- Supercell OY v. Gree, Inc.Rehearing deniedPTAB · Nov 18, 2020 · PGR2020-00039 · APJ Lynne H Browne · PGR · Rehearing
The Board denied Supercell’s rehearing request, leaving in place denial of institution of PGR challenging claims 1–24 based on the Fintiv factors and parallel litigation.
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 2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). Additionally, 37 C.F.R. § 42.71(d) further provides that “[t]he burden of showing a decision should be modified lies with the party challenging the decision,” i.e., Petitioner, and “[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 in a motion, an opposition, or a reply.”” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“the parties jointly requested a trial delay in the prior proceeding, from December 7, 2020, to March 1, 2021, which the district court granted. Ex. 1024, 1. Even considering these post-Decision developments, this three month delay results in a trial date in the parallel proceeding set six months before our final written decision would be due. Similar to the potential delay discussed in our Decision, a jury trial set to begin six months before a final written decision also weighs in favor of denying institution. Dec. 12; see Prelim. Resp. 11 (identifying three prior PTAB proceedings in which institution was denied where trial was scheduled to occur six months before a final written decision, including the precedential NHK Spring decision). We decline to speculate, absent case-specific evidence, as to any future additional delay of the parallel proceeding’s trial date that may— or may not—be requested by the parties, and that may—or may not— be granted by the district court. See Ex. 1024, 1, 4 (indicating that the trial date “cannot be changed without showing good cause,” which “is not shown merely by indicating that the parties agree that the deadline should be changed”) (emphasis omitted). On the current record, a cognizable risk of inconsistent results exists, due to the scheduled date of trial and the statutory due date of a final written decision.3” slip op. at 6
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedOther
“contentions. In our Decision, we relied in part upon Dr. Claypool’s testimony from related litigation between the parties in determining that Petitioner failed to meet its burden of demonstrating that Mastermind was publicly accessible. Dec. 24–25. Specifically, we relied upon Dr. Claypool’s prior testimony that, 4 “Mastermind’s In-Game Builder Idea (with LOADS of pictures!)” (“Mastermind”), available at https://web.archive.org/web/20130915081112/http:/forum.supercell.net:80/s howthread.php/149687-Mastermind-s-In-Game-Builder-Idea-(with-LOADSof-pictures!) (in two parts) (Ex. 1015, “Olesiuk Decl.”). it is my opinion that a diligent, skilled researcher engaged in a reasonable search for prior art would not have found Mastermind as a prior art reference even with the benefit of [Patent Owner’s] infringement contentions before the filing of the Petition for Post-Grant Review. A diligent, skilled researcher would not spend time sifting through the suggestions provided on Internet message boards, as they would normally not include useful or sufficiently detailed suggestions. Ex. 2009 ¶ 164 (emphasis added); Dec. 25.” slip op. at 8
- Other 314aDecided for patent owner
“different posture of PGR proceedings as compared to IPR proceedings, when exercising discretion to deny institution. As summarized above, the Decision discusses that common statutory language exists in § 314(a)— directed toward IPR proceedings—and in § 324(a)—directed to post-grant review proceedings. See supra § I.A; Dec. 5–8. The Decision also discusses the common policy justifications implicated when determining whether to institute either an IPR proceeding or a PGR proceeding. Dec. 6–7. The Decision then goes on to recognize and discuss certain differences between PGR proceedings and IPR proceedings. Id. at 7–8. Despite these differences, we determined that the Board’s binding precedent set forth in NHK Spring and Fintiv applies to this PGR proceeding. Id. In doing so, we additionally evaluated certain differences between PGR proceedings and IPR proceedings, when considering the Fintiv Order factors. See, e.g., id. at 12, 15–16, 18–20. Petitioner has not demonstrated that we abused our discretion in doing so.” slip op. at 11
