• Apple Inc. v. Identity Security LLCRehearing denied
  PTAB · Dec 15, 2022 · IPR2022-00171 · APJ Sharon Fenick · IPR · Rehearing

  The Board denied Apple’s rehearing request, leaving the denial of institution for claims 1–4, 12, and 13 unchanged because Apple showed no abuse of discretion or overlooked matter.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. THE REQUEST FOR REHEARING On request for rehearing, “[t]he burden of showing a decision should be modified lies with the party challenging the decision.” 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 surreply.” Id. 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.”” slip op. at 2

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “conclusions on the basis that Dr. Russ’s testimony is conclusory. Id. at 11. We disagree. We indicated in the Decision Denying Institution that Dr. Neuman’s testimony is conclusory. Dec. 22. For instance, Dr. Neuman testifies that the modifications that would have been needed for Petitioner’s proposed combination would have been “straightforward.” Ex. 1003 ¶ 81. Dr. Neuman’s testimony, however, is simply a conclusory statement without persuasive, supporting explanation or evidence. Id. As we indicated in the Decision Denying Institution, “Petitioner does not indicate or provide evidence supporting that the proposed modifications would have been made without introducing complexities.” Dec. 24. “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a).” slip op. at 3

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “Decision to Institute as relating to only convenience. Req. 1–2, 8–11. In the Decision Denying Institution, we explained that Petitioner’s reasons to combine are insufficient because “Petitioner does not address the full teachings of Gullman.” Dec. 22, 25. We stated “[c]ontrary to Petitioner’s assertion (Pet. 33; Ex. 1003 ¶ 81) and consistent with Patent Owner’s position and Dr. Russ’s testimony that Gullman’s system eliminates the risk of the biometric template and input from being stolen during transmission (Ex. 2001 ¶ 119), Gullman describes its system as ‘secure,’ providing ‘secure identification,’ and, importantly, as providing ‘[t]ransmission security.’” Dec. 22–23 (citing Ex. 1004, 6:46–56). We particularly noted (id. at 23) Gullman’s teachings as follows: The method and apparatus of the present invention have significant advantages over known security systems. Reliable and secure identification is provided which eliminates the need for the user to memorize a code or carry a printed memorandum of the code. Transmission security is provided which is convenient, secure and useful on existing access devices of host systems in current use. In particular, the method and apparatus obviate the need for specially-designed hardware additions or modifications to existing access devices. Ex. 1004, 6:46–56. As we noted in the Decision to Institute, the Petition did not address Gullman’s teaching that its system provides “significant advantages” over known, more complex systems, which might have led an ordinarily skilled artisan away from using Padgett’s more complicated hashing process. Dec. 23–24.” slip op. at 4

  § 103 obviousness
  Patents in suitUS 8,020,008
• Samsung Electronics America, Inc. v. Prisua Engineering Corp.Rehearing denied
  PTAB · Mar 16, 2021 · IPR2017-01188 · APJ Barbara A Parvis · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, finding it had not shown that the Board overlooked or misapprehended its constitutional challenges.

  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” slip op. at 2

  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner

    “Furthermore, the Federal Circuit’s decision in Arthrex addressed the first challenge. See 941 F.3d at 1337. As Patent Owner acknowledges (PO Reh’g Req. 11–12), the second challenge also has been addressed. See Ethicon Endo-Surgery, Inc. v. Covidien LP, 812 F.3d 1023, 1028–1033 (Fed. Cir. 2016). Accordingly, we decline to consider Patent Owner’s constitutional challenges any further.” slip op. at 5

  None
  Patents in suitUS 8,650,591
• Amazon Web Services, Inc. v. Kove Io, Inc.Rehearing denied
  PTAB · Nov 12, 2020 · IPR2020-00276 · APJ Kamran Jivani · IPR · Rehearing

  The Board denied rehearing, leaving institution denied because Petitioner did not show RFC1034 disclosed the claimed unique identifier-to-entity relationship for claims 1, 3, 6, 10, 14, 17, 23, 24, 30, and 31.

