- Brooks Sports, Inc. v. Herbert E. TownsendRehearing grantedPTAB · May 17, 2021 · IPR2018-00577 · APJ Hyun J Jung · IPR · Rehearing
The Board granted rehearing in part, finding challenges 8 and 9 unproven and limiting challenge 3 as to claim 6; it declined to disregard the petitioner’s expert’s entire testimony.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“37 C.F.R. § 42.71(d) sets forth, in relevant part that: 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.” slip op. at 4
- Expert testimonyPetitioner expert creditedMixed
“Dr. Shorten’s testimonies entirely. Nonetheless, in the Final Written Decision, in addressing Patent Owner’s arguments concerning the relevant art and level of ordinary skill in the art, we stated that the parties’ arguments “address what weight we should give to the testimony of the parties’ declarants” and “[f]or the reasons addressed below, the parties’ declarants both provide relevant testimony on issues being assessed dependent on the declarant’s particular background and expertise.” Final Dec. 13. We, thus, Rather, we assessed portions of the testimonies and how much weight should be given to them. In doing so, we considered Dr. Shorten’s relationship with Petitioner and the alleged conflicting testimony. Such matters go to credibility of the witness, but do not justify disregarding the testimony altogether as requested by Patent Owner. Even if there were conflicting testimonies as to whether Dr. Shorten ever tested a running shoe that has a dilatant compound in the sole, Dr. Shorten effectively corrected such discrepancy in his second declaration by testifying that his employee tested the Power Bounce shoe. See PO Sur- Reply 9. These two matters raised by Patent Owner did not rise to the level that Dr. Shorten’s entire testimony should be disregarded.” slip op. at 7
- Obviousness (§103) › Objective indicia / secondary considerationsDecided for petitioner
“In its Response in regard to secondary considerations, Patent Owner argued that “Petitioner’s expert tried and failed in 1985 to create shoes that had a dilatant compound in the sole.” PO Resp. 61. Petitioner replied that “Dr. Shorten explains there was not a failed attempt, but a reasonable decision to not to try because better materials were available.” Pet. Reply 27 (citing Ex. 1071 at ¶¶ 164–170). In his Reply Declaration, Dr. Shorten testified that Silly Putty in a shoe component “does not perform better than EVA [(ethyl vinyl acetate)],” that “it performed worse,” and that “[g]iven the additional cost and weight compared to EVA, Silly Putty does not provide a better option.” Ex. 1071 ¶ 170. We stated in the Final Written Decision that Petitioner replied that its declarant “explains there was not a failed attempt, but a reasonable decision to not to try because better materials were available.” Final Dec. 70 (citing Pet. Reply 27). Also, as pointed out in the Final Written Decision, Dr. Shorten testified that “Silly Putty is heavy and costly compared to EVA, a benchmark material,” “[g]iven the additional cost and weight compared to EVA, Silly Putty does not provide a better option,” and “I don’t think it has any -- in the form we see it in, you know, the patent referenced in the Townsend, I don’t think there’s any commercial value there personally.” Id. (citing Ex. 1071 (Shorten Reply Dec.) ¶¶ 164, 170; Ex. 2009 (Shorten “[b]ased on the record, a preponderance of the evidence persuades us that others tried but decided for economic reasons that using a dilatant compound in a shoe was an unattractive option.” Final Dec. 70. Thus, the Final Written Decision provided grounds for disregarding Petitioner’s Expert’s testimony with respect to his conclusion in 1985 to the extent that it conflicts with the later testimony. The fact that Dr. Shorten clarified or corrected his earlier testimony does not mean that we should disregard his later testimony, because there is nothing in the record to hold against the veracity of later testimonies, other than that earlier inconsistent testimony itself.” slip op. at 9
§ 103 obviousnessPatents in suitUS 7,490,416 - Caterpillar Inc. v. Wirtgen America, Inc.Rehearing grantedPTAB · Jul 11, 2019 · IPR2017-02185 · APJ Barry L Grossman · IPR · Rehearing
The Board granted Patent Owner’s rehearing request, vacated the original final written decision, and will issue a corrected decision grouping claims 18–20 and 30–32 with claims 17 and 29.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“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).” slip op. at 2
NonePatents in suitUS 7,828,309
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.