§ 102 anticipationDiscretionary denialPatents in suitUS 10,307,676 - PTAB · Sep 16, 2020 · IPR2018-00755 · APJ Hyun J Jung · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1, 3, 5, 7, 10, and 25 unpatentable under each of three §103 combinations; claim 8 was not shown unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“the burden of showing a decision should be modified, and 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 its papers. 37 C.F.R. § 42.71(d); see also Req. Reh’g 1 (quoting from the rule). Therefore, Patent Owner bears the burden of establishing that we misapprehended or overlooked the matters that it requests that we review.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“Also, the body of independent claims 1 and 25 recite structurally complete inventions, and do not rely on the word “token,” from the preamble, for any antecedent basis of terms in the body of the claim. The deletion of this preamble language would not affect the structure of the claimed inventions and confirms that the language of the preamble, which names the machine or manufacture claimed as a token, and states its intended use, is not limiting. See Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358-59 (Fed. Cir. 2010). Further, because the bodies of the claims, reciting an “integrated circuit chip” (claim 1) and “storage section” (claim 25), fully define the structure of the claimed tokens and do not rely on the “token” name of the invention to recite the limitations of their structural components, the term the meaning of the claims. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). Because the term “token” does not require construction, and is of no significance in determining the meaning of the claim language, we did not adopt Patent Owner’s additional limitation of a token being required to begin play of a game. B. Whether the Board misapprehended Lee and the showing that the Board” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableDecided for petitioner
“Final Written Decision, which finds that each of the combinations (Levy and Lee, Katoh and Lee, and Mawle and Lee) discloses the limitations of claims 1, 3, 5, 7, 10, and 25 (Final Dec. 19–33, 36–48, 50–62, 64–65), that one of ordinary skill in the art would have combined the references in the manner asserted by Petitioner and as claimed (id. at 34–35, 48–49, 62–65), and thus,” slip op. at 6
Claim construction§ 103 obviousnessPatents in suitUS 7,338,377 - PTAB · Sep 16, 2020 · IPR2018-00754 · APJ Hyun J Jung · IPR · Rehearing
The Board denied Patent Owner’s rehearing request and left in place its determination that claim 9 was unpatentable over White and Lee under § 103(a).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The party filing a request for rehearing of a final written decision has the burden of showing a decision should be modified, and 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 its papers. 37 C.F.R. § 42.71(d); see also Req. Reh’g 1 (quoting from the rule). Therefore, Patent Owner bears the burden of establishing that we misapprehended or overlooked the matters that it requests that we review.” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“In our Final Written Decision, we explained that the Specification does not support Patent Owner’s proposed interpretation of the term “token” as being disk-shaped, and determined that “we need only determine that the term ‘token’ does not include an ‘action figure.’” Final Dec. 11–12. The full record indicated to us that, even if we adopted Patent Owner’s proposed interpretation of “token” as an “item required to begin play of a game,” Petitioner had still shown by a preponderance of the evidence that claim 9 is unpatentable over White and Lee. As described in our Final Written Decision, we found that “the teachings of White related to tag 5 in base portion 4a of character 4 used in the toy of Figure 1 support Petitioner’s argument that character 4 teaches a ‘game piece with built-in IC chip.’” Final Dec. 32. We understood that “Petitioner is proposing to modify White so that tag 5 is detachable and results in a ‘token with built-in IC chip,’” so that “the modified White character 4 would have base 4a with detachable tag 5 received in recessed portion 3.” Id. at 37 (citing Pet. 65–66; Dec. to Inst. 23; Pet. Reply 24); see also id. at 41–42 (determining that” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“We also found that “Lee . . . supports Petitioner’s declarant testimony that one of ordinary skill in the art would have modified White so that its tag 5 is detachable in the same manner as Lee so that ‘various action figures can be used with the token.’” Final Dec. 42 (citing Ex. 1002 ¶ 150). Petitioner, thus, showed by a preponderance of the evidence that Lee teaches or suggests a method of attaching a component to a figure that one of ordinary skill in the art would have applied to White’s tag 5 for the reason asserted by Petitioner.” slip op. at 9
Claim construction§ 103 obviousnessPatents in suitUS 7,001,276 - Parrot S.A. / Parrot Drones S.A.S. et al. v. Qfo Labs, Inc.Rehearing deniedPTAB · Aug 11, 2020 · IPR2018-01690 · APJ Hyun J Jung · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 13–17 unpatentable and the motion to amend granted for claims 1–10 but denied for substitute claims 21–23.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified as set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: 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. See also Req. Reh’g. 4 (quoting, in part, 37 C.F.R. § 42.71(d)). With this in mind, we address Patent Owner’s arguments below.