• Lyft, Inc. v. Rideshare Displays, Inc.Instituted
  PTAB · Apr 11, 2022 · IPR2021-01599 · APJ Thomas L Giannetti · IPR · Institution

  The Board instituted IPR on claims 1, 2, 4, and 6–8 on all asserted grounds, finding a reasonable likelihood of success on the Kalanick/Kemler obviousness and Lalancette anticipation challenges.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “discovery.” Pet. 17. We agree with Petitioner that although some time has been invested in the case by the parties and the district court on preliminary matters, the fact discovery, expert discovery, and dispositive motion deadlines have not yet passed, not to mention the deadlines for pre-trial submissions and trial. See Ex. 2005, 3–11 (Scheduling Order). Moreover, we do not give weight to the work done on the issue of patent eligibility under Section 101, as that issue cannot be raised in this inter partes review and therefore does not result in any duplication of work done by the district court.” slip op. at 11

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “At the outset, we note that Kemler was not cited during prosecution of the ’987 patent application. See Pet. 20. Thus, for two of the three grounds in the Petition, namely, those relying on Kemler in combination with Kalanick or Kemler, the combination of references before us in this proceeding was not before the examiner. Petitioner points out that neither Kalanick nor Lalancette was used, either alone or in combination with other references, as a basis for a rejection during prosecution. Pet. 21. In fact, neither reference was discussed by the patent owner or the examiner during the prosecution, nor did the examiner make any prior art rejections before allowing the application to issue. Thus, we agree with Petitioner that Becton, Dickinson factor (c), which considers the extent to which the asserted art was evaluated during examination, points us in the direction of declining to exercise our discretion to deny institution. See Pet. 21. As we will discuss in more detail infra, the Petition analyzes the challenged claims of the ’987 patent in light of the teachings of Kalanick and Lalancette, as well as Kemler, and demonstrates that Kalanick and Lalancette disclose aspects of the claims relied on by the examiner in his reasons for allowance. See Sections IV.F (Kalanick), IV.G (Lalancette).4 This analysis further demonstrates error on the part of the examiner in overlooking teachings of those references material to patentability of the challenged claims. Thus, Becton, Dickinson factor (e), which asks whether petitioner has demonstrated material error on the part of the examiner, weighs against exercising our discretion to deny institution.” slip op. at 15

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “In sum, we determine that for the reasons given Petitioner has demonstrated a reasonable likelihood of prevailing on this challenge to claim 1.” slip op. at 39

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Prelim. Resp. 5. At this stage, we adopt Petitioner’s more general formulation, with the following qualification. We would also expect a person of ordinary skill to also have at least some experience in wireless cellular network protocols, as suggested by Patent Owner. Our review of the ’987 patent and the cited prior art does not suggest that specific experience with data privacy policies and protection models would be required, given the focus of the ’987 patent on more general principles of cellular communications and signaling. However, at this stage, the arguments presented by the parties do not depend on the definition of the person or ordinary skill, and therefore, our decision would be the same under either formulation.” slip op. at 19

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 10,169,987
• Netnut Ltd. v. Bright Data Ltd.Instituted
  PTAB · Mar 21, 2022 · IPR2021-01492 · APJ Thomas L Giannetti · IPR · Institution

  The Board instituted IPR on claims 1, 2, 12, 14, 15, 17–19, and 21–29 because Petitioner showed a reasonable likelihood of prevailing on at least one claim across the asserted grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “partes review in this proceeding, at this stage we agree with Petitioner’s claim constructions, specifically, that “the devices in question may be configured to operate in different roles and are characterized by the function they perform (i.e., sending or receiving), not by any physical properties.” Pet. 4–5. More specifically, we adopt the district court’s construction, with the clarification that the second server is “a device that is operating in the role of a server and that is not the first client device.” See infra, Section IV.C. This construction is consistent with the extrinsic evidence offered by Petitioner (Ex. 1018, 5), as well as the construction of “server” adopted by the Board in IPR2021-00458, involving a patent similar to the ’319 patent. See IPR2021-00458, Paper 11, 21. As this claim construction is central to this controversy and favors Petitioner, we determine that the merits of the Petition are strong. Thus, this factor strongly favors not exercising our discretion to deny institution. Conclusion In summary, after weighing the factors and taking a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review, we are not persuaded to exercise our discretion to deny review. The strong showing on the merits in the Petition and relatively minor investment in the merits of the validity challenge in district court persuade us that efficiency and integrity of the system would not be served by denying review.” slip op. at 13

