- Shenzhen Mediatek Tong Technology Co., Ltd. v. The Noco CompanyRehearing deniedPTAB · May 17, 2021 · IPR2020-01387 · APJ Jameson Lee · IPR · Rehearing
The Board denied rehearing, leaving in place the denial of institution on claims 1–3, 5, 8–17, 19–21, and 23 because Petitioner did not show an abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When rehearing a decision on institution, we do not review the merits of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, the request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not reached
“We recognize that Paragraph 50 of Zhang describes two ways to measure the voltage “at the two terminals” of the vehicle battery, and the other way is by the small teeth of the output power clip. Ex. 1006 ¶ 50. But Zhang describes the two ways as occurring “at the same time,” and not as alternative implementations. Thus, measurements at both points are taken to obtain the voltage at the two terminals of the vehicle battery. Dr. Hartup does not address or explain how a measurement can be taken at the input terminal of the DC contactor that would be indicative of the voltage of the external vehicle battery connected to the output terminal of the DC contactor, if the DC contactor is not already closed. Ex. 1003 ¶ 59. The Petition does not address Zhang’s disclosure of measuring the voltage of the vehicle battery on the input side of the DC contactor at the same time a measurement is taken by the small teeth of the output power clip. Paper 9, 33 (emphasis added).” slip op. at 3
- BurdenDecided for patent owner
“II. STANDARD OF REVIEW When rehearing a decision on institution, we do not review the merits of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, the request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
§ 102 anticipationPatents in suitUS 9,007,015 - Unified Patents Inc. v. Flectere LLCRehearing deniedPTAB · Aug 22, 2019 · IPR2019-00479 · APJ Stephen E Belisle · IPR · Rehearing
The Board denied Unified Patents’ rehearing request and left in place the denial of institution because it had not overlooked or misapprehended petition arguments or evidence.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“the Board reviews a decision for an abuse of discretion. See 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. See Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended 2 or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). “The burden of showing a decision should be modified lies with the party challenging the decision.” Id.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableInherency not foundNot shown unpatentable
“disclosure in Tondevold of [such a feature].” Dec. 13–14 (“[W]e do not find in the portions of Tondevold cited by Petitioner a description of host computer 40 disseminating new or updated forms to nodes 42.”). Even in the Request, Petitioner does not state with particularity which specific disclosure in Tondevold explicitly discloses sending a data-entry form with verification logic through a computer network to a remote computer. See Request 12–14. To the extent that Petitioner relies on Tondevold’s disclosure of “allowing forms to be created and sent to and from a number of locations” (Request 13; Ex. 1003, 6:41–44 (emphasis altered)), such reliance is misplaced. Indeed, Petitioner proffers that sentence fragment out of context—in context and in the same paragraph, the “forms” being sent “to and from” locations are not actually data-entry forms with verification logic, but merely files of raw data corresponding to the blank fields in forms. See Ex. 1003, 6:37–61 (“[O]nly the data file of raw data corresponding to the blank fields in a form . . . must be sent between any node 42 and the host computer 40 to pass a form.”). Second, Ground 1 in the Petition relies on anticipation by Tondevold. To serve as an anticipatory reference, “the reference must disclose each and every element of the claimed invention, whether it does so explicitly or inherently.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). “To establish inherency, the extrinsic evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference . . . . Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given 9 set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal quotations omitted). In the Petition, Petitioner did not argue that Tondevold inherently discloses sending a dataentry form with verification logic through a computer network to a remote computer. See Pet. 36–40. In the Request, Petitioner now argues that in Tondevold “the form and form definitions must be sent to the node in the first place” (Request 14 (emphasis added)), but even here Petitioner stops short of arguing that Tondevold necessarily discloses sending a data-entry form with verification logic through a computer network to a remote computer. Indeed, Tondevold could send data-entry forms with verification logic from the host to remote computers by more than one means, such as, for example, by distributing portable storage devices for manual upload or through a computer network. As stated in the Decision, the Board did not find in the portions of Tondevold cited in the Petition (or Request) an explicit description of how Tondevold’s host computer 40 disseminates new or updated forms to nodes 42 (Dec. 14), and Petitioner has neither argued nor shown such a feature to be inherent in Tondevold.