• Facebook, Inc. v. Windy City Innovations, LLCRehearing denied
  PTAB · Aug 14, 2017 · IPR2016-01155 · APJ David C Mckone · IPR · Rehearing

  The Board denied Windy City’s rehearing request, finding its challenge to termination untimely and its objections to Facebook’s joinder unsupported or not previously raised.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “DISCUSSION A party requesting rehearing bears the burden of showing the decision should be modified. See 37 C.F.R. § 42.71(d). The party must identify all matters it contends were misapprehended or overlooked by the Board. See id. Windy City requests rehearing of two decisions, each of which it contends was an abuse of discretion. First, Windy City contends that our decision to terminate as to Microsoft, but not as to the entire proceeding, exceeded our statutory authority. Req. Reh’g 7–10. Second, Windy City contends we exceeded our statutory authority by joining Facebook to this proceeding despite that Facebook challenges only a portion of the claims originally challenged by Microsoft. Id. at 10–13. As explained below, neither contention is supported by the relevant authorities, and the Request for Rehearing is denied.” slip op. at 3

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedDecided for petitioner

    “First, § 315(c) does not recite any limitations on the challenges presented by the party seeking joinder. To the contrary, § 315(c) states that “any person who properly files a petition under section 311” may be joined, requiring only that the petition “warrants the institution of an inter partes review.” The statute does not address the specifics of challenged claims, asserted grounds of unpatentability, evidence relied upon, etc. Rather, such considerations are left to the Director’s “discretion” (and, thus, the Board’s discretion by delegation). 35 U.S.C. § 315(c) (stating “the Director, in his or her discretion, may join”); 37 C.F.R. § 42.122. Thus, far from failing to provide authority or discretion (Req. Reh’g 11), § 315(c) expressly provides for such discretion.” slip op. at 9

  • Strike new argumentNew argument disregardedDecided for petitioner

    “motion was an abuse of discretion because 35 U.S.C. § 315(c) does not “provide authority or discretion to join a party to a portion of an inter partes review.” Req. Reh’g 10–11. Although it filed an Opposition to the Motion for Joinder, Windy City did not argue that joinder was improper or contrary to § 315(c) because Facebook only challenged a subset of the claims challenged by Microsoft. We could not misapprehend or overlook an argument that was never made. See 37 C.F.R. § 42.71(d). A request for rehearing cannot be used to advance new arguments not previously presented, and Windy City has waived this argument as a result. See, e.g., Sophos, Inc. v. Finjan, Inc., Case IPR2015-01022, slip op. at 5, 7–10 (PTAB Jan. 28, 2016) (Paper 9) (denying a request for rehearing because the arguments had not been previously made).” slip op. at 8

  None
  Patents in suitUS 8,694,657
• Facebook, Inc. v. Windy City Innovations, LLCRehearing denied
  PTAB · Aug 14, 2017 · IPR2016-01067 · APJ J John Lee · IPR · Rehearing

  The Board denied Windy City’s rehearing request, finding no legal error or abuse of discretion in terminating Microsoft alone and joining Facebook to the proceeding.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “DISCUSSION A party requesting rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters it contends were misapprehended or overlooked by the Board. Id. Windy City requests rehearing of two decisions, each of which it contends was an abuse of discretion. First, Windy City contends our decision to terminate as to Microsoft, but not as to the entire proceeding, exceeded our statutory authority. Req. Reh’g 6–9. Second, Windy City contends we exceeded our statutory authority by joining Facebook to this proceeding despite that Facebook challenges only a portion of the claims originally challenged by Microsoft. Id. at 9–12. As explained below, neither contention is supported by the relevant authorities, and the Request for Rehearing is denied.” slip op. at 3

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedDecided for petitioner

    “First, § 315(c) does not recite any limitations on the challenges presented by the party seeking joinder. To the contrary, § 315(c) states that “any person who properly files a petition under section 311” may be joined, requiring only that the petition “warrants the institution of an inter partes review.” The statute does not address the specifics of challenged claims, asserted grounds of unpatentability, evidence relied upon, etc. Rather, such considerations are left to the Director’s “discretion” (and, thus, the Board’s discretion by delegation). 35 U.S.C. § 315(c) (stating “the Director, in his or her discretion, may join”); 37 C.F.R. § 42.122. Thus, far from failing to provide authority or discretion (Req. Reh’g 10), § 315(c) expressly provides for such discretion.” slip op. at 9