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied

    “We have reviewed Petitioner’s arguments and Patent Owner’s brief response. Prelim. Resp. 41–43. For the most part, Patent Owner relies on its Fintiv analysis, discussed supra. For example, for the first factor (“whether the same petitioner previously filed a petition directed to the same claims of the same patent”), Petitioner contends that “Petitioner was not involved with the prior IPR challenging the [’319] Patent.” Pet. 12. Patent Owner responds that “[a]lthough NetNut was not involved in the Code200/Teso IPR proceedings, Patent Owner respectfully disagrees that this factor ‘strongly favors institution’ in view of the detailed Fintiv analysis above.” Prelim. Resp. 42. Similarly, for General Plastic factors 2–6, Patent Owner refers to its Fintiv analysis. Id. at 42–43. For factor 7, Patent Owner responds that “Patent Owner is not presently aware of any risk that the Board will be unable to meet the one-year deadline under 35 U.S.C. § 316(a)(1).” Id. at 43. After considering the Petition and Patent Owner’s response, for the reasons discussed in connection with Fintiv, supra, and for the reasons given by Petitioner, we are not persuaded to exercise our discretion to deny the Petition under General Plastic.” slip op. at 15

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore institute inter partes review as to all of the challenged claims of the ’319 patent and all of the asserted grounds of unpatentability in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have at least a bachelor’s degree in Computer Science or related field (or equivalent experience), and two or more years’ experience working with and programming networked computer systems as of the Priority Date.” Pet. 20 (citing Teruya Decl. ¶¶ 25–27). Petitioner continues that “[s]uch a person would be familiar with the underlying principles of Web, Internet, or network communication, data transfer, and content sharing across networks, including the HTTP and TCP/IP protocols.” Id. Patent Owner submits that a person of ordinary skill in the art “had a Master’s Degree or higher in the field of Electrical Engineering, Computer Engineering, or Computer Science or as of that time had a Bachelor’s Degree in the same fields and two or more years of experience in Internet Communications.” Prelim. Resp. 47. But Patent Owner acknowledges that this definition and Petitioner’s definition of a person of ordinary skill in the art “are not materially different, at least in terms of affecting an institution decision in this IPR.” Id. (footnote omitted). We regard Petitioner’s more specific definition as consistent with the ’319 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Therefore, for the purpose of this decision, we adopt Petitioner’s formulation. We agree, however, that this definition and Patent Owner’s definition of a person of ordinary skill in the art “are not materially different,” and that our decision would be the same using either definition. slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 10,257,319
• Netnut Ltd. v. Bright Data Ltd.Instituted
  PTAB · Mar 21, 2022 · IPR2021-01493 · APJ Sheila F Mcshane · IPR · Institution

  The Board instituted IPR on claims 1, 2, 6–11, 13, and 15–24 on all grounds, finding a reasonable likelihood that NetNut would prevail on at least one challenged claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “approximately six months prior to the date of the final written decision issuing in this case. We note, however, that a trial date for this Patent Owner slipped by six months in a case in the Eastern District of Texas (see Ex. 1101, docket entries 65, 509), and, further, that Patent Owner sought extensions in a related court proceeding (Ex. 1102). The presently-scheduled trial date is six months off. Factoring in the potential for changed circumstances, we determine that this factor weighs only slightly in favor of exercising our discretion to deny institution.” slip op. at 12

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner

    “01357, Paper 19 (PTAB Sept. 6, 2017) (precedential) (“General Plastic”), the Board set out a list of seven factors to consider when asked to exercise its discretion to deny review of follow-on petitions. Here, Patent Owner states that it relies on Fintiv, which it believes is dispositive, and does not rely on General Plastic. Prelim. Resp. 40, n.28. Nevertheless, Patent Owner addresses certain of the General Plastic factors. For factor 1, Patent Owner asserts that as to Code200 and Teso, who were prior petitioners in IPR2021-01358, Patent Owner “is not presently aware of a significant relationship between NetNut and either Code200 or Teso.” Id. at 40. But Patent Owner disagrees that this factor strongly favors institution. Id. at 40– 41. For General Plastic factors 2–5, Patent Owner relies on the arguments presented for factor 3 of Fintiv, and for General Plastic factor 6, Patent Owner relies on its arguments presented for Fintiv factor 6. Id. at 41. On this record, we determine that, based on the facts of this case, the General Plastic factors weighing against exercising discretion outweigh the facts that favor exercising discretion. For General Plastic factors 2–6, we do not find Patent Owner’s arguments persuasive for the reasons discussed above for Fintiv factors 3 and 6. Additionally, Petitioner was not a petitioner in previous proceedings, nor is there any evidence in the record that Petitioner has a significant relationship with petitioners in an earlier case, as acknowledged by Patent Owner. See Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019–00062, Paper 11 at 9–10 (PTAB April 2, 2019) (precedential) (existence of a “significant relationship” between the different petitioners would weigh in favor of discretionary denial); Prelim. Resp. 40. Accordingly, factor 1 of General Plastic also weighs against the exercise of discretionary denial. Thus, we decline to exercise our discretion under 35 U.S.C. § 314(a) to deny inter partes review.” slip op. at 16

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “At this juncture, we determine that Petitioner has provided sufficient evidence that Crowds discloses the preamble of claim 1 and limitations 1[a]– 1[d].9” slip op. at 27

