- Bio-Rad Laboratories, Inc. v. California Institute Of TechnologyRehearing deniedPTAB · May 22, 2025 · IPR2024-01178 · APJ Cynthia M Hardman · IPR · Rehearing
The Board denied Bio-Rad’s rehearing request, leaving institution denied because the petition relied on Saxonov material not shown to be prior art and could not be supplemented on rehearing.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Such an approach is inconsistent with the Supreme Court’s statements that in an inter partes review, “the petitioner is master of its complaint,” and “the petition [is] the centerpiece of the proceeding.” SAS Inst., Inc. v. Iancu, 584 U.S. 357, 363, 369 (2020). “It is of the utmost importance that petitioners in IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35 U.S.C. § 312(a)(3)). In contravention of these principles, Petitioner’s approach improperly shifts the onus to Patent Owner or the Board to identify and parse out erroneous, and purportedly non-essential, citations to Saxonov and piece together an argument based on the remaining citations. As we stated in the Decision, we decline to assume this task. See Dec. 20. Finally, in the Request, Petitioner attempts to “show[] how Ground 6 is fully supported by undisputed prior art material.” Req. 6. This attempt is improper. Petitioner cannot use the Request as a means to supplement the Petition to identify purportedly essential citations and disavow erroneous or non-essential citations.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In the Decision, we determined that Petitioner had not shown that all of the portions of Saxonov that Petitioner relied on in its unpatentability arguments qualify as prior art to the challenged claims. See Dec. 17–24. On this basis, we found that Petitioner failed to demonstrate a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim of the ’170 patent.” slip op. at 2
NonePatents in suitUS 10,770,170 - Cargill, Incorporated v. Bunge Loders Croklaan USA, LLCRehearing deniedPTAB · Apr 29, 2025 · IPR2024-01360 · APJ Debra L Dennett · IPR · Rehearing
The Board denied Cargill’s rehearing request, leaving institution denied for claims 1, 6–9, and 11–24 because the petition did not show a reason to combine the selected prior-art data without hindsight.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Upon request for rehearing, we assess a decision on institution “for an abuse of discretion” (37 C.F.R. § 42.71(c) (2020)), which occurs when a “decision was based on an erroneous conclusion of law,” “clearly erroneous factual findings,” or “a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The burden of showing a decision should be modified lies with the party challenging the decision. 37 C.F.R. § 42.71(c) (2020). 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. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. We have reviewed Petitioner’s Rehearing Request and carefully considered all the arguments presented. For the following reasons, we are not persuaded that we misapprehended or overlooked any arguments or evidence.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“As discussed in the Decision, “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (citing InTouch Technologies, Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). No matter the result of combining the allegedly “readily available and well-known” information taken from particular examples from the “documentary evidence” with Petrauskaite’s disclosure, a POSITA had to have been motivated to do so at the time the invention was made.1 What is missing from the Petition is the “why.” The only motivating force in this case appears to be hindsight spurring Petitioner on to choose particular examples of palm stearin disclosed in Deffense and the soybean oil in Neff in order to justify its assertion that Petrauskaite discloses the claimed wt% ranges of triglyceride classes.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentableNot shown unpatentable
“artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (citing InTouch Technologies, Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). No matter the result of combining the allegedly “readily available and well-known” information taken from particular examples from the “documentary evidence” with Petrauskaite’s disclosure, a POSITA had to have been motivated to do so at the time the invention was made.1 What is missing from the Petition is the “why.” The only motivating force in this case appears to be hindsight spurring Petitioner on to choose particular examples of palm stearin disclosed in Deffense and the soybean oil in Neff in order to justify its assertion that Petrauskaite discloses the claimed wt% ranges of triglyceride classes.” slip op. at 4
