- Cardiovascular Systems, Inc. v. Shockwave Medical, Inc.Rehearing grantedPTAB · Feb 2, 2023 · IPR2019-00405 · APJ Mitchell G Weatherly · IPR · Rehearing
On rehearing, the Board held claims 1–4 and 6–17 unpatentable as obvious, claim 5 not shown unpatentable, and denied both motions.
RulingsRehearing decision- RehearingGranted in part
“preponderance of evidence that claims 1–4 and 6–17 are unpatentable, but for the reasons expressed below rather than those expressed in our Decision. Additionally, we maintain our prior conclusion that Petitioner has failed to demonstrate that claim 5 is unpatentable without any modification to our reasoning expressed in the Decision. We repeat our prior analysis of claim 5 from our Decision so that this single paper contains the substance of our analysis of all of Petitioner’s challenges to the claims. Accordingly, for the reasons set forth below, we determine that Petitioner has demonstrated by a preponderance of evidence that claims 1–4 and 6–17 are unpatentable but has failed to show that claim 5 is unpatentable.” slip op. at 6
- ExcludeMotion to exclude, deniedDenied
“FURTHER ORDERED that Petitioner’s Motion to Exclude Exhibits 2002–2004, 2006, 2008, 2016, 2017, 2124, 2125, 2126, 2132, 2133, 2139, 2141, 2149, 2152, 2161, 2162, 2163, 2164, 2170–2176, 2196, and 2100 (¶¶ 18, 19, 59, 60, 66, 132, 143, 144, 165, 170, 175, 199, 201, 205, 217, 218, 220, 221, 222, and 229) is denied;” slip op. at 96
- Additional discoveryAdditional discovery, deniedDenied
“FURTHER ORDERED that Patent Owner’s Motion for Additional Discovery is denied; and” slip op. at 96
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundMotivation foundMixed
“laser as enough of a concern that its balloon could be cooled by circulating liquid through the balloon. Pet. 18, 29 (citing Ex. 1002 ¶¶ 96, 120); Reply 31 (citing Ex. 1003, 3–5). However, Petitioner fails to adduce evidence that an EHL shockwave generator produces less heat than a laser-based shockwave generator such as Levy’s. Accordingly, we determine that Petitioner has failed to prove by a preponderance of evidence that an ordinarily skilled artisan would have been motivated to substitute an EHL probe for Levy’s laser probe to reduce heat generated by the probe.” slip op. at 38
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,956,371 - Solaredge Technologies Ltd. v. Sma Solar Technology AGRehearing grantedPTAB · Oct 25, 2022 · IPR2020-00021 · APJ Scott B Howard · IPR · Rehearing
On rehearing, the Board held claims 1–10 unpatentable as obvious: claims 1–3, 5, and 7 over AAPA and Frezzolini; claims 4, 6, and 8–10 over AAPA, Frezzolini, and Iwamura.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Updated Guidance. See Opp. Reh’g 4–8. Instead, Patent Owner argues that we correctly determined in the Final Written Decision that AAPA was the foundation or starting point of the ground. Id. However, the language that we relied upon from the Guidance Memo in the Final Written Decision has been deleted from the Updated Guidance. Compare Guidance Memo 6 (directing the PTAB to determine if the applicant admitted prior art is the foundation or starting point), with Updated Guidance (language omitted). Although we properly followed the Guidance Memo in the Final Written follow the clear and unambiguous requirements of the Updated Guidance. Moreover, Patent Owner does not direct us to any Federal Circuit case law that suggests using the foundation or starting point test of the Guidance Memo. See Opp. Reh’g 4–8. Although the Qualcomm panel was aware of the Guidance Memo (see 24 F.4th at 1373), the Federal Circuit neither discussed the test set out in the Guidance Memo, nor directed that the PTAB apply the foundation or starting point test. See 24 F.4th 1367.” slip op. at 22
- Skill levelSkill level petitioner adoptedOther
“Petitioner argues—supported by the testimony of Dr. Wood—that a person having ordinary skill in the art (“PHOSITA”) “would have had a bachelor’s degree in mechanical engineering, electrical engineering, or a similar discipline and at least two years of design experience with photovoltaic systems.” Pet. 20 (emphasis added) (citing Ex. 1011 ¶¶ 18– 22). In the Institution Decision, we adopted Petitioner’s description of a person having ordinary skill in the art, “except that we delete[d] the qualifier ‘at least’ to eliminate vagueness as to the amount of practical experience.” Inst. Dec. 15–16. Patent Owner does not address that determination. See PO Resp. Accordingly, for the reasons given in the Institution Decision, we adopt Petitioner’s proposed level of ordinary skill, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of practical experience. See Inst. Dec. 16. Therefore, a person having ordinary skill in the art would have had a bachelor’s degree in mechanical engineering, electrical engineering, or a similar discipline and two years of design experience with photovoltaic systems.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that all claim terms should be construed according to their ordinary and customary meaning at the time of the invention. Pet. 20. Patent Owner argues that two terms require explicit constructions: “the power line modem” and “the data signal coupler.” PO Resp. 20–22. Patent Owner’s proposed claim constructions limit the “power line modem” and the “data signal coupler” to DC power lines. PO Resp. 20–22. However, during the Oral Hearing, Patent Owner agreed that, consistent with the plain and ordinary meaning, the other limitations of the claims require that the components operate on DC power lines. Tr. 37:5–23. As discussed in more detail below, Petitioner’s combination of prior art references uses DC power lines. Accordingly, no express construction is needed to resolve any dispute in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Strike new argumentNew argument disregardedDecided for petitioner