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Owner’s Motion to Amend in its Rehearing Request. Compare Mot. 11–12, with Req. Reh’g. 7. We considered these arguments in our Decision, and Patent Owner’s arguments express disagreement with our interpretation of “orientation control scheme” but do not show how an argument was overlooked or misapprehended. See Final Dec. 74, 84–86. Patent Owner supplements its prior arguments with contentions that we construed “position” as a verb, not a noun. See Req. Reh’g. 6. Patent Owner does not identify where these additional contentions were previously presented, as required under 37 C.F.R. § 42.71(d). Thus, Patent Owner has failed to show that we misapprehended or overlooked these arguments. See id. Even if the additional contentions had been previously presented, our Decision considered Patent Owner’s proposed interpretation of “orientation control scheme.” See Final Dec. 85 (“Even under Patent Owner’s proposed interpretation of ‘orientation control scheme’ (Mot. 11–12), Petitioner persuades us that Louvel and Nagamitsu teach the final recitation of proposed substitute claim 21.”). Patent Owner’s arguments do not show how an argument was overlooked or misapprehended. In any event, we remain convinced that “Patent Owner’s proposed interpretations are not the broadest reasonable interpretation in view of the Specification of the ’292 patent because the Specification does not use these terms or describe state vectors.” See Final Dec. 74.” slip op. at 4
- Expert testimonyPetitioner expert creditedDecided for petitioner
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“We decline to consider Patent Owner’s constitutional challenge because the issue has been addressed by the Federal Circuit in Arthrex, 941 F.3d at 1328 (expressly limiting its holding “to those cases where final written decisions were issued (prior to Arthrex)”). See also Caterpillar Paving Prod. Inc. v. Wirtgen Am., Inc., 957 F.3d 1342, 1342–1343 (May 6, 2020) (“The court in Arthrex considered and rejected that argument, expressly limiting its holding ‘to those cases where final written decisions were issued.’”) (quoting 941 F.3d at 1340). Our Decision was entered February 20, 2020, after the Federal Circuit issued its October 2019 decision in Arthrex (see 941 F.3d at 1320).” slip op. at 10
Claim constructionPatents in suitUS 9,904,292 - Supercell OY v. Gree, Inc.Rehearing deniedPTAB · Oct 15, 2019 · IPR2019-00756 · APJ Amanda F Wieker · IPR · Rehearing
Denied Supercell Oy’s rehearing request; the Board maintained its denial of institution because the claims require subtracting before adding, and the Petition did not show Reizei teaches that sequence.
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 the Board is alleged to have misapprehended or overlooked, and the place where each matter was addressed previously in a paper of record. Id. Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” The abuse of discretion standard of review is the same heightened standard federal appeals courts use to review district court factual findings. See, e.g., PNY Techs., Inc. v. Phison Elecs. Corp., IPR2013-00472, Paper 16 at 2 (PTAB Apr. 23, 2014) (“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.” (citing Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005))).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“that the subtracting limitation occur sequentially after the step of updating the first field with a new game content” is both untimely and insufficiently supported. The excerpt of claim 1, reproduced above, recites three actions taken by the control unit: “updat[ing] the first field with a new game content . . . sequentially subtract[ing] the second parameter value . . . and add[ing] a predetermined amount to the third parameter value at appropriate timing.” Ex. 1001, 21:23–32. In its ordinary meaning, “sequential” involves things in a sequence. The Board applied this ordinary meaning in construing the claims to require that the actions recited in the “sequentially” limitation—subtracting and adding—occur in sequence, i.e., “the plain language of the challenged claims require sequentially (1) subtracting the second parameter value of the selected game content from the third parameter value, and then (2) adding a predetermined amount to the third parameter value at appropriate timing.” Dec. 22. This is consistent with the intrinsic record. The “detailed description” provided in the ’481 Specification discusses the “sequentially” limitation only once. The Specification describes “sequentially subtract[ing] . . . and add[ing],” using the same language as in the claims. Ex. 1001, 7:33–38. This discussion of subtracting and adding appears in a paragraph separate from other paragraphs discussing selecting game contents and updating the first field. Id. at 6:12–7:32. The discussion of “sequentially” only in the context of subtracting and adding supports the understanding that the claim defines the order of those actions, i.e., a sequence of subtracting and then adding, and does not define the order of separately described actions like selecting or updating. This is also consistent with the formatting of claims 1, 7, and 8, in which the selecting and updating steps are removed from the steps of “sequentially subtract[ing] . . . and add[ing],” which, again, are recited together. Petitioner does not cite the intrinsic record to support its position.