  • Strike new argumentNew argument disregardedDecided for petitioner

    “Joinder of Facebook Windy City contends our decision granting Facebook’s joinder motion was an abuse of discretion because 35 U.S.C. § 315(c) does not “provide authority or discretion to join a party to a portion of an inter partes review.” Req. Reh’g 10. As noted above, however, Windy City did not oppose Facebook’s joinder motion. Despite having an opportunity to file an opposition, Windy City did not do so, nor did it otherwise present any arguments that granting joinder would be improper under § 315(c). We could not have misapprehended or overlooked an argument that was never made. See 37 C.F.R. § 42.71(d). A request for rehearing cannot be used to advance new arguments not previously presented, and Windy City has waived this argument as a result. See, e.g., Sophos, Inc. v. Finjan, Inc., Case IPR2015-01022, slip op. at 5, 7–10 (PTAB Jan. 28, 2016) (Paper 9) (denying a request for rehearing because the arguments had not been previously made).” slip op. at 8

  None
  Patents in suitUS 8,407,356
• Facebook, Inc. v. Windy City Innovations, LLCRehearing denied
  PTAB · Aug 14, 2017 · IPR2016-01141 · APJ J John Lee · IPR · Rehearing

  The Board denied Windy City's rehearing request, holding that its termination and joinder decisions were consistent with governing law and that the rehearing arguments did not warrant modification.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “DISCUSSION A party requesting rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters it contends were misapprehended or overlooked by the Board. Id. Windy City requests rehearing of two decisions, each of which it contends was an abuse of discretion. First, Windy City contends our decision to terminate as to Microsoft, but not as to the entire proceeding, exceeded our statutory authority. Req. Reh’g 5–9. Second, Windy City contends we exceeded our statutory authority by joining Facebook to this proceeding despite that Facebook challenges only a portion of the claims originally challenged by Microsoft. Id. at 9–12. As explained below, neither contention is supported by the relevant authorities, and the Request for Rehearing is denied.” slip op. at 3

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingDecided for petitioner

    “First, § 315(c) does not recite any limitations on the challenges presented by the party seeking joinder. To the contrary, § 315(c) states that “any person who properly files a petition under section 311” may be joined, requiring only that the petition “warrants the institution of an inter partes review.” The statute does not address the specifics of challenged claims, asserted grounds of unpatentability, evidence relied upon, etc. Rather, such considerations are left to the Director’s “discretion” (and, thus, the Board’s discretion by delegation). 35 U.S.C. § 315(c) (stating “the Director, in his or her discretion, may join”); 37 C.F.R. § 42.122. Thus, far from failing to provide authority or discretion (Req. Reh’g 9–10), § 315(c) expressly provides for such discretion.” slip op. at 9

  None
  Patents in suitUS 8,458,245
• General Electric Co. v. University Of Virginia Patent FoundationAll claims unpatentable
  PTAB · Jun 21, 2017 · IPR2016-00359 · APJ J John Lee · IPR · Final written decision

  Claims 153–156, 161, 162, 252, and 253 are unpatentable as anticipated by Mugler 2000 and obvious over each of three stated reference combinations.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “claims. Pet. 21–37. To anticipate a claim, a single prior art reference must disclose each and every limitation of the claim, either expressly or inherently. Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). A feature is disclosed inherently if it is necessarily present in the single anticipating reference. Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). The Petition sets forth detailed contentions and supporting evidence demonstrating that Mugler 2000 discloses each limitation of the challenged claims either expressly or inherently. Pet. 21–37. GE’s analysis is persuasive and unrebutted. In its Patent Owner Response, UVAPF does not dispute that Mugler 2000 discloses each limitation of these claims and, thus, UVAPF has waived any such argument.17 Based on the full record after trial, GE has shown by a preponderance of the evidence that the challenged claims are anticipated by Mugler 2000.” slip op. at 23

  • Skill levelSkill level petitioner adoptedOther

    “Level of Ordinary Skill According to GE’s expert8 witness, Dr. Norbert J. Pelc, a person of ordinary skill in the art would have had “significant working knowledge of MR spin-echo imaging, especially fast-spin-echo imaging,” as well as “a Ph.D. in a physical science (e.g., electrical or biomedical engineering or medical physics) with experience in the development of MR imaging techniques, or an M.D. degree or an M.S. degree in a physical science with significant (3–5 years) of work experience in the development of MR imaging techniques.” Ex. 1009 ¶ 105. The expert9 witness proffered by” slip op. at 7