“of the background knowledge possessed by a person of ordinary skill in the art.” Guidance Memo 6–7; Updated Guidance 4–5. Although Patent Owner had the opportunity to make such an argument in the Sur-reply when addressing the Guidance Memo (and by implication, the identical language of Updated Guidance), Patent Owner chose not to do so and, accordingly, forfeited the argument. See Paper 9, 7. Although Patent Owner raised the argument at the oral hearing,17 that is not enough to preserve the argument as no new arguments can by made during the Oral Hearing. See CTPG at 85– 86 (“During an oral hearing, a party . . . may only present arguments relied upon in the papers previously submitted.”); Dell, 818 F.3d at 1301 (“[T]he Board denied Acceleron its procedural rights by relying in its decision on a factual assertion introduced into the proceeding only at oral argument, after Acceleron could meaningfully respond.”). Just as a movant may not make a new argument in a request for rehearing, a party opposing such a request cannot raise new arguments that it did not make before. See Apple Inc. v. Taction Tech., Inc., IPR2022-00057, Paper 15 at 4 (“A request for rehearing is not an opportunity . . . to present new arguments.”) (Denying Request for Rehearing). Accordingly, because Patent Owner did not argue that the limitations taught by the AAPA were not known in the prior art in its Patent Owner Response or Sur-reply, that argument is forfeited and cannot be considered on rehearing.” slip op. at 24
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,922,048 - PTAB · Jan 26, 2022 · IPR2020-00870 · APJ Frederick C Laney · IPR · Rehearing
The Board denied rehearing of its decision denying institution, finding no overlooked or misapprehended facts that changed its Fintiv analysis.
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. United States, 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 burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): 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. admitted” in connection with a request for rehearing. Patent Trial and Appeal Board Consolidated Trial Practice Guide 90 (Nov. 2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (“CTPG”) (citing Huawei Device Co. v. Optis Cellular Tech., LLC, IPR2018-00816, Paper 19 at 4 (PTAB Jan. 8, 2019) (precedential)). Thus, a request for rehearing is not an opportunity to present new arguments or evidence or merely to disagree with the panel’s assessment of the arguments or weighing of the evidence.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“the District Court held a hearing regarding venue related issues. Ex. 1044, 6:8–15. During the course of that hearing, the District Court set forth procedures that the parties should follow to address some outstanding venue related issues. Id. at 26:1–10. The District Court also stated that, after the parties followed those procedures and reported back, it would “determine whether [the Court] should leave the current schedule in place or whether [the Court] should enter some kind of a temporary stay to facilitate [additional venue-related discovery].” Id. at 26:11–16. Petitioner argues that this comment by the District Court should tip the Fintiv factor 1 in favor of institution. Reh. Req. 8–9. We disagree. Although the December 20th hearing may indicate the District Court’s willingness to consider whether “some kind of a temporary stay” should be entered to resolve the outstanding venue issues, it provides little, if any, actual evidence that the District Court would, in fact, enter a stay. Even if we were to guess that the District Court would enter a stay, we would still have to speculate further about the length of the “temporary” stay because, if it were for only a few days or weeks, it would still not avoid the concerns of inefficiency and duplicative efforts addressed by Fintiv factor 1. Regarding our alleged failure to apprehend or consider fully Petitioner’s proposed stipulation, we again do not agree. In the Decision, we specifically addressed Petitioner’s proposed stipulation and explained its shortcomings. Dec. 15–16. Although Petitioner clearly does not agree with our analysis, mere disagreement with our opinion is not a valid basis for reconsideration.” slip op. at 10
- Additional discoveryAdditional discovery, grantedAdditional discovery, deniedMixed