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner submits that a person of ordinary skill in the art “had a Master’s Degree or higher in the field of Electrical Engineering, Computer Engineering, or Computer Science or as of that time had a Bachelor’s Degree in the same fields and two or more years of experience in Internet Communications.” Prelim. Resp. 46 (citing Ex. 2006 ¶ 19). But Patent Owner acknowledges that the parties’ respective proposed qualifications “are not materially different, at least in terms of affecting an institution decision in this IPR.” Id. For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’510 patent and the prior art before us.7 See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note that, at this juncture, we agree with Patent Owner that the proposed qualifications are not materially different and our assessment of the merits of the Petition, as discussed below, would remain the same under either parties’ proposed qualifications.” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,484,510
• Hulu, LLC v. Sito Mobile R&D IP, LLC And Sito Mobile, Ltd.All claims unpatentable
  PTAB · Mar 11, 2022 · CBM2020-00028 · APJ Joni Y Chang · CBM · Final written decision

  Claims 1–12, 39–41, 45–56, 68, and 98–126 are unpatentable under § 101 because they claim an abstract idea implemented with generic computer components.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “various HTTP-related technologies, or an equivalent amount of relevant work or research experience.” Ex. 1003 ¶ 35. Patent Owner’s declarant, Michael Sprenger, Ph.D., similarly testifies that a person of ordinary skill in the art would have had “a Bachelor of Science degree in computer science, electrical engineering, or computer engineering (or a related academic field), and at least two additional years of work experience in the design and development of distributed network systems and/or multimedia streaming.” Ex. 2009 ¶ 33; PO Resp. 4−5. Dr. Sprenger also testifies that, alternatively, such an artisan would have had “at least five years of work experience and training in the design and development of distributed network systems and/or multimedia streaming.” Ex. 2009 ¶ 33; PO Resp. 4−5. Neither party points out any meaningful difference between the parties’ assessments. Based on the evidence of record, we apply Patent Owner’s assessment on the level of ordinary skill in the art, as Dr. Sprenger provides an alternative to a college degree.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “We agree with Petitioner. Patent Owner’s implicit claim construction improperly imports extraneous limitations into the claims—namely, excluding the entirety of the “requested media” or requiring that the “requested media” be broken up into portions. It is well-settled that if a feature is not necessary to give meaning to what the inventor means by a claim term, it would be “extraneous” and should not be read into the claim. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). The plain and ordinary meaning of the term “at least one portion of the requested media” as used in the ’887 patent does not support Patent Owner’s implicit construction. In the context of the ’887 patent, the plain 4 For example, other variations include “at least a portion of the requested media” recited in claim 1 and “the at least the portion of the requested media” recited in claim 2. 10 and ordinary meaning of the term encompasses one or more portions of the “requested media,” as well as the entirety of the “requested media.” For example, the portions of the Specification relied upon by Patent Owner disclose that the viewer requests a media clip and receives the entirety of the requested media clip, not one portion at a time. Ex. 1001, 13:49−14:2. Patent Owner’s implicit construction ignores the modifiers “at least” and “requested” recited in the term.” slip op. at 10

  • Prior constructionPrior construction adoptedDecided for patent owner

    “Patent Owner submits that the District Court construed the claim term “settlement record” as “billable event record to be used for revenue 13 settlement.” PO Resp. 29−30; Ex. 2008, 2. This construction is consistent with the Specification. See, e.g., Ex. 1001, 9:18−20 (“to generate the settlement rules that define who will be billed or credited”), 12:17−19 (“RTSMS 106 processes the logs, the billing data, and the state model data and creates a message sequence detail record (MSDR).”), 12:25−26 (“The MSDR represents a billable event record that will be used for revenue settlement purposes.”), 12:56−62. As such, we adopt the District Court’s claim construction, construing “settlement record” as “billable event record to be used for revenue settlement.”” slip op. at 13

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner

    “Upon review of this entire trial record, we are persuaded by Petitioner’s showing and find that the challenged claims recite a concept that falls within one of the enumerated groupings of abstract ideas—certain methods of organizing human activity, e.g., “commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations).” See Guidance, 84 Fed. Reg. at 52. The abstract idea here is not meaningfully different from the ideas found to be abstract in other cases before the Federal Circuit. Notably, each challenged claim recites a method in which a “computing device” generates a “communication” based on the characteristics of the user in response to a request for media to be streamed. The Federal Circuit has held that “the concept of delivering user-selected media content to portable devices is an abstract idea.” Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016). The Federal Circuit also has held that claims related to “customizing information based on (1) information known about the user and (2) [specific] data” are directed to abstract ideas. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369−70 (Fed. Cir. 2015) (noting that “[a]n advertisement taking into account the time of day and tailoring the information presented to the user based on that information is another ‘fundamental . . . practice long prevalent in our system’” (quoting Alice, 573 U.S. 219)); see also British Telecommunications PLC v. IAC/InterActiveCorp, 813 F. App’x 584, 587 (Fed. Cir. 2020) (holding that the concept of “providing lists of 30 location-specific information sources to users based on their location” was an abstract idea). In addition, we find that the claim limitations involving a “revenue sharing rule” and “producing a settlement record” that reflects the revenue sharing do not remove the challenged claims from the realm of abstract ideas. See, e.g., Pet. 38−40. Notably, recording revenue sharing constitutes a practice of organizing human activity, which is rooted in assessing sales and economic interactions—a fundamental economic practice. The Supreme Court has held in Alice that “a method of exchanging financial obligations between two parties using a third-party intermediary to mitigate settlement risk” is “a fundamental economic practice long prevalent in our system of commerce” and that “the concept of intermediated settlement . . . [is] squarely within the realm of ‘abstract ideas.’” Alice, 573 U.S. at 219−22.” slip op. at 30

