- PNC Bank N.A. v. United Services Automobile AssociationRehearing deniedPTAB · Mar 8, 2023 · IPR2021-01077 · APJ Juliet Mitchell Dirba · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving in place the final written decision finding claims 1–18 unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD FOR REHEARING A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, a reply, or a sur-reply.” 37 C.F.R. § 42.71(d). “The burden of showing a decision should be modified lies with the party challenging the decision.” Id.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“misapprehended or overlooked matters relevant to whether an ordinary artisan would have reasonably expected success in combining Garcia and Randle. Req. 1–5. We have reviewed and carefully considered all of the arguments presented, but determine Patent Owner fails to show that the Decision misapprehended or overlooked any material arguments or evidence. To provide context for our discussion, we begin with a targeted summary of the Decision, and then we turn to Patent Owner’s specific arguments.” slip op. at 2
§ 103 obviousnessPatents in suitUS 10,621,559 - Samsung Electronics America, Inc. v. Prisua Engineering Corp.Rehearing deniedPTAB · Mar 16, 2021 · IPR2017-01188 · APJ Barbara A Parvis · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding it had not shown that the Board overlooked or misapprehended its constitutional challenges.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing” slip op. at 2
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“Furthermore, the Federal Circuit’s decision in Arthrex addressed the first challenge. See 941 F.3d at 1337. As Patent Owner acknowledges (PO Reh’g Req. 11–12), the second challenge also has been addressed. See Ethicon Endo-Surgery, Inc. v. Covidien LP, 812 F.3d 1023, 1028–1033 (Fed. Cir. 2016). Accordingly, we decline to consider Patent Owner’s constitutional challenges any further.” slip op. at 5
NonePatents in suitUS 8,650,591 - GN Hearing A/S v. Oticon A/SRehearing deniedPTAB · Apr 16, 2019 · IPR2017-01927 · APJ Terrence W Mcmillin · IPR · Rehearing
The Board denied Oticon’s rehearing request, leaving claims 2 and 7 unpatentable based on the Dodge and Saltykov showing.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Decision is set forth in 37 C.F.R. § 42.71(d), which provides that a request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” The party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“presented earlier in this proceeding—the Board improperly relied on a combination of the embodiments of Dodge. Request 2 (“The Board misapprehended the disclosure of various embodiments in Dodge and overlooked the complete lack of a motivation for the new combination of Dodge’s various embodiments.”), 4–5 (“The Board misapprehended the disclosure of Dodge and overlooked the lack of support in the record for a combination of multiple embodiments in Dodge’s figures.”), 6 (“There is no embodiment in Dodge that includes both a smooth, gradual curve on the first surface and an edge with a cross-sectional angle of less than ninety degrees.”), 12 (“The record is devoid of any support for an alleged combination of Dodge’s various embodiments.”). In its Request, Patent Owner fails to show that the Board misapprehended or overlooked these arguments earlier in the course of this proceeding. See generally Request. To the contrary and as noted above, Patent Owner failed to address the teachings of Figures 3 and 4 of Dodge and failed to address the combination of the teachings of the embodiments shown in those figures with the other teachings and embodiments in Dodge. Instead, Patent Owner ignored Figures 3 and 4 of Dodge in its Response to the Petition (see Paper 10, 29–34) and never contended it was improper to rely on Figures 3, 4, 5, and 6 of Dodge for teaching the elements of claims 2 and 7, as Petitioner did in its Reply (see Paper 14, 24–26) and the Board did in its Institution Decision (see Paper 7, 25–27). Patent Owner had notice that Figures 3 and 4 (and Figures 5 and 6) of Dodge were being relied upon and cited against claims 2 and 7 and, as also noted above, was given an opportunity file a Sur-Reply. In its Sur-Reply, Patent Owner acknowledged that Figures 3, 4, 5, and 6 of Dodge were being relied upon and cited against claims 2 and 7, but failed to provide any argument as to why Figures 3, 4, 5, and 6 of Dodge when considered together did not teach or suggest all the limitations relating to the claimed slit configuration. Paper 21, 23. At this stage of these proceedings, it is too late for Patent Owner to introduce and rely on new arguments.” slip op. at 6