“Although Petitioner did bring the District Court’s Orders to our attention in a timely manner, we are not persuaded good cause has been shown to exist for us to consider these Orders. First, the Orders are all from cases that are separate and distinct from the parallel litigation involving the parties before us. Ex. 1040, 1; Ex. 1041, 1; Ex. 1042, 1; Ex. 1043, 1. Second, each Order is limited to cases that are “set for in-person jury trials during December of 2020 and January through February of 2021.” Id. That limitation further diminishes the value of the Orders in this proceeding because the jury trial in the parties’ parallel litigation was scheduled to begin on April 5, 2021 (Ex. 2003, 1). In fact, Petitioner acknowledges that the Orders have “not yet been applied in the underlying litigation.” See Reh. matter to be speculative at best. In the Rehearing Request, Petitioner argues that Exhibits 1040–1043 provide evidence that the parallel litigation may be stayed. Reh. Req. 7. However, in addition to the fact that the Orders in those exhibits do not relate to the parties’ or their parallel litigation, none of the Orders actually stays a case, which diminishes the relevance of the Orders to the first Fintiv factor even further. Petitioner argues additionally that these Orders along with other COVID-related facts demonstrate the uncertainty of the trial date in the parties’ parallel litigation. Nevertheless, Petitioner never argued prior to our Decision that the parallel litigation was uncertain because of COVIDrelated facts. See Pet. 70–71; Pet. Reply 1–5. In other words, Petitioner is not offering this new information to support an argument that was made before the Decision was entered. Petitioner instead offers Exhibits 1040– 1043 to support a new argument introduced for the first time in the Rehearing Request, which is improper and immaterial as to any alleged errors in the Decision. Therefore, we do not find Petitioner has carried its burden of showing good cause exists to justify consideration of those exhibits to evaluate whether we erred by “overlooking or misapprehending” anything in the Decision.” slip op. at 5
Discretionary denialPatents in suitUS 9,749,829 - SNF S.A. v. Solenis Technologies, L.P.Rehearing deniedPTAB · Nov 4, 2021 · IPR2020-01730 · APJ David Cotta · IPR · Rehearing
The Board denied rehearing and, despite finding a reasonable likelihood of obviousness for claims 12 and 13, denied institution because most challenged claims did not meet the threshold and review would be inefficient.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be found 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); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 2
- Obviousness (§103) › KSR rationalesNot reached
“Petitioner offers to waive its arguments with respect to invalidity grounds 2 and 3 if we institute inter partes review. Id. This offer makes our exercise of discretion a closer call, but even absent grounds 2 and 3, granting institution would require that we institute on all claims. We have determined that, for a sizeable majority of challenged claims, Petitioner has not demonstrated a reasonable likelihood of prevailing. Under the circumstances presented here, we determine it would not be an efficient use of the Board’s time and resources to institute review. See Chevron, Paper 9 at 10–11; Deeper, Paper 7. Accordingly, we exercise discretion under 35 U.S.C. § 324(a) to decline to institute post-grant review.” slip op. at 11
- Other 314aInstitution denied discretionary otherInstitution denied
“reasons discussed herein and in the Decision, Petitioner has failed to demonstrate a reasonable likelihood that it will prevail with respect to challenged claims 1–11 and 14–21. However, based on the preliminary record, Petitioner has demonstrated a reasonable likelihood that claims 12 and 13 would have been obvious over the cited art. Accordingly, this case presents the question whether we should exercise our discretion to deny institution. Our decision as to whether discretionary denial is warranted is guided by Chevron Oronite Co. v. Infineum USA L.P., IPR2018-00923, Paper 9 (PTAB Nov. 7, 2018) (informative) and Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 (PTAB Jan. 24, 2019) (informative). Both of these cases explain that “the Board may consider the number of claims and grounds that meet the reasonable likelihood standard when deciding whether to institute inter partes review under 35 U.S.C. § 314(a).” Chevron, Paper 9 at 10–11; Deeper, Paper 7 at 42. In Chevron, the panel ultimately exercised discretion to deny institution where “Petitioner demonstrate[d], at most, a reasonable likelihood of prevailing with respect to two dependent claims out of a total of twenty challenged claims.” Chevron, Paper 9 at 12. Similarly, in Deeper, the panel exercised discretion to deny institution where Petitioner demonstrated a reasonable likelihood of prevailing with respect to only two out of twenty three challenged claims. Deeper, Paper 7 at 43.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Mixed