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“paragraphs that the invention of claim 1 would have been obvious because it combined prior art elements according to known methods to yield predictable results. See Request 5–8. We disagree. In the Petition, as the above paragraphs reveal, Petitioner did not argue with particularity, for example, that the alleged combination of familiar elements does no more than yield “predictable results.” We are not persuaded that Petitioner’s generic use of the phrase “strong suggestion” invoked this argument. Petitioner also argues that its expert presented evidence of predictable results. Request 7 (citing Ex. 1002 ¶¶ 163–164). Nevertheless, Petitioner did not make this argument in the Petition and, instead, cited large portions of their expert’s declaration without specificity. Pet. 71 (citing, inter alia, Ex. 1002 ¶¶ 156–166). See also 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). Second, Petitioner contends it argued in the above Petition paragraphs that the invention of claim 1 would have been obvious because it applied a known technique (Whitmyer) to a known device ready for improvement (Sheffield) to yield predictable results. See Request 8–10. We disagree. In the Petition, as the above paragraphs reveal, Petitioner did not argue with particularity, for example, that application of the alleged known technique does no more than yield “predictable results.” Petitioner again appears to be arguing that we failed to consider arguments made in the” slip op. at 7
§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,415,284 - Riot Games, Inc. v. Paltalk Holdings, Inc.Rehearing deniedPTAB · Jun 29, 2018 · IPR2018-00129 · APJ Thu A Dang · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no abuse of discretion in instituting review of claims 1–10, 16–18, and 31–47 based on the RFCs’ public accessibility.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS When rehearing a decision on petition, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing an abuse of discretion, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“and slides) disseminated to members of even a somewhat closed group without restriction as to further dissemination may tend to indicate public accessibility of the documents, in light of other factors, even in the absence of indexing for search purposes. See Medtronic, Inc. v. Barry, No. 2017- 1169, 2018 WL 2769092, at **8–9 (Fed. Cir. June 11, 2018) (“Further, even if the Board were correct in its assumption that Medtronic only gave the Video and Slides to the SDSG members, it did not address whether the disclosures would remain confidential.”)4 On this preliminary record, Petitioner’s evidence shows sufficiently that mailing list members would have been apprised of a new RFC’s contents, at least via the Internet Society’s newsletter’s summary, if not via the mailing list (coupled with prior knowledge of the documents via group circulation thereof), with unrestricted access to the newly published RFC documents, and without any further restriction as to dissemination. See Ex. 1026 ¶¶ 18–24. In other words, prior to official publication of RFC documents, “[t]he Area Director . . . circulates the document to the wider IETF community, for comment, and” slip op. at 7
§ 102 anticipationPatents in suitUS 5,822,523 - Riot Games, Inc. v. Paltalk Holdings, Inc.Rehearing deniedPTAB · Jun 29, 2018 · IPR2018-00130 · APJ Thu A Dang · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no abuse of discretion in instituting inter partes review of claims 1, 11–15, and 19–30 based on the RFCs’ public accessibility.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Based on the foregoing discussion, Patent Owner fails to show an overlooked or misapprehended material matter amounting to an abuse of discretion in determining Petitioner shows sufficiently that RFC 1692, RFC 1459, and RFC 791 qualify as prior art printed publications. III. CONCLUSION Patent Owner has not carried its burden of demonstrating that we misapprehended or overlooked any material matters in the Decision, and has not shown an abuse of discretion in the Decision to institute an inter partes review of the challenged claims of the ’523 patent. IV. ORDER In consideration of the foregoing, it is hereby ORDERED that Patent Owner’s Request for Rehearing is denied.” slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Crocker’s testimony that