- Everstar Merchandise Co., Ltd. v. Willis Electric Co., Ltd.Rehearing deniedPTAB · Oct 22, 2020 · IPR2019-01484 · APJ Jeffrey W Abraham · IPR · Rehearing
The Board denied Everstar’s rehearing request, leaving in place the denial of institution on claims 1–30 because it had not shown an abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). 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.” 37 C.F.R. § 42.71(d). When rehearing a decision on a petition, the decision will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“As Petitioner points out, the ’097 patent characterizes reinforcing strands 102a–c as “extend[ing] axially through the center portion of wire 10[0].” Ex. 1001, 14:59–60. Our construction of “disposed at a central portion,” which requires strands to be positioned in the wire so as to occupy at least the center of the wire, is consistent with both the description of strands 102a–c as extending through the center portion of the wire in the ’097 patent specification and the depiction of strands 102a–c in the center of wire 100 in Figure 5. Petitioner appears to argue that because reinforcing strands 102a–c occupy a space that is larger than “simply the central axis of the wire,” any strands disposed inside the wire (i.e., within the outer insulating layer of the wire) are also “disposed at a central portion of the wire.” Req. Reh’g 5. Nothing in Figure 5 or the ’097 patent’s description of Figure 5, however, supports a construction of “disposed at a central portion” that means simply “disposed inside the wire.” To the contrary, Petitioner’s argument is undermined by the fact that the ’097 patent expressly refers to the reinforcing strands 102a–c as extending through the central portion, but does not use the same language to characterize the position of conducting strands 104.” slip op. at 5
- Expert testimonyDecided for patent owner
“We are not persuaded by Petitioner’s argument that a genuine dispute of material fact exists with regard to the parties’ proposed construction of “disposed at a central portion.” Petitioner acknowledges that its declarant, Dr. Fantone, testified that none of the claim terms required a specific construction and that the claim terms “would be understood by one of ordinary skill in the art.” Req. Reh’g 13–14 (citing Ex. 1009 ¶ 22). As Petitioner points out, Dr. Brown, Patent Owner’s declarant, did not offer any “statement of disagreement with Petitioner’s position that the terms should be afforded their ordinary and customary meaning.” Req. Reh’g 14. As a result, there is no “conflicting” testimony from the declarants on this point. Nor is there any conflicting testimony from the declarants regarding the ordinary and customary meaning of “disposed at a central portion.” Although Dr. Fantone testified generally that a person of ordinary skill in the art would understand what “disposed at a central portion” means, Dr. Fantone never explained what that understanding would be. Thus, there is no dispute of material fact on this record regarding the plain and ordinary meaning of the claim term.” slip op. at 9
Claim constructionPatents in suitUS 9,671,097 - Everstar Merchandise Co., Ltd. v. Willis Electric Co., Ltd.Rehearing deniedPTAB · Jun 30, 2020 · IPR2019-01484 · APJ Jeffrey W Abraham · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution for claims 1–30, finding no abuse of discretion in its claim-construction analysis or treatment of factual disputes.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). 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.” 37 C.F.R. § 42.71(d). When rehearing a decision on a petition, the decision will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“strands 102a–c as “extend[ing] axially through the center portion of wire 10[0].” Ex. 1001, 14:59–60. Our construction of “disposed at a central portion,” which requires strands to be positioned in the wire so as to occupy at least the center of the wire, is consistent with both the description of strands 102a–c as extending through the center portion of the wire in the ’097 patent specification and the depiction of strands 102a–c in the center of wire 100 in Figure 5. Petitioner appears to argue that because reinforcing strands 102a–c occupy a space that is larger than “simply the central axis of the wire,” any strands disposed inside the wire (i.e., within the outer insulating layer of the wire) are also “disposed at a central portion of the wire.” Req. Reh’g 5. Nothing in Figure 5 or the ’097 patent’s description of Figure 5, however, supports a construction of “disposed at a central portion” that means simply “disposed inside the wire.” To the contrary, Petitioner’s argument is undermined by the fact that the ’097 patent expressly refers to the reinforcing strands 102a–c as extending through the central portion, but does not use the same language to characterize the position of conducting strands 104.” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“construction of “plurality of reinforcing strands” contradicts the ’097 patent specification. Req. Reh’g 10–12. In our Decision, however, we never expressly construed this term. Instead, we noted that the ’097 patent addresses the possibility that yarn, which itself comprises multiple strands, can be used to form a single reinforcing strand. Dec. 34–35. We did not, as Petitioner contends, determine that “twisted strands must only be one reinforcing strand.” Req. Reh’g 10–11. To the contrary, as Petitioner itself points out, we expressly noted that the ’097 patent distinguishes between embodiments having a single reinforcing strand and those having multiple reinforcing strands. Req. Reh’g 10; Dec. 35. In view of this, we are not persuaded by Petitioner’s argument that we adopted a claim construction of “plurality of reinforcing strands” that contradicts the ’097 patent’s specification, which in turn “led to a clearly erroneous Institution Decision with respect to claims 16–22.” Req. Reh’g 12.” slip op. at 7
- Strike new argumentNew argument disregardedDecided for patent owner
“We first note that Petitioner presents new evidence for the first time in the Request for Rehearing. Pursuant to 37 C.F.R. § 42.104(b)(3), a petition must set forth how the challenged claims are to be construed. In this proceeding, the Petition contains one paragraph addressing claim construction. Pet. 7. In the paragraph, Petitioner states a claim should be “accorded its ‘ordinary and customary meaning . . . as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent’” and, in a single sentence within that paragraph, indicates that “no terms require a specific construction.” Pet. 7. Petitioner thus had the opportunity to present its claim construction arguments and supporting evidence in its Petition, and chose not to do so. By way of contrast, in the Request for Rehearing, Petitioner allocates seven pages to the construction of the term “disposed at a central portion.” Req. Reh’g. 2–8. Petitioner is attempting to use the Request for Rehearing as an opportunity to reply to our Decision and present new arguments and evidence on claim construction. A request for rehearing, however, is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or for Petitioner to present new arguments or evidence.” slip op. at 3
Claim constructionPatents in suitUS 9,671,097 - RPX Corporation / Huawei Enterprise USA, Inc. et al. v. Parity Networks, LLCAll claims unpatentablePTAB · Apr 9, 2019 · IPR2018-00100 · APJ Bryan F Moore · IPR · Final written decision
Claims 1–19 are unpatentable: claims 1–4, 6–9, 11–16, and 18–19 as obvious over Wilford; claims 5, 10, and 17 as obvious over Wilford and Ayres.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts a person of ordinary skill in the art of the subject matter of the ’378 patent would have had “(a) a bachelor’s degree in computer science or electrical engineering, and four or more years of experience with networks and networking devices, or (b) a master’s degree in computer science or electrical engineering, and two or more years of experience with networks and networking devices.” Pet. 10 (citing Ex. 1105 ¶¶ 30–34). Patent Owner does not offer a proposed level of skill in its Patent Owner Response and does not address Petitioner’s assertions regarding the education or experience of an ordinarily skilled artisan at the time of the invention. See generally PO Resp. We adopt Petitioner’s articulation of the level of skill and acknowledge that the level of ordinary skill in the art is also reflected by the prior art of record. See Okajima, 261 F.3d at 1355; GPAC Inc., 57 F.3d at 1579 (Fed. Cir. 1995); Oelrich, 579 F.2d at 91.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“All challenged claims require a “hardware queue.” Petitioner argues “under BRI, the term ‘hardware queue’ should be interpreted to include hardware that is configurable by software to form a queue.” Pet. 42 (citing Ex. 1105 ¶ 210). Petitioner also suggests that an alternative definition of the term could “require special-purpose hardware circuitry to control at least some portion of the queue.” Id. at 44. Patent Owner does not define explicitly “hardware queue.” Nevertheless, Patent Owner’s declarant asserts “[t]he plain and ordinary meaning of a hardware queue, is well known,” i.e., that “such a queue would be designed by a circuit designer and formed to function as a queue as part of the manufacturing process of an electronic circuit,” and that it differs from a software queue “formed by software operating on general purpose or multi-purpose hardware.” Ex. 2001 ¶ 34. Additionally, Patent Owner’s argument in the Patent Owner Response suggests “hardware queue” means that the queue cannot be a “software queue” and “must be implemented in hardware.” PO Resp. 7, 9–12 (stating “Petitioners do not assert that the queue must be implemented in hardware”).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Petitioner demonstrates reasons supported by a rational underpinning for combining Wilford and Ayres, including at least that the combination uses known methods to obtain predictable results. Pet. 61–66. For example, Petitioner provides evidence and argument that: A [person of ordinary skill in the art at the time of the invention] would have understood that monitoring CPU utilization as taught in Ayres is a conventional technique for monitoring CPU load in relation to the CPU’s capacity, and that known technology could be employed in Wilford to monitor utilization of the linecard’s CPU (as Ayres does) and provide that information to the added dynamic packet flow rate control module. (Lavian, ¶259 (discussing Ayres and citing Ex. 1112 at 4:67, 9:62-65, 10:18- 20, and 10:26)). Pet. 66. We agree with and adopt Petitioner’s contentions in the Petition as to claims 5, 10, and 17.” slip op. at 36