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner’s. We find no instance in the Petition in which “motivation” and “iodine value” are discussed together or linked in any way. The same can be said of Dr. Marangoni’s declaration. And, as noted in the Decision, it was not until the Preliminary Reply that Petitioner argued that specific data on fatty acid wt% used for the conversion calculations were selected to represent “knowledge generally available to one of ordinary skill in the art” due to similarity of the iodine value (“IV”) of the palm stearin (and soybean oil) disclosed in Petrauskaite. See Prelim. Reply 2–3. New evidence or argument in the Preliminary Reply that could have presented earlier is not permitted. On this record, we find Petitioner relies its Rehearing Request on arguments about a motivation to combine, stemming from the significance of iodine values, that were not raised in the Petition. Accordingly, Petitioner fails to support that the Decision misapprehended or overlooked arguments in the Petition about the significance of iodine values.” slip op. at 8
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,645,473 - PTAB · Apr 25, 2025 · IPR2024-00793 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied Micron’s rehearing requests, finding no misapprehension or overlooked matter in its denial of institution based on the failure to show the challenged claims obvious.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Petitioner’s own formulations of the grounds based on either Seo or Nam in combination with Choi posit the alternative theories that either Seo or Nam alone disclose Limitation [1.D], or the combination of either Seo or Nam with Choi teaches this limitation. Although Petitioner did not invoke inherency by name for the theories based on Seo or Nam alone, this is, in effect, the nature of Petitioner’s assertions, namely, voltage differentials in Seo and Nam would inherently remove fast charges. For example, with respect to Seo, Petitioner argues that “Seo teaches having a higher voltage on unselected WLs (e.g., adjacent WLs to the selected WL) during the first time period,” and “the ’342 patent recognizes [that] this voltage differential removes fast charges.” Pet. 35–36 (citing Ex. 1001, 12:24–34; Ex. 1003 ¶¶ 129–131) (emphasis omitted); see also id. at 82–83 (relying on the ’342 patent to support the contention that Nam teaches Limitation [1.D] because Nam “teaches having a higher voltage on unselected WLs (including WLs adjacent to the selected WL) relative to the selected WL during the first time period” (citing Ex. 1001, 12:24–34) (emphasis omitted)). Petitioner does not argue that Seo and Nam expressly disclose removing fast charges or sufficiently explain how a POSITA would have understood that the procedures used in Seo and Nam would have removed fast charges; instead, Petitioner effectively argues that removing fast charges is the inherent result of applying the voltage differential. See, e.g., Pet. 36 (stating Seo would have been understood to disclose “performing its read operation on chargetrap memories, which removes fast charges”).” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner’s reliance on Choi does not cure the deficiencies set forth above. Petitioner asserts that “Choi explains the primary mechanism and unwanted impact of fast-charge loss on verification,” which provides the motivation “to use Seo’s and Nam’s methods to achieve fast charge removal to improve verification.” Req. 7 n.1. But again, Petitioner does not sufficiently explain how a POSITA, looking at Choi, would have understood that either Seo’s or Nam’s techniques result in fast charge removal. In other words, even if Choi teaches the impact of fast-charge loss on verification, Petitioner fails to sufficiently show that a POSITA would have understood that either Seo or Nam teach or suggest fast charge removal. It was Petitioner’s burden to establish that Seo and Nam, alone or in combination with Choi, disclose Limitation [1.D]. We are not persuaded that we misapprehended the nature of Petitioner’s argument when we determined that Petitioner did not meet that burden.” slip op. at 7
- BurdenDecided for patent owner