the RFCs were available generally prior to the critical date, wherein a skilled artisan could have determined how to access particular RFCs based on mailing lists and newsletters discussing the RFCs. See Dec. 30–32. In particular, Mr. Crocker’s testimony included the (numbered accordingly), the “situation” regarding RFCs and the IETF, as summarized by the court employing, in part, evidence including a 1997 SEC (Securities Exchange Commission”) filing, would not have changed materially prior to the critical date (February, 1996) involved here. following: 1) “an official summary of published RFCs appeared in each issue of the Internet Society’s newsletter” which “was well-known to members of the Internet technical community as a source for an official summary of published RFCs” (id. at 31 (citing Ex. 1026 ¶ 24)); 2) a well-known mailing list announced RFCs to which anyone could subscribe since the late 1980s (id. (citing Ex. 1026 ¶ 21)); and 3) an RFC Editor publication “summarize[d] the status of all Internet protocol and service specifications” wherein “[t]hese RFCs are made publicly available pursuant to the standard RFC publication process” (id. (citing Ex. 1026 ¶ 23)). Mr. Crocker further testifies as follows: “Since the early 1990s, the RFC Editor repository has been freely accessible to the general public with no login, password, or membership requirement, and was similarly available to the Internet technical community since the 1970s.” Id. (citing Ex. 1026 ¶ 26).” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“of our Decision (Paper 11, “Dec.”) to institute inter partes review of claims 1, 11–15, and 19–30 of (the “challenged claims”) of U.S. Patent No. 5,822,523 and 5,822,523 C1 (Ex. 1001, the “’523 patent”). In the Decision, we instituted a trial on the following grounds asserted by Petitioner: 1) claims 1, 15, and 19–27 of the ’523 patent for obviousness over Aldred and RFC 1692; and 2) claims 11–15, 23, and 27–30 of the ’523 patent for obviousness over Aldred, RFC 1692, and Ulrich. Dec. 49. For the reasons stated below, Patent Owner’s Request for Rehearing is denied.” slip op. at 2
§ 102 anticipationPatents in suitUS 5,822,523 - Los Angeles County Metropolitan Transportation Authority / Clark Construction Group LLC et al. v. Transport Technologies, LLCRehearing deniedPTAB · Feb 22, 2018 · IPR2016-01633 · APJ Monica S Ullagaddi · IPR · Rehearing
The Board denied the petitioner’s request for rehearing, leaving in place its finding that claims 1, 3, 5, 6, 8, and 10 were not shown unpatentable because the Draft Ontario Report was not shown to …
RulingsRehearing decision- RehearingRehearing, deniedDenied
“(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
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“we found that “the research project was publicized on the Enterprise website (see Ex. 1025, 14–16),” and further, that “Petitioner does not contend, nor does the record indicate, that the draft report was publicized on the website so as to convey its availability at the Board Meeting (see id.).” Final Dec. 15. Thus, we did not overlook Petitioner’s evidence as we considered the underlying research project in the printouts of the Enterprise website to determine whether it provided a “roadmap” to locating the Draft Ontario Report. See id.; see Reh’g. Req. 12–13 (arguing that we overlooked evidence of publicity and direct communications about the research project when we determined the evidentiary record did not support the finding that a person of ordinary skill in the art would have been independently aware of report). We found that it did not. Id. We made the distinction between the research project and the Draft Ontario Report, in our Final Decision, because the case law requires a sufficient showing with respect to the disclosure upon which Petitioner’s challenge is based. In re Wyer, 655 F.2d 221, 226 (CCPA 1981) (A reference is proven to be a “printed publication” “upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” (emphasis added)). This distinction was necessary because Petitioner did not establish that the research project, as publicized on the Internet, discloses all the elements used to establish, for example, its anticipation challenge with respect to the claims of the ’101 patent. See e.g., Ex. 1025, 12, 15, 18; see Pet. 23.” slip op. at 3
§ 102 anticipationPatents in suitUS 6,980,101 - Microsoft Corporation v. Keith A. RaniereRehearing deniedPTAB · Nov 10, 2016 · IPR2016-00663 · APJ John A Hudalla · IPR · Rehearing
The Board denied Microsoft’s rehearing request, leaving in place the denial of institution on the Delaney anticipation ground for claims 1, 5, 7, 9, 12, and 21.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“for an abuse of discretion. See 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. See 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. See 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)