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for petitioner

    “Based on Dr. Pelc’s credible testimony, we find that a person of ordinary skill in the art would have met Dr. Pelc’s description. We further find that Dr. Hennig’s testimony on this issue does not differ materially from that of Dr. Pelc, and, in any event, our analysis in this Decision would be unchanged were we to apply Dr. Hennig’s description. C.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Claim Construction In an inter partes review, claim terms in an unexpired patent are given their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). No claim terms require express construction for purposes of this Final Written Decision.7 See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy). B.” slip op. at 7

  Patent outcomesUS RE44,644 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
• General Electric Co. v. University Of Virginia Patent FoundationAll claims unpatentable
  PTAB · Jun 21, 2017 · IPR2016-00358 · APJ J John Lee · IPR · Final written decision

  Claims 141–146, 148, 151, 152, 159, 160, 242–246, 248, and 251 are unpatentable as anticipated; claims 141–152, 159, 160, and 242–251 are also unpatentable as obvious.

  RulingsFinal written decision

  • BurdenDecided for patent owner

    “address the applicable burdens of proof on the parties. As an initial matter, the overall burden of persuasion of proving unpatentability on the asserted grounds based on Mugler 2000 lies with GE, and that burden never shifts. See In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016); Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Therefore, GE bears the burden to establish that Mugler 2000 qualifies as prior art. The burden of production, however, may shift between the parties. See Magnum Oil Tools, 829 F.3d at 1375–76; Dynamic Drinkware, 800 F.3d at 1379–80. Here, GE satisfied the initial burden of production by asserting that Mugler 2000 is § 102(a) prior art, and presenting evidence that it was published and publicly available before the priority date of the ’644 Patent.9 See Pet. 11. The burden of production then shifted to UVAPF, and UVAPF met that burden by producing evidence to demonstrate that the relevant content of Mugler 2000 was solely the work of the inventors of the ’644 Patent, i.e., the declarations of Dr. Mugler and Dr. Kiefer.10 See PO Resp. 18–20; Magnum Oil Tools, 829 F.3d at 1376 (“[T]he shifting of the burden of production is warranted [when] the patentee affirmatively seeks to establish a proposition not relied on by the patent challenger and not a necessary predicate for the unpatentability claim asserted.”). Consequently, the burden returned to GE to prove that the evidence of record does not establish that Mugler 2000 was solely the work of the named inventors. See Dynamic Drinkware, 800 F.3d at 1380. GE did not carry this burden.” slip op. at 10

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Applicant-admitted prior artReference not prior artNot shown unpatentable

    “An inventor’s own work is not prior art under § 102(a). See Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 968 (Fed. Cir. 2014); Katz, 687 F.2d at 454. In determining whether a reference is the work of the named inventor(s), the relevant inquiry is whether the relevant content of the reference—such as “the methods, detailed results, statistical analysis and discussion,” or “the design, trial, and analysis of results”—was solely the work of the inventor(s). See Allergan, 754 F.3d at 969. For example, an article may be solely the work of an inventor if the remaining co-authors were merely students performing tasks under the inventor’s direction and supervision. See Katz, 687 F.2d at 455–56. Before turning to the evidence to apply these precepts, we first address the applicable burdens of proof on the parties. As an initial matter, the overall burden of persuasion of proving unpatentability on the asserted grounds based on Mugler 2000 lies with GE, and that burden never shifts. See In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016); Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Therefore, GE bears the burden to establish that Mugler 2000 qualifies as prior art. The burden of production, however, may shift between the parties. See Magnum Oil Tools, 829 F.3d at 1375–76; Dynamic Drinkware, 800 F.3d at 1379–80.” slip op. at 10

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner

    “For a patent to claim priority to the filing date of its provisional application, the written description of the provisional application must be sufficient to support the relevant claims of the patent under 35 U.S.C. § 112. Dynamic Drinkware, 800 F.3d at 1378 (citing New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002)). Sufficient written description support requires providing enough information in the application to indicate to a person of ordinary skill that the inventor had possession of the full scope of the claims. In re Wertheim, 541 F.2d 257, 262–64 (C.C.P.A. 1976). The disclosure need not recite the claimed invention in haec verba, but a disclosure that “merely renders the invention obvious” is insufficient. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc).” slip op. at 16

