- Google LLC v. Parus Holdings, Inc.Rehearing grantedPTAB · Sep 18, 2023 · IPR2022-00279 · APJ Patrick M Boucher · IPR · Rehearing
The Board granted rehearing and instituted review of claims 1–4 on all petitioned grounds, finding a reasonable likelihood that claims 1 and 2 are unpatentable over Kovatch and Burrows.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“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. U.S., 393 F.3d 1277, 1281 (Fed. Cir.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For purposes of this Decision, we thus make a preliminary determination that collateral estoppel precludes Patent Owner from relitigating the issue of whether Kovatch teaches a ranking associated with web site addresses indicating the order in which to access a plurality of preselected web sites. In challenging independent claims 1 and 2 as unpatentable under 35 U.S.C. § 103(a) over Kovatch and Burrows, the Petition presents an element-by-element analysis to support its position. Pet. 14–32. That analysis relies on Kovatch’s disclosure of the HeyAnita system for accessing web sites to retrieve information a user requested, and relies on Burrows for disclosure of a system for ranking database records that are “presented to the users in a rank order where the pages having a higher rank are presented first.” Id. at 12–13 (citing Ex. 1006, 27:28–32, 32:14–47). Petitioner reasons that a person of ordinary skill in the art “would have found it obvious to apply Burrows’s numbered ranking and polling approach to Kovatch’s destination tree to better identify and present the records of the most interest to the user.” Id. at 13 (citing Ex. 1006, 3:56– 58). In particular, because Burrows explains that “there needs to be a way to rank order the list in a meaningful manner,” Petitioner reasons that a person of ordinary skill in the art “would have been motivated to apply Burrows’s numbered ranking to Kovatch’s destination tree web pages to provide those of interest first.” Id. (citing Ex. 1002 ¶ 115); Ex. 1006, 27:28–29. Petitioner’s element-by-element analysis explains Petitioner’s position as to how each limitation of independent claims 1 and 2 is met within such a combination. Id. at 14–32. Although Patent Owner makes a number of arguments in its Preliminary Response why the combination does not meet certain limitations, those arguments are precluded by our preliminary determination that collateral estoppel applies. See Prelim. Resp. 29–44.7 We have thus re-evaluated the parties’ arguments in light of the findings made in the 846 IPR, and affirmed by the Federal Circuit, and we conclude that Petitioner demonstrates a reasonable likelihood of prevailing on its challenge of independent claims 1 and 2 as unpatentable under 35 U.S.C. § 103(a) over Kovatch and Burrows. We accordingly grant Petitioner’s Rehearing Request and institute an inter partes review of all claims on all grounds asserted in the Petition.8 See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); 37 C.F.R. § 42.108(a).” slip op. at 20
- PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner
“The party seeking to invoke collateral estoppel must show: “(1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) [the party against who collateral estoppel is being asserted] had a full and fair opportunity to litigate the issue in the first action.” Google, 54 F.4th at 1381. Each of these requirements appears to be met with respect to the issue of whether Kovatch discloses rankings associated with the order in which web site addresses are accessed. First, the claim limitations at issue in the two proceedings are sufficiently similar to raise the issue of collateral estoppel. See Ohio Willow Wood, 735 F.3d at 1342 (“If the differences between the unadjudicated patent claims and adjudicated patent claims do not materially alter the question of invalidity, collateral estoppel applies. . . . Thus, the mere use of different words in these portions of the claims does not create a new issue of invalidity.”). For example, claim 1 of the ’705 patent recites “a rank number assigned to each one of said web sites and stored in said database” and “access[ing] one of said web sites having the highest said rank number,” while claim 10 of the ’431 patent recites “a ranking associated with each said web site address, said ranking indicating the order in which the plurality of pre-selected web sites are accessed.” Ex. 1001, 19:58–59, 19:65–66; 846 IPR, Ex. 1001, 21:9–11.