“It was Petitioner’s burden to establish that Seo and Nam, alone or in combination with Choi, disclose Limitation [1.D]. We are not persuaded that we misapprehended the nature of Petitioner’s argument when we determined that Petitioner did not meet that burden.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner’s reliance on Choi does not cure the deficiencies set forth above. Petitioner asserts that “Choi explains the primary mechanism and unwanted impact of fast-charge loss on verification,” which provides the motivation “to use Seo’s and Nam’s methods to achieve fast charge removal to improve verification.” Req. 7 n.1. But again, Petitioner does not sufficiently explain how a POSITA, looking at Choi, would have understood that either Seo’s or Nam’s techniques result in fast charge removal. In other words, even if Choi teaches the impact of fast-charge loss on verification, Petitioner fails to sufficiently show that a POSITA would have understood that either Seo or Nam teach or suggest fast charge removal.” slip op. at 7
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,600,342 - PTAB · Apr 25, 2025 · IPR2024-00912 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied Micron’s rehearing requests, leaving institution denied because the petitions did not show that the prior-art combinations disclose or render obvious fast-charge removal.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When rehearing a decision on institution, we do not review the merits of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined “if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000)). The party requesting rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, the request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“It was Petitioner’s burden to establish that Seo and Nam, alone or in combination with Choi, disclose Limitation [1.D]. We are not persuaded that we misapprehended the nature of Petitioner’s argument when we determined that Petitioner did not meet that burden.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“determined that the combinations of Seo or Nam with Choi were not persuasive. Dec. 14–15, 19–20. For example, we determined that “Dr. Liu’s statement that ‘[a] POSITA would have recognized that the lateral-electrical-field-inducing voltage differential, as Seo discloses, is what Choi describes as driving the lateral fast-charge loss,’ is not supported by objective evidence or sufficient explanation as to why a POSITA would have come to that understanding” and was therefore insufficient to support Petitioner’s asserted motivation to combine Seo with Choi. Id. at 14–15. In particular, we were not persuaded that “Seo creates a large lateral electric field like the one described in Choi,” and, in any case, we disagreed that “Choi teaches that a large lateral electric field removes fast charges.” Id. at 15. Accordingly, regardless of the duration of the voltage application described in Seo, Petitioner failed to show that the combination of Seo and Choi would result in removal of fast charges. We further determined that Petitioner’s combination of Nam with Choi was problematic for similar reasons, given Petitioner’s reliance on similar arguments. See id. at 20.” slip op. at 10
- Expert testimonyPetitioner expert discountedOther
“the knowledge of one of ordinary skill in the art relating to charge-trap memory devices demonstrates fast charge removal. See Pet. 36, 81–82. And although Petitioner cites its declarant, Dr. Liu, for the proposition that “Seo discloses, and would have been understood to disclose, performing its read operation on charge-trap memories, which removes fast charges,” Dr. Liu does not cite objective evidence to support this assertion, aside from the ’342 patent itself. Id. at 36 (citing Ex. 1003 ¶ 136). Moreover, Dr. Liu’s testimony simply circles back to logic similar to that relied on with respect to the inherency theory, namely that, given certain similarities between Seo and the ’342 patent, Seo removes fast charges because the ’342 patent teaches removing fast charges, even though Seo does not explicitly teach doing so. See Ex. 1003 ¶ 136 (“[A] POSITA would have immediately understood from reading Seo that Seo is disclosing its read operation as applicable to Flash memories, including Flash charge-trap memories. And as the ’342 states, Seo’s operation would remove fast charges in a charge-trap memory.” (citing Ex. 1001, Abstract)). As already discussed, we disagree with this logic based on the lack of sufficient evidence to support its conclusion. See Dec. 13 (“Petitioner and Dr. Liu do not provide any objective evidence or explanation as to how or why a POSITA would have understood that Seo’s voltage amounts applied during Seo’s time periods operate the same way [as in the ’342 patent] on Seo’s memory device to generate fields with sufficient magnitude and duration to remove fast charges.”). Petitioner’s assertions regarding Nam suffer from the same shortcomings. See Dec. 19–20; Pet 82 (“[A] POSITA would have found that Nam’s teachings are applicable to charge-trap devices”); Ex. 1003 ¶¶ 293–298.” slip op. at 8