“3 As Patent Owner points out (Prelim. Resp. 4–7), Technology Licensing discussed the relative burdens in the case where a patent claims priority by virtue of a continuation-in-part application that added new matter. As the Federal Circuit has explained, “when neither the PTO nor the Board has previously considered priority, there is simply no reason to presume that claims in a CIP application are entitled to the effective filing date of an earlier filed application.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305 (Fed. Cir. 2008). The Federal Circuit has distinguished this from instances, such as detailed in Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570 (Fed. Cir. 1985), in which the Office has made a priority determination. See PowerOasis, 522 F.3d at 1304. The Ralston court placed the burden of proving insufficient disclosure in the parent application on the patent challenger. See Ralston, 772 F.2d at 1573–74. Because the ’752 patent claims priority to Delaney and earlier applications through an unbroken chain of continuations, it is arguable that the framework of Ralston, rather than that of Technology Licensing, should apply here. Nevertheless, Microsoft has failed to show a reasonable likelihood of success on this ground even under the framework of Technology Licensing.” slip op. at 6
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedNot shown unpatentable
“expect Raniere to be in unique possession of rebuttal evidence, as the case might be if it sought to present evidence of prior invention. See, e.g., Dynamic Drinkware, 800 F.3d at 1380. The 1995 ancestor application itself, already part of the record, is the best evidence of whether an earlier application provides support, under 35 U.S.C. § 120, for the challenged claims. See Ex. 1002. Microsoft does not contest that the common specification, included in both Delaney and the ’752 patent, describes examples within the scope of each of the challenged claims. Nor could Microsoft reasonably maintain such a position in light of its position that Delaney anticipates those same claims. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008) (stating that to anticipate, a reference must “show all of the limitations of the claims arranged or combined in the same way as recited in the claims”). It was not necessary for Raniere to re-establish this. Rather, the issue raised in the Petition (and addressed in the Decision on Institution) was whether those examples were sufficient to describe claims that Microsoft argued had been broadened beyond what those examples support. Raniere presented arguments, with reference to the evidence already of record, disputing this point. See Prelim. Resp. 8–20. At that point, the burden shifted back to Microsoft to persuade us that the ’752 patent is not entitled the benefit of an earlier priority date. See Tech. Licensing Corp., 545 F.3d at 1328. As explained below, Microsoft failed to meet that burden.” slip op. at 7
§ 102 anticipationPatents in suitUS 7,215,752 - Microsoft Corporation v. Keith A. RaniereRehearing deniedPTAB · Nov 10, 2016 · IPR2016-00669 · APJ John A Hudalla · IPR · Rehearing
The Board denied Microsoft’s rehearing request, leaving in place its refusal to institute on the Delaney anticipation ground for claims 1, 4, 5, and 7.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“for an abuse of discretion. See 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. See 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. See 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsNot shown unpatentable
“Microsoft’s burden-shifting arguments. Rather, Microsoft confuses the burden of production with the burden of persuasion. Microsoft has asserted that Delaney discloses each limitation of the challenged claims and that Delaney predates those claims. Microsoft has the burden of persuasion, based on all of the evidence, on both of these assertions. See Dynamic Drinkware, 800 F.3d at 1378. In some instances, evidence in the possession of a patent owner might be necessary to rebut a petitioner’s evidence and, in those cases, the patent owner has a burden to produce such evidence. See, e.g., id. at 1380 (stating the burden of production was properly shifted to a patent owner to establish the reduction to practice date of the challenged patent claims). Although Raniere has not introduced additional evidence into the record, Raniere has made an adequate showing, as described below, such that the burden returns to Microsoft to persuade us that the ’041 patent is not entitled to earlier priority.” slip op. at 7
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedNot shown unpatentable
