- Ebay Inc. / Alibaba.Com Hong Kong Ltd. et al. v. Global Equity Management (SA) Pty. Ltd.Rehearing grantedPTAB · Oct 12, 2018 · IPR2016-01828 · APJ Kevin C Trock · IPR · Rehearing
Rehearing was granted in part: review was instituted on all challenged claims and grounds, but claims 16 and 28 were not shown unpatentable because their scope could not be determined without speculation.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“For the reasons explained below, we grant Patent Owner’s request for rehearing to the extent we (1) modify our Institution Decision to institute on all of the challenged claims, including claims 16 and 28, and all of the grounds presented in the Petition, including Ground 2; and (2) modify our Final Written Decision to include a determination with respect to claims 16 and 28. We deny, however, Patent Owner’s request for rehearing to the extent we decline to read claims 16 and 28 on the prior art.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In SAS, the Supreme Court held that a decision to institute under 35 U.S.C. § 314 may not institute on less than all claims challenged in the petition. SAS Inst., Inc., 1348 at 1359–60. In our Institution Decision, we determined that Petitioner demonstrated a reasonable likelihood that it would establish that at least one of the challenged claims of the U.S. Patent No. 8,650,591 B2 is unpatentable. Inst. Dec. 23. Because of the Supreme Court’s ruling in SAS, we now modify our Institution Decision to institute on all of the challenged claims, including claims 16 and 28, and on all of the grounds presented in the Petition, including Ground 2, and we determine, in this Decision on Patent Owner’s Motion for Rehearing, whether claims 16 and 28 have been shown, by a preponderance of the evidence, to be unpatentable.” slip op. at 4
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“If our unpatentability analysis requires “considerable speculation as to the meaning and assumptions as to the scope” of the claims, In re Steele, 305 F.2d 859, 862 (CCPA 1962), the differences between the claimed invention and the prior art cannot be ascertained. See id.; see also BlackBerry Corp. v. MobileMedia Ideas, LLC, Case IPR2013-00036, slip op. at 19–20 (PTAB Mar. 7, 2014) (Paper 65) (citing Steele, 305 F.2d at 862–63 for the proposition that “the prior art grounds of unpatentability must fall, pro forma, because they are based on speculative assumption[s] as to the meaning of the claims” and reasoning that “an obviousness determination based on less than all of the claimed elements is speculative as to the meaning or scope of the claims”). In other words, “[w]ithout ascertaining the proper claim scope, we cannot conduct a necessary factual inquiry for determining obviousness—ascertaining differences between the claimed subject matter and the prior art.” Id. at 20 (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)).” slip op. at 6
- Prior constructionPrior construction adoptedDecided for patent owner
“least one partition of said at least one secondary storage device through said secondary storage partitions window,” “means for manipulating said at least one cabinet record through said cabinet visible partition window,” and “means for modifying said at least one cabinet record through said cabinet visible partition window.” Ex. 101, 9:66–10:25. In related litigation, the district court found in its claim construction opinion that the ’400 patent does not provide structure corresponding clearly to the functions of these limitations. Ex. 1010, 49–61. We have reviewed and considered the district court’s analysis and findings and we concur with the district court’s conclusion. We are unable to discern structure in the ’400 patent that corresponds clearly to the functions recited in the “means for” limitations of claim 16. Claim 28 recites similarly “program code for configuring said at least one partition of said at least one secondary storage device through a secondary storage partitions window,” “program code for manipulating said virtual cabinet record through said cabinet visible partition window,” and “program code for means for modifying said at least one cabinet record through said cabinet visible partition window.” Ex. 1001, 10:65–11:29. The district court also found that the ’400 patent did not provide structure corresponding clearly to the function of these limitations. Ex. 1010, 49–61. We have reviewed and considered the district court’s analysis and findings and we concur with the district court’s conclusion. We are unable to discern structure in the ’400 patent that corresponds clearly to the functions recited in the “program code for” limitations of claim 28.” slip op. at 5