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“determination that collateral estoppel precludes Patent Owner from relitigating the issue of whether Kovatch teaches a ranking associated with web site addresses indicating the order in which to access a plurality of preselected web sites. In challenging independent claims 1 and 2 as unpatentable under 35 U.S.C. § 103(a) over Kovatch and Burrows, the Petition presents an element-by-element analysis to support its position. Pet. 14–32. That analysis relies on Kovatch’s disclosure of the HeyAnita system for accessing web sites to retrieve information a user requested, and relies on Burrows for disclosure of a system for ranking database records that are “presented to the users in a rank order where the pages having a higher rank are presented first.” Id. at 12–13 (citing Ex. 1006, 27:28–32, 32:14–47). Petitioner reasons that a person of ordinary skill in the art “would have found it obvious to apply Burrows’s numbered ranking and polling approach to Kovatch’s destination tree to better identify and present the records of the most interest to the user.” Id. at 13 (citing Ex. 1006, 3:56– 58). In particular, because Burrows explains that “there needs to be a way to rank order the list in a meaningful manner,” Petitioner reasons that a person of ordinary skill in the art “would have been motivated to apply Burrows’s numbered ranking to Kovatch’s destination tree web pages to provide those of interest first.” Id. (citing Ex. 1002 ¶ 115); Ex. 1006, 27:28–29.” slip op. at 20
§ 103 obviousnessDiscretionary denialPatents in suitUS 6,721,705 - Momentum Dynamics Corporation v. Witricity CorporationRehearing grantedPTAB · Mar 16, 2022 · IPR2021-01165 · APJ Jameson Lee · IPR · Rehearing
Granted petitioner’s rehearing request and instituted IPR on all challenged claims and all petition grounds, finding a reasonable likelihood that claims were obvious over Stark, with Mecke also supporting certain distance claims.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“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 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 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. Because, as explained above, we do not treat Petitioner’s explanations in the Rehearing Request as belated, based on the explanations offered in the Rehearing Request, it was error to deny the Petition. Petitioner has shown that the Decision should be modified to institute inter partes review.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Response did not address this testimony. We credit this testimony of Dr. Young. This changed understanding alone is sufficient to justify a modification of the Decision to institute inter partes review, because on this record Petitioner has shown that Stark expressly discloses, in a tuned circuit environment where all frequencies are set to the same frequency, Q1 = Q2 = 1000. Because Stark’s prototype described in Chapter 7 is for tuned circuits, Stark reasonably would have suggested to one with ordinary skill in the art an implementation of its disclosed prototype, which has distance D satisfying limitation [1c], with each of Q1 and Q2 set to 1000. With the changed understanding of Figure 3-9, and the fact that Figure 3-9 shows setting Q1 = Q2 = 1000, we agree with Petitioner, on the record presented, that “it would have been obvious, to implement the same system [breadboard prototype] with Q values in the hundreds or thousands, as described with respect to limitation 1/6[d].” Pet. 36 n.8. Thus, limitations 1[c] and 1[d] would have been met together.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Response did not address this testimony. We credit this testimony of Dr. Young. This changed understanding alone is sufficient to justify a modification of the Decision to institute inter partes review, because on this record Petitioner has shown that Stark expressly discloses, in a tuned circuit environment where all frequencies are set to the same frequency, Q1 = Q2 = 1000. Because Stark’s prototype described in Chapter 7 is for tuned circuits, Stark reasonably would have suggested to one with ordinary skill in the art an implementation of its disclosed prototype, which has distance D satisfying limitation [1c], with each of Q1 and Q2 set to 1000. With the changed understanding of Figure 3-9, and the fact that Figure 3-9 shows setting Q1 = Q2 = 1000, we agree with Petitioner, on the record presented, that “it would have been obvious, to implement the same system [breadboard prototype] with Q values in the hundreds or thousands, as described with respect to limitation 1/6[d].” Pet. 36 n.8. Thus, limitations 1[c] and 1[d] would have been met together.” slip op. at 5
- Expert testimonyPetitioner expert creditedDecided for petitioner
“I note that while Figure 3-9 appears immediately under the heading “3.1.3 Physical interpretation of ω1 ≠ ω2”, this appears to be the result of a spacing issue with Stark’s figures. Stark’s pole-zero plots are part of its Section 3.1.2 (“Solution with primary and secondary tuned together”). Stark at 52; 93. This is confirmed by the MATLAB code included in Stark and used to generate these plots, which uses only a single value ωn, rather than a distinct ω1 and ω2. Stark at 237–38. Response did not address this testimony. We credit this testimony of Dr. Young. This changed understanding alone is sufficient to justify a modification of the Decision to institute inter partes review, because on this record Petitioner has shown that Stark expressly discloses, in a tuned circuit environment where all frequencies are set to the same frequency, Q1 = Q2 = 1000. Because Stark’s prototype described in Chapter 7 is for tuned circuits, Stark reasonably would have suggested to one with ordinary skill in the art an implementation of its disclosed prototype, which has distance D satisfying limitation [1c], with each of Q1 and Q2 set to 1000.” slip op. at 4
