- Polygroup Limited Mco v. Willis Electric Co., LtdRehearing deniedPTAB · Feb 20, 2020 · IPR2016-01781 · APJ William V Saindon · IPR · Rehearing
The Board denied Patent Owner’s rehearing request and its request to submit new arguments and evidence as an offer of proof, leaving the remand briefing order unchanged.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“944 (Fed. Cir. 2019) (emphasis added).3 Further, the Federal Circuit clarified that our refusal to consider Miller alone was not a partial institution but rather a failure to consider an alternative argument. Polygroup, 759 F. App'x at 944 n.3. Thus, on remand, we were not to consider a new ground of unpatentability but rather an alternative argument that was “explicitly argued” in the prior ground during the trial phase before us.” slip op. at 4
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“evidence as an “Offer of Proof,” even if we deny its request for rehearing. Req. Reh’g 6. We see no particular reason or benefit to doing so. Patent Owner relies on Ultratec, Inc. v. CaptionCall, LLC to support its position that we should allow it to enter the new arguments and evidence, but Ultratec is inapposite. See id. (citing Ultratec, Inc. v. CaptionCall, LLC, 872 F.3d 1267, 1273 (Fed. Cir. 2017)). In Ultratec, the issue was the Board’s refusal to enter newly-available, allegedly inconsistent expert testimony in a case where neither the reasons for the Board’s refusal nor the testimony were made of record. Ultratec, 872 F.3d at 1272–73. As such,” slip op. at 5
- RemandOther
“944 (Fed. Cir. 2019) (emphasis added).3 Further, the Federal Circuit clarified that our refusal to consider Miller alone was not a partial institution but rather a failure to consider an alternative argument. Polygroup, 759 F. App'x at 944 n.3. Thus, on remand, we were not to consider a new ground of unpatentability but rather an alternative argument that was “explicitly argued” in the prior ground during the trial phase before us. Given that the Miller-alone ground was an argument in an instituted” slip op. at 4
NonePatents in suitUS 8,974,072 - PTAB · Apr 16, 2018 · IPR2017-01779 · APJ Jeremy M Plenzler · IPR · Rehearing
The Board denied Halliburton’s rehearing request, leaving institution denied because the Petition did not explain how Dusterhoft taught the claimed bypassing of near-wellbore damage.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). We further note that 37 C.F.R. § 42.71(d) states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner’s failure to establish a reasonable likelihood of success at trial based on the argument and evidence provided in the Petition, rather than accepting Patent Owner’s representations regarding Dusterhoft. See Dec. 8 (“Based on the record before us, we are apprised of no persuasive reason as to why the combined teachings of Dusterhoft and Willett teach jetting a slurry into a formation in the interval “to bypass near well bore damage in the formation.”). Further, as we noted in our Decision, the Petition offers essentially no explanation as to why Dusterhoft teaches “bypass[ing] near wellbore damage in the formation” in the manner recited in the claims. See id. at 6–7 (“[T]he challenge’s only discussion of ‘bypass[ing] near wellbore damage in the formation’ is a conclusory statement at the beginning of the portion of the Petition directed to that limitation . . . a quote from Dusterhoft . . . and a conclusion at the end of the relevant discussion that ‘a [person of ordinary skill in the art] would understand Dusterhoft in view of Willett teaches jetting a slurry into a formation in the interval “to bypass near well bore damage in the formation.”’”). Even if the additional explanation, provided for the first time in the Request, is correct, the problem is that explanation is not in the Petition. It is Petitioner’s obligation to explain its challenges in the Petition. Any alleged misrepresentation by Patent Owner does not change this obligation.” slip op. at 3
NonePatents in suitUS 8,220,543 - PTAB · Feb 9, 2018 · IPR2017-01575 · APJ Jeremy M Plenzler · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, holding that it could institute on all challenged claims after finding a reasonable likelihood of prevailing on at least one claim in each petition.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“III. STANDARD OF REVIEW When considering a request for rehearing, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). We further note that 37 C.F.R. § 42.71(d) states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“have the right to file a preliminary response to the petition . . . that sets forth reasons why no inter partes review should be instituted based upon the failure of the petition to meet any requirement of this chapter” (35 U.S.C. § 313) and that trial cannot be instituted “unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition” (35 U.S.C. § 314(a)).” slip op. at 4