  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. 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 where each matter was previously addressed in a motion, opposition, or a reply. See Office Trial Practice Guide (84 Fed. Reg. 64,280 (Nov. 21, 2019)) (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

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “institute a requested review, our inquiry seeks to ascertain whether Petitioner has demonstrated a reasonable likelihood of success on the challenges set forth in the Petition. 35 U.S.C. § 314(a); SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). That inquiry is not limited to disputes presented in a Patent Owner Preliminary Response. Indeed, filing of a Patent Owner Preliminary Response is optional and does not impact our statutory obligation to review the Petition for a reasonable likelihood of success. 35 U.S.C. § 313; 37 C.F.R. § 42.107(a).” slip op. at 4

  • BurdenDecided for patent owner

    “upon does not remedy the deficiencies we identified in the Petition. As we stated, Dr. Weissman’s testimony “does not resolve the failure of Petitioner to account for the required relationship between a host computer (i.e., entity) and a domain name (i.e., identifier).” Dec. on Inst. 20–21 (citing Pet. 19–20, 22–23; Ex. 1002 ¶¶ 75, 88) (emphasis added). Thus, Petitioner fails to show that we misapprehended or overlooked arguments or evidence regarding the claimed “entity” because Petitioner did not clearly explain how a “host” as disclosed in RFC1034 meets the claimed entity and how a domain name (i.e., the “identifier”) identifies a single host. A rehearing request is not an opportunity to argue what should have been addressed in the Petition.” slip op. at 5

  None
  Patents in suitUS 7,233,978
• Samsung Electronics Co., Ltd. v. Ibex PT Holdings Co., Ltd.Rehearing denied
  PTAB · Aug 27, 2020 · IPR2018-00011 · APJ Kimberly Mcgraw · IPR · Rehearing

  The Board denied the Patent Owner’s rehearing request, leaving claims 1–5 unpatentable over WD5 and Lin under § 103(a).

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. ANALYSIS 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). 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.” Id.” slip op. at 2

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “evidence because it did not establish that enough interested and ordinarily skilled artisans actually obtained the WD4 reference was . . . erroneous.” Id. The Federal Circuit explained that “the standard for public accessibility is whether a person of ordinary skill in the art could, after exercising reasonable diligence, access a reference” and that the Board “departed from this well- 6 Samsung Elec. Co., Ltd. v. Infobridge Pte. Ltd., IPR2017-00099, Paper 32 (PTAB Apr. 23, 2018), and Samsung Elec. Co., Ltd. v. Infobridge Pte. Ltd., IPR2017-00100, Paper 30 (PTAB Apr. 23, 2018). 7 Cited by the Federal Circuit as “Final Written Decision, 2018 WL 19040480 at *9.” established principle by repeatedly faulting Samsung for not proving that the WD4 reference was ‘generally’ or ‘widely’ disseminated.” Id. Rather than requiring Samsung to prove that persons of ordinary skill actually received the listserv email, the Federal Circuit stated the Board should have considered whether Samsung’s evidence established that an ordinarily skilled artisan could have accessed the WD4 reference, after exercising reasonable diligence, based on the listserv email. See id. at 1374–75.” slip op. at 6

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Evidence to prove personal knowledge may consist of the witness’s 8 Although Patent Owner did object to the admissibility of Mr. Bross’s supplemental declaration (Ex. 1106) under Fed. R. Evid. 602 (see Paper 16, 1– 3), Patent Owner did not seek to exclude Mr. Bross’s supplemental declaration under 37 C.F.R. § 42.64(c), which provides that a “motion to exclude evidence must be filed to preserve any objection” to the admissibility of the evidence. own testimony.” Fed. R. Evid. 602. We credit Mr. Bross’s testimony that he has “personal knowledge and recollection that people subscribed to that list from academia, from companies have been approved by the moderator.” Dec. 28–29 (citing Ex. 2008, 83:53–84:3; Ex. 1002 ¶ 184; Ex. 1058, 2). Mr. Bross testified that, as co-chair and lead author of the Working Drafts of the JCT-VC, he was familiar with the procedures for making JCT-VC documents publicly available, including through the JCT-VC reflector listserv (see Ex. 1002 ¶ 177) and that based on his knowledge and recollection, all communications between members related to the development of the HEVC standard were to be conducted via the JCT-VC reflector (jct-vc@lists.rwth-aachen.de) (see Ex. 1002 ¶ 184). See also Ex. 1058, 2 (stating the JCT-VC “reflector [is] to be used for discussions by the JCT-VC and all its AHGs [Ad Hoc Groups]”); id. at 228–229. slip op. at 17

