- Platform Science, Inc. v. Omnitracs, LLCRehearing grantedPTAB · Sep 3, 2021 · IPR2020-01612 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board granted rehearing and instituted IPR on all petition grounds for claims 1–4, 6–9, 11, 12, and 15, finding a reasonable likelihood of prevailing.
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 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. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“preliminary stage, we determine that Petitioner demonstrates a reasonable likelihood of prevailing with respect to claim 1.” slip op. at 44
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The only dispute pertaining to claim construction at this stage of the proceeding is whether the phrase “a process for creating said response message,” recited in claim 1, is governed by 35 U.S.C. § 112 ¶ 6.6 Petitioner 6 As noted above, Petitioner raises a second claim construction issue in its Rehearing Request. See Req. Reh’g 12–15 (asserting that the claims require only one instance of copying information from a formatted message to a response message based on which formatted message was received). Petitioner did not raise this issue in the Petition, Patent Owner has not had an contends that the phrase should be interpreted as a means-plus-function limitation, whereas Patent Owner contends that it should not. Compare Pet. 2–7 (advocating for a means-plus-function construction), with Prelim. Resp. 9–11 (advocating for an ordinary and customary meaning). At this stage of the proceeding, the dispute between the parties regarding the construction of this claim phrase does not impact our Decision. Accordingly, we need not construe expressly any claim terms for the purpose of this Decision.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“VI. ANALYSIS Legal Standards – Anticipation “[A] claim is anticipated ‘if each and every limitation is found expressly or inherently in a single prior art reference.’” King Pharm., Inc. v. Eon Labs., Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998)). Anticipation is a question of fact, In re Gleave, 560 F.3d 1331, 1334–35 (Fed. Cir. 2009), assessed from the perspective of one of ordinary skill in the art, see Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (“the dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching that every claim element was disclosed in that single reference” (alteration in original) (quotation omitted)).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,925,308 - Eis GmbH v. Novoluto GmbHRehearing grantedPTAB · Sep 25, 2020 · IPR2020-00007 · APJ Susan L C Mitchell · IPR · Rehearing
Granted EIS GMBH’s rehearing request and instituted IPR of claims 1–3, 5, 7, 8, 11, 14, 15, 17–21, and 23–26 on all asserted grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“We find that Dr. Prisco’s testimony is a reasonable interpretation of how Taylor works if the bellows are bidirectional, and the bellows are expanded and contracted when the suction cup is sealingly engaged. Figure 3 of Taylor shown above appears to support Dr. Prisco’s testimony that the bellows may be expanded or contracted from the initial position shown in Figure 3 and does not appear to show any valve or second opening in the bellows to provide unidirectional flow as Dr. Jensen, Patent Owner’s declarant, asserts. Also, as Petitioner asserts, Taylor indicates that a squeeze ball may be substituted for the bellows expressly indicating a device with a bidirectional flow. Although Patent Owner raises valid arguments concerning a common definition of bellows indicating unidirectional flow and provides testimony from Dr. Jensen reasonably supporting such a position, these dueling positions create a genuine issue of material fact that we weigh in favor of Petitioner on institution. See 37 C.F.R. 42.108(c).” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We conclude from a review of Fang and Taylor that they are not substantially the same art nor is Petitioner making substantially the same argument as was presented the Office during prosecution of the ’061 Patent based on Fang. We find that the way in which Fang and Taylor work appear to be materially different. Fang appears to apply only suction to the skin whereas Taylor, with the sealingly connected suction cup, appears to apply a cyclical vacuum that Dr. Prisco testifies meets the claim limitations requiring generation of a pattern of negative and positive pressures, modulated with respect to a reference pressure. Ex. 1002 ¶¶ 62–64, 75. Thus Taylor appears to teach the claim element Patent Owner argued during prosecution was missing from Fang. Also, in applying factors (b) and (d) of Becton, Dickinson, because of such differences noted above, we find that Taylor is not cumulative of Fang, which was considered and applied by the Office during prosecution of the ’061 Patent. 4. Conclusion Thus, we find that Taylor and Fang are not substantially the same art, nor were substantially the same arguments based on these references presented in the Petition and during prosecution of the ’061 Patent, respectively. As discussed above, because Petitioner primarily relies on Taylor in all four grounds for teaching the modulation of positive and negative pressures with respect to a reference pressure as required by all of the challenged claims, we also find that, overall, the same or substantially the same art was not previously presented to the Office nor were the same or substantially the same arguments previously presented to the Office. Therefore, we do not need to reach the application of the remaining Becton, Dickenson factors relating to whether the Petitioner has demonstrated a material error by the Office. Thus, we decline to exercise our discretion under § 325(d) to deny institution of an inter partes review here.