NonePatents in suitUS 8,905,133 - PTAB · Feb 9, 2018 · IPR2017-01577 · APJ Jeremy M Plenzler · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, leaving institution in place because Petitioner showed a reasonable likelihood of prevailing on at least one challenged claim in each petition.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“III. STANDARD OF REVIEW When considering a request for rehearing, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). We further note that 37 C.F.R. § 42.71(d) states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedDecided for petitioner
“have the right to file a preliminary response to the petition . . . that sets forth reasons why no inter partes review should be instituted based upon the failure of the petition to meet any requirement of this chapter” (35 U.S.C. § 313) and that trial cannot be instituted “unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition” (35 U.S.C. § 314(a)).” slip op. at 4
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“We are also unpersuaded by Patent Owner’s argument that we somehow “violate[d] . . . due-process guarantees by instituting this proceeding without performing a meaningful analysis of Patent Owner’s substantive arguments” and “failed to provide Patent Owner with notice of the facts and arguments that support the[] decision to institute IPR.” Req. Reh’g 10. As noted above, there is no dispute that Petitioner has established a reasonable likelihood of prevailing at trial on the challenges to claim 26 of the ’543 patent or claims 1 and 28 of the ’133 patent, or that our Decisions failed to address any argument directed to those claims. That is the basis for our Decisions (i.e., Petitioner has established a reasonable likelihood of success at trial on at least its challenges to claim 26 of the ’543 patent and claims 1 and claim 28 of the ’133 patent).” slip op. at 5
NonePatents in suitUS 8,905,133 - PTAB · Feb 9, 2018 · IPR2017-01569 · APJ Jeremy M Plenzler · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, finding no legal error or abuse of discretion in instituting on all challenged claims after the threshold showing was met.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“when a Preliminary Response has been filed, 35 U.S.C. §§ 313 and 314 require that the merits of each argument must be addressed in an institution decision. See Req. Reh’g 5 (“The Board overlooked that it was required to substantively consider the arguments put forth in Patent Owner’s Preliminary Response.”). Patent Owner, however, fails to explain persuasively, and we do not see, support for that position in the statutes. We considered Patent Owner’s Preliminary Responses, which did not address claim 26 of the ’543 patent or claims 1 and 28 of the ’133 patent, for example, which were addressed in our Decisions. In its Requests, Patent Owner does not dispute that Petitioner has established a reasonable likelihood of prevailing at trial with respect to at least one of the claims challenged in each of the Petitions (e.g., claim 26 of the ’543 patent or claims 1 and 28 of the ’133 patent). Contrary to Patent Owner’s assertions, our approach does not “lead[] to the nonsensical result of rendering preliminary responses meaningless.” Req. Reh’g 4. For example, had Patent Owner’s Preliminary Responses addressed specifically claim 26 of the ’543 patent, claim 1 of the ’133 patent, or claim 28 of the ’133 patent, our Decisions, which specifically address those claims, would have considered those arguments. It was Patent Owner’s decision not to address those claims in its Preliminary Responses.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We considered Patent Owner’s Preliminary Responses, which did not address claim 26 of the ’543 patent or claims 1 and 28 of the ’133 patent, for example, which were addressed in our Decisions. In its Requests, Patent Owner does not dispute that Petitioner has established a reasonable likelihood of prevailing at trial with respect to at least one of the claims challenged in each of the Petitions (e.g., claim 26 of the ’543 patent or claims 1 and 28 of the ’133 patent). Contrary to Patent Owner’s assertions, our approach does not “lead[] to the nonsensical result of rendering preliminary responses meaningless.” Req. Reh’g 4. For example, had Patent Owner’s Preliminary Responses addressed specifically claim 26 of the ’543 patent, claim 1 of the ’133 patent, or claim 28 of the ’133 patent, our Decisions, which specifically address those claims, would have considered those arguments. It was Patent Owner’s decision not to address those claims in its Preliminary Responses.” slip op. at 5
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“We are also unpersuaded by Patent Owner’s argument that we somehow “violate[d] . . . due-process guarantees by instituting this proceeding without performing a meaningful analysis of Patent Owner’s substantive arguments” and “failed to provide Patent Owner with notice of the facts and arguments that support the[] decision to institute IPR.” Req. Reh’g 10. As noted above, there is no dispute that Petitioner has established a reasonable likelihood of prevailing at trial on the challenges to claim 26 of the ’543 patent or claims 1 and 28 of the ’133 patent, or that our Decisions failed to address any argument directed to those claims. That is the basis for our Decisions (i.e., Petitioner has established a reasonable likelihood of success at trial on at least its challenges to claim 26 of the ’543 patent and claims 1 and claim 28 of the ’133 patent).” slip op. at 5
