- Google LLC v. Uniloc Luxembourg, S.A.Rehearing deniedPTAB · Nov 1, 2018 · IPR2017-02080 · APJ Charles J Boudreau · IPR · Rehearing
The Board denied Google's rehearing request, leaving institution denied for claims 3–23 because the petition did not show Zydney disclosed the claimed object field.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We have considered Petitioner’s contentions but are not persuaded of any error in our Decision. Our Decision was premised not on a rejection of Petitioner’s proposed formulation of the broadest reasonable interpretation of the “object field” limitation recited in claim 3, but instead on Petitioner’s failure to persuade us that Zydney’s “body” maps to the recited object field. A prior art reference cannot anticipate “unless [it] discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Moreover, “[a]nticipation requires that a single reference ‘describe the claimed invention with sufficient precision and detail to establish that the subject matter existed in the prior art.’” Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1284 (Fed. Cir. 2017) (alteration in original) (quoting Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed. Cir. 2002)). “For this reason, it has long been understood that ambiguous references do not, as a matter of law, anticipate a claim.” Id. But the disclosure of Zydney relied upon by Petitioner for the object field limitation of claim 3 is, at best, ambiguous.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In our Decision, we found that there was insufficient evidence on the record to support Petitioner’s contention that Zydney’s disclosure of a message “body” expressly discloses the recited object field and, further, that Petitioner did not establish a reasonable likelihood of showing that the claimed object field is inherently anticipated by Zydney. Dec. 17. We explained, in particular, that “[a]lthough Zydney discloses that its voice container includes ‘voice data,’ . . . Petitioner has not shown that voice data necessarily would be included in an ‘object field.’” Id. We, accordingly, determined that Petitioner did not demonstrate a reasonable likelihood of showing that the object field limitation of claim 3 is disclosed by Zydney.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“record to support Petitioner’s contention that Zydney’s disclosure of a message “body” expressly discloses the recited object field and, further, that Petitioner did not establish a reasonable likelihood of showing that the claimed object field is inherently anticipated by Zydney. Dec. 17. We explained, in particular, that “[a]lthough Zydney discloses that its voice container includes ‘voice data,’ . . . Petitioner has not shown that voice data necessarily would be included in an ‘object field.’” Id. We, accordingly, determined that Petitioner did not demonstrate a reasonable likelihood of showing that the object field limitation of claim 3 is disclosed by Zydney.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“recites, in part, “a messaging system communicating with a plurality of instant voice message client systems . . . wherein the messaging system receives an instant voice message from one of the plurality of instant voice message client systems, and wherein the instant voice message includes an object field including a digitized audio file.” Ex. 1001, 24:15–27 (emphasis added). Petitioner alleges that claims 3–8, 11, 13, and 18–21 are anticipated by Zydney1 and that claims 3–23 also are unpatentable as obvious over the combined teachings of Zydney and certain other references (Pet. 6, 11–68), relying in each of the asserted grounds on Zydney as teaching the recited “object field including a digitized audio field” (id. at 17–19, 38).” slip op. at 3
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,724,622 - Sonos, Inc. v. D&M Holdings Inc.Rehearing deniedPTAB · Jan 31, 2018 · IPR2017-01045 · APJ Jon M Jurgovan · IPR · Rehearing
The Board denied Patent Owner’s rehearing request and left institution in place for claims 1–20 and 25–27.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS Standard of Review When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Accordingly, after review of Patent Owner’s arguments in the Request for Rehearing, we remain of the opinion that Petitioner provided sufficient evidence and explanation to establish a reasonable likelihood that the challenged claims are unpatentable, and thus we decline to change our Decision to institute inter partes review. III. CONCLUSION For the foregoing reasons, we conclude that Patent Owner has not met its burden of showing an abuse of discretion in our Decision. We, therefore, deny Patent Owner’s request to reverse our determination to institute an inter partes review.” slip op. at 8
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner
“Petitioner demonstrated that Lambourne ’853 is an issued patent (Pet. 13) that has a filing date of September 11, 2007 (Pet. 14), which is before the October 16, 2007 filing date of the ’294 patent (Ex. 1013). Thus, Petitioner established at least a prima facie case that Lambourne ’853 is prior art under 35 U.S.C. § 102(e). At this point, the burden of production shifted to Patent Owner to show that the ’294 patent is entitled to its provisional application’s filing date of October 17, 2006. Patent Owner did not meet this burden of production, and accordingly, the burden of production never shifted back to the Petitioner to show Lambourne ’853 was entitled to the benefit of the filing date of its provisional application, Lambourne ’407. Thus, we deny Patent Owner’s request for rehearing for this reason.” slip op. at 4
- BurdenDecided for patent owner
“Applying these burdens to the present case, the ultimate burden of persuasion was on the Petitioner to show a reasonable likelihood that Petitioner would prevail with respect to at least 1 claim based on the information presented. 35 U.S.C. § 314(a). Petitioner also had the initial burden of production to provide argument and evidence to establish a reasonable likelihood of unpatentability for at least 1 claim, and chose to do so by relying on Lambourne ’853 in addition to other prior art references. Petitioner demonstrated that Lambourne ’853 is an issued patent (Pet. 13) that has a filing date of September 11, 2007 (Pet. 14), which is before the October 16, 2007 filing date of the ’294 patent (Ex. 1013). Thus, Petitioner established at least a prima facie case that Lambourne ’853 is prior art under 35 U.S.C. § 102(e). At this point, the burden of production shifted to Patent Owner to show that the ’294 patent is entitled to its provisional application’s filing date of October 17, 2006. Patent Owner did not meet this burden of production, and accordingly, the burden of production never shifted back to the Petitioner to show Lambourne ’853 was entitled to the benefit of the filing date of its provisional application, Lambourne ’407. Thus, we deny Patent Owner’s request for rehearing for this reason.” slip op. at 4
§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,987,294 - General Plastic Industrial Co., Ltd. v. Canon Kabushiki KaishaRehearing deniedPTAB · May 19, 2016 · IPR2015-01966 · APJ Sheila F Mcshane · IPR · Rehearing
The Board denied rehearing and maintained its decision not to institute review of claims 1, 7–9, and 16 because neither challenge showed a reasonable likelihood of success.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION A party requesting rehearing has the burden to show a decision should be modified by specifically identifying all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing 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 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. 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). We address the General Plastic’s contentions outlined above, first with respect to the anticipation challenge and, then with respect to the obviousness challenge.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“construe[] [the claims at issue] to require that the recited sealing member must be of a one-piece or inseparable construction” or fail to apprehend that General Plastic was asserting that its anticipation challenge was based on a “part-time” analysis. See Req. Reh’g 2–3, 4–5. As explained in the Decision, we considered General Plastic’s assertion under the scenario where power transmitting member and fixed cover of the container are alleged “integrally combined”—that is, the “part-time” circumstances depicted in Figure 6 of Matsuoka—and found that the evidence was insufficient to support that view under the circumstances. See Dec. 15–18. Failure of General Plastic’s challenge does not equate to a requirement that the sealing member has to be of one-piece or inseparable construction, but instead reflects that, based on the evidence and argument presented and developed in the Petition, we did not find a reasonable likelihood that General Plastic would prevail on the anticipation challenge. As the Decision discusses, the Petition contains inconsistent mapping of the prior art onto the claim elements, and, contrary to General Plastic’s view of elements being “integrally combined,” Matsuoka instead discloses that the rotary power transmitting member is a part of copier, and not the toner container, and is detachable from the toner container.1 Id. at 17–18. This evidence is incongruent with a determination that General Plastic would have had a reasonable likelihood of prevailing on its anticipation challenge.” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“construe[] [the claims at issue] to require that the recited sealing member must be of a one-piece or inseparable construction” or fail to apprehend that General Plastic was asserting that its anticipation challenge was based on a “part-time” analysis. See Req. Reh’g 2–3, 4–5. As explained in the Decision, we considered General Plastic’s assertion under the scenario where power transmitting member and fixed cover of the container are alleged “integrally combined”—that is, the “part-time” circumstances depicted in Figure 6 of Matsuoka—and found that the evidence was insufficient to support that view under the circumstances. See Dec. 15–18. Failure of General Plastic’s challenge does not equate to a requirement that the sealing member has to be of one-piece or inseparable construction, but instead reflects that, based on the evidence and argument presented and developed in the Petition, we did not find a reasonable likelihood that General Plastic would prevail on the anticipation challenge. As the Decision discusses, the Petition contains inconsistent mapping of the prior art onto the claim elements, and, contrary to General Plastic’s view of elements being “integrally combined,” Matsuoka instead discloses that the rotary power transmitting member is a part of copier, and not the toner container, and is detachable from the toner container.1 Id. at 17–18. This evidence is incongruent with a determination that General Plastic would have had a reasonable likelihood of prevailing on its anticipation challenge.