- Strike new argumentNew argument consideredDenied
“because it contains allegedly new arguments. Paper 24. Specifically, Petitioner states Patent Owner argued for the first time “a hardware queue” requires some unspecified “structure” “define[d]” by hardware “such as shift registers.” Paper 42, 2 (citing Sur-Reply at 2–3). Petitioner also asserts that Patent Owner, for the first time in “[t]he Sur-Reply[,] offers unsupported attorney arguments about alleged differences between the ‘hardware queues’ in Exs. 1110 and 1111 and Wilford’s queues based on alleged differences between SRAM and DRAM.” Paper 42, 3 (citing Sur-Reply at 2–3). Petitioner asserts Patent Owner’s arguments could have been made in the Patent Owner Response and thus are waived. Paper 8, 3 (arguments not in POR “will be deemed waived”); Update to the Trial Practice Guide (83 Fed. Reg. 38,989 (Aug. 13, 2018) (notifying the public of the updated “Trial Practice Guide” and its accessibility through the USPTO website: https://go.usa.gov/xU7GP)) at 15 (a “sur-reply that raises a new issue or belatedly presents evidence may not be considered”; a sur-reply may “respond” to arguments “raised” in the reply but “respond … does not mean embark in a new direction with a new approach as compared to positions taken in a prior filing.”). Petitioner’s motion is denied. Patent Owner’s reference to “shift registers” is in response to arguments in the Reply regarding the definition of hardware queue. Additionally, Patent Owner’s reference to Exhibits 1110 and 1111 are in response to Petitioner’s reference to those exhibits for the first time in its Reply.” slip op. at 37
Patent outcomesUS 6,738,378 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,738,378 - Roland Corporation v. Inmusic Brands, Inc.Rehearing deniedPTAB · Feb 21, 2019 · IPR2018-00396 · APJ Kamran Jivani · IPR · Rehearing
The Board denied Roland Corporation’s rehearing request, leaving in place denial of institution on claims 1–21 because the petition did not sufficiently show anticipation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW 37 C.F.R. § 42.71(d) provides that: A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply. See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012) (emphasis added). Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 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” slip op. at 2
- BurdenNot reached
“02178, 2018 WL 3490804, at *1 (July 19, 2018) (citing 37 C.F.R. § 42.71(d)). Under our rules, the Petition must contain a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence . . . .” 37 C.F.R. § 42.22(a)(2). If the Petition does not demonstrate that there is a reasonable likelihood of success, then the Board shall not institute an inter partes review. See 37 C.F.R. § 42.108(c) (“Inter partes review shall not be instituted for a ground of unpatentability unless the Board decides that the petition supporting the ground would demonstrate that there is a reasonable likelihood that at least one of the claims challenged in the petition is unpatentable.”). Because Petitioner failed to set forth its analysis of the claimed proportional relationship in the Petition, we are not persuaded that we erred in finding Petitioner’s analysis insufficient to show a reasonable likelihood of success on this anticipation challenge.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“is proportional to the position of the control shaft relative to the foot pedal control module.” Ex. 1001, 5:32–34, 6:4–6, 6:37–39 (emphasis added). We construed the term “proportional” as “requiring a constant relationship, such as, for example, a linear relationship.” Dec. 16. In so doing, we found that “the claims and Specification of the ’758 patent do not elaborate on [the] nature of the control signal generated by the foot pedal control module beyond describing one embodiment in which the signal is ‘proportional to the plunger 116 position to the drum synthesizer through the cables.’” Id. (citing Ex. 1001, 4:30–33). We further found that “[t]he prosecution history also does not explicitly define the term ‘proportional;’ however, the Examiner relies on the ‘position-proportional signal’ as a reason for allowance of the claims.” Id. (citing Ex. 1005, 6). Recognizing that “[a]lthough extrinsic evidence ‘is generally of less significance than the intrinsic record’ in matters of claim construction,” we turned to “certain extrinsic evidence [to] inform[] our construction in the absence of a more fulsome intrinsic record.” Id. at 16–17 (citing Wi-LAN, Inc. v. Apple Inc., 811 F.3d 455, 462 (Fed. Cir. 2016)). In particular, we relied upon “a relevant technical dictionary, namely The Authoritative Dictionary of IEEE Standards Terms,” to “show the common understanding that usage of term ‘proportional’ when used to describe an electrical signal indicates the signal maintains a constant relationship, such as, for example, a linear relationship.” Id. at 17 (citing Ex. 3001, 690, 879–80). We also observed that the dictionary.com “definition Patent Owner proffers supports our construction of ‘proportional’ as requiring a constant relationship.” Id. (citing Ex. 2002). slip op. at 7