NonePatents in suitUS 8,220,543 - Abiomed, Inc., Abiomed R&D, Inc., And Abiomed Europe GmbH v. Maquet Cardiovascular, LLCRehearing deniedPTAB · Feb 7, 2018 · IPR2017-01209 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied rehearing, leaving in place the denial of institution because the petition did not sufficiently show that Aboul-Hosn disclosed or supported combining the challenged embodiments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When considering a request for rehearing, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of 2 The ’1025 Petition challenges claims 16–18 of the ’100 patent. 3 The ’1208 Petition challenges claims 7–9 and 11–15 of the ’437 patent. 4 The ’1209 Petition challenges claims 5, 10, 16, and 25 of the ’437 patent. 5 Petitioner filed a Request for Rehearing in each of the above-captioned proceedings. The Requests for Rehearing effectively are identical. This Decision specifically references the Request from IPR2017-01025 although the discussion applies equally to Petitioner’s Requests in IPR2017-01208 and IPR2017-01209. Citations are to IPR2017-01025, unless otherwise indicated. law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). We further note that 37 C.F.R. § 42.71(d) states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“assessment of all evidence in the record to determine whether the challenged claims would have been obvious. Rather, the Decision to deny institution of inter partes review was based on Petitioner’s failure to establish a reasonable likelihood of success at trial based on the arguments presented in the Petition, and the evidence relied upon in support of those particular arguments. Petitioner has the burden of showing, in its petition, a reasonable likelihood that it would prevail. 35 U.S.C. § 314(a). That reasonable likelihood is measured by considering the analysis offered by Petitioner. 37 C.F.R. § 42.104(b) (setting forth the requirements of a petition, including specificity and identification of support).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“There is no express disclosure from Aboul-Hosn identified by Petitioner, in the Petition, or even in its Request, that the pump in Figures 1– 13 is included in Figure 23. In fact, and as noted in our Decision (Dec. 9), Aboul-Hosn expressly states that “Figure[] 23 . . . illustrate[s a] different embodiment[] of the present invention” (Ex. 1004, 30:20–21). Petitioner faults our characterization of the above passage from Aboul-Hosn, noting “[t]he ellipses, missing language and brackets are materially important.” Req. Reh’g 12. Petitioner contends that “[t]he Board’s errant paraphrase gives the misimpression that Figure 23 is an entirely different invention than any other in Aboul-Hosn. But, in context, the meaning is different. Figure 23 is a different embodiment than Figure 24. . . .” Id. at 12–13. The entire sentence spanning lines 20–21 on page 30 of Aboul-Hosn reads: “Figures 23 and 24 illustrate two different embodiments of the present invention.” Ex. 1004, 30:20–21. We are not persuaded that we misread that sentence. That sentence specifically references Figures 23 and 24 as two different embodiments, meaning that Figures 23 and 24 are each different embodiments, not only with respect to one another, but also with respect to the other embodiments disclosed.6” slip op. at 4
§ 103 obviousnessPatents in suitUS 9,597,437 - PTAB · Feb 7, 2018 · IPR2017-01208 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied the rehearing request, leaving institution denied because Petitioner did not sufficiently show that Aboul-Hosn disclosed or supported combining the cited embodiments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When considering a request for rehearing, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of 2 The ’1025 Petition challenges claims 16–18 of the ’100 patent. 3 The ’1208 Petition challenges claims 7–9 and 11–15 of the ’437 patent. 4 The ’1209 Petition challenges claims 5, 10, 16, and 25 of the ’437 patent. 5 Petitioner filed a Request for Rehearing in each of the above-captioned proceedings. The Requests for Rehearing effectively are identical. This Decision specifically references the Request from IPR2017-01025 although the discussion applies equally to Petitioner’s Requests in IPR2017-01208 and IPR2017-01209. Citations are to IPR2017-01025, unless otherwise indicated. law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). We further note that 37 C.F.R. § 42.71(d) states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“assessment of all evidence in the record to determine whether the challenged claims would have been obvious. Rather, the Decision to deny institution of inter partes review was based on Petitioner’s failure to establish a reasonable likelihood of success at trial based on the arguments presented in the Petition, and the evidence relied upon in support of those particular arguments. Petitioner has the burden of showing, in its petition, a reasonable likelihood that it would prevail. 