“art – selecting values within the ranges disclosed in the prior art to calculate a ratio – did not support institution because Petitioner never explained how or why it selected any of the specific values it used to calculate the claimed ratio. Dec. 13. We concluded that Petitioner’s second use of the ranges disclosed in the art – optimizing within the disclosed ranges – did not support institution because the prior art did not disclose that the ratio of WAMW to % DADMAC was a result effective variable (id. at 17) and because Petitioner had not shown that independently optimizing WAMW and % DADMAC would lead to copolymer having the claimed ratio (id. at 17–20).” slip op. at 4
§ 103 obviousnessDiscretionary denialPatents in suitUS 9,644,320 - 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 - Shopify, Inc. / Priceline.Com LLC et al. v. DDR Holdings, LLCRehearing grantedPTAB · Oct 26, 2020 · IPR2018-01014 · APJ Patrick M Boucher · IPR · Rehearing
Granted petitioner’s rehearing request and held claims 1–3, 5, 7, 8, 11–13, 15, 17, and 18 unpatentable over the listed prior-art grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Petitioner’s argument on rehearing is persuasive, particularly under the broadest-reasonable-interpretation standard of claim construction applied in this proceeding. See Dec. 12–13 (Final Written Decision noting that, for an inter partes review proceeding based on a petition filed prior to November 13, 2018, “the Board interprets claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear”). Petitioner clarifies that the Petition identifies Exhibit 1009’s buy page as corresponding to the “composite web page contain[ing] one or more selectable URLs” recited in the claim and identifies the “view cart,” “modify cart,” and “check out” pages linked to the “buy” page as corresponding to the recited “hierarchical set of additional pages.” See Req. Reh’g 11 (asserting “the Petition demonstrated that the ‘view cart,’ ‘modify cart,’ and ‘checkout’ links satisfy the second ‘wherein’ clause”). In doing so, Petitioner points us to specific portions of its Petition that we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 102 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 21; Ex. 1002 ¶ 102. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 102 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’825 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22. Petitioner thus demonstrates that the buy page shown in Exhibit 1009, i.e., the recited “composite web page,” contains one or more selectable URLs connecting the “view cart,” “modify cart,” and “check out” pages to the buy page, i.e., the recited “hierarchical set of additional web pages,” as required by the claim. Because each of those pages “pertain[s] to a subset of the product offerings in the electronic catalog,” such as those selected for purchase, Petitioner demonstrates, by a preponderance of the evidence, that each limitation of the second “wherein” clause of claim 3 is met by the Digital River Publications.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed
“the broadest-reasonable-interpretation standard of claim construction applied in this proceeding. See Dec. 12–13 (Final Written Decision noting that, for an inter partes review proceeding based on a petition filed prior to November 13, 2018, “the Board interprets claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear”). Petitioner clarifies that the Petition identifies Exhibit 1009’s buy page as corresponding to the “composite web page contain[ing] one or more selectable URLs” recited in the claim and identifies the “view cart,” “modify cart,” and “check out” pages linked to the “buy” page as corresponding to the recited “hierarchical set of additional pages.” See Req. Reh’g 11 (asserting “the Petition demonstrated that the ‘view cart,’ ‘modify cart,’ and ‘checkout’ links satisfy the second ‘wherein’ clause”). In doing so, Petitioner points us to specific portions of its Petition that we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 102 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 21; Ex. 1002 ¶ 102. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 102 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’825 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22. Petitioner thus demonstrates that the buy page shown in Exhibit 1009, i.e., the recited “composite web page,” contains one or more selectable URLs connecting the “view cart,” “modify cart,” and “check out” pages to the buy page, i.e., the recited “hierarchical set of additional web pages,” as required by the claim. Because each of those pages “pertain[s] to a subset of the product offerings in the electronic catalog,” such as those selected for purchase, Petitioner demonstrates, by a preponderance of the evidence, that each limitation of the second “wherein” clause of claim 3 is met by the Digital River Publications.” slip op. at 5
- Expert testimonyPetitioner expert creditedDecided for petitioner
“we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 102 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 21; Ex. 1002 ¶ 102. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 102 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’825 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22.” slip op. at 6
§ 103 obviousnessPatents in suitUS 8,515,825 - Blue Coat Systems, Inc. v. Finjan, Inc.Rehearing grantedPTAB · Jul 18, 2017 · IPR2016-01444 · APJ Patrick M Boucher · IPR · Rehearing