  § 102 anticipationcites Graham
  Patents in suitUS 8,654,855
• Samsung Electronics Co., Ltd. v. Ibex PT Holdings Co., Ltd.Rehearing denied
  PTAB · Aug 27, 2020 · IPR2018-00092 · APJ Kimberly Mcgraw · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving intact the decision that claims 1–3 were unpatentable under §103(a) over WD5 and Lin.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. ANALYSIS 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). 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.” Id.” slip op. at 2

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “evidence because it did not establish that enough interested and ordinarily skilled artisans actually obtained the WD4 reference was . . . erroneous.” Id. The Federal Circuit explained that “the standard for public accessibility is whether a person of ordinary skill in the art could, after exercising reasonable diligence, access a reference” and that the Board “departed from this well- 6 Samsung Elec. Co., Ltd. v. Infobridge Pte. Ltd., IPR2017-00099, Paper 32 (PTAB Apr. 23, 2018), and Samsung Elec. Co., Ltd. v. Infobridge Pte. Ltd., IPR2017-00100, Paper 30 (PTAB Apr. 23, 2018). 7 Cited by the Federal Circuit as “Final Written Decision, 2018 WL 19040480 at *9.” established principle by repeatedly faulting Samsung for not proving that the WD4 reference was ‘generally’ or ‘widely’ disseminated.” Id. Rather than requiring Samsung to prove that persons of ordinary skill actually received the listserv email, the Federal Circuit stated the Board should have considered whether Samsung’s evidence established that an ordinarily skilled artisan could have accessed the WD4 reference, after exercising reasonable diligence, based on the listserv email. See id. at 1374–75.” slip op. at 6

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Evidence to prove personal knowledge may consist of the witness’s 8 Although Patent Owner did object to the admissibility of Mr. Bross’s supplemental declaration (Ex. 1106) under Fed. R. Evid. 602 (see Paper 16, 1– 3), Patent Owner did not seek to exclude Mr. Bross’s supplemental declaration under 37 C.F.R. § 42.64(c), which provides that a “motion to exclude evidence must be filed to preserve any objection” to the admissibility of the evidence. own testimony.” Fed. R. Evid. 602. We credit Mr. Bross’s testimony that he has “personal knowledge and recollection that people subscribed to that list from academia, from companies have been approved by the moderator.” Dec. 28–29 (citing Ex. 2008, 83:53–84:3; Ex. 1002 ¶ 184; Ex. 1058, 2). Mr. Bross testified that, as co-chair and lead author of the Working Drafts of the JCT-VC, he was familiar with the procedures for making JCT-VC documents publicly available, including through the JCT-VC reflector listserv (see Ex. 1002 ¶ 177) and that based on his knowledge and recollection, all communications between members related to the development of the HEVC standard were to be conducted via the JCT-VC reflector (jct-vc@lists.rwth-aachen.de) (see Ex. 1002 ¶ 184). See also Ex. 1058, 2 (stating the JCT-VC “reflector [is] to be used for discussions by the JCT-VC and all its AHGs [Ad Hoc Groups]”); id. at 228–229. slip op. at 17

  § 102 anticipationcites Graham
  Patents in suitUS 9,025,668
• Samsung Electronics Co., Ltd. v. Ibex PT Holdings Co., Ltd.Rehearing denied
  PTAB · Aug 27, 2020 · IPR2018-00093 · APJ Kimberly Mcgraw · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving intact its finding that claims 1–5 are unpatentable under §103(a) over WD5 and Lin.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. ANALYSIS 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). 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.” Id.” slip op. at 2