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,600,342 - PTAB · Apr 22, 2025 · IPR2024-00910 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied Micron’s rehearing request, leaving institution denied because the Petition did not show a reasonable likelihood that claims 7–10 were obvious over Park.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When rehearing a decision on institution, we do not review the merits of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined “if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000)). The party requesting rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, the request for rehearing “must specifically identify all matters the party believes the Board misapprehended” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“dummy source structure might not even be an inoperable structure,” and therefore “the ’872 Patent does not use ‘dummy’ to exclude the dummy source structure from being an operable, functioning element.” Ex. 1003 ¶ 85 (citing Ex. 1001, 5:41–43, 16:63–66). In support of his testimony, Dr. Banerjee points to the Specification’s teaching that “[i]n some embodiments, one or more dummy source structures are in contact with the substrate and may provide interconnect between the 3D memory device and peripheral devices” (Ex. 1001, 5:41–43), and “[w]hen conductive materials are used to fill dummy source hole 212 (e.g., contact 224), the dummy source structure 246 may function as an interconnect to connect 3D memory device 100 with other peripheral devices” (id. at 16:63–66), which we considered and relied upon in construing “dummy source structure” in the Decision. Dec. 11–13. None of the functions identified by Dr. Banerjee, however, relate to whether the dummy source structure would function as a source to the memory cells. Specification consistently describes that function as an interconnect with other peripheral devices, and does not teach or suggest that the dummy source structure may function to provide source to the memory cells. See Ex. 1001, 5:40–43 (“In some embodiments, one or more dummy source structures are in contact with the substrate and may provide interconnect between the 3D memory device and peripheral devices.”), 11:46–48 (“In some embodiments, dummy source structures 178 may function as interconnects to connect 3D memory device 100 with other peripheral devices.”), 16:63–66 (“When conductive materials are used to fill dummy source hole 212 (e.g., contact 244), the dummy source structure 246 may function as an interconnect to connect 3D memory device 100 with other peripheral devices.”). Our construction of “dummy source structure” is consistent with the Specification, and does not foreclose the dummy source structure from being operational, for example, as an interconnect to peripheral devices. Nor is it inconsistent with the Specification’s teaching that “[i]n some embodiments, dummy source structure 246 may not connect to channel structures in the inner region.” See Req. 11 (citing Ex. 1001, 16:38–44). In the case where the dummy source structure connects with the channel structures, the other end may connect with peripheral devices, or may be a dead end. Thus, even if the dummy source structure is operable as an interconnect to connect the 3D memory device with other peripheral devices, it does not follow that a dummy source structure would function as an interconnect to a supply that provides source to the memory cells. For these reasons, we are not persuaded that we abused our discretion in our construction of the term “dummy source structure.”” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“(Paper 14, “Request” or “Req.”) of our Decision (Paper 13, “Decision” or “Dec.”) denying institution of an inter partes review of claims 7–10 (“the challenged claims”) of U.S. Patent No. 10,861,872 B2 (Ex. 1001, “the ’872 patent”). The Request challenges our determination that the information presented in the Petition did not establish a reasonable likelihood of showing that claims 7–10 would have been obvious over the teachings of Park.1 Dec. 19–23.” slip op. at 2
Claim constructionPatents in suitUS 10,861,872 - Mobileye Global, Inc. v. Facet Technology Corp.Rehearing deniedPTAB · Apr 22, 2025 · IPR2024-01110 · APJ Sean P O’Hanlon · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution in place on claim 15 based on the Gallagher–Lumia obviousness challenge.