35 U.S.C. § 314(a). That reasonable likelihood is measured by considering the analysis offered by Petitioner. 37 C.F.R. § 42.104(b) (setting forth the requirements of a petition, including specificity and identification of support).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“There is no express disclosure from Aboul-Hosn identified by Petitioner, in the Petition, or even in its Request, that the pump in Figures 1– 13 is included in Figure 23. In fact, and as noted in our Decision (Dec. 9), Aboul-Hosn expressly states that “Figure[] 23 . . . illustrate[s a] different embodiment[] of the present invention” (Ex. 1004, 30:20–21). Petitioner faults our characterization of the above passage from Aboul-Hosn, noting “[t]he ellipses, missing language and brackets are materially important.” Req. Reh’g 12. Petitioner contends that “[t]he Board’s errant paraphrase gives the misimpression that Figure 23 is an entirely different invention than any other in Aboul-Hosn. But, in context, the meaning is different. Figure 23 is a different embodiment than Figure 24. . . .” Id. at 12–13. The entire sentence spanning lines 20–21 on page 30 of Aboul-Hosn reads: “Figures 23 and 24 illustrate two different embodiments of the present invention.” Ex. 1004, 30:20–21. We are not persuaded that we misread that sentence. That sentence specifically references Figures 23 and 24 as two different embodiments, meaning that Figures 23 and 24 are each different embodiments, not only with respect to one another, but also with respect to the other embodiments disclosed.6 Contrary to Petitioner’s contentions, we considered the arguments and supporting evidence presented in the Petition and determined it insufficient to institute trial. See, e.g., Dec. 10 (“Ultimately, the Petition is deficient because of the failure to explain sufficiently and support the challenges therein.”). We are not persuaded that we abused our discretion in reaching that determination.7 Disagreeing with our Decision is not, by itself, an appropriate basis for rehearing.” slip op. at 4
§ 103 obviousnessPatents in suitUS 9,597,437 - PTAB · Feb 7, 2018 · IPR2017-01025 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied rehearing of its decision denying institution because the petition did not sufficiently show that Aboul-Hosn linked the pump embodiments or provide a rationale to combine them.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When considering a request for rehearing, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of 2 The ’1025 Petition challenges claims 16–18 of the ’100 patent. 3 The ’1208 Petition challenges claims 7–9 and 11–15 of the ’437 patent. 4 The ’1209 Petition challenges claims 5, 10, 16, and 25 of the ’437 patent. 5 Petitioner filed a Request for Rehearing in each of the above-captioned proceedings. The Requests for Rehearing effectively are identical. This Decision specifically references the Request from IPR2017-01025 although the discussion applies equally to Petitioner’s Requests in IPR2017-01208 and IPR2017-01209. Citations are to IPR2017-01025, unless otherwise indicated. law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). We further note that 37 C.F.R. § 42.71(d) states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“assessment of all evidence in the record to determine whether the challenged claims would have been obvious. Rather, the Decision to deny institution of inter partes review was based on Petitioner’s failure to establish a reasonable likelihood of success at trial based on the arguments presented in the Petition, and the evidence relied upon in support of those particular arguments. Petitioner has the burden of showing, in its petition, a reasonable likelihood that it would prevail. 35 U.S.C. § 314(a). That reasonable likelihood is measured by considering the analysis offered by Petitioner. 37 C.F.R. § 42.104(b) (setting forth the requirements of a petition, including specificity and identification of support).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Petitioner, in the Petition, or even in its Request, that the pump in Figures 1– 13 is included in Figure 23. In fact, and as noted in our Decision (Dec. 9), Aboul-Hosn expressly states that “Figure[] 23 . . . illustrate[s a] different embodiment[] of the present invention” (Ex. 1004, 30:20–21). Petitioner faults our characterization of the above passage from Aboul-Hosn, noting “[t]he ellipses, missing language and brackets are materially important.” Req. Reh’g 12. Petitioner contends that “[t]he Board’s errant paraphrase gives the misimpression that Figure 23 is an entirely different invention than any other in Aboul-Hosn. But, in context, the meaning is different. Figure 23 is a different embodiment than Figure 24. . . .” Id. at 12–13. The entire sentence spanning lines 20–21 on page 30 of Aboul-Hosn reads: “Figures 23 and 24 illustrate two different embodiments of the present invention.” Ex. 1004, 30:20–21. We are not persuaded that we misread that sentence. That sentence specifically references Figures 23 and 24 as two different embodiments, meaning that Figures 23 and 24 are each different embodiments, not only with respect to one another, but also with respect to the other embodiments disclosed.6” slip op. at 4