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedReference is prior artDecided for petitioner

    “Resp. 21–59. More specifically, UVAPF argues the ’182 Application provides sufficient written description support for the challenged claims such that they are entitled to the priority date of the ’182 Application, i.e., December 21, 2000. Id. Based on the full record, however, the challenged claims have not been shown to have sufficient support in the written description of the ’182 Application and, thus, priority has not been established earlier than December 21, 2001. As with § 102(a), GE bears the burden to prove that Mugler is prior art under § 102(b) as part of its overall burden of persuasion to prove unpatentability. See Dynamic Drinkware, 800 F.3d at 1378. GE also bears the initial burden of production, but satisfied that burden by asserting that Mugler 2000 is prior art under § 102(b). See id. at 1379. The burden then shifted to UVAPF to produce evidence that the challenged claims of the ’644 Patent are entitled to an earlier priority date. See id. at 1380. UVAPF met that burden by producing arguments and evidence to attempt to prove that the disclosure of the ’182 Application provides sufficient written description support for the challenged claims. See PO Resp. 22–59. Thus, the burden shifted back to GE to prove that the ’182 Application does not support the claims. See Dynamic Drinkware, 800 F.3d at 1380. GE met that burden successfully, as explained below. For a patent to claim priority to the filing date of its provisional application, the written description of the provisional application must be sufficient to support the relevant claims of the patent under 35 U.S.C. § 112. Dynamic Drinkware, 800 F.3d at 1378 (citing New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002)). Sufficient written description support requires providing enough information in the application to indicate to a person of ordinary skill that the inventor had possession of the full scope of the claims. In re Wertheim, 541 F.2d 257, 262–64 (C.C.P.A. 1976). The disclosure need not recite the claimed invention in haec verba, but a disclosure that “merely renders the invention obvious” is insufficient. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc).” slip op. at 16

  Patent outcomesUS RE44,644 unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
• General Electric Co. v. University Of Virginia Patent FoundationAll claims unpatentable
  PTAB · Jun 21, 2017 · IPR2016-00357 · APJ J John Lee · IPR · Final written decision

  Claims 75, 76, 78–82, 84–92, 94–96, 107, 111, 139, 140, 157, 158, 169–178, 180–184, 186–194, 196–198, 209, 213, 241, and 254–260 are unpatentable under § 102(b); the remaining challenged claims are unpatentable under § 103(a).

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Applicant-admitted prior artReference not prior artDecided for patent owner

    “An inventor’s own work is not prior art under § 102(a). See Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 968 (Fed. Cir. 2014); Katz, 687 F.2d at 454. In determining whether a reference is the work of the named inventor(s), the relevant inquiry is whether the relevant content of the reference—such as “the methods, detailed results, statistical analysis and discussion,” or “the design, trial, and analysis of results”—was solely the work of the inventor(s). See Allergan, 754 F.3d at 969. For example, an article may be solely the work of an inventor if the remaining co-authors were merely students performing tasks under the inventor’s direction and supervision. See Katz, 687 F.2d at 455–56.” slip op. at 11

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner

    “For a patent to claim priority to the filing date of its provisional application, the written description of the provisional application must be sufficient to support the relevant claims of the patent under 35 U.S.C. § 112. Dynamic Drinkware, 800 F.3d at 1378 (citing New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002)). Sufficient written description support requires providing enough information in the application to indicate to a person of ordinary skill that the inventor had possession of the full scope of the claims. In re Wertheim, 541 F.2d 257, 262–64 (C.C.P.A. 1976). The disclosure need not recite the claimed invention in haec verba, but a disclosure that “merely renders the invention obvious” is insufficient. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc).” slip op. at 18

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for petitioner

    “For a patent to claim priority to the filing date of its provisional application, the written description of the provisional application must be sufficient to support the relevant claims of the patent under 35 U.S.C. § 112. Dynamic Drinkware, 800 F.3d at 1378 (citing New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002)). Sufficient written description support requires providing enough information in the application to indicate to a person of ordinary skill that the inventor had possession of the full scope of the claims. In re Wertheim, 541 F.2d 257, 262–64 (C.C.P.A. 1976). The disclosure need not recite the claimed invention in haec verba, but a disclosure that “merely renders the invention obvious” is insufficient. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc).” slip op. at 18