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 6,690,400 - Samsung Electronics America, Inc. v. Prisua Engineering Corp.Rehearing grantedPTAB · Sep 27, 2018 · IPR2017-01188 · APJ Matthew R Clements · IPR · Rehearing
The Board granted Patent Owner’s rehearing request and authorized it to re-file its Sur-Reply by September 28, 2018.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“reply “as a matter of right,” and does not address explicitly whether a Patent Owner may file a sur-reply in a case that was instituted prior to the Trial Practice Guide Update. Because the Trial Practice Guide Update did not authorize Patent Owner to file its Sur-Reply “as a matter of right,” we are not persuaded that we erred in determining that Patent Owner’s Sur-Reply was unauthorized.” slip op. at 5
- Strike new argumentGranted
“Notwithstanding all of the above, and out of an abundance of fairness to Patent Owner, Patent Owner is authorized to re-file its Sur-Reply no later than Friday, September 28, 2018.” slip op. at 6
NonePatents in suitUS 8,650,591 - PTAB · Nov 14, 2017 · IPR2015-01802 · APJ Matthew R Clements · IPR · Rehearing
Granted rehearing and held claims 2, 4, and 6 unpatentable as obvious over Rabinovich because the wireless-network limitation encompasses a connection through a wireless hub.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. With this in mind, we address the arguments presented by Petitioner.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Ex. 1002, 3:41–49. Thus, the ’680 patent itself does not limit the recited “wireless network” to an ad hoc network. Moreover, we are not persuaded by Patent Owner’s contention that our construction of “computer unit” requires limiting the recited “wireless network” to an ad hoc network. Specifically, dependent claims 2 and 4 each recite “wherein the at least one computer unit and the at least two data storage units are connected over a wireless network.” Dependent claim 6 recites a similar limitation. We construed “computing unit” to encompass any computing device. Dec. 6. We did not, as Patent Owner contends, “construe[] both the ‘computer unit’ and ‘data storage units’ as hosts” (PO Br. 3). Although our construction encompasses Rabinovich’s hosts, it does not require the recited “computer unit” and “data storage units” to be hosts. Moreover, even assuming that both units are Rabinovich’s “hosts,” dependent claims 2, 4, and 6 require only that they be “connected over a wireless network,” not “between” or “directly connected to each other,” as Patent Owner contends (PO Br. 3). Thus, we are not persuaded by Patent Owner’s contention that two hosts “connected over a wireless network” necessarily requires a wireless connection “between” two hosts. Id. Based on our review of the ’680 patent, we construe “connected over a wireless network” as broad enough to encompass a connection through a wireless hub.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Ex. 1002, 3:41–49. Thus, the ’680 patent itself does not limit the recited “wireless network” to an ad hoc network. Moreover, we are not persuaded by Patent Owner’s contention that our construction of “computer unit” requires limiting the recited “wireless network” to an ad hoc network. Specifically, dependent claims 2 and 4 each recite “wherein the at least one computer unit and the at least two data storage units are connected over a wireless network.” Dependent claim 6 recites a similar limitation. We construed “computing unit” to encompass any computing device. Dec. 6. We did not, as Patent Owner contends, “construe[] both the ‘computer unit’ and ‘data storage units’ as hosts” (PO Br. 3). Although our construction encompasses Rabinovich’s hosts, it does not require the recited “computer unit” and “data storage units” to be hosts. Moreover, even assuming that both units are Rabinovich’s “hosts,” dependent claims 2, 4, and 6 require only that they be “connected over a wireless network,” not “between” or “directly connected to each other,” as Patent Owner contends (PO Br. 3). Thus, we are not persuaded by Patent Owner’s contention that two hosts “connected over a wireless network” necessarily requires a wireless connection “between” two hosts. Id. Based on our review of the ’680 patent, we construe “connected over a wireless network” as broad enough to encompass a connection through a wireless hub. Because we determine that the “wireless network” recited in dependent claims 2, 4, and 6 need not be an ad hoc network, Patent Owner’s argument that Rabinovich’s replication method would have been unsuitable for use over an ad hoc network does not persuasively rebut Petitioner’s showing. Having considered the arguments and evidence of both parties, we are persuaded that Petitioner has shown by a preponderance of the evidence that dependent claims 2, 4, and 6 are unpatentable under 35 U.S.C. § 103(a) as obvious over Rabinovich.” slip op. at 7
