L Ippolito · IPR · Rehearing
The Board denied Google’s rehearing request, leaving in place the denial of institution because the Petition did not show a reasonable likelihood that Belanger-Halevy teaches limitation [1C] of claims 1–26.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A 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 a motion, an opposition, a reply or sur-reply.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id. We address Petitioner’s rehearing arguments below.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“[m]issing, however, from Halevy’s disclosure is any teaching or suggestion that a ‘plurality of computer-readable field identifiers’ are mapped ‘to one another’ as required by claim 1.” Dec. 22. We discussed and quoted extensively from Petitioner’s expert declaration of Dr. Fox and Patent Owner’s expert declaration of Dr. Malek. Id. at 22–26 (citing Ex. 1003 ¶ 104; Ex. 2001 ¶¶ 69, 71). In reviewing the parties’ submissions, we found that: Halevy’s disclosures are consistent with Patent Owner’s arguments and Dr. Malek’s testimony that Halevy does not teach mapping fields to one another or mapping of fields to one another through SO-properties. For example, as described, in Figure 6 and Halevy as a whole, Halevy does not teach or suggest mapping or linking different keywords to one another, rather the keywords are mapped to SO-properties. slip op. at 5
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Dr. Fox states that “Halevy’s disclosure of a form database in which corresponding fields from different forms on different websites map to the same SO-properties would have been recognized by a POSA as what the ’378 patent refers to as a universal variable map.” Ex. 1003 ¶ 108 (citing Ex. 1001, 17:42–46). Based on this conclusory opinion, Dr. Fox reasons that Halevy’s form database is a “universal variable map” that must also link computer-readable field identifiers (including parameter names) from multiple different websites to each other in the form database, because the field identifiers are mapped to the same SO-properties associated with an SO-class. Id. We observe first that Dr. Fox’s conclusion is not supported by the cited portions of the ’378 patent. In column 17, lines 42–46, the ’378 patent explains that fields or variables may be part of forms and variations of these data fields or variables “may include a source form, a destination form, a single source to many destination form, many sources to one destination form, cascading forms (e.g., a first form links to a second form which links to a third form, etc.) and so on.” Ex. 1001, 17:42–46. While this portion of the ’378 patent indicates that forms may include variations on fields or variables, it does not describe any linking or mapping of variables to one another. Ex. 2001 ¶ 76 (“[T]hat portion of the specification does not have anything to do with the definition of a “universal variable map.” Rather, it merely discusses different types of variables and fields that might appear in different types of forms.”). Dec. 28–29. We again referred to the disclosure of the ’378 patent to address evidence in the Petition relied upon by Dr. Fox to support Petitioner’s position. Id. We credited Dr. Malek’s testimony over Dr. Fox’s testimony because Dr. Malek underlined the distinctions between the asserted Belanger-Halevy prior art combination and limitation [1C]. Dec. 28–31. In short, any confusion applying the prior art Belanger-Halevy references to the claim limitation is rooted in the Petition. The Board denied the Petition because the Petition did not demonstrate a reasonable likelihood of showing that Belanger-Halevy discloses or teaches limitation [1C] of the ’378 patent.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Finally, with regard to the Reply and Sur-Reply submitted by the parties (Req. 9), we note that our Decision on Institution reviewed the parties’ discussion of claim construction, but ultimately determined that “[b]ased on our review of the preliminary record, we do not need to construe any terms expressly to reach our decision.” Dec. 11. Thus, we disagree with Petitioner that we misconstrued the mapping limitation where we did not find it necessary to construe any claim term for the purposes of our institution decision because we determined the Petition deficient for failing to meet our threshold requirements as discussed above and in detail in the Decision on Institution. See Req. 1–11.” slip op. at 7