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “evidence because it did not establish that enough interested and ordinarily skilled artisans actually obtained the WD4 reference was . . . erroneous.” Id. The Federal Circuit explained that “the standard for public accessibility is whether a person of ordinary skill in the art could, after exercising reasonable diligence, access a reference” and that the Board “departed from this well- 6 Samsung Elec. Co., Ltd. v. Infobridge Pte. Ltd., IPR2017-00099, Paper 32 (PTAB Apr. 23, 2018), and Samsung Elec. Co., Ltd. v. Infobridge Pte. Ltd., IPR2017-00100, Paper 30 (PTAB Apr. 23, 2018). 7 Cited by the Federal Circuit as “Final Written Decision, 2018 WL 19040480 at *9.” established principle by repeatedly faulting Samsung for not proving that the WD4 reference was ‘generally’ or ‘widely’ disseminated.” Id. Rather than requiring Samsung to prove that persons of ordinary skill actually received the listserv email, the Federal Circuit stated the Board should have considered whether Samsung’s evidence established that an ordinarily skilled artisan could have accessed the WD4 reference, after exercising reasonable diligence, based on the listserv email. See id. at 1374–75.” slip op. at 6

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Evidence to prove personal knowledge may consist of the witness’s 8 Although Patent Owner did object to the admissibility of Mr. Bross’s supplemental declaration (Ex. 1106) under Fed. R. Evid. 602 (see Paper 16, 1– 3), Patent Owner did not seek to exclude Mr. Bross’s supplemental declaration under 37 C.F.R. § 42.64(c), which provides that a “motion to exclude evidence must be filed to preserve any objection” to the admissibility of the evidence. own testimony.” Fed. R. Evid. 602. We credit Mr. Bross’s testimony that he has “personal knowledge and recollection that people subscribed to that list from academia, from companies have been approved by the moderator.” Dec. 28–29 (citing Ex. 2008, 83:53–84:3; Ex. 1002 ¶ 184; Ex. 1058, 2). Mr. Bross testified that, as co-chair and lead author of the Working Drafts of the JCT-VC, he was familiar with the procedures for making JCT-VC documents publicly available, including through the JCT-VC reflector listserv (see Ex. 1002 ¶ 177) and that based on his knowledge and recollection, all communications between members related to the development of the HEVC standard were to be conducted via the JCT-VC reflector (jct-vc@lists.rwth-aachen.de) (see Ex. 1002 ¶ 184). See also Ex. 1058, 2 (stating the JCT-VC “reflector [is] to be used for discussions by the JCT-VC and all its AHGs [Ad Hoc Groups]”); id. at 228–229. slip op. at 17

  § 102 anticipationcites Graham
  Patents in suitUS 8,774,279
• Comcast Cable Communications, LLC v. Rovi Guides, Inc.Rehearing denied
  PTAB · Jun 24, 2020 · IPR2019-01434 · APJ Kristi L R Sawert · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving institution of inter partes review of claims 1–20 in place because no abuse of discretion was shown.

  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 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. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988). 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” slip op. at 2

  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner

    “& Nephew, Inc., No. 2018-2140, Dkt. No. 119 (Fed. Cir. April 6, 2020) (Ex. 3001). As to the contended insufficiency in the remedy set forth in Arthrex, Patent Owner’s position is contrary to that decision by our reviewing court. See Arthrex, 941 F.3d at 1337 (“This as-applied severance . . . cures the constitutional violation.”). Further, as set forth in the Institution Decision, we determined that Arthrex did not warrant terminating or staying this case. Inst. Dec. 40–41. First, we set forth that “this is a Decision on Institution and ‘no constitutional infirmity [exists] in an institution decision.’” Id. (citing Arthrex, 941 F.3d at 1340 (brackets in original)). Second, we noted that “the Federal Circuit or the Supreme Court.” Id. (citing Askeladden LLC v. Purple Leaf, LLC, IPR2016-01720, Paper 22 at 2 (PTAB Sept. 11, 2017)). Patent Owner’s disagreement with Arthrex and the sufficiency of its remedy does not meet Patent Owner’s burden on rehearing. In sum, Patent Owner’s arguments do not identify any matter misapprehended or overlooked in our Decision, nor do they identify any abuse of discretion.” slip op. at 3

  None
  Patents in suitUS 8,973,069
• Vanguard Products Group, Inc., D/B/A Vanguard Protex Global v. Invue Security Products, Inc.Rehearing denied
  PTAB · Apr 21, 2020 · IPR2020-00014 · APJ Michael R Zecher · IPR · Rehearing

  The Board denied rehearing and maintained denial of institution for claims 1–6, 12, 13, and 15–18 because Vanguard did not show a sufficient, supported rationale to combine the prior art.