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Notwithstanding these disclosures, however, the Petition does not show that Reizei discloses a sequential, turn-based game, in which additional points are added to the first player’s total, after the conclusion of an opponent’s turn, as Petitioner now argues. Req. 8–9. Petitioner contends that the Petition relies upon Reizei and the Friedman declaration for the proposition that, after the first player executes its turn, “‘[t]he process repeats for the opponent, at which time, the first player again receives “five (5) AP of actions points” at the start of the turn.’” Id. at 9 (citing Pet. 44; Ex. 1003 ¶ 94; Ex. 1005 ¶¶ 94, 172). We disagree that this teaches that points are added, as claimed. As discussed in our Decision, paragraph 172 3 The Decision notes that paragraph 127 of the Friedman Declaration does not support the contention that Reizei teaches the adding limitation. Dec. 22, 24. Paragraph 127 cites back to paragraph 94 (discussed in the Decision) and otherwise discusses claim limitations not relevant to our Decision, e.g., “remov[ing] the game content.” of Reizei explains that control is transferred from the player to an opponent, after the player makes a turn finish declaration. Dec. 23–24; Ex. 1005 ¶ 172. “It is not apparent how this transfer of control [to an opponent] also results in a transfer of another five action points to the player.” Dec. 23–24 (also discussing paragraph 94 of the Friedman declaration). Indeed, Petitioner fails to explain how or why the first player would receive points at the start of an opponent’s turn. See also id. at 24 n.4.” slip op. at 9
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,956,481 - Supercell OY v. Gree, Inc.Rehearing deniedPTAB · Oct 15, 2019 · IPR2019-00754 · APJ Amanda F Wieker · IPR · Rehearing
The Board denied Supercell’s rehearing request, leaving institution denied because the Petition did not show that Reizei met the claims’ sequential adding/restoring limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A request for rehearing is not an opportunity to provide belated claim construction arguments that Petitioner failed to present in the Petition. 37 C.F.R. § 42.71(d). We could not have misapprehended or overlooked arguments that were not made. Petitioner has not demonstrated that we reached an erroneous conclusion of law in interpreting the claim language.” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“show that Reizei discloses a sequential, turn-based game, in which additional points are added to the first player’s total, after the conclusion of an opponent’s turn, as Petitioner now argues. Req. 9. Petitioner contends that the Petition relies upon Reizei and the Friedman declaration for the proposition that, after the first player executes its turn, “‘[t]he process repeats for the opponent, at which time, the first player again receives “five (5) AP of actions points” at the start of the turn.’” Id. (citing Pet. 41–42; Ex. 1003 ¶ 96; Ex. 1005 ¶ 172). We disagree that this teaches that points are added/restored, as claimed. As discussed in our Decision, paragraph 172 of Reizei explains that control is transferred from the player to an opponent, after the player makes a turn finish declaration. Dec. 23; Ex. 1005 ¶ 172. “It is not apparent how this transfer of control [to an opponent] also results in a transfer of another five action points to the player.” Dec. 23 (also discussing paragraph 96 of the Friedman declaration). Indeed, Petitioner fails to explain how or why the first player would receive points at the start of an opponent’s turn. See also id. at 23 n.4.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“that the subtracting limitation occur sequentially after the step of permitting the player to select the game contents” is both untimely and insufficiently supported. The excerpt of claim 1, reproduced above, recites three actions taken by the controller: “select[ing] the game contents . . . and . . . sequentially subtract[ing] the point . . . and add[ing] . . . or restor[ing] the upper limit of the point.” Ex. 1001, 29:21–54. In its ordinary meaning, “sequential” involves things in a sequence. The Board applied this ordinary meaning in construing the claims to require that the actions recited in the “sequentially” limitation—subtracting and adding/restoring—occur in sequence, i.e., “the plain language of the challenged claims require sequentially (1) subtracting the point of the selected game content, and then (2) either (a) adding to the upper limit of the point ‘at appropriate timing,’ or (b) restoring the upper limit of the point.” Dec. 22. This is consistent with the intrinsic record. The “detailed description” of the ’137 Specification discusses “sequentially” only once. The Specification describes “sequentially subtract[ing] . . . and add[ing] . . . or restor[ing],” using the same language as in the claims. Ex. 1001, 15:47–52. This discussion of subtracting and adding/restoring appears in a paragraph separate from other paragraphs discussing selecting game contents. Id. at 14:1–15:46. The discussion of “sequentially” only in the context of subtracting and adding/restoring supports the understanding that the claim defines the order of those actions, i.e., a sequence of subtracting and then adding/restoring, and does not define the order of separately described actions like selecting. This is also consistent with the formatting of claims 1, 14, and 16, in which the selecting step is removed from the steps of “sequentially subtract[ing] . . . and add[ing] . . . or restor[ing],” which, again, are recited together. Petitioner does not cite the intrinsic record to support its position.” slip op. at 5