Claim constructionPatents in suitUS 9,633,378 - PTAB · Apr 22, 2025 · IPR2024-00910 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied Micron’s rehearing request, leaving institution denied because the Petition did not show a reasonable likelihood that claims 7–10 were obvious over Park.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When rehearing a decision on institution, we do not review the merits of the decision de novo, but instead 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.” Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000)). The party requesting rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, the request for rehearing “must specifically identify all matters the party believes the Board misapprehended” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“dummy source structure might not even be an inoperable structure,” and therefore “the ’872 Patent does not use ‘dummy’ to exclude the dummy source structure from being an operable, functioning element.” Ex. 1003 ¶ 85 (citing Ex. 1001, 5:41–43, 16:63–66). In support of his testimony, Dr. Banerjee points to the Specification’s teaching that “[i]n some embodiments, one or more dummy source structures are in contact with the substrate and may provide interconnect between the 3D memory device and peripheral devices” (Ex. 1001, 5:41–43), and “[w]hen conductive materials are used to fill dummy source hole 212 (e.g., contact 224), the dummy source structure 246 may function as an interconnect to connect 3D memory device 100 with other peripheral devices” (id. at 16:63–66), which we considered and relied upon in construing “dummy source structure” in the Decision. Dec. 11–13. None of the functions identified by Dr. Banerjee, however, relate to whether the dummy source structure would function as a source to the memory cells. Specification consistently describes that function as an interconnect with other peripheral devices, and does not teach or suggest that the dummy source structure may function to provide source to the memory cells. See Ex. 1001, 5:40–43 (“In some embodiments, one or more dummy source structures are in contact with the substrate and may provide interconnect between the 3D memory device and peripheral devices.”), 11:46–48 (“In some embodiments, dummy source structures 178 may function as interconnects to connect 3D memory device 100 with other peripheral devices.”), 16:63–66 (“When conductive materials are used to fill dummy source hole 212 (e.g., contact 244), the dummy source structure 246 may function as an interconnect to connect 3D memory device 100 with other peripheral devices.”). Our construction of “dummy source structure” is consistent with the Specification, and does not foreclose the dummy source structure from being operational, for example, as an interconnect to peripheral devices. Nor is it inconsistent with the Specification’s teaching that “[i]n some embodiments, dummy source structure 246 may not connect to channel structures in the inner region.” See Req. 11 (citing Ex. 1001, 16:38–44). In the case where the dummy source structure connects with the channel structures, the other end may connect with peripheral devices, or may be a dead end. Thus, even if the dummy source structure is operable as an interconnect to connect the 3D memory device with other peripheral devices, it does not follow that a dummy source structure would function as an interconnect to a supply that provides source to the memory cells. For these reasons, we are not persuaded that we abused our discretion in our construction of the term “dummy source structure.”” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“(Paper 14, “Request” or “Req.”) of our Decision (Paper 13, “Decision” or “Dec.”) denying institution of an inter partes review of claims 7–10 (“the challenged claims”) of U.S. Patent No. 10,861,872 B2 (Ex. 1001, “the ’872 patent”). The Request challenges our determination that the information presented in the Petition did not establish a reasonable likelihood of showing that claims 7–10 would have been obvious over the teachings of Park.1 Dec. 19–23.” slip op. at 2
Claim constructionPatents in suitUS 10,861,872 - 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 - Commscope Technologies LLC v. Dali Wireless Inc.Rehearing deniedPTAB · Jul 7, 2021 · IPR2020-01466 · APJ Melissa A Haapala · IPR · Rehearing