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 relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“or overlooked any matter. As we explained in the Institution Decision, the ’255 patent discloses that the recited characterization profile allows the system to convert the intensity values measured by the intensity sensor into luminance values based on the sensor’s ability to sense the particular color of the measured light. Inst. Dec. 21; Ex. 1001, 11:41–48. The ’255 patent states that “the light intensity sensor’s 280 ability to sense . . . a particular color” is the “the light intensity sensor’s 280 profile for [that] particular color.” Ex. 1001, 11:45–47. The ’255 patent further states that this “[l]ight intensity sensor 280 characterization is essential for high precision computations.” Id. at 11:48–49. Thus, as we stated in the Institution Decision, the recited “characterization profile” refers to a conversion factor used to convert the measured light intensity into luminance. As this conversion factor is based on the light intensity sensor’s ability to sense the particular color of light reflected by the road sign, we agree that it is empirical information. Patent Owner fails to explain adequately how the fact that the ’255 patent discloses storing multiple conversion factors for multiple colors of measured light in a digital look-up-table (see id. at 11:56–59 (“The light intensity sensor characterization 275 is empirical information about the light intensity sensor 280 that is used to create the [look-up table] 475.”)) has any bearing on our interpretation.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Owner to the Institution Decision where we fully addressed Patent Owner’s contentions. See Inst. Dec. 29–31. As we explained, “Petitioner proposes to incorporate Lumia’s teaching of measuring luminance values into Gallagher’s system, and argues that an ordinarily skilled artisan would have had a reasonable expectation of success given Gallagher’s disclosure of determining calibration factors for each individual sensor in the array of sensors.” Id. at 30. In other words, Petitioner proposes to use Gallagher’s array of sensors to measure luminance in the manner taught by Lumia. We also explained in the Institution Decision how Lumia discloses using a video camera to measure the luminance of a road sign. Id. at 27–29. We further explained that, in the Petition, “Petitioner sets forth reasoning with rational underpinning to support its contentions that it would have been obvious to combine the teachings of Gallagher and Lumia” by, for example, “argu[ing] that implementing Lumia’s teaching of determining the luminance of traffic signs in Gallagher’s system would allow Gallagher’s system to calculate the retroreflectivity of road markers as a means of identifying any markers that do not meet minimum acceptable reflectance levels.” Id. at 30–30 (citing Pet. 46). We further explained that Petitioner’s arguments were supported by the testimony of it witness, Dr. Thorpe. Id. at 31 (citing Ex. 1003 ¶ 116).” slip op. at 7
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,335,255 - Giesecke+devrient GmbH / Giesecke+devrient Currency Technology GmbH et al. v. Lumenco, LLCRehearing deniedPTAB · Mar 13, 2025 · IPR2024-00837 · APJ Benjamin D M Wood · IPR · Rehearing
The Board denied Petitioner’s rehearing request, leaving in place the denial of institution because Petitioner did not show a reasonable likelihood of prevailing on claims 1, 3–7, and 9–13.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“rehearing without prior authorization from the Board.” 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. “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Petitioner misreads limitation [1d], and in particular fails to accord proper meaning to the word “each” in this limitation. “A claim must be read in accordance with the precepts of English grammar.” In re Hyatt, 708 F.2d 712, 714 (Fed. Cir. 1983). Importantly, “[e]ach is treated as singular . . . when it comes before a singular noun (e.g., each house): Each group is responsible for its own quality control—A. Francis, 1986;” and “when it is followed by of and a plural noun (e.g. each of the houses): each of the three parties has a right to a confidential briefing (not have).” Fowler’s Dictionary of Modern English Usage 242 (J. Butterfield ed., 4th ed. 2015). Thus, each refers to each singular (i.e., individual) set of micro mirrors, even though it is followed by “of the sets.” The plain language of limitation [1d] confirms that “each of the sets” is singular by using the singular verb tense “has” rather than the plural tense “have.” Ex. 1001, 28:31. Accordingly, as we held in the Decision (Dec. 17), limitation [1d] requires that each individual set of micro mirrors has a differing cone angle offset. The rest of the limitation’s subject language—“providing the pixels for each of the differing ones of the images”—does not change this result. “[P]roviding the pixels” identifies the relevant “each of the sets of the micro mirrors,” and “for each of the differing ones of the images” identifies the