  Patent outcomesUS 8,825,887 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Bilski · Phillips
  Patents in suitUS 8,825,887
• Western Digital Corporation / Western Digital Technologies, Inc. et al. v. Martin KusterAll claims unpatentable
  PTAB · Feb 10, 2022 · IPR2020-01410 · APJ Nabeel U Khan · IPR · Final written decision

  Claims 1–18 are unpatentable: claims 1–4, 9–13, and 18 as anticipated by Hsiao, and claims 1–18 as obvious over Hsiao and Sun.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s proposed level of ordinary skill does not materially differ from that articulated by Mr. Welch. Both require a bachelor’s in many of the same fields and roughly one to two years of experience with USB protocols or USB product development. Neither Petitioner nor Patent Owner indicates that the outcome of any arguments made in this case would change depending on the level of ordinary skill in the art. We adopt Petitioner’s description, which we determine to be consistent with the level of skill reflected in the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that we would reach the same conclusions under either proposed level of ordinary skill.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “The term “mounted on” appears in several limitations of claim 1, including limitations 1.c, 1.d, and 1.e. The dispute between the parties, however, centers only on how the term should be construed in limitation 1.e, which recites “a contact bar mounted on the connection surface of the substrate” (Ex. 1001, 9:63–64) and only with respect to the Grounds involving Chen. Patent Owner does not dispute Petitioner’s contentions that Hsiao teaches a contact bar “mounted on” the connection surface of the substrate. See PO Resp. 42–55. For the reasons stated below, we determine Petitioner has not shown that Chen teaches certain other limitations of the independent claims regardless of whether it teaches “a contact bar mounted on the connection surface of the substrate.” See infra § II.D.2. Thus, it is not necessary to construe the term “mounted on” to resolve the dispute between the parties.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “2. Embedded to be Exposed Upon the Cover of the Contact Bar The only word in the phrase “embedded to be exposed upon the cover of the contact bar,” recited in claims 1, 12, and 18, that Petitioner offers a construction for is the word “embedded,” which Petitioner argues has no special meaning in the art and should be afforded its ordinary dictionary definition of “set firmly into a mass or material.” Pet. 26 (citing Ex. 1005 ¶ 111). Patent Owner does not dispute Petitioner’s construction. PO Resp. 34–35. We adopt Petitioner’s construction, which we find is supported by the evidence of record. Ex. 1005 ¶ 111.” slip op. at 10

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for petitioner

    “It is well established that when a party seeks to prove conception through an inventor’s testimony, the party must proffer independent evidence corroborating the inventor’s testimony. Cooper, 154 F.3d at 1330. To be “independent,” the corroborating evidence must be evidence other than the inventor’s testimony. In re NTP, Inc., 654 F.3d 1279, 1291 (Fed. Cir. 2011). The sufficiency of the proffered corroboration is determined by a “rule of reason” analysis in which all pertinent evidence is examined. See NTP, 654 F.3d at 1291. Even under the “rule of reason” analysis, however, the “evidence of corroboration must not depend solely on the inventor himself.” Cooper, 154 F.3d at 1321; see also Hahn v. Wong, 892 F.2d 1028, 1033 (Fed. Cir. 1989) (corroborating evidence must be “independent of information received from the inventor”).” slip op. at 16

  Patent outcomesUS 8,705,243 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,705,243
• Western Digital Corporation / Western Digital Technologies, Inc. et al. v. Martin KusterSome claims unpatentable
  PTAB · Feb 10, 2022 · IPR2020-01391 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 11, 12, and 14–19 are unpatentable: claims 11 and 12 are anticipated by Hsiao, and claims 11 and 14–19 are obvious over He and Cheng or He, Cheng, and Hiller.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s proposed level of ordinary skill does not differ materially from that presented by Mr. Welch. Both require a bachelor’s degree in many of the same fields and roughly one to two years of experience with USB protocols or USB product development. The arguments presented by Petitioner and Patent Owner do not indicate that the outcome of this case would change depending on the level of ordinary skill in the art. We, therefore, adopt Petitioner’s description, which we determine to be consistent with the level of skill reflected in the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that we would reach the same conclusions under either proposed level of ordinary skill.” slip op. at 8