The Board denied rehearing and left in place the denial of institution on claims 1–12 because petitioner showed no overlooked matter or abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“On rehearing, the burden of showing that the Decision should be modified lies with Petitioner, the party challenging the Decision. See 37 C.F.R. § 42.71(d). “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, a reply, or a sur-reply.” Id. “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“establish Hettstedt discloses the “reconfiguring each remote radio unit.” See Dec. 15. We disagree that we overlooked any arguments presented in the Petition with respect to this limitation. In its analysis of the “reconfiguring each remote radio unit” limitation in the Petition, Petitioner relied on Hettstedt’s disclosure that the CMU controls the frequency allocation of each carrier to the remote radio heads “by changing the MAC address of a specific carrier packet to correspond no longer to a first remote radio head, but instead be addressed to a different radio head in a high traffic area.” See Pet. 22 (citing Ex. 1005, 5:10–11; 3:8–16; 4:35–39). Our Decision expressly addressed Petitioner’s arguments and evidence: After reviewing Petitioner’s analysis and supporting evidence, and Patent Owner’s response, we determine Petitioner fails to establish Hettstedt discloses “reconfiguring each remote radio unit” as we construe the claim (changing the configuration of each remote radio unit). Petitioner relies on Hettstedt’s disclosure that the CMU controls allocation of each carrier by changing the MAC addresses of carrier packets to disclose the recited “reconfiguring.” See Pet. 22. However, while changing the MAC addresses of carrier packets may result in an increase or decrease of the number of carriers assigned to a radio head by the CMU when routing traffic, it does not reconfigure (change) the configuration of the remote radio head itself. As we noted in our analysis of the claim construction of this term, the plain language of the claim requires that the remote radio head itself be reconfigured. Petitioner’s analysis does not address how Hettstedt discloses reconfiguring the remote radio unit itself.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We are unpersuaded that we misconstrued the phrase “reconfiguring each remote radio unit by.” Petitioner’s proposed claim construction in the Rehearing Request does not give patentable weight to the claimed “reconfiguring each remote radio unit.” Although we agree with Petitioner that claim 1 requires limitations [b] and [c] (i.e., “determining a load percentage” and “increasing or decreasing the number of carriers”), we disagree with Petitioner that the term “by” before limitations [b] and [c] would require what comes before “by” to have no patentable weight. Rather, as stated in our Decision: we adopt the district court’s construction and construe “reconfiguring each remote radio unit” to be “changing the configuration of each remote unit.” We additionally note that the claim term requires that it is the remote radio unit itself that is changed because the “remote radio unit” is the direct object of the verb “reconfiguring.” This is consistent with the specification of the ’338 patent, which describes reconfiguring the RRUs themselves. Dec. 9–10 (citing Ex. 1001, 4:1–13, 7:16–31, 8:8–21, 8:48–55, 11:28–39).” slip op. at 7
- Strike new argumentNew argument disregardedDecided for patent owner
“In its rehearing request, Petitioner now newly argues that we overlooked Hettstedt’s disclosure that remote radio heads are channel-selective in the uplink (i.e., column 5, lines 6–8 of Hettstedt). But Petitioner’s new analysis and explanation that Hettstedt’s teaches “reconfiguring each remote radio unit head” because its radio units are channel selective in the uplink was not presented in the Petition, and we could not have overlooked arguments or evidence not before us.2 See 37 C.F.R. 42.71(d). A petition must include “a detailed explanation of the significance of the evidence.” 37 C.F.R. § 42.22(a)(2). We are not persuaded of any error in our Decision that Petitioner failed to demonstrate a reasonable likelihood of prevailing in establishing that claim 1 is anticipated by Hettstedt. See Dec. 13–15. 2 We acknowledge Petitioner’s reliance on Hettstedt’s column 5, lines 6–8 on page 21 of the Petition; however, the Petition relied on this portion of Hettstedt for Element F of claim 1 (“configuring each remote radio unit to receive or transmit a respective subset of the plurality of carriers, each respective subset of the plurality of carriers including a number of carriers”), not for Element G of claim 1 (“reconfiguring each remote radio unit by . . .”). See Pet. 21. Petitioner’s Rehearing Request also points to reliance on Hettstedt’s column 5, lines 6–8 on page 10 of the Petition and in paragraphs of Dr. Acampora’s testimony (see Req. Reh’g 6–8 (citing Pet. 10; Ex. 1003 ¶¶ 46–54)), however (i) page 10 of the Petition and paragraphs 46–52 of Dr. Acampora’s testimony are not addressing the “reconfiguring each remote radio unit” limitation, and (ii) while paragraphs 53–54 of Dr. Acampora’s testimony addresses the “reconfiguring each remote radio unit” these paragraphs do not reference Hettstedt’s column 5, lines 6–8. See Pet. 10; Ex. 1003 ¶¶ 46–54.” slip op. at 4