- ExcludeNot reached
“We decline to assess the merits of Petitioner’s Motion to Exclude. Even without excluding the identified evidence, we have concluded that Petitioner has demonstrated, by a preponderance of the evidence, that claims 2, 4, and 6 are unpatentable. Accordingly, Petitioner’s Motion to Exclude is dismissed as moot.” slip op. at 8
Claim construction§ 103 obviousnessPatents in suitUS 7,904,680 - Hamamatsu Corporation v. Sionyx, LLCRehearing grantedPTAB · May 26, 2017 · IPR2016-01910 · APJ Monica S Ullagaddi · IPR · Rehearing
Rehearing was granted for claims 9, 24, and 25 because Petitioner did not show their process limitations lacked patentable weight; it was denied for claims 1, 4, 5, 7, 8, and 13.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): (d) Rehearing. . . . The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“The relevant inquiry is not whether the Specification has support for an “enhanced response,” but whether the Specification supports construing the claim term “interact with” to mean an “enhanced response and/or filtering.” Even assuming, without deciding, for the purposes of this decision, that diffusing, redirecting, and absorbing electromagnetic radiation results in an increased quantum efficiency that could be considered to provide an enhanced response to electromagnetic radiation, Patent Owner fails to demonstrate persuasively that one of ordinary skill in the art would understand from the description in the ’591 patent Specification that the claim term “interacting with” is defined as “providing an enhanced response and/or filtering.” Furthermore, we are unable to discern a portion of the Specification of the ’591 patent that discloses such an equivalency. Not only does the ’591 patent not define “interact with,” the Abstract of the ’591 patent discloses that “[i]n one aspect, the textured region is operable to facilitate generation of an electrical signal from the detection of infrared electromagnetic radiation” and “[i]n another aspect, interacting with electromagnetic radiation further includes increasing the semiconductor substrate’s effective absorption wavelength as compared to a semiconductor substrate lacking a textured region.” Ex. 1001, Abstract (emphasis added). This passage suggests that, at least in one aspect, “interact[ing] with” electromagnetic radiation includes merely generating electrons from photons, which is not an “enhanced response” and/or “filtering,” as required by Patent Owner’s proffered claim construction.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableMixed
“position with sufficient evidence that demonstrates that the processes recited in claims 9, 24, and 25 do not impart structural and functional differences to the product. Moreover, Petitioner does not point to citations in the ’591 patent, testimonial evidence, or any other record evidence to support its position that the structure or functionality of the textured region resulting from the chemical etching or lasing processes recited in claims 9, 24, and 25 would be the same as the structure or functionality of a roughened surface produced by a mechanical polishing process as disclosed in Nakashiba. Rather, Petitioner provides only conclusory statements regarding its position. Given that Petitioner has not demonstrated sufficiently that the limitations recited in claims 9, 24, and 25 are not entitled to patentable weight, and in light of Petitioner’s concession that “Nakashiba does not disclose that the roughened surface S1 is formed by either lasing (in particular using short duration laser pulses) or chemical etching, as recited in claims 9, 24, and 25 of the ‘591 Patent,” we determine Petitioner has not met its burden of demonstrating a reasonable likelihood of prevailing with respect to showing that claims 9, 24, and 25 are anticipated under 35 U.S.C. § 102 by Nakashiba.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstitution denied meritsMixed