  • BurdenDecided for patent owner

    “Proof of conception must be by “corroborating evidence which shows that the inventor disclosed to others his ‘completed thought expressed in such clear terms as to enable those skilled in the art’ to make the invention.” Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985) (citing Field v. Knowles, 183 F.2d 593, 601 (CCPA 1950)); see also Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996) (corroboration requirement “arose out of a concern that inventors testifying in patent infringement cases would be tempted to remember facts favorable to their case by the lure of protecting their patent or defeating another’s patent”). Similarly, an inventor’s testimony alone is insufficient to establish an earlier reduction to practice. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1169–71 (Fed. Cir. 2006). Instead, a party seeking to prove an actual reduction to practice must proffer evidence corroborating that testimony. Id. at 1170. The sufficiency of corroboration is determined according to a “rule of reason.” Price v. Symsek, 988 F.2d 1187, 1195 (Fed. Cir. 1993). This, however, does not dispense with the requirement that some independent evidence provide corroboration. Coleman, 754 F.2d at 360. The requirement of “independent” corroboration requires evidence other than the inventor’s testimony. In re NTP, Inc., 654 F.3d 1279, 1291–92 (Fed. Cir. 2011). 3. Discussion We find that Patent Owner has not met its burden of establishing that Mr. Kuster conceived and reduced to practice his invention prior to the filing dates of Hsiao or He. By itself, Mr. Kuster’s testimony is insufficient to establish that he reduced his invention to practice prior to the November 23, 2010, filing date or Hsiao or the June 2, 2010, filing date of He. “Throughout the history of the determination of patent rights, oral testimony by an alleged inventor asserting priority over a patentee’s rights is regarded with skepticism, and as a result, such inventor testimony must be supported by some type of corroborating evidence.” Woodland Tr. v. Flowertree Nursery, Inc., 148 F.3d 1368, 1371 (Fed. Cir. 1998) (quoting Price, 988 F.2d at 1194). Patent Owner has failed to provide sufficient independent evidence corroborating Mr. Kuster’s testimony.” slip op. at 20

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “We do not agree with this argument. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284, 1294 (Fed. Cir. 2015) (quoting In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Moreover, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton,” so the fact that it would take some creativity to carry out the combination does not defeat a finding of obviousness. KSR, 550 U.S. at 421; see also ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1219 (Fed. Cir. 2016) (“The rationale of KSR does not support [the] theory that a person of ordinary skill can only perform combinations of a puzzle element A with a perfectly fitting puzzle element B.”). We find there is support for making this combination of He and Cheng in the testimony of Dr. Baker that addition of a controller is “conventional” in USB flash drives. Baker Decl. ¶ 167. We find that for the reasons given by Dr. Baker, a person of ordinary skill would have added a controller to He. We determine that the combination of He and Cheng teaches each limitation of claim 11. We address Patent Owner’s argument that there are objective indicia of obviousness, infra. We conclude that Petitioner has demonstrated that claim 11 would have been obvious over He and Cheng.” slip op. at 37

  • Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersDecided for patent owner

    “attorney argument, not evidence.” Pet. Reply 26. We agree. Patent Owner does not back up its argument with testimony or other credible evidence. To demonstrate long-felt need, a patentee must point to an “articulated identified problem and evidence of efforts to solve that problem” which were, before the invention, unsuccessful. Tex. Instruments v. Int’l Trade Comm’n, 988 F.2d 1165, 1178 (Fed. Cir. 1993). All Patent Owner proves, if anything, is that after the USB 3.0 specification issued, a number of companies rushed in to provide contacts that met the new standard. Patent Owner does not demonstrate that they failed where Mr. Kuster succeeded. In fact, there is no evidence that Mr. Kuster ever commercialized his invention.8 8 Victorinox never paid for the work Mr. Kuster did on the USB 3.0 memory device, and to Mr. Kuster’s knowledge, never marketed the product. Kuster Dep. 22:21–24:13. Patent Owner contends “Mr. Kuster’s invention filled the existing need for a durable yet slim USB flash drive compatible with USB 3.0 that was easy to manufacture.” PO Resp. 77. But instead of presenting independent evidence of failure of the others to solve known technical or manufacturing problems, Patent Owner relies on generalized statements concerning the need for USB 3.0 connectors and solutions by others that Patent Owner contends have not been successful. PO Resp. 74–77. We are not persuaded by Patent Owner’s argument that Mr. Kuster’s alleged invention filled a long-felt need where others failed.” slip op. at 29

  Patent outcomesUS 8,693,206 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,693,206
• Forescout Technologies, Inc. v. Fortinet, Inc.Institution denied
  PTAB · Jan 27, 2022 · IPR2021-01328 · APJ Christopher L Ogden · IPR · Institution

  The Board denied institution because Forescout did not show Thomas was prior art, so it did not show a reasonable likelihood that any challenged claim was obvious over Thomas or Thomas and Gill.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “§ 42.4(a), we may only institute an inter partes review when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108(c) (2020). Applying that standard, we do not institute an inter partes review, for the reasons explained below.” slip op. at 2