§ 103 obviousnessPatents in suitUS 8,494,204 - PTAB · Oct 18, 2018 · IPR2018-00701 · APJ Terrence W Mcmillin · IPR · Rehearing
The Board denied rehearing and left institution denied for claims 1–9 and 12 because the petition did not sufficiently establish motivation to combine Barratt and Calderbank.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. See 37 C.F.R § 42.71(c). An abuse of discretion occurs 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. See 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). “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R § 42.71(d); accord Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must, in relevant part, “specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Petitioner’s arguments with these principles in mind.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“a combination of Barratt and Calderbank. See DDI 5, 7. Petitioner argued motivation to combine on page 34 of the Petition (Paper 1, “Pet.”) which stated, “while Barratt does not disclose the specific mathematical operations that are performed on the orthogonal training sequences to calculate a remote terminal’s spatial signature in Barratt’s ‘calibration mode,’ a POSA would have recognized that this spatial signature should be calculated using well-known cross-correlation techniques, such as those described in Calderbank.” Pet. 34. In response to this argument, Patent Owner asserted, “the premise of Petition’s motivation to combine—that Barratt requires calculating spatial signatures from orthogonal training sequences but does not explain how to do so—is not supported by the Petition’s allegations and is instead false.” Paper 8 (Preliminary Response), 15–16. Barratt does not use “orthogonal training sequences to calculate a remote terminal’s spatial signature in Barratt’s ‘calibration mode.’” See Ex. 1003, 16:31–17:67 (discussing calibration mode using “predetermined calibration signals”); see also id. at 18:50–67 (discussing use of orthogonal training sequences in another “closed loop” embodiment). Barratt does disclose the specific mathematical operations that are used to calculate a remote terminal’s spatial signature in Barratt’s “calibration mode.” See id. at 16:60–17:32. Thus, as we determined in the Decision Denying Institution, the purported gap in the teachings of Barratt that Petitioner relies on as the basis for providing the motivation to combine Calderbank with Barratt does not exist. DDI 10. Institution was denied because we determined Petitioner failed to sufficiently establish a motivation to combine the relevant teachings of the” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“a combination of Barratt and Calderbank. See DDI 5, 7. Petitioner argued motivation to combine on page 34 of the Petition (Paper 1, “Pet.”) which stated, “while Barratt does not disclose the specific mathematical operations that are performed on the orthogonal training sequences to calculate a remote terminal’s spatial signature in Barratt’s ‘calibration mode,’ a POSA would have recognized that this spatial signature should be calculated using well-known cross-correlation techniques, such as those described in Calderbank.” Pet. 34. In response to this argument, Patent Owner asserted, “the premise of Petition’s motivation to combine—that Barratt requires calculating spatial signatures from orthogonal training sequences but does not explain how to do so—is not supported by the Petition’s allegations and is instead false.” Paper 8 (Preliminary Response), 15–16. Barratt does not use “orthogonal training sequences to calculate a remote terminal’s spatial signature in Barratt’s ‘calibration mode.’” See Ex. 1003, 16:31–17:67 (discussing calibration mode using “predetermined calibration signals”); see also id. at 18:50–67 (discussing use of orthogonal training sequences in another “closed loop” embodiment). Barratt does disclose the specific mathematical operations that are used to calculate a remote terminal’s spatial signature in Barratt’s “calibration mode.” See id. at 16:60–17:32. Thus, as we determined in the Decision Denying Institution, the purported gap in the teachings of Barratt that Petitioner relies on as the basis for providing the motivation to combine Calderbank with Barratt does not exist. DDI 10. Institution was denied because we determined Petitioner failed to sufficiently establish a motivation to combine the relevant teachings of the” slip op. at 3