  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 1 US 2012/0019383 A1, filed July 20, 2010, published Jan. 26, 2012 (Ex. 1003). 2 US 5,317,305, filed Jan. 30, 1992, issued May 31, 1994 (Ex. 1006). specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs if the decision (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision.” Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015). With this in mind, we address the arguments presented by Vanguard in turn.” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “that there would have been a sufficient reason to combine the relevant teachings of Wheeler, Fawcett, and Campman states: “A crowded retail store would not only make monitoring the security of display merchandise more difficult, but also increase the ambient noise thereby requiring a louder audible alarm to notify employees of a theft.” Req. Reh’g 3–4 (quoting Ex. 1012 ¶ 115). This testimony, however, does not cite to any underlying facts or data and, therefore, is entitled to little or no weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Without the support of any underlying facts or data, Mr. Figh’s testimony suffers from the same hindsight reasoning that we discussed in the Decision. See Dec. 19. That is, only teachings of the ’082 patent itself suggest a need to increase the audible level of an alarm in a retail store, and it appears that Vanguard has used this particular teaching as a guide to combine the teachings of the asserted prior art references in the manner required to account for all the limitations of independent claim 1. Moreover, Fawcett teaches a dual alarm system for retail stores (Ex. 1003, code (57), ¶¶ 8, 46, 47), and there is no indication that Fawcett’s teachings are limited in any way to uncrowded retail stores. Also, Fawcett’s dual alarm system already is specifically designed for retail stores (id.), yet Vanguard proposes to modify this design with features in Campman’s personal alert safety system (Pet. 33–35). Campman provides a distress alarm that can be heard for a distance of a half-mile or more (Pet. 43, 84; Prelim. Resp. 7–8 (citing Ex. 1006, 1:22–38, 6:30–32)), and the only reason Vanguard gives for using such an alarm in Fawcett’s retail store setting is that it would have provided a louder alarm (see Pet. 33–34). On the current record, we maintain that Vanguard has not established persuasively why a person of ordinary skill in the art would have been prompted to make Fawcett’s dual alarm system louder at all, much less to the extent taught by Campman.” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached

    “that there would have been a sufficient reason to combine the relevant teachings of Wheeler, Fawcett, and Campman states: “A crowded retail store would not only make monitoring the security of display merchandise more difficult, but also increase the ambient noise thereby requiring a louder audible alarm to notify employees of a theft.” Req. Reh’g 3–4 (quoting Ex. 1012 ¶ 115). This testimony, however, does not cite to any underlying facts or data and, therefore, is entitled to little or no weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Without the support of any underlying facts or data, Mr. Figh’s testimony suffers from the same hindsight reasoning that we discussed in the Decision. See Dec. 19. That is, only teachings of the ’082 patent itself suggest a need to increase the audible level of an alarm in a retail store, and it appears that Vanguard has used this particular teaching as a guide to combine the teachings of the asserted prior art references in the manner required to account for all the limitations of independent claim 1. Moreover, Fawcett teaches a dual alarm system for retail stores (Ex. 1003, code (57), ¶¶ 8, 46, 47), and there is no indication that Fawcett’s teachings are limited in any way to uncrowded retail stores. Also, Fawcett’s dual alarm system already is specifically designed for retail stores (id.), yet Vanguard proposes to modify this design with features in Campman’s personal alert safety system (Pet. 33–35). Campman provides a distress alarm that can be heard for a distance of a half-mile or more (Pet. 43, 84; Prelim. Resp. 7–8 (citing Ex. 1006, 1:22–38, 6:30–32)), and the only reason Vanguard gives for using such an alarm in Fawcett’s retail store setting is that it would have provided a louder alarm (see Pet. 33–34). On the current record, we maintain that Vanguard has not established persuasively why a person of ordinary skill in the art would have been prompted to make Fawcett’s dual alarm system louder at all, much less to the extent taught by Campman.” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for patent owner