  • BurdenDecided for patent owner

    “We agree with Fortinet that Forescout has not met its burden to particularly articulate its arguments in the Petition. To be successful in an inter partes review, a petition must “articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)); see also 35 U.S.C. § 322(a)(3); 37 C.F.R. §§ 42.22(a)(2) (2020). In this case, Forescout’s burden includes, among other things, explaining in the Petition why Thomas “was effectively filed before the effective filing date of the claimed invention.” 35 U.S.C. § 102(a)(2). On its face, Thomas does not qualify as prior art to the ’421 patent because the application was filed on April 1, 2016, after the effective filing date of the ’421 patent. Thus, when Forescout filed its Petition, it was clear that Forescout needed to rely on a prior application in Thomas’s priority chain, such as the Thomas Provisional, to establish that Thomas was prior art to the ’421 patent under § 102(a)(2). Section 102(d)(2) of 35 U.S.C. provides that, “[f]or purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application . . . as of the filing date of the earliest such application that describes the subject matter.” 35 U.S.C. § 102(d)(2) (emphases added). Without having the benefit of the provisional’s filing date, Thomas does not qualify as prior art to the ’421 patent. See supra. Thus, the subject matter disclosed in Thomas is only available as prior art to the ’421 patent to the extent it also is described in the earlier-filed Thomas Provisional. Thus, Forescout has an initial burden, not just to compare the challenged claims with the disclosure in Thomas, but to show that the subject matter that Forescout relies on in Thomas is also found in the Thomas Provisional. Because Forescout has not met that burden, we determine that Forescout has not adequately shown that it is reasonably likely to prevail on the issue of whether Thomas is prior art to the challenged claims of the ’421 patent under 35 U.S.C. § 102(a)(2).” slip op. at 9

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable

    “particularly articulate its arguments in the Petition. To be successful in an inter partes review, a petition must “articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)); see also 35 U.S.C. § 322(a)(3); 37 C.F.R. §§ 42.22(a)(2) (2020). In this case, Forescout’s burden includes, among other things, explaining in the Petition why Thomas “was effectively filed before the effective filing date of the claimed invention.” 35 U.S.C. § 102(a)(2). On its face, Thomas does not qualify as prior art to the ’421 patent because the application was filed on April 1, 2016, after the effective filing date of the ’421 patent. Thus, when Forescout filed its Petition, it was clear that Forescout needed to rely on a prior application in Thomas’s priority chain, such as the Thomas Provisional, to establish that Thomas was prior art to the ’421 patent under § 102(a)(2). Section 102(d)(2) of 35 U.S.C. provides that, “[f]or purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application . . . as of the filing date of the earliest such application that describes the subject matter.” 35 U.S.C. § 102(d)(2) (emphases added). Without having the benefit of the provisional’s filing date, Thomas does not qualify as prior art to the ’421 patent. See supra. Thus, the subject matter disclosed in Thomas is only available as prior art to the ’421 patent to the extent it also is described in the earlier-filed Thomas Provisional. Thus, Forescout has an initial burden, not just to compare the challenged claims with the disclosure in Thomas, but to show that the subject matter that Forescout relies on in Thomas is also found in the Thomas Provisional. Because Forescout has not met that burden, we determine that Forescout has not adequately shown that it is reasonably likely to prevail on the issue of whether Thomas is prior art to the challenged claims of the ’421 patent under 35 U.S.C. § 102(a)(2).” slip op. at 9

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “A claim is unpatentable under § 103 for obviousness “if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.” 35 U.S.C. § 103 (2018). As discussed above, we determine that Forescout has not adequately shown that Thomas is prior art to the challenged claims. For the same reason, Forescout has also failed to adequately show that in light of Thomas alone or in combination with Gill, the claimed inventions would have been obvious to a person of ordinary skill in the art prior to March 17, 2014, the effective filing date of the ’421 patent. See supra part III.B. Thus, we determine that Forescout has not shown that there is a reasonable likelihood that it would prevail in proving that any of the challenged claims would have been obvious over either Thomas alone or Thomas in view of Gill.” slip op. at 10

  § 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 9,503,421
• Intel Corporation v. Acqis LLCInstitution denied
  PTAB · Jan 18, 2022 · IPR2021-01113 · APJ Thu A Dang · IPR · Institution

  The Board denied institution of IPR challenging claims 14–16 and 20–25 under § 325(d), finding the same or substantially the same arguments were previously presented and no material Office error was shown.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “Under § 325(d), in “determining whether to institute [an inter partes review], the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” We determine whether to exercise our discretion to deny institution under 35 U.S.C. § 325(d) based on the framework set forth in Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential). In Advanced Bionics, the Board applied a two-part framework in considering whether to exercise discretion to deny institution under § 325(d): “(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics, Paper 6 at 8. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether petitioner has demonstrated a material error by the Office. Id. at 10. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 10

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “Here, Petitioner has the burden to show that the Examiner erred in determining that Chu ’330 incorporated by reference the ’886 provisional. Advanced Bionics, Paper 6 at 8.” slip op. at 17

  § 102 anticipationDiscretionary denial
• Stmicroelectronics, Inc. v. Neodron Ltd.Instituted
  PTAB · Dec 15, 2021 · IPR2021-01161 · APJ Scott B Howard · IPR · Institution