relevant “pixels.” In combination, “providing the pixels for each of the differing ones of the images” clarifies that “each of the sets of the micro mirrors” has, as an antecedent basis, the set (singular) of micro mirrors recited in limitation [1c]. This limitation reads: “the array of micro mirrors includes, for each of the pixels of each of the images, a set of the micro mirrors each having a reflective surface oriented to reflect the ambient light toward a point on the plane corresponding to one of the pixels.” Ex. 1001, 28:24–28 (emphasis added). Thus, each individual set of micro mirrors must have a different cone angle offset from that of the other sets of micro mirrors, whether or not they provide pixels for the same or different images. Petitioner’s interpretation of this language as not requiring differing cone angle offset for sets of micro mirrors forming pixels within the same image (Reh’g Req. 7) is therefore incorrect.” slip op. at 5
Claim constructioncites PhillipsPatents in suitUS 10,317,691 - PTAB · Feb 6, 2025 · IPR2024-00324 · APJ Michelle N Wormmeester · IPR · Rehearing
The Board denied Comcast’s rehearing request and left in place denial of institution after finding no abuse of discretion in its construction and compelling-merits analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 90 (Nov. 2019) (hereinafter, “CTPG”).5 In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); CTPG 90.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“discretion to deny institution due to the advanced state of parallel litigation, taking into consideration the six factors identified in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential), as well as applying guidance set forth in a Memorandum regarding the “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” issued by the Director of the U.S. Patent and Trademark Office (hereinafter, “Guidance Memo”).6 Inst. Dec. 6–43. We determined that the first five Fintiv factors favor discretionary denial,7 and that the Petition presents compelling evidence of unpatentability as to independent claims 1, 12, and 17 under the sixth Fintiv factor. Id. at 15–16, 23–43. Because “the PTAB will not deny institution based on Fintiv if there is compelling evidence of unpatentability,” we declined to exercise our discretion to deny and instituted trial. Guidance Memo 5; Inst. Dec. 15–16. In our Rehearing Decision, however, we agreed with Patent Owner that we erred in determining the claim terms “first format” and “second format” are not limited to different formats, and determined that the proper construction of these claim terms indeed requires the two formats to be different formats. Reh’g Dec. 5–9, 19. Applying the proper construction, we further determined that none of Petitioner’s asserted challenges presents compelling merits of unpatentability as to any claim of the ’751 patent, 6 Available at https://www.uspto.gov/sites/default/files/documents/interim_ proc_discretionary_denials_aia_parallel_district_court_litigation_memo_20 220621_.pdf. 7 Our analysis of the first five Fintiv factors in our First Institution Decision remains undisturbed on rehearing. contrary to our initial determination in the Institution Decision. Id. at 19–20. Having determined that the first five Fintiv factors favor discretionary denial, and that the Petition does not meet the compelling merits standard of the Guidance Memo under the sixth Fintiv factor, we modified our decision and denied institution on rehearing. Id. at 20.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“Contrary to Petitioner’s position, Patent Owner met its burden of showing that our Institution Decision should be modified. In our Institution Decision, we relied on claim differentiation when we determined that claim 1 is not limited to different first and second formats. Inst. Dec. 31. We did not consider the prosecution history, which was part of the record. See Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (“[W]e have held that a court ‘should also consider the patent’s prosecution history, if it is in evidence.’”). As we noted in our Rehearing Decision, however, the Federal Circuit has explained that “[t]he prosecution history modifies the scope of a claim term if ‘the patentee distinguished that term from prior art on the basis of a particular embodiment, expressly disclaimed subject matter, or described a particular embodiment as important to the invention.” Reh’g Dec. 8 (quoting Sentry Protection Prods., Inc. v. Eagle Mfg. Co., 400 F.3d 910, 915 (Fed. Cir. 2005)). The Federal Circuit also has explained that “[a]lthough claim differentiation is a useful analytic tool, it cannot . . . relieve any claim of limitations imposed by the prosecution history.” Id. at 13 (quoting Fenner Invs., Ltd. v. Cellco P’Ship, 778 F.3d 1320, 1327 (Fed. Cir. 2015)). In other words, we erred in not considering the prosecution history, which led to our erroneous conclusion that claim 1 is not limited to different first and second formats. See Ex. 1104, 170 (prosecution history). Our Institution Decision was based on this erroneous conclusion of law, as Patent Owner argued, and we modified it accordingly.