Granted Blue Coat’s rehearing request and instituted review of claims 1, 4–6, 9, 12–14, 17, 24, 35, and 37; the petition showed a reasonable likelihood of prevailing on the asserted § 103 grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“reexamination proceeding. Of particular relevance, the reexamination concluded with a Reexamination Certificate issued on November 28, 2016, including a claim for the benefit of the November 8, 1996 filing date of U.S. Provisional Appl. No. 60/030,639 (“the ’639 provisional application”). Ex. 3006 at [60]. In denying the Petition, the Prior Decision noted that “Petitioner has taken no steps to explain or respond to the effect of these developments on its argument.” Dec. 7. This remains true. Nevertheless, we agree with Petitioner that our Prior Decision gave insufficient consideration to the Petition’s assertion that “U.S. Patent No. 7,613,926 [(“the ’926 patent”), i.e., an intermediate patent in the priority chain of the ’086 patent] fails to claim priority to the ’639 provisional application and instead the earliest priority document cited in the ’926 patent is [the ’194 patent].” Pet. 5 (citing Ex. 1012, col. 1, ll. 8–32); see Req. Reh’g 4–5, 6 n.4, 7–9. For a claim of a patent to be entitled to the effective filing date of an earlier filed application, each application in the priority chain must refer to the earlier filed application. Encyclopaedia Britannica, Inc. v. Alpine Elecs. of Am., Inc., 609 F.3d 1345, 1350–52 (Fed. Cir. 2010). Accordingly, we grant Petitioner’s Rehearing Request and proceed to the merits of the Petition.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedMixed
“a formally defined safety policy” and allows checking “with certainty, that the proof is valid and hence the foreign code is safe to execute.” Ex. 1004, 107. Thus, Petitioner argues that one of ordinary skill in the art would reasonably understand Necula to teach that its proof-carrying code adds to the foreign code, consistent with the construction of “append” that we apply herein, and Petitioner articulates sufficient reasoning with rational underpinning to apply that teaching to Swimmer’s representation of DSP data. See Pet. 46–49. This is not an instance, for example, in which Petitioner relies on a characterization of the problem provided by the patent to derive its reasoning. Cf., e.g., Mintz v. Dietz & Watson, Inc., 679 F.3d 1372 (Fed. Cir. 2012). Indeed, Patent Owner’s contention that “the storage of the DSP in a database is one of the key features that distinguishes the ‘086 Patent over the prior art” dilutes the strength of its argument. The contrary positions of the parties’ declarants in their testimonial evidence creates a genuine issue of material fact, which we resolve in the light most favorable to Petitioner for purposes of this Decision. 37 C.F.R. § 42.108(c). Accordingly, we conclude that Petitioner has made a sufficient showing also with respect to these elements, and that Petitioner demonstrates a reasonable likelihood of prevailing on its challenge of claims 1 and 9. See infra Section II.E.10 (discussing limits in our weighing of Patent Owner’s Secondary Considerations evidence in this Preliminary Proceeding).” slip op. at 21
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“be considered under 35 U.S.C. § 312 because Petitioner has failed to name all real parties in interest, as required by the statute.” Prelim. Resp. 9. The parties agree that, on June 12, 2016, Symantec Corporation (“Symantec”) announced that it was acquiring Petitioner. Pet. 13; Prelim. Resp. 9. The Petition discloses that “[t]he transaction is expected to close in the third quarter of 2016,” and that “[a]s of the filing date of this petition the transaction has not been executed.” Pet. 13. The Petition further represents that “Symantec has not controlled or had the ability to control the filing of this petition, whether through funding or strategy.” Id. As noted above, Petitioner expressly identified Symantec as a real party in interest before any decision on institution of an inter partes review was made. Paper 8, 2. Patent Owner contends that “Symantec had control over the filing of the Petition during the period between the announcement of the acquisition and the closing of the acquisition,” which it asserts occurred on August 1, 2016. Prelim. Resp. 9. Patent Owner also contends that it “understands from the underlying litigation that ‘Blue Coat Systems, Inc.’ no longer exists 1 A petition to accept an unintentionally delayed claim of priority for the ’926 patent, claiming the benefit of U.S. Patent Appl. No. 08/790,097 which was filed January 29, 1997, was dismissed by the Office on June 13, 2017. Exs. 1027, 3007. A renewed petition was filed on June 16, 2017. Ex. 3008. At this time, the Office has not ruled on the renewed petition, and that pending petition accordingly does not affect our determination of the challenged claims’ effective filing date for purposes of this Decision. as an entity, or at least goes by ‘Blue Coat Systems LLC’ for at least the last two months.” Id. at 10. We have reviewed the evidence provided by Patent Owner and find it insufficient to support Patent Owner’s allegation that Petitioner has failed to comply with 35 U.S.C. § 312(a) or 37 C.F.R. § 42.8(a)(3). That evidence is, at best, suggestive regarding an issue that is not jurisdictional. Lumentum Holdings, Inc. v. Capella Photonics, Inc., Case IPR2015-00739, slip op. (PTAB Mar. 4, 2016) (Paper 38) (precedential).