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artDecided for petitioner

    “For a patent to claim priority to the filing date of its provisional application, the written description of the provisional application must be sufficient to support the relevant claims of the patent under 35 U.S.C. § 112. Dynamic Drinkware, 800 F.3d at 1378 (citing New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002)). Sufficient written description support requires providing enough information in the application to indicate to a person of ordinary skill that the inventor had possession of the full scope of the claims. In re Wertheim, 541 F.2d 257, 262–64 (C.C.P.A. 1976). The disclosure need not recite the claimed invention in haec verba, but a disclosure that “merely renders the invention obvious” is insufficient. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc).” slip op. at 18

  Patent outcomesUS RE44,644 unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
• Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures II LLCRehearing denied
  PTAB · Apr 28, 2017 · IPR2015-01664 · APJ Justin Busch · IPR · Rehearing

  The Board denied Ericsson’s rehearing request, leaving intact its final written decision that claims 8–12 and 18–22 were not shown unpatentable.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “On rehearing, the burden of showing the 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, or a reply.” Id. For the reasons that follow, Petitioner’s Request is denied.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for patent owner

    “Petitioner provided no details in its Reply regarding how “within the limits of” adds additional confusion, or why a construction including such language would be inappropriate. The Patent Owner Response demonstrated Patent Owner’s clear disagreement with Petitioner’s position that the proposed prior art combination teaches transmitting the entirety of a broadcast channel in an OFDMA core-band. Nevertheless, in its Reply, Petitioner provided neither an explanation of its understanding of the alleged plain meaning of the disputed limitation nor an explicit statement that transmitting only a portion of a broadcast channel in an OFDMA core-band would be sufficient to meet the disputed limitation. Accordingly, we did not misapprehend or overlook Petitioner’s generic argument for adopting an unspecified “plain meaning” of the disputed limitation. We evaluated all arguments and evidence submitted by both parties, and we determined that the proper construction of the disputed limitation precluded transmitting any portion of the recited broadcast channel outside the OFDMA core-band.” slip op. at 5

  • Strike new argumentNew argument disregardedDecided for patent owner

    “As discussed in the Decision and above, we provided a preliminary construction of the plain meaning of the disputed term in our Institution Decision, Inst. Dec. 11, and Patent Owner contested that preliminary construction in its Patent Owner Response, see PO Resp. 14–16. Nevertheless, as explained above, Petitioner merely provided unsupported assertions that the plain and ordinary meaning of the disputed limitation should apply and argued Patent Owner’s proposed construction generated more confusion than clarity. See Pet. Reply 2, 3–5. Petitioner did not identify evidence to demonstrate the preliminary construction was correct. We are unable to find—and Petitioner does not cite—any portion of the Petition or Reply identifying the full bandwidth preamble to which Petitioner now refers, much less discussing its relevance to any issue. The panel questioned the parties extensively at the hearing regarding what it means to “transmit a broadcast channel in an” OFDMA core-band. See Tr. 10:4–21:4, 24:16–25:4. Petitioner never pointed to the now-cited disclosure in the specification, let alone argued that such a disclosure was relevant to the proper construction of the disputed limitation. Moreover, the technology is complex, and the record during trial lacks briefing from the parties or testimony from either party’s expert declarant on the portion of the specification now raised by Petitioner. We decline to consider Petitioner’s untimely argument presented for the first time in its Request for Rehearing.” slip op. at 6

  Claim construction
  Patents in suitUS 7,787,431
• Cpi Card Group Inc. v. Gemalto S.A.Rehearing denied
  PTAB · Mar 14, 2017 · IPR2016-01092 · APJ Patrick M Boucher · IPR · Rehearing

  The Board denied rehearing and maintained its denial of institution for claims 6, 8–11, 15, and 16 over Griffin alone or with Matsumura.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “Accordingly, we are not persuaded that we misapprehended or overlooked Petitioner’s arguments as to the construction of “means for decorrelating” under 35 U.S.C. § 112, ¶ 6, as it relates to the second and third structures. ORDER In consideration of the foregoing, it is hereby: ORDERED that Petitioner’s Request for Rehearing is denied.” slip op. at 6