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,604,137 - Kartri Sales Company, Inc. / Marquis Mills, International, Inc. v. Zahner Design Group, Ltd.Rehearing deniedPTAB · Apr 3, 2017 · IPR2016-01327 · APJ Richard H Marschall · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution for claims 1–14 because the petition did not show a reasonable likelihood of success on the challenged grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW When reconsidering a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). In its request for rehearing, the dissatisfied party must “specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. We address Petitioner’s arguments with these principles in mind.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“to project from the outer circumference of the ring as required by the claims requires projecting away from the ring, for example, “toward the ceiling,” as the specification indicates.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Declaration (Ex. 1009), we concluded that “Petitioner’s stated reasons for the proposed modification of Lishman to include the hanging structure of Kaldenbaugh are insufficient to establish a reasonable likelihood that claims 1 or 8 are unpatentable.” Dec. 16. Our Decision rejected Petitioner’s “design choice rationale” because Petitioner failed to establish that the shape was a matter of mere design choice that did not impact the functionality of the proposed combination, and the analysis cited to inadequate authority or references. Id. at 17 (discussing Pet. 41–43; citing Ex. 1001, 8:7–17, 9:11– 15, 10:60–65; Ex. 1009 ¶¶ 98, 100).” slip op. at 6
- BurdenDecided for patent owner
“Declaration (Ex. 1009), we concluded that “Petitioner’s stated reasons for the proposed modification of Lishman to include the hanging structure of Kaldenbaugh are insufficient to establish a reasonable likelihood that claims 1 or 8 are unpatentable.” Dec. 16. Our Decision rejected Petitioner’s “design choice rationale” because Petitioner failed to establish that the shape was a matter of mere design choice that did not impact the functionality of the proposed combination, and the analysis cited to inadequate authority or references. Id. at 17 (discussing Pet. 41–43; citing Ex. 1001, 8:7–17, 9:11– 15, 10:60–65; Ex. 1009 ¶¶ 98, 100).” slip op. at 6
Claim construction§ 103 obviousnessPatents in suitUS 8,235,088 - Tyco Fire Products LP v. Victaulic Co.Rehearing deniedPTAB · Sep 30, 2016 · IPR2016-00277 · APJ Benjamin D M Wood · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution for claims 1–18 because the petition did not show Lewis disclosed or rendered obvious the supporting limitations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“and the “specific records in the Petition and the Phillips Declaration (Ex. 1105) have been overlooked by the Board.” Reh’g Req. 3. For the “supporting” limitations, Petitioner proceeds to discuss excerpts from Lewis and the Phillips Declaration that Petitioner discussed on pages 24 and 25 of the Petition, i.e., Ex. 1102, 5:12–21, 9:7–13; and Ex. 1105 ¶¶ 61, 62. Id. at 5–7. But these are virtually the same excerpts from the record that we noted in the Decision. Dec. 9–10. Thus, Petitioner has not identified any aspect of the record that we overlooked. Moreover, the Petition discussed these excerpts from Lewis and the Phillips Declaration in the context of the asserted anticipation ground, not with respect to any of the obviousness grounds. Pet. 24–25; see also Dec. 12 (stating “Petitioner does not, however, contend that the ‘supporting’ limitations would have been obvious to one of ordinary skill”). The Rehearing Request does not identify any assertion or discussion in the Petition that Lewis would have suggested the “supporting” limitations to a person of ordinary skill in the art, or that the “supporting” limitations would otherwise have been obvious to a skilled artisan in view of Lewis. Nor have we found any such discussion. Instead, in discussing claim 1, the Petition’s obviousness discussion focused on the “flexible resilient ring” limitation, asserting that “[t]he cited portions of Lewis . . . establish . . . that the sealing ring in Lewis is both flexible and resilient.” Pet. 36. Accordingly, we decline to rehear our decision on the basis of an argument raised for the first time in a rehearing request.2” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“11. We noted that Petitioner did not identify any express disclosure in