Claim constructionPatents in suitUS 8,682,338 - 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 - Satco Products, Inc. v. Seoul Semiconductor Co., Ltd.Rehearing deniedPTAB · Nov 9, 2020 · IPR2020-00151 · APJ Jeffrey W Abraham · IPR · Rehearing
The Board denied Satco’s rehearing request, leaving in place the denial of institution on claims 1–7 because the petition did not adequately show Wang disclosed the different-shape limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Petition or rely only on Figure 8. Rather, after considering Petitioner’s citation to and cursory discussion of Figures 8, 9, and 11 in the Petition, we determined Petitioner’s evidence suffered from deficiencies that prevented Petitioner from satisfying its burden of proof in the Petition. Notably, in its Rehearing Request, Petitioner does not direct us to any actual comparison of the shapes of top and bottom portions of Wang’s separation region that we overlooked in the Petition. Instead, Petitioner presents new images and new arguments that these images represent the shape of the top and bottom portions of Wang’s separation regions, as derived from Figures 8, 9, and 11. Req. Reh’g 8–11. A request for rehearing, however, is not an opportunity to present new arguments or evidence. See 37 C.F.R. § 42.71(d).” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In our Decision, we determined that Petitioner failed to demonstrate adequately that Wang discloses the different shape limitation. Dec. 17–19. In particular, we noted that the images from Wang Petitioner relied upon offered insufficient information to determine whether the separation region between first and second top leads has a different shape than the separation region between the first and second bottom leads. Dec. 17–19. For example, we stated that Petitioner never presented views comparing the top and bottom portions of the separation region to demonstrate adequately that the top and bottom portions have different shapes. Dec. 19.” slip op. at 3
- BurdenDecided for patent owner
“Petition or rely only on Figure 8. Rather, after considering Petitioner’s citation to and cursory discussion of Figures 8, 9, and 11 in the Petition, we determined Petitioner’s evidence suffered from deficiencies that prevented Petitioner from satisfying its burden of proof in the Petition. Notably, in its Rehearing Request, Petitioner does not direct us to any actual comparison of the shapes of top and bottom portions of Wang’s separation region that we overlooked in the Petition. Instead, Petitioner presents new images and new arguments that these images represent the shape of the top and bottom portions of Wang’s separation regions, as derived from Figures 8, 9, and 11. Req. Reh’g 8–11. A request for rehearing, however, is not an opportunity to present new arguments or evidence. See 37 C.F.R. § 42.71(d).” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Wang’s figures to the claim language itself in our Decision. In doing so, we determined that Wang’s figures provided insufficient information to determine whether Wang discloses the “different shape” limitation. Dec. 17–19. Our discussion of the figures in the ’919 patent merely highlighted the deficiencies in Petitioner’s reliance on the figures in Wang by providing an example of information that could be used to determine whether the top and bottom portions of the separation regions have different shapes. At no point did we import any specific features from the Specification into the “different shape” limitation or “require shapes similar to the ‘exemplary embodiment’ of FIG. 5A of the ’919 patent.” Req. Reh’g 4. Rather, we merely compared the type of information presented in the ’919 patent with the type of information presented in Wang to reinforce our determination that Petitioner failed to direct us to evidence in Wang that would allow a person of ordinary skill in the art to determine that Wang discloses a separation region that has a different shape between the top leads and the bottom leads. In view of the foregoing, we are not persuaded that we committed any legal errors, or that we narrowed the plain meaning of “different shape.”” slip op. at 7
Claim constructionPatents in suitUS 9,978,919 - Amazon.Com, Inc. v. Rensselaer Polytechnic InstituteRehearing deniedPTAB · Oct 30, 2020 · IPR2019-01069 · APJ Trevor M Jefferson · IPR · Rehearing
The Board denied Amazon’s rehearing request, leaving institution denied for claims 9–21 because the Petition did not show a reasonable likelihood of prevailing on its obviousness grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in a paper of record. 37 C.F.R. § 42.71(d) (2019) (emphasis added). 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: (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) (internal citations omitted).” slip op. at 3