- Strike new argumentNew argument disregardedDecided for patent owner
“A Request for Rehearing is not an opportunity to present new arguments and evidence. 37 C.F.R. § 42.71(d) (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.”). “Because we do not consider an argument made in a request for rehearing unless the request [specifically identif[ies] . . . the place where [that argument] was previously addressed in a motion, an opposition, or a reply,” we do not consider Petitioner’s newly presented information here. Commvault Sys., Inc. v. Realtime Data LLC, IPR2017- 02178, 2018 WL 3490804, at *1 (July 19, 2018) (citing 37 C.F.R. § 42.71(d)). Under our rules, the Petition must contain a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence . . . .” 37 C.F.R. § 42.22(a)(2). If the Petition does not demonstrate that there is a reasonable likelihood of success, then the Board shall not institute an inter partes review. See 37 C.F.R. § 42.108(c) (“Inter partes review shall not be instituted for a ground of unpatentability unless the Board decides that the petition supporting the ground would demonstrate that there is a reasonable likelihood that at least one of the claims challenged in the petition is unpatentable.”). Because Petitioner failed to set forth its analysis of the claimed proportional relationship in the Petition, we are not persuaded that we erred in finding Petitioner’s analysis insufficient to show a reasonable likelihood of success on this anticipation challenge.” slip op. at 6
Claim constructioncites PhillipsPatents in suitUS 8,785,758 - Roland Corporation v. Inmusic Brands, Inc.Rehearing deniedPTAB · Dec 20, 2018 · IPR2018-00335 · APJ Debra K Stephens · IPR · Rehearing
The Board denied rehearing of its decision denying institution, finding no overlooked or misapprehended basis to show the claimed acoustic noise reducing cavity in the cited references or their combination.
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, or a reply” (37 C.F.R. § 42.71(d)). The party challenging a decision bears the burden of showing the decision should be modified (id.).” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“It is well settled that a prior art reference may anticipate when the claim limitations not expressly found in that reference are nonetheless inherent in it. Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates” (In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citations and internal quotation marks omitted)). “[A]nticipation by inherent disclosure is appropriate only when the [single prior art] reference discloses prior art that must necessarily include the unstated limitation.” Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002) (citation omitted). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Cont'l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (internal quotation marks and citations omitted). Rather, “[t]he inherent result must inevitably result from the disclosed steps....” In re Montgomery, 677 F.3d 1375, 1380 (Fed. Cir. 2012) slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“As set forth above, we were not persuaded by Petitioner’s arguments that Puschner anticipated an acoustic noise reducing cavity. Moreover, as we stated in our Decision, Petitioner did not “identify where Yoshino ’117, directed to an ‘electronic percussion instrument and vibration detection apparatus,’ teaches or suggests the claimed ‘acoustic noise reducing cavity’” (Dec. 21). Petitioner provided no cites to Yoshino ’117 to support its assertion that Yoshino ’117 teaches “an acoustic noise reducing cavity in an electronic drum” in either the Petition or the Declaration of Dr. Paradiso with respect to this asserted ground (Pet. 19–20; Ex. 1002 ¶ 74). We also determined Petitioner had not proffered persuasive argument as to why an ordinarily skilled artisan would have found it obvious to combined the teachings (Dec. 21). Rather, Petitioner merely proffered the conclusory statement that “it would have been obvious” because of “a desire to reduce acoustic sound . . .” (Pet. 19–20) –– i.e., it would have been obvious to have the recited feature. Moreover, we determined Petitioner had not “explained how the teachings of Puschner’s and Yoshino ’117’s different structures would have been combined to teach the invention,” as recited in claim 15 (Dec. 21). Petitioner has not identified any matter that the Board misapprehended or overlooked, or identified where each matter was previously addressed, in the relevant portions of the Petition or cited evidence. Petitioner did not fully address how the references taught the limitation or the reasons for combining the teachings.” slip op. at 6