“expect Raniere to be in unique possession of rebuttal evidence, as the case might be if it sought to present evidence of prior invention. See, e.g., Dynamic Drinkware, 800 F.3d at 1380. The 1995 ancestor application itself, already part of the record, is the best evidence of whether an earlier application provides support, under 35 U.S.C. § 120, for the challenged claims. See Ex. 1002. Microsoft does not contest that the common specification, included in both Delaney and the ’041 patent, describes examples within the scope of each of the challenged claims. Nor could Microsoft reasonably maintain such a position in light of its position that Delaney anticipates those same claims. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008) (stating that to anticipate, a reference must “show all of the limitations of the claims arranged or combined in the same way as recited in the claims”). It was not necessary for Raniere to re-establish this. Rather, the issue raised in the Petition (and addressed in the Decision on Institution) was whether those examples were sufficient to describe claims that Microsoft argued had been broadened beyond what those examples support. Raniere presented arguments, with reference to the evidence already of record, disputing this point. See Prelim. Resp. 7–17. At that point, the burden shifted back to Microsoft to persuade us that the ’041 patent is not entitled the benefit of an earlier priority date. See Tech. Licensing Corp., 545 F.3d at 1328. As explained below, Microsoft failed to meet that burden.” slip op. at 7
§ 102 anticipationPatents in suitUS 7,844,041 - Amazon.Com, Inc. / Amazon Web Services, LLC v. Personalized Media Communications, LLCRehearing deniedPTAB · Aug 31, 2016 · IPR2014-01527 · APJ Karl D Easthom · IPR · Rehearing
The Board denied the Patent Owner’s rehearing request and left in place its finding that claim 13 is unpatentable over Reiter.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The applicable standard for a rehearing request is set forth in 37 C.F.R. § 42.71(d), which provides the following: A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply. For the reasons provided below, we deny Patent Owner’s request for” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Claim 13 refers to two remote sources: “[c] transmitting at least a portion of said data from said first remote data source to said receiver station” and “[d] transmitting from a second remote source to said receiver station a signal which controls said receiver station.” See FWD 6. The claim construction at issue applies to the second remote source, which requires transmitting a signal, as opposed to the first remote data source, which requires transmitting data. See FWD 6, 38–39, 59–60. In the Final Written Decision, we adopted Petitioner’s contention that the term “remote” in the “second remote source” encompasses the “remote” controls disclosed in the prior art of record, based in part on a description of such remote controls (as a “remote keyboard”) in the background of the ’243 patent. See FWD 20–23.2 These ubiquitous remote control devices, described in the ’243 patent and prior art at the time, constitute evidence of one plain meaning of the term “remote.” See id. For example, as part of our analysis of the “second remote source” with respect to the prior art, we found that “the ’243 patent . . ., consistent with the normal meaning of a ‘remote’ control device, does not preclude Summers’s “‘hand-held remote control device of any suitable known form.’” See FWD 59 (quoting Ex. 1010, 6:35–36).” slip op. at 4
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“based on later-filed new matter describing a term of the claim)). Contrary to Patent Owner’s arguments, the Rehearing Request fails to distinguish PowerOasis. Reh’g Req. 15. Faced with Petitioner’s prima facie evidence that claim 13 is not entitled to priority to the earlier-filed ’490 patent (see Pet. 9–13 (citing Ex. 1005, 1043, 984–1044), see infra note 10), Patent Owner did not come forward and show with sufficient evidence or persuasive argument that the ’490 patent supports the disputed term with materially the same breadth that the ’243 patent supports it. See PO Resp. 13–149; PowerOasis, 522 F.3d at 1305–06 (holding that the “district court . . . correctly placed the burden on [patentee] PowerOasis to come forward with evidence to prove entitlement to claim priority [from a CIP application] to an earlier filing date”). Of course, notwithstanding “shifting burden[s]” of “going forward with evidence” regarding priority, and assuming Patent Owner came forward with “sufficient evidence” or “persuasive argument,” Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008) (“the phrase ‘going forward with evidence’ . . . mean[s] both producing additional evidence and presenting persuasive argument”), the burden of showing unpatentability, including a lack of priority, remains with 9 Patent Owner’s argument that “the Examiner [in the ’243 patent Reexamination, infra note 10] subsequently dropped all rejections of claim 13 [after finding a lack of priority to the ’490 patent] that relied on prior art references post-dating the 1981 priority date” does not mention that the Examiner ultimately deemed the issue moot because no intervening references were relied upon, as discussed below. See PO Resp. 13–14; FWD 32 (citing Ex. 1005, 139). 18 Petitioner. See id. at 1327–28 (discussing PowerOasis). Petitioner satisfies its burden of persuasion even if Patent Owner met its burden of going forward, because the weight of evidence shows that Patentee effectively broadened the scope of claim 13 relative the earlier-filed ’490 patent.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for petitioner