- Prior constructionPrior construction adoptedDecided for patent owner
“system, e.g. how the system interprets words or phrases.” Apple IPR 6. Thus, the Apple IPR Board adopted Patent Owner’s argument that as applied to the prior art, the term “case” in “case information” requires “uses of the system contemplated by the invention, not uses of any other natural language processing system.” Apple IPR 6. The Board rejected that such prior use was found in rules regarding how the system interprets current word or phrase input. Id. We find that the Apple IPR discussed a user’s selection among possible choices, but also addressed that the “case” required use of the system of the ’798 invention. Id. at 5–6. Thus, we do not agree we misapprehended the meaning of the claim language. Req. Reh’g 2.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“to establish a reasonable likelihood of prevailing, in showing that claims 9– 21 would have been obvious over Livowsky;1 claims 10–12 and 14–16 would have been obvious over Livowsky and Shwartz;2 claims 9–21 would have been obvious over Shwartz and Livowsky; claims 9–21 would have been obvious over Shwartz and Weber;3 and claims 9–21 would have been obvious over Meng4 and Zhang.5 Dec. 17–18, 21–22, 23–24. For the reasons below, the Request for Rehearing is denied.” slip op. at 2
Claim constructionPatents in suitUS 7,177,798 - Amazon.Com, Inc. v. Rensselaer Polytechnic InstituteRehearing deniedPTAB · Oct 30, 2020 · IPR2019-01068 · APJ Trevor M Jefferson · IPR · Rehearing
The Board denied Amazon’s rehearing request, leaving in place the denial of institution on claims 1–8 because Petitioner did not show the Board misapprehended the construction or prior-art evidence.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“overlooked, and the place where each matter was previously addressed” in a paper of record. 37 C.F.R. § 42.71(d) (2019) (emphasis added). 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: (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) (internal citations omitted).” slip op. at 3
- Prior constructionPrior construction adoptedDecided for patent owner
“interpretation of the claim construction in the Apple IPR. See Req. Reh’g 3. The Apple IPR cites the embodiment from the ’798 patent specification (Ex. 1001, 5:36–38, 16:52–17:5). Apple IPR 5–6. The Board in the Apple IPR expressly clarified that in the case information construction “‘instances of use’ of the system [did not] mean indications cover instances of use of the system, e.g. how the system interprets words or phrases.” Apple IPR 6. Thus, the Apple IPR Board adopted Patent Owner’s argument that as applied to the prior art, the term “case” in “case information” requires “uses of the system contemplated by the invention, not uses of any other natural language processing system.” Apple IPR 6. The Board rejected that such prior use was found in rules regarding how the system interprets current word or phrase input. Id. We find that the Apple IPR discussed a user’s selection among possible choices, but also addressed that the “case” required use of the system of the ’798 invention. Id. at 5–6. Thus, we do not agree we misapprehended the meaning of the claim language. Req. Reh’g 2.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“information” to exclude clarifications from users. Id. at 5–6, 7–11. Petitioner argues that our Institution Decision adopts Patent Owner’s narrow construction and finds that “clarifying prompts” in grounds including Weber are not “case information.” Id. at 7–8. Our Institution Decision found that Petitioner did not persuasively and sufficiently assert how the prior art disclosed the “case information.” Dec 19–20. Our determination was based on the sufficiency of Petitioner’s evidence and argument in the regarding whether Weber’s prompting the user for information, which was contested by Patent Owner, teaches or suggests “information about prior instances of use of the natural language processing method.” Dec. 19–20 (emphasis added). Petitioner’s arguments does not identify any evidence we overlooked or misapprehended. Req. Reh’g 7–8. Instead, Petitioner characterizes our Institution Decision as broadly excluding user prompts. Our determination was based on the full claim construction, which is supported by the Apple IPR’s emphasis of “prior instances of use of the natural language processing method.” Apple IPR 5–6; Dec. 19–20.” slip op. at 5
Claim constructionPatents in suitUS 7,177,798
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.