  Instituted IPR on claims 1–20 on all petitioned grounds because Petitioner showed a reasonable likelihood of prevailing on obviousness over Philipp and QT60161.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Givargis Declaration (Ex. 1003), which Patent Owner does not address at this stage, we are persuaded that Petitioner sufficiently demonstrates, for purposes of this Decision, that the combination of Philipp and QT60161 teaches each claim limitation recited in claim 1 and that a person having ordinary skill in the art would have combined the teachings of the references in the manner set forth in the Petition. Accordingly, Petitioner has demonstrated, on this record, a reasonable likelihood of prevailing on its assertion that claim 1 is unpatentable over Philipp and QT60161. 4. Claims 2–20 Because Petitioner has demonstrated a reasonable likelihood of success in proving that at least one claim of the ’251 patent is unpatentable, we institute on all grounds and all claims raised in the Petition. See PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (indicating that a decision whether to institute an inter partes review “requires a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”); 37 C.F.R. § 42.108(a). Therefore, at this stage of the proceeding, it is not necessary for us to provide an assessment of every” slip op. at 18

  • Parallel petitionsDecided for petitioner

    “Parallel Petitions Challenging the Same Patent. Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations. Two or more petitions filed against the same patent at or about the same time (e.g., before the first preliminary response by the patent owner) may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns. See 35 U.S.C. § 316(b). CTPG, 59. Nonetheless, the Consolidated Trial Practice Guide recognizes that “more than one petition may be necessary, including for example, . . . when there is a dispute about priority date requiring arguments under multiple prior art references.” Id. The present circumstance is consistent with the exception referenced in the Consolidated Trial Practice Guide because there is a potential dispute about the effective filing date of the ’251 patent, which may require arguments to be made under multiple prior art references. See Paper 3, 2–3. Moreover, Patent Owner has not requested that we exercise our discretion to only consider, at most, one petition. Accordingly, we do not exercise our discretion to deny this Petition under § 314(a). E.” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted

    “implement these functions with a touch screen and to trigger the claimed time duration from detecting a ‘key touch on a/the touch screen’ pursuant to the touch screen teachings of QT60161.” Pet. 36.9 More specifically, Petitioner argues that it would have been obvious to apply the timed features of Philipp “to a ‘touch screen’ and to trigger the claimed time duration from detecting a ‘key touch on a/the touch screen.’” Id. at 29. According to Petitioner, a person having ordinary skill in the art would have made such a combination because (1) “the primary timer-based functions described and claimed in the ’251 Patent are not only compatible with the touch screen described in QT60161, but are expressly discussed in QT60161” (id. at 30; see also id. at 3031 (citing Ex. 1001, 6:61– 7:2; Ex. 1017, 7)), 9 The Petition emphasizes the names of prior art references. The emphasis is omitted throughout this Decision. (2) QT60161 and Philipp “are compatible with the same sensor technology” (id. at 31; see also id. at 31–32 (citing Ex. 1017, 5, Figs. 1-1, 1-2; Ex. 1024 ¶ 48, 49; Ex. 1003 ¶ 52; Ex. 1028, Figs. 1b, 7)), (3) both the ’251 patent and QT60161 are directed to saving power after the passage of time (id. at 32–33 (citing Ex. 1001, 4:55–65, 10:41–13:59; Ex. 1017, 11; Ex. 1003 ¶¶ 97– 103)), and (4) implementing Philipp “with QT60161’s touch screen would have yielded predictable results” (id. at 33 (citing Ex. 1003 ¶¶ 97–103)). After reviewing Petitioner’s arguments and information, including the Givargis Declaration (Ex. 1003), which Patent Owner does not address at this stage, we are persuaded that Petitioner sufficiently demonstrates, for purposes of this Decision, that the combination of Philipp and QT60161 teaches each claim limitation recited in claim 1 and that a person having ordinary skill in the art would have combined the teachings of the references in the manner set forth in the Petition. Accordingly, Petitioner has demonstrated, on this record, a reasonable likelihood of prevailing on its assertion that claim 1 is unpatentable over Philipp and QT60161.” slip op. at 17

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner

    “In evaluating the effective filing date of the ’251 patent, we first address the parties’ respective burdens. In an inter partes review, Petitioner bears the ultimate burden of persuasion regarding unpatentability, which never shifts to patent owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379 (Fed. Cir. 2015). Dynamic Drinkware also establishes that Petitioner has the initial burden of production to show a reference is prior art. Dynamic Drinkware, 800 F.3d at 1379. However, the burden of production then shifts to Patent Owner to refute Petitioner’s argument by either showing the prior art does not actually render the claims unpatentable or does not qualify as prior art. Id. at 1380. The burden of production then shifts back to Petitioner to respond to Patent Owner’s argument. Id. The Board then evaluates all of the evidence and determines whether Petitioner has satisfied its burden of persuasion regarding unpatentability. Id. We apply the same framework when considering whether the parties have met their respective burdens at this stage of the proceeding. (2) Application of Dynamic Drinkware Based on the current status of the proceedings, we are sufficiently persuaded that Petitioner satisfied its initial burden of production under Dynamic Drinkware. Specifically, Petitioner identifies two claim terms— “touch screen” and “key touch on a/the touch screen”—that are recited in each of the independent claims and were added to the ’274 application. Pet. 10 (citing Ex. 1002, 38–41); see also id. at 11–17. Additionally, as discussed below, Petitioner has also sufficiently shown that the combination of Philipp and QT60161 teaches each of the limitations of the claims of the ’251 patent. See Dynamic Drinkware, 800 F.2d at 1379 (finding Petitioner satisfied its initial burden of production by arguing that the prior art rendered the claims unpatentable). Because Petitioner satisfied its initial burden of production, the burden of production now shifts to Patent Owner to argue or produce evidence that either (1) the prior art does not render the claims unpatentable or (2) that Philipp is not prior art because the asserted claims of the ’251 patent are entitled to the benefit of a filing date (constructive or otherwise) prior to Philipp. See Dynamic Drinkware, 800 F.3d at 1380. Because Patent Owner—as is its right—chose not to file a Patent Owner’s Preliminary Response, for purposes of institution only, Patent Owner did not meet its burden of production to show that the ’251 patent is entitled to a filing date earlier than Philipp.” slip op. at 13