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“1. “Downloadable” Every challenged independent claim recites a “Downloadable,” and Petitioner contends that “[t]he broadest reasonable interpretation of the term ‘downloadable’ includes ‘an executable application program, which is downloaded from a source computer and run on a destination computer.’” Pet. 15. Petitioner’s proposed construction parallels a statement made in the Specification of the ’194 patent. Ex. 1012, col. 1, ll. 44–47. Patent Owner “does not dispute” this proposed construction, which we adopt for purposes of this Decision. Prelim. Resp. 5. 2. “database” Challenged independent claim 42 recites “a database of Downloadable security profiles.” Petitioner contends that “[t]he broadest reasonable interpretation of the term ‘database’ includes ‘a collection of interrelated data organized according to a database schema to serve one or more applications.’” Pet. 15. Patent Owner also “does not dispute” this proposed construction, but argues that “the practical import of Petitioner’s proposed construction for the term ‘database,’ is that log files, such as Swimmer’s audit trail, do not fall within the scope of the claims.” Prelim. Resp. 5–6. That is, Patent Owner contends that “logging functionality is distinct from storing in a database, which allows DSP to be efficiently retrieved from the database,” as compared with the “record-keeping” functionality of an “event log.” Id. at 7. Patent Owner’s argument was considered by the panel in IPR2015- 01892, which concluded that, “[t]o the extent that construction would exclude a log file consisting of an ‘unstructured collection of data on a computer,’ . . . [an] unstructured log file would not be a database,” but the construction does not “necessarily exclude[] all log files from being databases.” 1892 Dec. 16 (emphasis in original). We agree with the reasoning expressed in the Final Written Decision of IPR2015-01892. Id. at 12–17. For purposes of this Decision, we adopt Petitioner’s proposed construction.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,079,086 - Hamamatsu Corporation v. Sionyx, LLCRehearing grantedPTAB · May 26, 2017 · IPR2016-01910 · APJ Monica S Ullagaddi · IPR · Rehearing
Rehearing was granted for claims 9, 24, and 25 because Petitioner did not show their process limitations lacked patentable weight; it was denied for claims 1, 4, 5, 7, 8, and 13.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was 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) (citations omitted). The burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): (d) Rehearing. . . . 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
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“The relevant inquiry is not whether the Specification has support for an “enhanced response,” but whether the Specification supports construing the claim term “interact with” to mean an “enhanced response and/or filtering.” Even assuming, without deciding, for the purposes of this decision, that diffusing, redirecting, and absorbing electromagnetic radiation results in an increased quantum efficiency that could be considered to provide an enhanced response to electromagnetic radiation, Patent Owner fails to demonstrate persuasively that one of ordinary skill in the art would understand from the description in the ’591 patent Specification that the claim term “interacting with” is defined as “providing an enhanced response and/or filtering.” Furthermore, we are unable to discern a portion of the Specification of the ’591 patent that discloses such an equivalency. Not only does the ’591 patent not define “interact with,” the Abstract of the ’591 patent discloses that “[i]n one aspect, the textured region is operable to facilitate generation of an electrical signal from the detection of infrared electromagnetic radiation” and “[i]n another aspect, interacting with electromagnetic radiation further includes increasing the semiconductor substrate’s effective absorption wavelength as compared to a semiconductor substrate lacking a textured region.” Ex. 1001, Abstract (emphasis added). This passage suggests that, at least in one aspect, “interact[ing] with” electromagnetic radiation includes merely generating electrons from photons, which is not an “enhanced response” and/or “filtering,” as required by Patent Owner’s proffered claim construction.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableMixed
“position with sufficient evidence that demonstrates that the processes recited in claims 9, 24, and 25 do not impart structural and functional differences to the product. Moreover, Petitioner does not point to citations in the ’591 patent, testimonial evidence, or any other record evidence to support its position that the structure or functionality of the textured region resulting from the chemical etching or lasing processes recited in claims 9, 24, and 25 would be the same as the structure or functionality of a roughened surface produced by a mechanical polishing process as disclosed in Nakashiba. Rather, Petitioner provides only conclusory statements regarding its position. Given that Petitioner has not demonstrated sufficiently that the limitations recited in claims 9, 24, and 25 are not entitled to patentable weight, and in light of Petitioner’s concession that “Nakashiba does not disclose that the roughened surface S1 is formed by either lasing (in particular using short duration laser pulses) or chemical etching, as recited in claims 9, 24, and 25 of the ‘591 Patent,” we determine Petitioner has not met its burden of demonstrating a reasonable likelihood of prevailing with respect to showing that claims 9, 24, and 25 are anticipated under 35 U.S.C. § 102 by Nakashiba.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstitution denied meritsMixed
“Upon review of the record, we determine Petitioner did not support its position with sufficient evidence that demonstrates that the processes recited in claims 9, 24, and 25 do not impart structural and functional differences to the product. Moreover, Petitioner does not point to citations in the ’591 patent, testimonial evidence, or any other record evidence to support its position that the structure or functionality of the textured region resulting from the chemical etching or lasing processes recited in claims 9, 24, and 25 would be the same as the structure or functionality of a roughened surface produced by a mechanical polishing process as disclosed in Nakashiba. Rather, Petitioner provides only conclusory statements regarding its position. Given that Petitioner has not demonstrated sufficiently that the limitations recited in claims 9, 24, and 25 are not entitled to patentable weight, and in light of Petitioner’s concession that “Nakashiba does not disclose that the roughened surface S1 is formed by either lasing (in particular using short duration laser pulses) or chemical etching, as recited in claims 9, 24, and 25 of the ‘591 Patent,” we determine Petitioner has not met its burden of demonstrating a reasonable likelihood of prevailing with respect to showing that claims 9, 24, and 25 are anticipated under 35 U.S.C. § 102 by Nakashiba.” slip op. at 6
Claim construction§ 102 anticipationPatents in suitUS 8,680,591 - Mylan Pharmaceuticals Inc. / Amneal Pharmaceuticals LLC v. Yeda Research & Development Co. Ltd.Rehearing grantedPTAB · Dec 2, 2016 · IPR2015-00643 · APJ Zhenyu Yang · IPR · Rehearing
The Board granted rehearing on the Pinchasi–Flechter motivation issue, denied rehearing on the remaining issues, vacated the prior Final Written Decision, and entered a modified decision concurrently.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“§ 42.71 (d), which requires the party requesting rehearing to “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
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundMixed
“Patent Owner first asserts that we “misconstrued data in Flechter illustrating that alternate day dosing was as effective as daily dosing and found instead that the data taught that less-frequent-than-daily administration would have been more tolerable than daily administration.” Reh’g Req. 7 (citing Dec. 32). Upon review of the Decision, we agree. See Dec. 32–33. Accordingly, we grant this portion of Patent Owner’s Request for Reconsideration and retract our reliance on the efficacy data of Flechter in Section II.F of the Decision as the basis for rejecting Patent Owner’s argument regarding the lack of motivation to combine Pinchasi and Flechter. We concurrently issue a modified Final Written Decision (Paper 90) to reflect this change.” slip op. at 3
- Obviousness (§103) › Objective indicia / secondary considerationsNot shown unpatentable
“regarding the expected decrease in tolerability in our discussion of secondary considerations. Reh’g Req. 14–15. Patent Owner argues that our “finding that Patent Owner failed to provide any evidence of improved tolerability over the Pinchasi reference (FWD at 26) is also incorrect.” Id. at 14. We did not state that Patent Owner failed to provide any evidence of improved tolerability—we stated that Patent Owner provided “insufficient” slip op. at 8
- Expert testimonyPatent owner expert discountedDecided for patent owner
“Dr. Ziemssen, however, qualifies this comparison and explains that a person of ordinary skill in the art “generally would not view this type of cross-study comparison between different study populations as a basis for drawing any comparative conclusions.” Ex. 2135 ¶ 87. We agree. As a result, we are unpersuaded by the conclusion drawn from the ad hoc comparison of the data in Flechter with those in Meiner. This is especially so in view of Flechter’s conclusion that alternate-day administration of glatiramer acetate was “well tolerated, comparing favorably with the effects of daily injections of Copolymer 1 in patients with relapsing MS.” Ex. 1008, 1; see also id. at 5 (“The results of this trial suggest that alternateday treatment with Copolymer 1 is safe, well tolerated, and probably as effective as daily Copolymer 1 in reducing relapse rate and slowing neurologic deterioration.”).” slip op. at 4