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“did not overlook or misapprehend that the engagement claw portion 443 of the rotary power transmitting member can be decoupled from rotary shaft portion 442 and gear 47. Req. Reh’g. 12–14. We also did not overlook or misapprehend Dr. Spingett’s statements concerning the removal of the engagement claw portion 443. Req. Reh’g. 14 (citing Ex. 1007 ¶ 72). The issue as to whether one of ordinary skill in the art would have envisioned the possibility of a disengagement problem between the rotary power transmitting member and fixed cover in the first place underlies the motivation, according to Dr. Springer, for testing the removal of the engagement claw portion. See Ex. 1007 ¶¶ 71, 72. Thus, we determined that the evidence on the possibility of disengagement problem between the rotary power transmitting member and fixed cover was insufficient to support why one of ordinary skill in the art would have modified Matsuoka in the manner alleged in the Petition. See Dec. 20. Even after considering General Plastics new twist on the same arguments in this Request of Rehearing, our view remains the same. We, therefore, are not persuaded that we misapprehended or overlooked any matter in making our determination that General Plastic did not establish a reasonable likelihood of prevailing on its obviousness challenge as to claims 1, 7–9, and 16 of the ’820 patent.” slip op. at 6
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,046,820 - Sata GmbH & Co. KG v. Anest Iwata CorporationRehearing deniedPTAB · May 17, 2016 · IPR2015-01790 · APJ Jennifer S Bisk · IPR · Rehearing
The Board denied SATA’s rehearing request, leaving institution denied for claims 15–22 because the petition did not adequately explain how the evidence supported the proposed grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on petition, a panel will review 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[,]” which party “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.” 37 C.F.R. § 42.71(d). slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Moreover, as we noted in our Institution Decision, our determination to not institute trial was based, in-part, on inadequacies of the Petition in explaining suitably how the proffered evidence was applied to the proposed grounds. Pet. 5– 7. In that respect, we were not satisfied that Petitioner had met its burden of showing a reasonable likelihood of success in showing the unpatentability of claims 15–22 in view of the record that was before us.” slip op. at 4
- BurdenDecided for patent owner
“Moreover, as we noted in our Institution Decision, our determination to not institute trial was based, in-part, on inadequacies of the Petition in explaining suitably how the proffered evidence was applied to the proposed grounds. Pet. 5– 7. In that respect, we were not satisfied that Petitioner had met its burden of showing a reasonable likelihood of success in showing the unpatentability of claims 15–22 in view of the record that was before us.” slip op. at 4
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“35 U.S.C. § 311(b) states that “[a] petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” Petitioner does not explain how the Final Written Decision of IPR2013-00111 or “the bulk of the entire proceedings” of that case qualify as either a patent or a printed publication under the statute. In particular, to qualify as a printed publication under § 102, a reference “must have been sufficiently accessible to the public interested in the art” at the time the patent application at issue was filed. In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009) (internal quotation marks omitted). The results of IPR2013-00111 were, by definition, not available until well after the ’387 patent issued.” slip op. at 3
§ 102 anticipationPatents in suitUS 6,494,387 - Under Armour, Inc. v. Adidas AGRehearing deniedPTAB · Feb 29, 2016 · IPR2015-01532 · APJ Justin Busch · IPR · Rehearing