§ 103 obviousnessPatents in suitUS 7,741,734 - PTAB · Feb 22, 2016 · IPR2015-01457 · APJ Jameson Lee · IPR · Rehearing
Petitioner’s rehearing request was granted, adding claims 8–10 to trial under § 103 grounds over Ejzak and Intel, and Ejzak and Cisco.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“of claim 8 which recites: “said bypass mode data indicating a bypass mode setting for said media gateway.” In the Decision, we stated: “The reference [in Ejzak] merely to ‘policy’ is unreasonably broad and not very meaningful when the limitation pertains to the bypass setting for a particular device.” Dec. 23. We questioned whether “local policy” that may apply generally to all media gateways indicates a specific bypass setting for a particular ALG, BG, or media gateway. Id. at 22. On that basis, we concluded that Petitioner failed to provide adequate explanation on how a “local policy” satisfies the bypass mode data requirement of claim 8. Id. at 23. Petitioner identifies in its rehearing request points we misapprehended in our Decision. The Petition, as filed, adequately explains the “local policy” is specific to the local ALG. Reh. Req. 9–10. Petitioner identifies testimony of Mr. Bress, referred to in the Petition, that explain why one with ordinary skill in the art would understand “local policy” of Ejzak as local and specific to the ALG. Id. at 11 (citing ¶¶ 238–43 of Ex. 1104). We agree that on the record before us, “local policy” appears to be local to the ALG and not generally applicable to all media gateways.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“in our Decision. The Petition, as filed, adequately explains the “local policy” is specific to the local ALG. Reh. Req. 9–10. Petitioner identifies testimony of Mr. Bress, referred to in the Petition, that explain why one with ordinary skill in the art would understand “local policy” of Ejzak as local and specific to the ALG. Id. at 11 (citing ¶¶ 238–43 of Ex. 1104). We agree that on the record before us, “local policy” appears to be local to the ALG and not generally applicable to all media gateways.” slip op. at 2
NonePatents in suitUS 8,687,640 - PTAB · Feb 2, 2015 · IPR2014-00221 · APJ Jameson Lee · IPR · Rehearing
The Board granted rehearing to the extent that Patent Owner may file a revised motion to exclude with the improper material removed.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“We are unpersuaded that Patent Owner’s Motion to Exclude complied with the Order dated June 20, 2014. Even as characterized in the Rehearing Request, the Motion to Exclude indisputably contained arguments alleging that Petitioner’s Reply was beyond the proper scope of a reply, and not just arguments directed solely to the evidence in support of the Reply. Nevertheless, Patent Owner’s explanation is sufficient to justify an opportunity for the Patent Owner to file a Revised Motion to Exclude, which would be the same as the Motion to Exclude but with the inappropriate material removed, as Patent Owner has offered in the Request for Rehearing.” slip op. at 3
- ExcludeMotion to exclude, grantedGranted in part
“We are unpersuaded that Patent Owner’s Motion to Exclude complied with the Order dated June 20, 2014. Even as characterized in the Rehearing Request, the Motion to Exclude indisputably contained arguments alleging that Petitioner’s Reply was beyond the proper scope of a reply, and not just arguments directed solely to the evidence in support of the Reply. Nevertheless, Patent Owner’s explanation is sufficient to justify an opportunity for the Patent Owner to file a Revised Motion to Exclude, which would be the same as the Motion to Exclude but with the inappropriate material removed, as Patent Owner has offered in the Request for Rehearing.” slip op. at 3
NonePatents in suitUS 7,991,522 - PTAB · Feb 2, 2015 · IPR2014-00222 · APJ Jameson Lee · IPR · Rehearing
The Board granted rehearing to the extent that Magna may file a revised motion to exclude with the improper material removed.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“We are unpersuaded that Patent Owner’s Motion to Exclude complied with the Order dated June 20, 2014. Even as characterized in the Rehearing Request, the Motion to Exclude indisputably contained arguments alleging that Petitioner’s Reply was beyond the proper scope of a reply, and not just arguments directed solely to the evidence in support of the Reply. Nevertheless, Patent Owner’s explanation is sufficient to justify an opportunity for the Patent Owner to file a Revised Motion to Exclude, which would be the same as the Motion to Exclude but with the inappropriate material removed, as Patent Owner has offered in the Request for Rehearing.” slip op. at 3
- ExcludeMotion to exclude, grantedGranted in part