§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,424,827 - Google LLC v. Ipa Technologies Inc.Rehearing deniedPTAB · Dec 20, 2018 · IPR2018-00475 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Google’s rehearing request and left in place denial of institution because the Petition did not show Cheyer was publicly accessible prior art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“trial is set forth in 37 C.F.R. § 42.71(c), which provides in relevant part: “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Section 42.71(c), in turn, references 37 C.F.R. § 42.71(d), which provides 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, or a reply.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“There is no evidence that whatever version of Cheyer (if any) was linked on the SRI website was ever downloaded, or that a search engine could have been used to find it. Thus, even if we were to assume that Cheyer was available online (i.e., technical availability), Petitioner fails to point to any persuasive evidence of public accessibility to the document or the SRI website.” slip op. at 5
- Other 314aDenied
“request, or panels to authorize, an expanded panel. See generally 35 U.S.C. § 6; 37 C.F.R. §§ 41.1–42.412. The Chief Judge may consider panel expansions upon a “suggestion” from a judge, panel, or party. PTAB SOP 1,” slip op. at 11
§ 102 anticipationDiscretionary denialPatents in suitUS 6,742,021 - Google LLC v. Ipa Technologies Inc.Rehearing deniedPTAB · Dec 20, 2018 · IPR2018-00384 · APJ Thomas L Giannetti · IPR · Rehearing
The Board denied Google’s rehearing request, leaving institution denied for claims 1–18 because the petition did not show Cheyer was publicly accessible and qualified as prior art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“trial is set forth in 37 C.F.R. § 42.71(c), which provides in relevant part: “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Section 42.71(c), in turn, references 37 C.F.R. § 42.71(d), which provides 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, or a reply.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“trial is set forth in 37 C.F.R. § 42.71(c), which provides in relevant part: “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Section 42.71(c), in turn, references 37 C.F.R. § 42.71(d), which provides 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, or a reply.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“There is no evidence that whatever version of Cheyer (if any) was linked on the SRI website was ever downloaded, or that a search engine could have been used to find it. Thus, even if we were to assume that Cheyer was available online (i.e., technical availability), Petitioner fails to point to any persuasive evidence of public accessibility to the document or the SRI website.” slip op. at 5
§ 102 anticipationPatents in suitUS 6,523,061 - Google LLC v. Ipa Technologies Inc.Rehearing deniedPTAB · Dec 20, 2018 · IPR2018-00474 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Google’s rehearing request, leaving institution denied on all challenged claims because Cheyer was not shown reasonably likely to have been publicly accessible as prior art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“trial is set forth in 37 C.F.R. § 42.71(c), which provides in relevant part: “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Section 42.71(c), in turn, references 37 C.F.R. § 42.71(d), which provides 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, or a reply.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“we denied the Petition as to all claims. We determined that Petitioner had failed to satisfy its burden of demonstrating a reasonable likelihood of showing, under 35 U.S.C. § 102(b), that its principal reference, Cheyer,1 was disseminated or publicly accessible prior to one year before the effective filing date of the ’021 patent and, therefore, did not qualify as prior art under 35 U.S.C. § 102(b). Dec. 6–15.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“There is no evidence that whatever version of Cheyer (if any) was linked on the SRI website was ever downloaded, or that a search engine could have been used to find it. Thus, even if we were to assume that Cheyer was available online (i.e., technical availability), Petitioner fails to point to any persuasive evidence of public accessibility to the document or the SRI website. Id. at 14.” slip op. at 5
- Other 314aDenied
“request, or panels to authorize, an expanded panel. See generally 35 U.S.C. § 6; 37 C.F.R. §§ 41.1–42.412. The Chief Judge may consider panel expansions upon a “suggestion” from a judge, panel, or party. PTAB SOP 1,” slip op. at 11
§ 102 anticipationDiscretionary denialPatents in suitUS 6,742,021 - Google LLC v. Ipa Technologies Inc.Rehearing deniedPTAB · Dec 20, 2018 · IPR2018-00476 · APJ Debra K Stephens · IPR · Rehearing