The Board denied Under Armour’s rehearing request, leaving in place the denial of institution on claim 17 for anticipation by Bouve and, alternatively, Kim.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on petition, a panel will review 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[,]” which party “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.” 37 C.F.R. § 42.71(d). slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Petitioner argues it just needs to show “that Kim discloses storing data that falls within the scope of the plain words ‘a length of the route.’” We agree with Petitioner that the plain meaning of “a length of the route” is the appropriate construction because, on this record, we find no reason to give the phrase a special meaning. The Petition, however, did not present persuasive argument that the plain meaning of “a length of the route” encompasses Kim’s total altitude distance.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“users needed to manually estimate route distances between points of interest. Pet. 17–18 (quoting Ex. 1004, 1:28–35). The Petition asserted “Bouve improved upon the prior art system by maintaining route length information in a database.” Id. at 18 (emphasis added). In support of that assertion, the Petition pointed to Bouve’s disclosure that “The processors . . . compute the mileage indication, along the retrieved travel route(s), for each individual item of travel information which is retrieved from the data bases,” and concluded that Bouve computes mileage information along a route and route length between points of interest using route length information stored in a database. Id. (quoting Ex. 1004, 8:18–22 (underlining added). The Petition, however, failed to identify any disclosure in Bouve that “route length information” is maintained in a database. The Petition also argued Bouve discloses recommending a route “based on that stored length of a route” because Bouve allows a user to select the shortest route between two points. Id. at 19.” slip op. at 3
Claim construction§ 102 anticipationPatents in suitUS 8,652,009 - Apple Inc. / HTC Corporation et al. v. Memory Integrity, LLCRehearing deniedPTAB · Jul 21, 2015 · IPR2015-00159 · APJ Kerry Begley · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution for claim 12 because Petitioner did not show that Pong necessarily discloses completing a memory transaction after exactly one response.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“review the decision for an “abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing [the] decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). 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” the petition. Id.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“sufficiently that Pong inherently discloses “after receiving a first number of responses to a first probe” “and the first number is one,” as recited in claim 12. See Decision – Institution of Inter Partes Review (Paper 12, “Dec.”), 23–24. Upon careful review and analysis of the claims and written description of the ’121 patent, we concluded that the Petition’s proposed interpretation of this limitation as encompassing processing nodes programmed to complete a memory transaction at any time after receiving one response—including after receiving two, three, four, etc. responses— was too broad to be reasonable. Id. at 10–13. Instead, we determined that “after receiving a first number of responses to a first probe” “wherein . . . the first number is one” means “after receiving one response—not at least one or more than one response, as Petitioner proposes.” Id. at 13. Under this claim construction, we were not persuaded by the Petition’s argument that Pong inherently discloses claim 12, which is “premised on the possibility that Pong’s processors may receive more than response to a request” before completing a memory transaction. Id. at 23–24. We further noted that “the Petition does not point to any evidence that Pong’s processors necessarily perform a memory transaction after receiving one response.” Id. at 24.” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“Even considering paragraph A-22 of Dr. Horst’s testimony, we remain unpersuaded that Pong inherently discloses claim 12. This testimony, opining that Pong’s processors “must necessarily be configured to complete a memory transaction as soon as it receives the first response,” Ex. 1014 ¶ A-22 (emphasis added), is contrary to the position Petitioner takes in the Petition, which acknowledges “the case where the requesting processor [in Pong] waits for the second response to complete the memory transaction,” Pet. 34 (emphasis added). Petitioner does not address, or explain, the apparent inconsistency between these diverging positions. Moreover, Dr. Horst’s testimony on this point is conclusory and is insufficient to show inherency. See Ex. 1014 ¶ A-22; Paper 11 (“Prelim Resp.”), 48–50. The mere fact that “Pong does not describe that the directory filter ever informs the requesting processor of the number of responses it should expect to receive” is insufficient to establish that the requesting processor “must necessarily be configured to complete a memory transaction as soon as it receives the first response.” Ex. 1014 ¶ A-22. The relevant testimony does not sufficiently exclude other possible means of programming processors in Pong—as required for inherency. See Akamai Techs., Inc. v. Cable & Wireless Internet Servs., Inc., 344 F.3d 1186, 1192 (Fed. Cir. 2003) (“A claim limitation is inherent in the prior art if it is necessarily present in the prior art, not merely probably or possibly present.”).” slip op. at 5
§ 102 anticipationPatents in suitUS 7,296,121
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.