§ 103 obviousnessPatents in suitUS 6,611,231 - Samsung Electronics America, Inc. v. Prisua Engineering Corp.Rehearing deniedPTAB · Jul 9, 2018 · IPR2017-01188 · APJ Matthew R Clements · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, declining to retroactively deny institution or extend the statutory deadline for the final written decision.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Patent Owner’s argument is not persuasive because it is predicated on the false assumption that, if we cannot determine the scope of a claim for § 112 reasons, then we must find it unpatentable under § 112. We are, therefore, not persuaded that we misapprehended or overlooked Cuozzo when denying Patent Owner’s request to deny institution retroactively or to terminate this proceeding at this stage, or that “good cause” exists to deny institution retroactively or to terminate on this record.” slip op. at 7
- Director reviewOther
“The standard operating procedure exemplifies some of the reasons for which the Chief Judge may expand a panel. PTAB SOP 1, 3 (§ III.A). For example, an expanded panel may be appropriate when “[t]he proceeding or AIA Review involves an issue of exceptional importance” or when “[c]onsideration by an expanded panel is necessary to secure and maintain uniformity of the Board’s decisions.” Id. (§ III.A.1, 2). In this case, the Chief Judge has considered Patent Owner’s suggestion for an expanded panel, but has determined that an expanded panel is not warranted.” slip op. at 6
NonePatents in suitUS 8,650,591 - Dali Wireless Inc. v. Commscope Technologies LLCRehearing deniedPTAB · Jan 9, 2018 · IPR2017-01324 · APJ Terrence W Mcmillin · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution for claims 1–5 and 7–17 because the petition did not show the references taught the sample-rate limitation or provide adequate motivation to combine.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Petitioner’s new claim construction argument was not made in the Petition. See Pet. 10 (“Claim Construction”). In the Request for Rehearing, Petitioner does not cite to the Petition or make any showing that this argument was made explicitly or implicitly in the Petition. Req. Reh’g 4–6. As an initial matter, we could not have overlooked or misapprehended a claim construction that Petitioner did not argue in the Petition. Moreover, Petitioner’s only support for its newly proposed construction is the wording of the claims themselves and a claim differentiation argument based on dependent claim 6 which recites that the “sample rate is proportional to the bandwidth.” Id. Petitioner fails to persuade us that its proposed construction is supported adequately by the wording of the claims, the Specification, and the file history. We also conclude that Petitioner’s “somehow related to” construction of “based on” is unreasonable and overly broad. Based on this record, we decline to adopt Petitioner’s proposed construction. Thus, Petitioner fails to show that it argued this construction in the Petition or that its construction is demonstrably correct in view of the claim language, the Specification, the file history, or other evidence. Further, as stated in the Decision Denying Institution, we do not believe the express construction of “sample rate based on the bandwidth” is necessary for this Decision. See DDI 6. As shown below, Petitioner has failed to establish the applied art teaches or suggests basing the sample rate, directly on the bandwidth or that the sample rate is somehow related to the bandwidth.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We interpret claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b). In applying a broadest reasonable construction, claim terms generally are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Petitioner’s new claim construction argument was not made in the Petition. See Pet. 10 (“Claim Construction”). In the Request for Rehearing, Petitioner does not cite to the Petition or make any showing that this argument was made explicitly or implicitly in the Petition. Req. Reh’g 4–6. As an initial matter, we could not have overlooked or misapprehended a claim construction that Petitioner did not argue in the Petition. Moreover, Petitioner’s only support for its newly proposed construction is the wording of the claims themselves and a claim differentiation argument based on dependent claim 6 which recites that the “sample rate is proportional to the