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not shown unpatentable

    “The Board’s obligation at this stage is both well-defined and limited— to determine whether the Petition demonstrates “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). In the Institution Decision, we determined that the Petition did not meet that standard with respect to claims 6, 8–11, 15, or 16. Dec. 20–22. In requesting that we make specific findings with respect to its “alternative” claim-construction positions, Petitioner asks that we disregard unambiguous opinions of its own expert. Dr. Polish testifies that “a person of ordinary skill in the art would have also understood from the specification that this third structure that executes random secondary sequences does not perform the claimed function,” that the third structure “does not perform the function in a manner such ‘that the execution of the at least one instruction sequence is desynchronized with respect to the internal or external electrical signals,’” and that the specification “fails to disclose that the execution of the random secondary sequences causes the execution of any instructions ‘to be desynchronized with respect to the internal or external electrical signals.’” Ex. 1003 ¶ 56. We recognize that, like Petitioner, Dr. Polish addresses the possibility of a finding that “the ‘means for decorrelating’ includes this third structure for randomly executing secondary sequences.’” Id. ¶ 58–60. Nevertheless, after considering the full context of the arguments made in the Petition and the supporting testimony of Dr. Polish, we remain unpersuaded that Petitioner has demonstrated a reasonable likelihood of prevailing on its challenges of claims 6, 8–11, 15, and 16 as unpatentable over Griffin alone or in combination with Matsumura.” slip op. at 5

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for patent owner
  • BurdenNot shown unpatentable

    “The Board’s obligation at this stage is both well-defined and limited— to determine whether the Petition demonstrates “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). In the Institution Decision, we determined that the Petition did not meet that standard with respect to claims 6, 8–11, 15, or 16. Dec. 20–22. In requesting that we make specific findings with respect to its “alternative” claim-construction positions, Petitioner asks that we disregard unambiguous opinions of its own expert. Dr. Polish testifies that “a person of ordinary skill in the art would have also understood from the specification that this third structure that executes random secondary sequences does not perform the claimed function,” that the third structure “does not perform the function in a manner such ‘that the execution of the at least one instruction sequence is desynchronized with respect to the internal or external electrical signals,’” and that the specification “fails to disclose that the execution of the random secondary sequences causes the execution of any instructions ‘to be desynchronized with respect to the internal or external electrical signals.’” Ex. 1003 ¶ 56. We recognize that, like Petitioner, Dr. Polish addresses the possibility of a finding that “the ‘means for decorrelating’ includes this third structure for randomly executing secondary sequences.’” Id. ¶ 58–60. Nevertheless, after considering the full context of the arguments made in the Petition and the supporting testimony of Dr. Polish, we remain unpersuaded that Petitioner has demonstrated a reasonable likelihood of prevailing on its challenges of claims 6, 8–11, 15, and 16 as unpatentable over Griffin alone or in combination with Matsumura.” slip op. at 5

  Claim construction
  Patents in suitUS 5,944,833
• Asustek Computer, Inc. / Asus Computer International v. Avago Technologies General IP (Singapore) Pte. LtdRehearing granted
  PTAB · Mar 8, 2017 · IPR2016-00647 · APJ Glenn J Perry · IPR · Rehearing

  Granted petitioner’s request for reconsideration and added institution of the §102 Cioffi challenge to claims 8, 11, 12, 14, 15, 18, and 19.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “III. CONCLUSIONS For the foregoing reasons, we are persuaded that our Decision to Institute overlooked or misapprehended the matters discussed in this Decision, and that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail with respect to its challenge as to the patentability of claims 8, 11, 12, 14, 15, 18, and 19 as being anticipated by Cioffi. The Board has not made a final determination on the patentability of any challenged claims or the construction of any claim terms. Our final decision will be based on the record as fully developed during trial.” slip op. at 5

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

    “Upon review on rehearing, we are persuaded the Petition demonstrates sufficiently for purposes of institution that data and synchronization signals are multiplexed and encoded by MUX & ENCODER 43 in Cioffi’s Figure 3. Multiplexed sub-symbols are passed to modulator 45, which incorporates an inverse fast Fourier transform (IFFT). Based on this understanding of Cioffi, the detailed reading of claims 8, 11, 12, 14, 15, 18, and 19 on Cioffi at Petition pages 35–53, supported by the Lyon Declaration (Ex. 1003), presents a reasonable likelihood of Petitioner prevailing as to this challenge. We, therefore, modify our Decision on Institution to include this challenge.” slip op. at 4