§ 103 obviousnessPatents in suitUS 7,022,100 - PTAB · Jan 3, 2018 · IPR2017-01205 · APJ Kevin W Cherry · IPR · Rehearing
The Board denied rehearing in five proceedings, upholding denial of institution because the petitions did not sufficiently support the asserted obviousness challenges.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). We further note that 37 C.F.R. § 42.71(d) states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“assessment of all evidence in the record to determine whether the challenged claims would have been obvious. Rather, the Decision to deny institution of inter partes review was based on Petitioner’s failure to establish a reasonable likelihood of success at trial based on the arguments presented in the Petition, and the evidence relied upon in support of those particular arguments. Petitioner has the burden of showing, in its petition, a reasonable likelihood that it would prevail. 35 U.S.C. § 314(a). That reasonable likelihood is measured by considering the analysis offered by Petitioner. 37 C.F.R. § 42.104(b) (setting forth the requirements of a petition, including specificity and identification of support).” slip op. at 3
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“assessment of all evidence in the record to determine whether the challenged claims would have been obvious. Rather, the Decision to deny institution of inter partes review was based on Petitioner’s failure to establish a reasonable likelihood of success at trial based on the arguments presented in the Petition, and the evidence relied upon in support of those particular arguments. Petitioner has the burden of showing, in its petition, a reasonable likelihood that it would prevail. 35 U.S.C. § 314(a). That reasonable likelihood is measured by considering the analysis offered by Petitioner. 37 C.F.R. § 42.104(b) (setting forth the requirements of a petition, including specificity and identification of support).” slip op. at 3
§ 103 obviousnessPatents in suitUS 9,561,314 - PTAB · Jan 3, 2018 · IPR2017-01202 · APJ Kevin W Cherry · IPR · Rehearing
The Board denied Petitioner’s rehearing requests, finding no abuse of discretion in denying institution because the petitions did not sufficiently support their challenges.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). We further note that 37 C.F.R. § 42.71(d) states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“assessment of all evidence in the record to determine whether the challenged claims would have been obvious. Rather, the Decision to deny institution of inter partes review was based on Petitioner’s failure to establish a reasonable likelihood of success at trial based on the arguments presented in the Petition, and the evidence relied upon in support of those particular arguments. Petitioner has the burden of showing, in its petition, a reasonable likelihood that it would prevail. 35 U.S.C. § 314(a). That reasonable likelihood is measured by considering the analysis offered by Petitioner. 37 C.F.R. § 42.104(b) (setting forth the requirements of a petition, including specificity and identification of support).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Petitioner, in the Petition, or even in its Request, that the pump in Figures 1– 13 is included in Figure 23. In fact, and as noted in our Decision (Dec. 11), Aboul-Hosn expressly states that “Figure[] 23 . . . illustrate[s a] different embodiment[] of the present invention” (Ex. 1004, 30:20–21). Petitioner faults our characterization of the above passage from Aboul-Hosn, noting “[t]he ellipses, missing language and brackets are materially important.” Req. 12. Petitioner contends that “[t]he Board’s errant paraphrase gives the misimpression that Figure 23 is an entirely different invention than any other in Aboul-Hosn. But, in context, the meaning is different. Figure 23 is a different embodiment than Figure 24.” Id. The entire sentence spanning lines 20–21 on page 30 of Aboul-Hosn reads: “Figures 23 and 24 illustrate two different embodiments of the present invention.” Ex. 1004, 30:20–21. We are not persuaded that we misread that sentence. That sentence specifically references Figures 23 and 24 as two different embodiments, meaning that Figures 23 and 24 are each different embodiments, not only with respect to one another, but also with respect to the other embodiments disclosed.7” slip op. at 4
§ 103 obviousnessPatents in suitUS 9,545,468
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.