bandwidth.” Id. Petitioner fails to persuade us that its proposed construction is supported adequately by the wording of the claims, the Specification, and the file history. We also conclude that Petitioner’s “somehow related to” construction of “based on” is unreasonable and overly broad. Based on this record, we decline to adopt Petitioner’s proposed construction. Thus, Petitioner fails to show that it argued this construction in the Petition or that its construction is demonstrably correct in view of the claim language, the Specification, the file history, or other evidence. Further, as stated in the Decision Denying Institution, we do not believe the express construction of “sample rate based on the bandwidth” is necessary for this Decision. See DDI 6. As shown below, Petitioner has failed to establish the applied art teaches or suggests basing the sample rate, directly on the bandwidth or that the sample rate is somehow related to the bandwidth.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“With regard to the combination of Bellers and Farhan, in the Petition, Petitioner cited paragraphs 117–120 of the Bims Declaration (Ex. 1002) as providing support for combining the teachings of these references. Pet. 11. As discussed in the Decision Denying Institution, however, the cited paragraphs relate to different subject matter. DDI 14. In the Request for Rehearing, Petitioner now relies upon paragraphs 104–107 of the Bims Declaration. Req. Reh’g 14. Petitioner did not rely upon these paragraphs in the Petition, and Petitioner provides no explanation for this change of argument and evidence in its Request for Rehearing. Id. With regard to the combination of the teachings of Ichiyoshi and Farhan, in the Petition, Petitioner cited paragraph 254 of the Bims Declaration. Pet. 12. As discussed in the Decision Denying Institution, the cited paragraph relates to different subject matter. DDI 15. In the Request for Rehearing, Petitioner now relies upon paragraphs 255–258 of the Bims Declaration. Req. Reh’g 9. Petitioner did not rely upon these paragraphs in the Petition, and Petitioner provides no explanation for this change of argument and evidence in its Request for Rehearing. Id. As noted above, we could not overlook or misapprehend arguments that Petitioner did not make or evidence upon which it did not rely. Thus, contrary to Petitioner’s assertion, we did not overlook argument or evidence presented in the Petition relating to motivation to combine. Moreover, we have reconsidered Petitioner’s reasons to combine for the combinations of (1) Bellers and Farhan; and (2) Ichiyoshi and Farhan provided in the Petition (Pet. 11–12) in light of the additional citations provided in the Request for Rehearing and find, as we did in the Decision Denying Institution (Dec. 13–15) that Petitioner has failed to show a reasonable likelihood of establishing a reason to combine the relevant teachings of these references. As we indicated in the Decision Denying Institution (id.), the reasons to combine in the Petition for all of the asserted combinations of references were brief and conclusory. With regard to the combination of Bellers and Farhan, the Petition states, “[i]t was commonly understood that flexible ADCs could have a sampling rate adapted to the associated bandwidth of their analog input signal.” Pet. 11 (emphasis added). With regard to the combination of Ichiyoshi and Farhan, the Petition states, “POSITAS would have been motivated to combine Ichiyoshi’s sampling system with Farhan’s broadband communications system based on POSITA’s commonly understood knowledge that optimizing RF signal sampling rates can further improve bandwidth efficiency.” Pet. 12 (emphasis added). Neither the Petition nor the Bims Declaration provide adequate support for the assertions as to what was “commonly understood” by persons of skill in the art. The only support given in the Bims Declaration for these assertions are quotations from the art cited in the Petition (see Ex. 1002, ¶¶ 104, 255), which fall far short of establishing what was “commonly understood” as of the date of filing the” slip op. at 10
- BurdenNot shown unpatentable