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted

    “Upon review on rehearing, we are persuaded the Petition demonstrates sufficiently for purposes of institution that data and synchronization signals are multiplexed and encoded by MUX & ENCODER 43 in Cioffi’s Figure 3. Multiplexed sub-symbols are passed to modulator 45, which incorporates an inverse fast Fourier transform (IFFT). Based on this understanding of Cioffi, the detailed reading of claims 8, 11, 12, 14, 15, 18, and 19 on Cioffi at Petition pages 35–53, supported by the Lyon Declaration (Ex. 1003), presents a reasonable likelihood of Petitioner prevailing as to this challenge. We, therefore, modify our Decision on Institution to include this challenge.” slip op. at 4

  § 102 anticipation
  Patents in suitUS 6,430,148
• Qiagen Inc. v. Oxford Immunotec Ltd.Institution denied
  PTAB · Feb 22, 2017 · IPR2016-01575 · APJ J John Lee · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–9 unpatentable over the asserted anticipation and obviousness grounds.

  RulingsInstitution decision

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

    “We have authority to institute an inter partes review only if the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314; 37 C.F.R. §§ 42.4(a), 42.108. Upon consideration of the Petition and Preliminary Response, we determine that the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of the challenged claims. Accordingly, pursuant to § 314, we do not institute an inter partes review of the challenged claims of the ’821 Patent, and the Petition is denied. A.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “structurally related to the physical substrate holding the printed matter, may not be given patentable weight. In re DiStefano, 808 F.3d 845, 848 (Fed. Cir. 2015). “[A] limitation is printed matter only if it claims the content of information.” Id. If determined to claim printed matter, the limitation is nonetheless given patentable weight “if the claimed informational content has a functional or structural relation to the substrate.” Id. at 851. According to Petitioner, the “CD8+ epitope” limitation claims printed matter because it is merely the content of information, namely “the string of amino acids in a subfragment of ESAT-6 that includes the amino acids that constitute a CD8+ epitope.” Pet. 15. Petitioner likens the “CD8+ epitope” to an “instruction limitation” that merely “informs” about the epitope in ESAT-6. Id. (citing In re Kao, 639 F.3d 1057, 1072–73 (Fed. Cir. 2011)). We disagree. In Kao, the relevant limitation claimed “providing information” regarding a particular biological correlation, which the Federal Circuit concluded had no functional relationship to the following step of “providing” a particular drug treatment. Kao, 639 F.3d at 1072–73. Here, the relevant limitation is “exposing said T cells to an immunogenic amount of a peptide subfragment of ESAT-6 that contains a CD8+ epitope.” The epitope is not “printed” onto a physical substrate (i.e., the peptide); it is part of the substrate—the epitope is a sequence of amino acids that is recognized by a CD8+ T cell, and those amino acids are part of the amino acids that make up the peptide itself. Moreover, the epitope does not merely inform someone of purely informational content. Rather, the epitope has a structural and functional relationship to the claims and to the substrate (i.e., the peptide subfragments). For example, claim 1 recites, “exposing said T cells to an immunogenic amount of a peptide subfragment of ESAT-6 that contains a CD8+ epitope” (emphasis added). The claim further recites, “measuring secretion of a cytokine from said T cells” to determine “whether said T cells are activated by said peptide subfragment.” The specification describes the activation of CD8+ T cells by peptide subfragments that are CD8+ epitopes. See Ex. 1001, 2:30–45. Thus, the CD8+ epitopes are involved in the activation of T cells, which yields immunogenicity (i.e., generation of an immune system response) in the form of cytokine secretion, which is measured as part of the claimed method. The CD8+ epitope limitation is more akin to the attribute data object (ADO) limitations in In re Lowry, 32 F.3d 1579, 1583–84 (Fed. Cir. 1994), where the recited ADOs were processed by a computer and affected how data was stored and organized in a memory. Thus, the CD8+ epitope limitation does not constitute printed matter with no patentable weight. See DiStefano, 808 F.3d at 851. B.” slip op. at 6