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“claim 1. As discussed above with respect to limitation 1D, Petitioner asserted that its proposed combination of Danciu and Mahajan would have provided a system where “Danciu’s remote control would translate commands associated with a first type of media playing application to a generic format, transmit them to the controlled device, which would translate them to a command associated with a second type of media playing application for execution.” Reh’g Dec. 12–13 (quoting Pet. 31). In other words, both Danciu’s remote control and controlled device translate commands. With respect to claim 5, Petitioner asserted that Mahajan’s abstraction module could operate at Danciu’s server. Pet. 43. Even if Mahajan’s abstraction module (which translates commands) could operate at Danciu’s server, Petitioner does not adequately explain why an ordinarily skilled artisan would have had reason to modify Danciu’s system to locate Mahajan’s abstraction module at the server, especially where both Danciu’s remote control and controlled device already translate commands. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). Petitioner does not point to anything in its analysis of claim 5 that demonstrates we misapprehended or overlooked a matter.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,048,751 - Comcast Cable Communications, LLC v. Touchstream Technologies, Inc.Rehearing grantedPTAB · Oct 9, 2024 · IPR2024-00324 · APJ Michelle N Wormmeester · IPR · Rehearing
Patent Owner’s rehearing request was granted; the Petition was denied and no trial instituted because the challenges did not meet the compelling-merits standard under Fintiv.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed board ownDecided for patent owner
“Our reviewing court has explained that “[t]he prosecution history modifies the scope of a claim term if ‘the patentee distinguished that term from prior art on the basis of a particular embodiment, expressly disclaimed subject matter, or described a particular embodiment as important to the invention.’” Sentry Protection Prods., Inc. v. Eagle Mfg. Co., 400 F.3d 910, 915 (Fed. Cir. 2005) (quoting CCS Fitness, Inc. v. Brunswick Corp., 228 F.3d 1359, 1366–67 (Fed. Cir. 2002)).” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“discretion to deny institution due to the advanced state of parallel litigation, taking into consideration the six factors identified in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential), as well as applying guidance set forth in a Memorandum regarding the “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” issued by the Director of the U.S. Patent and Trademark Office (hereinafter, “Guidance Memo”).5 Inst. Dec. 6–43. We determined that the first five Fintiv factors favor discretionary denial,6 and that the Petition presents compelling evidence of unpatentability as to independent claims 1, 12, and 17 under the sixth Fintiv factor. Id. at 15–16, 23–43. Because “the PTAB will not deny institution based on Fintiv if there is compelling evidence of unpatentability,” we declined to exercise our discretion to deny. Guidance Memo 5; Inst. Dec. 15–16.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“those arguments. See Inst. Dec. 45–47. As to Petitioner’s arguments on the claimed first and second formats of limitation 1D in particular, we found the record provided “some support” for Petitioner’s position that “it would have been obvious to a [person of ordinary skill in the art] that one or more RTS Media Abstraction Modules could operate at a server, such as in [Aldrey’s] Service Provider Network 103,” even though Petitioner asserted that Mahajan teaches command conversion at the client. Id. at 45–46 (citing Pet. 66–67). Yet assuming Mahajan’s RTS Media Abstraction Module could have operated at a server, as Petitioner argued, it is not readily apparent why an ordinarily skilled artisan would have considered locating the RTS Media Abstraction Module at a server based on Mahajan’s disclosure of command conversion at a client. See also Pet. 66 (“[I]t would have been obvious to a [person of ordinary skill in the art] that the RTS Media Abstraction Module could be located on the client or server.” (emphasis added)). Nor did Petitioner adequately explain why an ordinarily skilled artisan would have considered locating Mahajan’s RTS Media Abstraction Module at a server. We note Petitioner further argued that combining Mahajan and Aldrey would have provided a system where “Aldrey’s end terminal would translate commands associated with a first type of media playing application to a command associated with a second type of media playing application on a STB.” Pet. 68; see also id. at 67 (“Mahajan’s server-command teachings could be implemented on Aldrey’s end terminal remote control.”). Arguing that Aldrey’s end terminal would translate commands seems inconsistent with Petitioner’s earlier argument for locating command conversion at Aldrey’s network service provider. See id. at 66–68. Moreover, it is not readily apparent how command translation by Aldrey’s end terminal––rather than Aldrey’s network service provider––teaches or suggests the format of a command sent from the end terminal to the network service provider is different from the format of a command sent from the network service provider to the STB. Petitioner did not close these logical gaps, leaving its case short of compelling.” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 11,048,751 - Kelonia Therapeutics, Inc. v. Interius Biotherapeutics, Inc.Rehearing deniedPTAB · Oct 1, 2024 · PGR2024-00008 · APJ Sheridan K Snedden · PGR · Rehearing