“basis for claiming the present subject matter.” Ex. 1004, 127 (emphasis added, quoting Applicant’s Supplemental Response and Amendment (Dec. 5, 1997)), see also id. at 76 (Supplemental Response cover sheet); FWD 30 (similar quotation). This disclaimer virtually duplicates an earlier response by Patentee making the same clear disclaimer. See Ex. 1004, 192 (corresponding to Applicant’s Amendment (July 8, 1997), id. at 143 (Amendment cover sheet)). Contrary to Patent Owner’s current characterization, this was not “a single mistake” (Reh’g Req. 9)––it was a concerted, well-reasoned argument that Patentee advanced on the two separately noted occasions during prosecution. See Ex. 1004, 127, 192. Patent Owner’s clear and repeated arguments stressing that Schneller does not apply, based on a lack of written description support, does not carry any evidentiary hallmarks of a mere “misstatement” or “obvious mistake,” contrary to the arguments now advanced by Patent Owner. See Reh’g Req. 3, 9. Advancing its disclaimer argument in a “detailed, consistent, and repeated” fashion in two separate Office Action responses (Ex. 1004, 127, 192) shows it was no mistake. See Springs Window Fashions LP, 323 F.3d 989, 995 (Fed. Cir. 2003) (“The statements distinguishing Pluber were detailed, consistent, and repeated. A reasonable competitor would have believed that the applicant’s disclaiming statements were not a mere mistake.”) (emphasis added). In other words, the Schneller doctrine, as Patentee persuasively twice argued during prosecution, required “a basis for claiming the present subject matter”––i.e., that doctrine requires written description support in the earlier 29 filed 1981 application (for the rejected claims) in order to support the double patenting rejection, and Patentee specifically stated it did not claim the priority benefit under 35 § U.S.C. 120. See supra note 14; Ex. 1004, 127, 192. In response to Applicant’s Supplemental Response (December 5, 1997) that included the disclaimer argument, the Examiner withdrew its Schneller based double patenting rejection. Ex. 1004, 63 (Final Office Action (Dec. 23, 1997), withdrawing the Schneller based rejection “[i]n view of further analysis and applicant’s arguments”); Ex. 1004, 212, 221 (Office Action (June 7, 1995) rejecting all of the original claims under Schneller, claims 3–33).” slip op. at 29
Claim construction§ 102 anticipationcites Phillips · MarkmanPatents in suitUS 5,887,243 - PTAB · Aug 1, 2016 · IPR2016-00520 · APJ David C Mckone · IPR · Rehearing
The Board denied Avigilon’s rehearing request, leaving its denial of institution for claims 1, 6-10, 16-24, and 28 in place because Petitioner did not show an abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. See 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. See 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). The burden of showing that the Decision should be modified is on Petitioner, the party challenging the Decision. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
- BurdenNot shown unpatentable
“must be considered at face value,” and that “[d]isputes over whether the support provided by the expert (whether based on his or her experience or a printed publication) are issues of credibility to be decided at trial, not at the institution stage.” Req. 6–7. Petitioner cites to no persuasive support for the proposition that we must, at the institution stage of a proceeding, simply accept unsubstantiated expert testimony. To the contrary, Rule 42.65(a) provides that “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”” slip op. at 4
- Expert testimonyPetitioner expert discountedDecided for patent owner
“must be considered at face value,” and that “[d]isputes over whether the support provided by the expert (whether based on his or her experience or a printed publication) are issues of credibility to be decided at trial, not at the institution stage.” Req. 6–7. Petitioner cites to no persuasive support for the proposition that we must, at the institution stage of a proceeding, simply accept unsubstantiated expert testimony. To the contrary, Rule 42.65(a) provides that “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“expert cannot testify about the state of the art. Rather, we concluded, after considering the evidence Petitioner cited, that Petitioner was not reasonably likely to show that AXIS Manual inherently disclosed a Web browser directing a microprocessor to control an NIC. Dec. 20.” slip op. at 4