§ 103 obviousnessPatents in suitUS 8,232,250 - Mylan Pharmaceuticals Inc. / Amneal Pharmaceuticals LLC v. Yeda Research & Development Co. Ltd.Rehearing grantedPTAB · Dec 2, 2016 · IPR2015-01976 · APJ Zhenyu Yang · IPR · Rehearing
The Board granted rehearing on the Pinchasi–Flechter combination, denied rehearing on the remaining issues, vacated the prior final written decision, and entered a modified decision concurrently.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“§ 42.71 (d), which requires the party requesting rehearing to “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
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMixed
“person of ordinary skill in the art “generally would not view this type of cross-study comparison between different study populations as a basis for drawing any comparative conclusions.” Ex. 2135 ¶ 87. We agree. As a result, we are unpersuaded by the conclusion drawn from the ad hoc comparison of the data in Flechter with those in Meiner. This is especially so in view of Flechter’s conclusion that alternate-day administration of glatiramer acetate was “well tolerated, comparing favorably with the effects of daily injections of Copolymer 1 in patients with relapsing MS.” Ex. 1008, 1; see also id. at 5 (“The results of this trial suggest that alternateday treatment with Copolymer 1 is safe, well tolerated, and probably as effective as daily Copolymer 1 in reducing relapse rate and slowing neurologic deterioration.”). Accordingly, we are not persuaded that a person of ordinary skill in the art considering combining a higher dose of GA with the alternate-day dosing schedule in Flechter would, as Patent Owner asserts, conclude that 5 Meiner et al., Copolymer 1 in Relapsing-Remitting Multiple Sclerosis: a Multi-Centre Trial, in Frontiers in Multiple Sclerosis: Clinical Research and Therapy (Abramsky et al. eds., 1997) (Ex. 1009). such a regimen would likely exacerbate the frequency of injection site reactions. See PO Resp. 36.” slip op. at 4
- Obviousness (§103) › Objective indicia / secondary considerationsNot shown unpatentable
“regarding the expected decrease in tolerability in our discussion of secondary considerations. Reh’g Req. 14–15. Patent Owner argues that our “finding that Patent Owner failed to provide any evidence of improved tolerability over the Pinchasi reference (FWD at 26) is also incorrect.” Id. at 14. We did not state that Patent Owner failed to provide any evidence of improved tolerability—we stated that Patent Owner provided “insufficient 8 Khan et al., Randomized, Prospective, Rater-Blinded, Four-Year, Pilot Study to Compare the Effect of Daily Versus Every-Other-Day Glatiramer Acetate 20 mg Subcutaneous Injections in Relapsing-Remitting Multiple Sclerosis, 14 MULTIPLE SCLEROSIS S296 (2008) (Ex. 1010). 9 Caon et al., Randomized, Prospective, Rater-Blinded, Four-Year, Pilot Study to Compare the Effect of Daily Versus Every-Other-Day Glatiramer Acetate 20 mg Subcutaneous Injections in RRMS, 72 NEUROLOGY A317 (Mar. 17, 2009) (Ex. 1011). evidence of record showing any unexpected benefit between the claimed three-times-weekly as compared to the prior art every-other-day dosing.” Dec. 26 (emphasis added). Substantively, as explained above, we find Patent Owner’s characterizations of the prior art, including Cohen, unpersuasive. As a result, we were not, and remain not, persuaded that the nonobviousness of the challenged claims is supported by evidence of unexpected results.” slip op. at 8
- Obviousness (§103) › Objective indicia / secondary considerations › Unexpected resultsDecided for petitioner
“regarding the expected decrease in tolerability in our discussion of secondary considerations. Reh’g Req. 14–15. Patent Owner argues that our “finding that Patent Owner failed to provide any evidence of improved tolerability over the Pinchasi reference (FWD at 26) is also incorrect.” Id. at 14. We did not state that Patent Owner failed to provide any evidence of improved tolerability—we stated that Patent Owner provided “insufficient 8 Khan et al., Randomized, Prospective, Rater-Blinded, Four-Year, Pilot Study to Compare the Effect of Daily Versus Every-Other-Day Glatiramer Acetate 20 mg Subcutaneous Injections in Relapsing-Remitting Multiple Sclerosis, 14 MULTIPLE SCLEROSIS S296 (2008) (Ex. 1010). 9 Caon et al., Randomized, Prospective, Rater-Blinded, Four-Year, Pilot Study to Compare the Effect of Daily Versus Every-Other-Day Glatiramer Acetate 20 mg Subcutaneous Injections in RRMS, 72 NEUROLOGY A317 (Mar. 17, 2009) (Ex. 1011). evidence of record showing any unexpected benefit between the claimed three-times-weekly as compared to the prior art every-other-day dosing.” Dec. 26 (emphasis added). Substantively, as explained above, we find Patent Owner’s characterizations of the prior art, including Cohen, unpersuasive. As a result, we were not, and remain not, persuaded that the nonobviousness of the challenged claims is supported by evidence of unexpected results.” slip op. at 8
§ 103 obviousnessPatents in suitUS 8,232,250
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.