The Board denied rehearing and maintained its denial of PGR because Petitioner did not show that Perkins and RCSB PDB made claims 1–30 more likely than not unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. LEGAL STANDARD Pursuant to 37 C.F.R. § 42.71(d): A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. 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 exists where a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). A rehearing request is not an opportunity for the requesting party to reargue its case or merely to express disagreement with the underlying decision. Nor is it an opportunity for the moving party to present new arguments that were not in its original submissions.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Owner’s argument persuasive because Perkins discloses embodiments with “mutations at I182 among a group of 20 other possible locations for modifications,” 13 of which are mutations of specific amino acids that “can be changed to any of the 19 other natural amino acids.” Id. Perkins discloses further that modifications at each of those 20 possible sites can be combined such that “one, two, or more” of the mutations can be made together in other embodiments (Ex. 1006, 17–18), or in other words, “each species [is] combinable to create a vast number of species.” Dec. 35. In addition to the locations of modifications expressly listed in Perkins, Perkins adds yet another option in which “the mutated VSV-G envelope protein is as described in Nikolic et al.” (Ex. 1006, 18), which “describes the crystal structures of VSV G bound to its native LDL-R receptor” that RCSB PDB depicts in entries 5OY9 and 5OYL (Dec. 18). We also considered Dr. Rose’s testimony about the crystal structures depicted in RCSB PDB, namely that a person of ordinary skill in the art would have been motivated to modify Perkins based on the VSV-G crystal structures in the RCSB PDB. Perkins taught that mutations to VSV-G “inhibit binding of VSV-G to the low-density lipoprotein receptor (‘LDL-R’), while preserving the VSV-G protein’s fusogenic function,” and expressly disclosed making a mutation at I182. (See, e.g., Ex. 1005 at 19:29-20:2, 20:29-21:14, 21:16-27; Ex. 1006 at 16.) The VSV-G crystal structures in the RCSB PDB taught that I182 is nearby negatively charged amino acids on the LDL-R. Thus, a person of ordinary skill in the art would have been motivated to incorporate a mutation which negated an interaction with the negatively charged residues in the LDL-R. (Ex. 1005 at 19:29–20:2; Ex. 1006 at 16.) Dec. 37. discussed above, “Perkins provides a list of many mutations and combination[s] thereof, but provides no direction as to which of the many possible choices is likely to be successful.” Id. at 37–38. Thus, we were not persuaded that choosing an embodiment with a mutation at I182 from Perkins’s other listed embodiments with 20 possible locations for modifications, combinations of modifications at 20 possible locations, and the mutations described in Nikolic and depicted in RCSB PDB is an “easily traversed, small or finite number of alternatives that KSR suggested might support an inference of obviousness.” Id. at 35. In view of these findings, we noted that we did not “find sufficient evidentiary support for a determination that the navigation of RCSB PDB crystal structures to achieve the missing limitation would have been ‘evidently and indisputably within the common knowledge of those skilled in the art.’” Id. at 38.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“discussed above, “Perkins provides a list of many mutations and combination[s] thereof, but provides no direction as to which of the many possible choices is likely to be successful.” Id. at 37–38. Thus, we were not persuaded that choosing an embodiment with a mutation at I182 from Perkins’s other listed embodiments with 20 possible locations for modifications, combinations of modifications at 20 possible locations, and the mutations described in Nikolic and depicted in RCSB PDB is an “easily traversed, small or finite number of alternatives that KSR suggested might support an inference of obviousness.” Id. at 35. In view of these findings, we noted that we did not “find sufficient evidentiary support for a determination that the navigation of RCSB PDB crystal structures to achieve the missing limitation would have been ‘evidently and indisputably within the common knowledge of those skilled in the art.’” Id. at 38.” slip op. at 7
§ 103 obviousnessPatents in suitUS 11,767,366
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.