“Upon review of the record, we determine Petitioner did not support its position with sufficient evidence that demonstrates that the processes recited in claims 9, 24, and 25 do not impart structural and functional differences to the product. Moreover, Petitioner does not point to citations in the ’591 patent, testimonial evidence, or any other record evidence to support its position that the structure or functionality of the textured region resulting from the chemical etching or lasing processes recited in claims 9, 24, and 25 would be the same as the structure or functionality of a roughened surface produced by a mechanical polishing process as disclosed in Nakashiba. Rather, Petitioner provides only conclusory statements regarding its position. Given that Petitioner has not demonstrated sufficiently that the limitations recited in claims 9, 24, and 25 are not entitled to patentable weight, and in light of Petitioner’s concession that “Nakashiba does not disclose that the roughened surface S1 is formed by either lasing (in particular using short duration laser pulses) or chemical etching, as recited in claims 9, 24, and 25 of the ‘591 Patent,” we determine Petitioner has not met its burden of demonstrating a reasonable likelihood of prevailing with respect to showing that claims 9, 24, and 25 are anticipated under 35 U.S.C. § 102 by Nakashiba.” slip op. at 6
Claim construction§ 102 anticipationPatents in suitUS 8,680,591 - PTAB · Feb 2, 2015 · IPR2014-00221 · APJ Jameson Lee · IPR · Rehearing
The Board granted rehearing to the extent that Patent Owner may file a revised motion to exclude with the improper material removed.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“We are unpersuaded that Patent Owner’s Motion to Exclude complied with the Order dated June 20, 2014. Even as characterized in the Rehearing Request, the Motion to Exclude indisputably contained arguments alleging that Petitioner’s Reply was beyond the proper scope of a reply, and not just arguments directed solely to the evidence in support of the Reply. Nevertheless, Patent Owner’s explanation is sufficient to justify an opportunity for the Patent Owner to file a Revised Motion to Exclude, which would be the same as the Motion to Exclude but with the inappropriate material removed, as Patent Owner has offered in the Request for Rehearing.” slip op. at 3
- ExcludeMotion to exclude, grantedGranted in part
“We are unpersuaded that Patent Owner’s Motion to Exclude complied with the Order dated June 20, 2014. Even as characterized in the Rehearing Request, the Motion to Exclude indisputably contained arguments alleging that Petitioner’s Reply was beyond the proper scope of a reply, and not just arguments directed solely to the evidence in support of the Reply. Nevertheless, Patent Owner’s explanation is sufficient to justify an opportunity for the Patent Owner to file a Revised Motion to Exclude, which would be the same as the Motion to Exclude but with the inappropriate material removed, as Patent Owner has offered in the Request for Rehearing.” slip op. at 3
NonePatents in suitUS 7,991,522 - PTAB · Feb 2, 2015 · IPR2014-00222 · APJ Jameson Lee · IPR · Rehearing
The Board granted rehearing to the extent that Magna may file a revised motion to exclude with the improper material removed.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“We are unpersuaded that Patent Owner’s Motion to Exclude complied with the Order dated June 20, 2014. Even as characterized in the Rehearing Request, the Motion to Exclude indisputably contained arguments alleging that Petitioner’s Reply was beyond the proper scope of a reply, and not just arguments directed solely to the evidence in support of the Reply. Nevertheless, Patent Owner’s explanation is sufficient to justify an opportunity for the Patent Owner to file a Revised Motion to Exclude, which would be the same as the Motion to Exclude but with the inappropriate material removed, as Patent Owner has offered in the Request for Rehearing.” slip op. at 3
- ExcludeMotion to exclude, grantedGranted in part