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,749,251
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Acqis LLCRehearing denied
  PTAB · Dec 8, 2021 · IPR2021-00608 · APJ Thu A Dang · IPR · Rehearing

  The Board denied Samsung’s rehearing request, leaving institution denied under § 325(d) because the same or substantially the same arguments were previously presented and examiner error was not shown.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in its petition. 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” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “Advanced Bionics, we exercised our discretion under 35 U.S.C. § 325(d) and determined not to institute inter partes review. Dec. 7−26 (citing Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte Gmbh, IPR2019- 01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential)). As to Part 1 of the Advanced Bionics framework, we determined that the same or substantially the same arguments were presented previously to the Office. Id. at 10−13. Under Part 2 of the Advanced Bionics framework, we determined that Petitioner failed to show that the Examiner erred by not realizing that Chu ’330 and Chu ’886 qualify as 35 U.S.C. § 102(b) prior art and are material to the patentability of the claims in the ’654 patent. Id. at 14−26.” slip op. at 3

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Petitioner’s arguments are new arguments raised for the first time in its Rehearing Request. Petitioner acknowledges that “NRG and Hollmer were not cited in the Petition.” Req. Reh’g 10. Nevertheless, Petitioner alleges that it “could not have anticipated the Patent Owner’s mischaracterization of the Droplets decision, nor the Board’s reliance on this mischaracterization,” and that Petitioner was not authorized to file a reply to the Patent Owner Preliminary Response. Id.; see also id. at 2−3, fn.1. Petitioner’s new arguments in connection with Hollmer and NRG are improper. As we discussed above, Patent Owner did not mischaracterize and we did not misapprehend Droplets. It was not necessary to authorize Petitioner to file a reply, as we were capable of determining whether Patent Owner mischaracterizes Droplets. As discussed above, Petitioner fails to recognize that the language relied upon by Patent Owner in Droplets is consistent with 37 C.F.R. § 1.57 and MPEP § 608.01(p). Although Petitioner relies on MPEP § 608.01(p) in its Petition, Petitioner now in its Rehearing Request for the first time suggests that we should ignore MPEP § 608.01(p) and the case law cited in MPEP § 608.01(p). Pet. 11–12; Req. Reh’g 6−7. A request for rehearing is not an opportunity to submit new arguments, after the decision has noted the deficiencies in the petitioner’s original analysis. 37 C.F.R. § 42.71(d). It is Petitioner’s burden to identify specifically all matters we misapprehended or overlooked in our Decision to Institute. We could not have misapprehended or overlooked the new arguments that were not presented in the record until after the Decision.” slip op. at 15

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “Contrary to Petitioner’s contentions, section 1.57 of Title 37 of the Code of Federal Regulations is not a “statute,” but a regulation that became effective on September 21, 2004. See 69 Fed. Reg. 56,482. The ’882 application, which incorporated Chu ’886 by reference, was filed on September 8, 1998, and issued as Chu ’330 on February 5, 2002. Ex. 1005, codes (21), (22), (45), (60), 6:1–7. The ’654 patent, which incorporated the ’882 application by reference, is a reissue of Application No. 09/312,199 (“the ’199 application”) filed on May 14, 1999, now U.S. Patent No. 6,634,777 (“the ’777 patent”), issued on November 4, 2003. Ex. 1001, codes (63), (64); 5:63–67. Both the ’882 application (issued as Chu ’330) and the ’199 application (reissued as the ’654 patent) were filed and issued as patents prior to the effective date, September 21, 2004, of 37 C.F.R. § 1.57. Petitioner does not explain why the applicant should have complied with 37 C.F.R. § 1.57, which did not exist at the time of filing of those applications or issuance of those patents that incorporated by reference Chu ’886 and the ’882 application. Pet. 7–8, 10−17; Req. Reh’g 1−12. We decline to apply 37 C.F.R. § 1.57 retroactively to the incorporation by reference statements submitted in the ’882 application and the ’199 application.” slip op. at 6

  § 102 anticipationDiscretionary denial

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.