Lewis of the “supporting” limitations, and that, on the contrary, Lewis “can be read to disclose the opposite, i.e., that the housing supports the ring.” Id. (citing Ex. 1102, 4:24–26). We also determined that Petitioner did not provide sufficient evidence to establish that Lewis inherently discloses a ring that supports the coupling segments in a preassembled state. Id. Petitioner had argued that “Lewis discloses that the housing and the sealing ring have a matching geometry . . . and therefor mutually support one another as the pipes are inserted into the pre-assembled coupling.” Pet. 24 (citing Ex. 1102, 5:15–21, 15:17–20, Fig. 1). Petitioner also contended that “[w]hen the housing includes multiple segments and multiple fastening elements that are loosely positioned in a preassembled state . . . the sealing ring’s outer diameter supports the housing segments that are positioned on, and surround the ring.” Id. (citing Ex. 1102, 5:12–14). We determined, however, that “merely because Lewis’ housing and sealing ring have a ‘matching geometry’ does not necessarily mean that they ‘mutually support one another.’” Dec. 12. Having determined that Petitioner had not shown that Lewis discloses, either expressly or inherently, the “supporting” limitations, we noted that Petitioner did not argue that the “supporting” limitations would have been obvious to one of ordinary skill in the art in light of Lewis. Id. Thus, we determined that Petitioner did not show a reasonable likelihood of prevailing on its obviousness grounds. Dec. 12–13.” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“11. We noted that Petitioner did not identify any express disclosure in Lewis of the “supporting” limitations, and that, on the contrary, Lewis “can be read to disclose the opposite, i.e., that the housing supports the ring.” Id. (citing Ex. 1102, 4:24–26). We also determined that Petitioner did not provide sufficient evidence to establish that Lewis inherently discloses a ring that supports the coupling segments in a preassembled state. Id. Petitioner had argued that “Lewis discloses that the housing and the sealing ring have a matching geometry . . . and therefor mutually support one another as the pipes are inserted into the pre-assembled coupling.” Pet. 24 (citing Ex. 1102, 5:15–21, 15:17–20, Fig. 1). Petitioner also contended that “[w]hen the housing includes multiple segments and multiple fastening elements that are loosely positioned in a preassembled state . . . the sealing ring’s outer diameter supports the housing segments that are positioned on, and surround the ring.” Id. (citing Ex. 1102, 5:12–14). We determined, however, that “merely because Lewis’ housing and sealing ring have a ‘matching geometry’ does not necessarily mean that they ‘mutually support one another.’” Dec. 12.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Having determined that Petitioner had not shown that Lewis discloses, either expressly or inherently, the “supporting” limitations, we noted that Petitioner did not argue that the “supporting” limitations would have been obvious to one of ordinary skill in the art in light of Lewis. Id. Thus, we determined that Petitioner did not show a reasonable likelihood of prevailing on its obviousness grounds. Dec. 12–13.” slip op. at 3
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,733,799 - PTAB · May 20, 2016 · IPR2015-00979 · APJ Hyun J Jung · IPR · Rehearing
The Board denied rehearing, leaving claims 6 and 13 uninstituted over Raymond and Mutti and over Mutti, Kano, and Suffa.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The applicable standard for a request for rehearing of an institution decision is abuse of discretion. 37 C.F.R. § 42.71(c). The requirements are set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a 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. For the reasons stated below, Petitioners’ request is denied.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for patent owner
“regarding “cap” and “valve holder” for claims 6 and 13. Reh’g Req. 1–5 (citing Pet. 17–19, 28). Petitioners explain that the Petition asserted clamping ring 27, body 16, nipple pieces 15, and upper membrane 7 combined are the required “cap” of claim 1. Id. at 2–4 (discussing Pet. 17– 19). Petitioners also explain that the Petition asserted clamping ring 27 meets the “valve holder” of dependent claims 6 and 13 “because the cap in Raymond is much more than clamping ring 27” and clamping ring 27 “is separable from the other parts of the claimed ‘cap.’” Id. at 5 (discussing Pet. 28). Petitioners further argue that the claims, specification, and case law do not require the recited valve holder and cap to be separate structures. Id. at 6–7, 12–13 (citing Ex. 1001, 6:38–41; Ex. 1013; Dec. 16).