    “testimony suffers from the same hindsight reasoning that we discussed in the Decision. See Dec. 19. That is, only teachings of the ’082 patent itself suggest a need to increase the audible level of an alarm in a retail store, and it appears that Vanguard has used this particular teaching as a guide to combine the teachings of the asserted prior art references in the manner required to account for all the limitations of independent claim 1. Moreover, Fawcett teaches a dual alarm system for retail stores (Ex. 1003, code (57), ¶¶ 8, 46, 47), and there is no indication that Fawcett’s teachings are limited in any way to uncrowded retail stores. Also, Fawcett’s dual alarm system already is specifically designed for retail stores (id.), yet Vanguard proposes to modify this design with features in Campman’s personal alert safety system (Pet. 33–35). Campman provides a distress alarm that can be heard for a distance of a half-mile or more (Pet. 43, 84; Prelim. Resp. 7–8 (citing Ex. 1006, 1:22–38, 6:30–32)), and the only reason Vanguard gives for using such an alarm in Fawcett’s retail store setting is that it would have provided a louder alarm (see Pet. 33–34). On the current record, we maintain that Vanguard has not established persuasively why a person of ordinary skill in the art would have been prompted to make Fawcett’s dual alarm system louder at all, much less to the extent taught by Campman.” slip op. at 6

  § 103 obviousness
  Patents in suitUS 10,008,082
• Comcast Cable Commuications, LLC v. Rovi Guides, Inc.Rehearing denied
  PTAB · Mar 25, 2020 · IPR2019-00292 · APJ William M Fink · IPR · Rehearing

  The Board denied Patent Owner’s rehearing requests, leaving in place its denial of authorization to seek a stay or termination based on Arthrex.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “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 or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2

  None
  Patents in suitUS 7,937,394
• Comcast Cable Commuications, LLC v. Rovi Guides, Inc.Rehearing denied
  PTAB · Mar 25, 2020 · IPR2019-00281 · APJ William M Fink · IPR · Rehearing

  The Board denied Patent Owner’s rehearing requests challenging the denial of authorization to seek a stay or termination based on Arthrex and the APA.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “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 or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2

  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner

    “(1) because the Federal Circuit’s mandate has not issued in Arthrex, the Administrative Patent Judges presiding over the instant proceedings remain unconstitutionally appointed and, therefore, the instant proceedings should be stayed (Reh’g Req. 6–8); (2) the proceedings should be stayed because the Arthrex remedy does not go far enough and violates the Administrative Procedure Act (APA) (id. at 9–13 (citing, e.g., Polaris Innovations Ltd. v. Kingston Tech. Co., No. 18-1768, Dkt. No. 90 at 2 (Fed. Cir. Nov. 8, 2019))); and (3) intervention from Congress and agency rulemaking may be necessary to remedy the defect identified in Arthrex, so termination of each of the instant proceedings is warranted (id. at 13–15). Patent Owner’s arguments have been addressed in our denials.6 See, e.g., IPR2019-00224, Paper 28 at 2 (PTAB Jan. 14, 2020) (quoting Arthrex, 941 F.3d at 1337 (“This as-applied severance . . . cures the constitutional violation”)); IPR2019-00224, Paper 39 at 4 (PTAB Feb. 18, 2020) (“[I]t is unclear how the issuance of the mandate in Arthrex would address the alleged APA defect.”). For these reasons, we also disagree with Patent Owner’s argument 6 In any event, the issuance of the mandate in Image Processing Techs. LLC v. Samsung Electronics Co. moots Patent Owner’s argument that Board judges are unconstitutionally appointed until the mandate in Arthrex issues. See Image Processing Techs. LLC v. Samsung Electronics Co., No. 2018- 2156 (Fed. Cir. Mar. 9, 2020), ECF No. 78; Mandate, Image Processing Techs. LLC v. Samsung Elecs. Co., Nos. 2019-1408, 2019-1485 (Fed. Cir. Mar. 9, 2020), ECF No. 75 (relying on Arthrex). Furthermore, in Arthrex, the Federal Circuit denied the petitions for panel rehearing and the petitions for rehearing en banc. Arthrex, Inc. v. Smith & Nephew, Inc., No. 2018-2140 (Fed. Cir. Mar. 23, 2020), ECF No. 115. that denying Patent Owner the opportunity for briefing “itself violates the [APA] because the denial lacks a reasoned basis.” Reh’g Req. 1. Accordingly, we deny Patent Owner’s Requests for Rehearing.” slip op. at 3

  None
  Patents in suitUS 9,621,956

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.