“We are unpersuaded that Patent Owner’s Motion to Exclude complied with the Order dated June 20, 2014. Even as characterized in the Rehearing Request, the Motion to Exclude indisputably contained arguments alleging that Petitioner’s Reply was beyond the proper scope of a reply, and not just arguments directed solely to the evidence in support of the Reply. Nevertheless, Patent Owner’s explanation is sufficient to justify an opportunity for the Patent Owner to file a Revised Motion to Exclude, which would be the same as the Motion to Exclude but with the inappropriate material removed, as Patent Owner has offered in the Request for Rehearing.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“We are unpersuaded that Patent Owner’s Motion to Exclude complied with the Order dated June 20, 2014. Even as characterized in the Rehearing Request, the Motion to Exclude indisputably contained arguments alleging that Petitioner’s Reply was beyond the proper scope of a reply, and not just arguments directed solely to the evidence in support of the Reply. Nevertheless, Patent Owner’s explanation is sufficient to justify an opportunity for the Patent Owner to file a Revised Motion to Exclude, which would be the same as the Motion to Exclude but with the inappropriate material removed, as Patent Owner has offered in the Request for Rehearing. In the interest of avoiding further confusion and non-compliance, a joint telephone conference call will be held to confirm precisely what content will be removed from the Revised Motion to Exclude, what revised opposition will be filed by Petitioner, and what revised reply will be filed by Patent Owner.” slip op. at 3
NonePatents in suitUS 8,386,114 - PTAB · Feb 2, 2015 · IPR2014-00220 · APJ Jameson Lee · IPR · Rehearing
The Board granted rehearing to allow the Patent Owner to file a revised motion to exclude with improper material removed.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“We are unpersuaded that Patent Owner’s Motion to Exclude complied with the Order dated June 20, 2014. Even as characterized in the Rehearing Request, the Motion to Exclude indisputably contained arguments alleging that Petitioner’s Reply was beyond the proper scope of a reply, and not just arguments directed solely to the evidence in support of the Reply. Nevertheless, Patent Owner’s explanation is sufficient to justify an opportunity for the Patent Owner to file a Revised Motion to Exclude, which would be the same as the Motion to Exclude but with the inappropriate material removed, as Patent Owner has offered in the Request for Rehearing.” slip op. at 3
- ExcludeMotion to exclude, grantedGranted
“We are unpersuaded that Patent Owner’s Motion to Exclude complied with the Order dated June 20, 2014. Even as characterized in the Rehearing Request, the Motion to Exclude indisputably contained arguments alleging that Petitioner’s Reply was beyond the proper scope of a reply, and not just arguments directed solely to the evidence in support of the Reply. Nevertheless, Patent Owner’s explanation is sufficient to justify an opportunity for the Patent Owner to file a Revised Motion to Exclude, which would be the same as the Motion to Exclude but with the inappropriate material removed, as Patent Owner has offered in the Request for Rehearing.” slip op. at 3
NonePatents in suitUS 7,859,565 - PTAB · Feb 2, 2015 · IPR2014-00227 · APJ Jameson Lee · IPR · Rehearing
The Board granted rehearing to the extent that Magna may file a revised motion to exclude with the improper material removed.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“We are unpersuaded that Patent Owner’s Motion to Exclude complied with the Order dated June 20, 2014. Even as characterized in the Rehearing Request, the Motion to Exclude indisputably contained arguments alleging that Petitioner’s Reply was beyond the proper scope of a reply, and not just arguments directed solely to the evidence in support of the Reply. Nevertheless, Patent Owner’s explanation is sufficient to justify an opportunity for the Patent Owner to file a Revised Motion to Exclude, which would be the same as the Motion to Exclude but with the inappropriate material removed, as Patent Owner has offered in the Request for Rehearing.” slip op. at 3
- ExcludeMotion to exclude, grantedGranted in part
“We are unpersuaded that Patent Owner’s Motion to Exclude complied with the Order dated June 20, 2014. Even as characterized in the Rehearing Request, the Motion to Exclude indisputably contained arguments alleging that Petitioner’s Reply was beyond the proper scope of a reply, and not just arguments directed solely to the evidence in support of the Reply. Nevertheless, Patent Owner’s explanation is sufficient to justify an opportunity for the Patent Owner to file a Revised Motion to Exclude, which would be the same as the Motion to Exclude but with the inappropriate material removed, as Patent Owner has offered in the Request for Rehearing.” slip op. at 3
NonePatents in suitUS 7,877,175
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.