§ 102 anticipationPatents in suitUS 6,891,566 - PTAB · Mar 4, 2016 · IPR2015-01417 · APJ Bryan F Moore · IPR · Rehearing
The Board denied rehearing, finding the petition did not show a reasonable likelihood of prevailing on the anticipation challenge to claim 4 because its mapping was inadequately explained.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS When considering a request for rehearing, we review the Decision Granting Institution for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the Decision Granting Institution should be modified, and “[t]he request must specifically identify 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)Institution denied meritsNot shown unpatentable
“with respect to the anticipation ground,] Takizawa discloses semiconductor material being disposed at the drain bus line/gate bus line overlap, in addition to other regions in the thin film transistor matrix device. Petition (“Pet.”) at 19–26; Ex. 1012 at ¶¶ 55, 61.” Reh’g Req. 4. We disagree because such evidence was not explained adequately in the Petition. The Petition states, without further explanation, that “Takizawa also teaches formation of semiconductor layers at the crossover location. Ex. 1012, ¶ 61.” Pet. 21–22. Nevertheless, the Petition contains no further explanation supporting that statement. Id. The Petition merely cites the Chiang declaration and does not explain sufficiently the significance of the cited testimony. See 37 C.F.R. § 42.22(a)(2). “Arguments must not be incorporated by reference from one document into another document.” 37 C.F.R. § 42.6(a)(3). Without a sufficient explanation why Takizawa would anticipate the limitation to operative semiconductor formed where said gate bus line overlaps said drain bus line in the Petition itself, the citations to the Chiang Declaration amount to incorporation by reference of arguments made in that declaration that circumvent the page limits that apply to petitions. 37 C.F.R. § 42.24(a). Thus, we did not overlook or misapprehend Petitioner’s arguments or evidence in the Petition. Thus, we are not persuaded by this argument.” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“with respect to the anticipation ground,] Takizawa discloses semiconductor material being disposed at the drain bus line/gate bus line overlap, in addition to other regions in the thin film transistor matrix device. Petition (“Pet.”) at 19–26; Ex. 1012 at ¶¶ 55, 61.” Reh’g Req. 4. We disagree because such evidence was not explained adequately in the Petition. The Petition states, without further explanation, that “Takizawa also teaches formation of semiconductor layers at the crossover location. Ex. 1012, ¶ 61.” Pet. 21–22. Nevertheless, the Petition contains no further explanation supporting that statement. Id. The Petition merely cites the Chiang declaration and does not explain sufficiently the significance of the cited testimony. See 37 C.F.R. § 42.22(a)(2). “Arguments must not be incorporated by reference from one document into another document.” 37 C.F.R. § 42.6(a)(3). Without a sufficient explanation why Takizawa would anticipate the limitation to operative semiconductor formed where said gate bus line overlaps said drain bus line in the Petition itself, the citations to the Chiang Declaration amount to incorporation by reference of arguments made in that declaration that circumvent the page limits that apply to petitions. 37 C.F.R. § 42.24(a). Thus, we did not overlook or misapprehend Petitioner’s arguments or evidence in the Petition. Thus, we are not persuaded by this argument.” slip op. at 3
- BurdenDecided for patent owner
“teaches formation of semiconductor layers at the crossover location. Ex. 1012, ¶ 61.” Pet. 21–22. Nevertheless, the Petition contains no further explanation supporting that statement. Id. The Petition merely cites the Chiang declaration and does not explain sufficiently the significance of the cited testimony. See 37 C.F.R. § 42.22(a)(2). “Arguments must not be incorporated by reference from one document into another document.” 37 C.F.R. § 42.6(a)(3). Without a sufficient explanation why Takizawa would anticipate the limitation to operative semiconductor formed where said gate bus line overlaps said drain bus line in the Petition itself, the citations to the Chiang Declaration amount to incorporation by reference of arguments made in that declaration that circumvent the page limits that apply to petitions. 37 C.F.R. § 42.24(a). Thus, we did not overlook or misapprehend Petitioner’s arguments or evidence in the Petition. Thus, we are not persuaded by this argument.” slip op. at 3
§ 102 anticipationPatents in suitUS 5,966,589
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.