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Pet. 22–34. The Petition does not, however, demonstrate sufficiently that Brandt-1996 discloses, “exposing said T cells to an immunogenic amount of a peptide subfragment of ESAT-6 that contains a CD8+ epitope,” which is recited in both independent claims. Brandt-1996 discloses the results of a study in which murine (i.e., mouse) T cells were exposed to whole ESAT-6 protein, as well as nine subfragments of ESAT-6. Ex. 1010, 3528, Fig. 3. Whole ESAT-6 protein, as well as two of the subfragments, yielded a response from the T cells in the form of significant IFN-γ release. See id. at 3529–31, Figs. 2, 4. Petitioner argues that Brandt-1996 discloses exposing T cells to an immunogenic amount of a peptide subfragment of ESAT-6 because it reports a positive response (i.e., heightened IFN-γ release) to the “p1-20” peptide subfragment of ESAT-6 (also referred to as the “p1” peptide). Pet. 22–23 (citing Ex. 1010, 3531, Table 2). The Petition does not explain, however, why exposing the mice in Brandt-1996 to the “p1-20” peptide subfragment of ESAT-6 necessarily exposed the T cells to an immunogenic amount of peptide containing a CD8+ epitope. Petitioner’s assertion that a CD8+ epitope is not required by the claims is based on its arguments regarding printed matter, which are unpersuasive as discussed above. Alternatively, Petitioner argues that whole ESAT-6 protein contains CD8+ epitopes and, thus, the “ESAT-6 fragments disclosed in Brandt-1996 necessarily constitute ESAT-6 subfragments that contain a CD8+ epitope.” Pet. 23. Only two of the subfragments tested in Brandt-1996 were immunogenic, however, as required by the challenged claims. See Ex. 1010, Fig. 4 (showing responses to the “p1” (amino acids 1-20) and “p6” (amino acids 51-70) subfragments). Petitioner asserts that amino acids 15–29 and 61–82 correspond to murine CD8+ epitopes, but neither of them correspond to the immunogenic subfragments disclosed in Brandt-1996. See Pet. 23 (citing Ex. 1008, 3348 (“Bennekov-2006”)). Although Petitioner also asserts that ESAT-6 contains human and bovine CD8+ epitopes (id.), Brandt-1996 only tested mice and, thus, does not disclose immunogenicity for these epitopes specific to other species. Finally, Petitioner argues Brandt-1996 shows that whole ESAT-6 protein is immunogenic, which inherently discloses an immunogenic amount of subfragments containing CD8+ epitopes because ESAT-6 protein necessarily is processed into subfragments. Pet. 24. As Patent Owner argues, however, the record indicates that exposure to ESAT-6 protein does not necessarily produce a CD8+ response, particularly when a non-viral vector is used. See Prelim. Resp. 55–57. For example, Bennekov-2006 (cited by Petitioner as disclosing murine CD8+ epitopes) reports a response from CD8+ T cells of mice exposed to ESAT-6 protein via an adenovirus vector, but no significant CD8+ response when a liposome vector was used. See Ex. 1008, 3348, Fig. 2. It is undisputed that the Brandt-1996 study did not use a viral vector. Despite citing Bennekov-2006 to support its inherency arguments, Petitioner does not address or explain these aspects of Bennekov-2006, or their bearing on the disclosures of Brandt-1996. For the above reasons, Petitioner has not provided sufficient information showing that Brandt-1996 discloses, explicitly or inherently, “exposing said T cells to an immunogenic amount of a peptide subfragment of ESAT-6 that contains a CD8+ epitope,” as required by the challenged claims. Thus, Petitioner has not demonstrated a reasonable likelihood of prevailing as to anticipation by Brandt-1996. D.” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable

    “Finally, Petitioner argues Brandt-1996 shows that whole ESAT-6 protein is immunogenic, which inherently discloses an immunogenic amount of subfragments containing CD8+ epitopes because ESAT-6 protein necessarily is processed into subfragments. Pet. 24. As Patent Owner argues, however, the record indicates that exposure to ESAT-6 protein does not necessarily produce a CD8+ response, particularly when a non-viral vector is used. See Prelim. Resp. 55–57. For example, Bennekov-2006 (cited by Petitioner as disclosing murine CD8+ epitopes) reports a response from CD8+ T cells of mice exposed to ESAT-6 protein via an adenovirus vector, but no significant CD8+ response when a liposome vector was used. See Ex. 1008, 3348, Fig. 2. It is undisputed that the Brandt-1996 study did not use a viral vector. Despite citing Bennekov-2006 to support its inherency arguments, Petitioner does not address or explain these aspects of Bennekov-2006, or their bearing on the disclosures of Brandt-1996. For the above reasons, Petitioner has not provided sufficient information showing that Brandt-1996 discloses, explicitly or inherently, “exposing said T cells to an immunogenic amount of a peptide subfragment of ESAT-6 that contains a CD8+ epitope,” as required by the challenged claims. Thus, Petitioner has not demonstrated a reasonable likelihood of prevailing as to anticipation by Brandt-1996. D.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,617,821

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.