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“on Mutti, Kano, and Suffa was also misapprehended and should have been instituted. Reh’g Req. 2, 14–15. Petitioners acknowledge that they rely on Figure 6 for claim 1 and rely on Figures 1–5, which depict another embodiment, for claim 6 which depends from claim 1. Id. Petitioners, however, argue that the “motivation to combine the teachings of Mutti in one embodiment with the teachings of Mutti in another embodiment is entirely obvious—it’s the same reference.” Id. at 15. Petitioners do not identify where the asserted motivation was presented in their Petition. See 37 C.F.R. § 42.71(d). Even if the Petition included this particular motivation, it does not address the deficiency identified in the Decision. Citing to two embodiments in the same reference does not explain “how and why stop ring 23 of Figure 1 . . . , which holds membrane 22 in position . . . , would be combined with outer part 14b of Figure 6 . . . , which includes inner part/body 14a . . . that also holds membrane 22 in place . . . . In other words, inner part/body 14a, which is an integral part of outer part 14b, already holds membrane 22 in place.” Dec. 21. The Petition does not explain why one of ordinary skill in the art would be motivated to add stop ring 23 of Figure 1 to outer part 14b of Figure 6, when Mutti teaches each can hold a membrane in place. In particular, the Petition does not explain why both would be required when Mutti teaches that one is adequate. Without such an explanation in the Petition, we are not persuaded to modify our Decision regarding claims 6 and 13 as rendered obvious by Mutti, Kano, and Suffa.” slip op. at 4
Claim construction§ 103 obviousnessPatents in suitUS 8,695,841 - Robert Bosch LLC / Daimler AG v. Orbital Australia Pty LtdRehearing deniedPTAB · Feb 3, 2016 · IPR2015-01258 · APJ Ken B Barrett · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, finding no abuse of discretion in its institution decisions or preliminary claim-construction analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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 addressed previously in the record. Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 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. 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). With this in mind, we address the arguments presented by Patent Owner in turn.” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“As to the “increasing” portion of the claim phrase “increasing the fuelling rate,” Patent Owner, in the Preliminary Response and the Request, does not adequately explain its claim construction position. We understand Patent Owner’s position to be that there must be some introduction of fuel to the cylinder when the crankshaft is in a position after top dead center. However, it remains unclear what, if anything, Patent Owner contends is required by the “increasing” aspect of the limitation because Patent Owner does not adequately explain how that feature relates to the “operating normally” aspect of that same limitaton. It is not clear, for example, whether Patent Owner’s position is that the total fuel introduced in a given cycle must be more than when operating normally, that the amount of fuel in a cylinder must increase during a particular portion of a single cycle but the total fuel introduced during the cycle need not be more than when operating normally,2 a combination of these, or something else altogether. We could not have misapprehended or overlooked something not explained adequately in the Preliminary Response. In order to avoid any further allegations of misapprehension and to narrow the issues, we strongly suggest the parties meet and confer regarding the meaning of the pertinent claim phrase— “while said ignition is so retarded, increasing the fuelling rate of said at least one cylinder to a level higher than that required when the engine is operating normally”—and stipulate to the aspects that are not in dispute.” slip op. at 4
- Claim Construction › Extrinsic evidence (dictionaries, experts)Decided for patent owner
“evidence “regarding the Bosch-Petitioner’s prior recognition that the ‘365 Patent discloses that the timing of increasing the fuelling rate is described with reference to crankangle.” Req. Reh’g 12. The contention is misplaced. The Board did not overlook Patent Owner’s argument and evidence. Rather, the argument and evidence were unpersuasive. The subject argument is that—during the prosecution of another patent (“the Bosch Patent”)—the parent corporation of one of the Petitioners made a statement characterizing the disclosure in the specification of the ’365 patent, and that that statement is consistent with Patent Owner’s claim construction position. Prelim. Resp. 15–16 (quoting Ex. 2002, 160); id. at 15 n.3; see Req. Reh’g 12–13. Patent Owner further argues, “Bosch cannot have it both ways” and “Bosch should be held to their representations to the U.S. Patent and Trademark Office.” Prelim. Resp. 16. Thus, Patent Owner’s argument is based on extrinsic evidence—the prosecution history of another patent—and possibly on a theory of estoppel. Having considered the arguments and the cited portion of the evidence, we did not find them persuasive and determined that the evidence contributed little, if anything, to the proper preliminary claim construction.” slip op. at 6
Claim constructionPatents in suitUS 5,655,365
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.