The Board denied Google's rehearing request, leaving institution denied for claims 1–27 because Cheyer was not shown reasonably likely to qualify as publicly accessible prior art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“trial is set forth in 37 C.F.R. § 42.71(c), which provides in relevant part: “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Section 42.71(c), in turn, references 37 C.F.R. § 42.71(d), which provides 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, or a reply” (37 C.F.R. § 42.71(d)). The party challenging a decision bears the burden of showing the decision should be modified (id.).” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot reached
“how to retrieve Cheyer, included in Moran’s footnote citation, did not persuade us that Cheyer was publicly accessible (id. at 15; see Pet. 3)). Importantly, we note Petitioner has not shown the link provided in the footnote worked, or that the link, which is to a “Bibliography” page (see Ex. 1029), provided Cheyer’s paper or a publicly accessible link to Cheyer’s paper. In particular, Petitioner does not provide a copy of this Bibliography page to show what actually was on this page and how or if an ordinarily skilled artisan would have been able to access Cheyer’s paper from the Bibliography page. In our Decision, we noted Petitioner failed to provide testimonial or other evidence that the link provided in the article actually worked at the relevant time period, what content was included at the linked website, how one would find Cheyer after selecting the link, or which version of Cheyer allegedly was accessible via the link (Dec. 15). We also explained that this latter showing is of special importance here because Petitioner acknowledges that there were several different versions of Cheyer (id. at 12 (citing Pet. 3)).” slip op. at 8
- Strike new argumentNew argument disregardedDecided for patent owner
“professional computer scientist or engineer directed to find an article on a section of a website would have been unable to do so with reasonable diligence” (id. at 7–8). Petitioner’s argument fails for several reasons. First, it is a new argument not appropriately raised on rehearing. Second, Petitioner identifies no support in the record for the assertion that Cheyer was actually available (see Ex. 2001 and 2002) or that an ordinarily skilled artisan would have been able to find Cheyer, only Petitioner’s speculation.2 Finally, this argument overlooks that the burden is on Petitioner, not the Board, to demonstrate a reasonable likelihood of prevailing on this issue.” slip op. at 7
§ 102 anticipationPatents in suitUS 6,757,718 - Microsoft Corporation v. Ipa Technologies Inc.Rehearing deniedPTAB · Nov 8, 2018 · IPR2018-00793 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, finding no abuse of discretion in timely issuing the institution decisions before resolving the § 315(b) time-bar contention.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“III. STANDARD OF REVIEW Pursuant to 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 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). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d).” slip op. at 5
- PTAB / AIA Trials › §315(b) time barNot reached
“telephone conference call with the Board, “put at issue” the question whether an inter partes review may not be instituted under 35 U.S.C. § 315(b) because Petitioner, a real party in interest, or a privy of Petitioner was served with a complaint alleging infringement of the ’021 patent more than one year prior to the filing of the Petition. See, e.g., Req. Reh’g 10 (contending that Patent Owner put § 315(b) at issue). Patent Owner has not. During the September 17th conference call, Patent Owner mentioned several documents, including indemnification policies, license agreements, and correspondence as materials that Patent Owner is either aware of or seeking from Petitioner. See, e.g., Ex. 2001, 6:24–8:3 (discussing these documents), 10:19–11:14 (same). Neither party, however, has placed those documents in evidence, nor has Patent Owner advanced its argument regarding § 315(b) in any briefing. See World Inc. v. Bungie, Inc., 903 F.3d 1237, 1244 (Fed. Cir. 2018) (“We agree, however, that a patent owner must produce some evidence that tends to show that a particular third party should be named a real party in interest. A mere assertion that a third party is an unnamed real party in interest, without any support for that assertion, is insufficient to put the issue into dispute.” (footnote omitted)). Thus, at this time, Patent Owner has not “put at issue” whether Petitioner is barred under § 315(b). Additionally, Patent Owner’s Rehearing Request fails to identify where it previously raised the question of § 315(b) in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d). As explained above, Patent Owner has not. Thus, we could not have misapprehended or overlooked an issue not raised previously.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“V. CONCLUSION For the foregoing reasons, Patent Owner has not shown that we abused our discretion by timely issuing institution decisions in the five cases captioned above. Nothing in this Decision precludes Patent Owner from advancing its § 315(b) contention in its post-institution submissions.” slip op. at 7
NonePatents in suitUS 6,742,021
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.