“We are unpersuaded that Patent Owner’s Motion to Exclude complied with the Order dated June 20, 2014. Even as characterized in the Rehearing Request, the Motion to Exclude indisputably contained arguments alleging that Petitioner’s Reply was beyond the proper scope of a reply, and not just arguments directed solely to the evidence in support of the Reply. Nevertheless, Patent Owner’s explanation is sufficient to justify an opportunity for the Patent Owner to file a Revised Motion to Exclude, which would be the same as the Motion to Exclude but with the inappropriate material removed, as Patent Owner has offered in the Request for Rehearing.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“We are unpersuaded that Patent Owner’s Motion to Exclude complied with the Order dated June 20, 2014. Even as characterized in the Rehearing Request, the Motion to Exclude indisputably contained arguments alleging that Petitioner’s Reply was beyond the proper scope of a reply, and not just arguments directed solely to the evidence in support of the Reply. Nevertheless, Patent Owner’s explanation is sufficient to justify an opportunity for the Patent Owner to file a Revised Motion to Exclude, which would be the same as the Motion to Exclude but with the inappropriate material removed, as Patent Owner has offered in the Request for Rehearing. In the interest of avoiding further confusion and non-compliance, a joint telephone conference call will be held to confirm precisely what content will be removed from the Revised Motion to Exclude, what revised opposition will be filed by Petitioner, and what revised reply will be filed by Patent Owner.” slip op. at 3
NonePatents in suitUS 8,386,114 - PTAB · Feb 2, 2015 · IPR2014-00220 · APJ Jameson Lee · IPR · Rehearing
The Board granted rehearing to allow the Patent Owner to file a revised motion to exclude with improper material removed.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“We are unpersuaded that Patent Owner’s Motion to Exclude complied with the Order dated June 20, 2014. Even as characterized in the Rehearing Request, the Motion to Exclude indisputably contained arguments alleging that Petitioner’s Reply was beyond the proper scope of a reply, and not just arguments directed solely to the evidence in support of the Reply. Nevertheless, Patent Owner’s explanation is sufficient to justify an opportunity for the Patent Owner to file a Revised Motion to Exclude, which would be the same as the Motion to Exclude but with the inappropriate material removed, as Patent Owner has offered in the Request for Rehearing.” slip op. at 3
- ExcludeMotion to exclude, grantedGranted
“We are unpersuaded that Patent Owner’s Motion to Exclude complied with the Order dated June 20, 2014. Even as characterized in the Rehearing Request, the Motion to Exclude indisputably contained arguments alleging that Petitioner’s Reply was beyond the proper scope of a reply, and not just arguments directed solely to the evidence in support of the Reply. Nevertheless, Patent Owner’s explanation is sufficient to justify an opportunity for the Patent Owner to file a Revised Motion to Exclude, which would be the same as the Motion to Exclude but with the inappropriate material removed, as Patent Owner has offered in the Request for Rehearing.” slip op. at 3
NonePatents in suitUS 7,859,565 - PTAB · Feb 2, 2015 · IPR2014-00227 · APJ Jameson Lee · IPR · Rehearing
The Board granted rehearing to the extent that Magna may file a revised motion to exclude with the improper material removed.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“We are unpersuaded that Patent Owner’s Motion to Exclude complied with the Order dated June 20, 2014. Even as characterized in the Rehearing Request, the Motion to Exclude indisputably contained arguments alleging that Petitioner’s Reply was beyond the proper scope of a reply, and not just arguments directed solely to the evidence in support of the Reply. Nevertheless, Patent Owner’s explanation is sufficient to justify an opportunity for the Patent Owner to file a Revised Motion to Exclude, which would be the same as the Motion to Exclude but with the inappropriate material removed, as Patent Owner has offered in the Request for Rehearing.” slip op. at 3
- ExcludeMotion to exclude, grantedGranted in part
“We are unpersuaded that Patent Owner’s Motion to Exclude complied with the Order dated June 20, 2014. Even as characterized in the Rehearing Request, the Motion to Exclude indisputably contained arguments alleging that Petitioner’s Reply was beyond the proper scope of a reply, and not just arguments directed solely to the evidence in support of the Reply. Nevertheless, Patent Owner’s explanation is sufficient to justify an opportunity for the Patent Owner to file a Revised Motion to Exclude, which would be the same as the Motion to Exclude but with the inappropriate material removed, as Patent Owner has offered in the Request for Rehearing.” slip op. at 3
NonePatents in suitUS 7,877,175
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.