“2. Bellers (Ex. 1006)3 Petitioner argues Bellers teaches “selecting the sample rate based on bandwidth.” Req. Reh’g 9–13. As noted by Petitioner (id. at 10–11), Bellers states: “[r]eceiver 101 includes a sampling mechanism 104 which samples the analog video input signal at a frequency modulated by or dependent upon the spatial frequency of the sampled content” (Ex. 1006, 3:11–14) and “[t]he present invention employs a sampling rate which is modulated based upon the spatial frequencies of the content being sampled. Higher sampling rates, and larger sample densities, are employed for content having high spatial frequencies while lower sampling rates are employed for content having low spatial frequencies” (id. at 4:14–19 (emphasis added)). Bellers expressly defines spatial frequencies, as follows: “[t]he spatial frequency or frequencies of an image are the rates of pixel change per unit distance, usually expressed in cycles per degree or radian.” Id. at 1:11–13. Thus, Bellers teaches modulating the sampling rate based on the rates of pixel change per unit distance. Petitioner has not shown that Bellers teaches or suggests a “sample rate selected based on the bandwidth.” Petitioner has not directed our attention, either in the Petition or the Request for Rehearing, 3 U.S. Patent No. 8,446,530 B2. to teachings or suggestions in Bellers of selecting the sample rate based on the bandwidth. 3. Ichiyoshi (Ex. 1009)4 In both the Petition (Pet. 83, 86, 90, 95–96) and the Request for Rehearing (Req. Reh’g 7–8), Petitioner argues the following passages in Ichiyoshi teach or suggest selecting the sample rate based on bandwidth. The sampling frequency fs is normally set to fs = NΔf where Δf represents a channel frequency interval. The sampling frequency fs is generated independently in the transmission device 81 and the reception device 82. Ex. 1009, 6:3–6. . . . signal combining circuit 91 includes a sampling timing generator 1 for generating a signal of the sampling frequency fs, and N A/D converter 3 for sampling N independent information signals with the sampling frequency fs . . . Id. at 6:9–13. These passages, however, do not relate to selecting the sample rate based on bandwidth. Petitioner provides no adequate explanation or other support in the Petition (Pet. 83) or the Request for Rehearing (Req. Reh’g 7– 8) for concluding these passages in Ichiyoshi teach or suggest selecting the sample rate based on bandwidth. Indeed, in the Petition, the Petitioner quoted these two passages, but failed to provide any explanation or to cite any further support for finding Ichiyoshi taught or suggested selecting the sample rate based on bandwidth. See Pet. 83. B. Reason to Combine” slip op. at 8
Claim construction§ 103 obviousnessPatents in suitUS 7,848,747 - Panduit Corp. v. Corning Optical Communications LLCRehearing deniedPTAB · Jul 27, 2017 · IPR2017-00528 · APJ Terrence W Mcmillin · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution for claims 14-40, 46-53, and 55-62 because the cited art did not show the claimed adapter number, spacing, or density.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Inter Partes Review1 (Paper 7, “Decision” or “Dec.”) of U.S. Patent No. 8,712,206 B2 (Ex. 1001, “the ’206 patent”). Paper 10 (“Req. Reh’g”), 1. When rehearing a decision by the Board on whether to institute a trial, the Board reviews the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated 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. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005). The burden of showing that our Decision should be modified lies with Petitioner, the party challenging the decision. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“teach or suggest a row of six side-by-side adapters which served as the basis for Petitioner’s contention that the numerical limitations of the independent claims of the ’206 patent were taught or suggested. Dec. 21 (“Petitioner does not direct us to, nor do we discern, any teaching or suggestion in Rapp (or other cited art) of using ‘a row of six side-by-side adapters using standardized LC adapters’ or ‘12 fiber optic adapters over 78.0 mm’ as argued by Petitioner.”). See also Dec. 24, 26. In the Request for Rehearing, Petitioner does not point to any related teaching or suggestion in the cited art that we misapprehended or overlooked. To the contrary, Petitioner argues: “[t]he Board overlooked or misapprehended the full scope of the teachings of Rapp, instead focusing on its exemplary embodiment showing nine adapters or blanks.” Req. Reh’g. 3. Most significantly, in the Request for Rehearing, Petitioner fails to direct our attention to any teaching or suggestion in the cited art of a row of six side-by-side adapters which the Board misapprehended or overlooked.” slip op. at 3
NonePatents in suitUS 8,712,206
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.