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“how Taylor works if the bellows are bidirectional, and the bellows are expanded and contracted when the suction cup is sealingly engaged. Figure 3 of Taylor shown above appears to support Dr. Prisco’s testimony that the bellows may be expanded or contracted from the initial position shown in Figure 3 and does not appear to show any valve or second opening in the bellows to provide unidirectional flow as Dr. Jensen, Patent Owner’s declarant, asserts. Also, as Petitioner asserts, Taylor indicates that a squeeze ball may be substituted for the bellows expressly indicating a device with a bidirectional flow. Although Patent Owner raises valid arguments concerning a common definition of bellows indicating unidirectional flow and provides testimony from Dr. Jensen reasonably supporting such a position, these dueling positions create a genuine issue of material fact that we weigh in favor of Petitioner on institution. See 37 C.F.R. 42.108(c).” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We find that Dr. Prisco’s testimony is a reasonable interpretation of how Taylor works if the bellows are bidirectional, and the bellows are expanded and contracted when the suction cup is sealingly engaged. Figure 3 of Taylor shown above appears to support Dr. Prisco’s testimony that the bellows may be expanded or contracted from the initial position shown in Figure 3 and does not appear to show any valve or second opening in the bellows to provide unidirectional flow as Dr. Jensen, Patent Owner’s declarant, asserts. Also, as Petitioner asserts, Taylor indicates that a squeeze ball may be substituted for the bellows expressly indicating a device with a bidirectional flow. Although Patent Owner raises valid arguments concerning a common definition of bellows indicating unidirectional flow and provides testimony from Dr. Jensen reasonably supporting such a position, these dueling positions create a genuine issue of material fact that we weigh in favor of Petitioner on institution. See 37 C.F.R. 42.108(c).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 9,849,061 - Hulu, LLC v. Sound View Innovations, LLCRehearing grantedPTAB · Dec 20, 2019 · IPR2018-01039 · APJ Scott R Boalick · IPR · Rehearing
The Board granted rehearing on printed-publication accessibility, finding a reasonable likelihood Dougherty was publicly accessible before the critical date, and remanded for consideration of institution on obviousness.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“We grant Petitioner’s request for rehearing. We conclude that, based on the totality of the evidence currently in the record, Petitioner has submitted evidence sufficient to establish a reasonable likelihood that the Dougherty reference was publicly accessible before the critical date of the challenged patent, and, thus Petitioner has established a reasonable likelihood that the reference qualifies as a printed publication. In view of this holding, we remand to the merits panel to determine whether Petitioner has demonstrated a reasonable likelihood that it will prevail with respect to at least 1 of the claims challenged in the Petition. See 35 U.S.C. § 314(a).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“reasonable likelihood that a reference is a printed publication. If trial is instituted, the petitioner will ultimately have the burden to prove that the reference is a printed publication by a preponderance of the evidence. We conclude that, based on the totality of the evidence currently in the record, Petitioner has established a reasonable likelihood that the Dougherty reference is a printed publication that was publicly accessible before the critical date of the challenged patent. V. ORDER It is hereby ORDERED that Request for Rehearing is granted to address the POP review issue; and FURTHER ORDERED that the matter is remanded to the original merits panel for further proceedings consistent with this opinion, including consideration of whether to institute a trial on the merits of the obviousness ground presented in the Petition.” slip op. at 21
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“institution, and based on the totality of the evidence to date, Petitioner has established a reasonable likelihood that Dougherty is a printed publication. The face of Dougherty bears a copyright date of 1990, a printing date of November 1992, and an ISBN date of 8/94. Ex. 1004, 4. In addition, the book is a textbook from an established publisher, O’Reilly, and a well-known book series. See Canon Br. 11–12 (quoting https://www.oreilly.com/about/history.html). As Canon asserts, the cover of Publisher’s Weekly stated (with respect to this series) that “The Internet Was Built With O’Reilly Books.” Id. Altogether, this is sufficient evidence to establish a reasonable likelihood that Dougherty is a printed publication that a publisher made available to the pertinent public prior to the October 1995 critical date.” slip op. at 19
§ 102 anticipationPatents in suitUS 5,806,062 - Rust-Oleum Corporation / RPM International, Inc.Rehearing grantedPTAB · Jul 23, 2019 · IPR2017-02158 · APJ Christopher G Paulraj · IPR · Rehearing
The Board accepted Patent Owners’ rehearing request as timely but denied rehearing, finding no overlooked or misapprehended issue requiring modification of the final written decision.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“layer is being removed (i.e., Example 1). Id. at 2–3. We are not persuaded that we misapprehended or overlooked the evidence of record regarding whether Baumgärtel requires the use of pigments for rejuvenation. As we noted in our Final Written Decision, Example 1 of Baumgärtel does not mention the use of any pigments yet discusses the removal of the yellowed/damaged surface layer of white siding using a composition containing 99% dichloromethane. Paper 29, 42. Although the amendment in the Proposed Substitute Claims required both color and luster to be restored, it did not otherwise modify our construction of “rejuvenating,” which encompasses either “remov[ing] or transform[ing] the chalky surface that develops on vinyl siding that is exposed to sunlight and other environmental conditions.” Id. at 15 (emphasis added). The teaching in Baumgärtel’s Example 1 of removing the surface layer using a 99% dichloromethane solution satisfies our construction of “rejuvenating.” We, therefore, did not misapprehend or overlook Patent Owners’ evidence and arguments in determining that Example 1 of Baumgärtel anticipates the Proposed Substitute Claims.” slip op. at 7
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under 37 C.F.R. § 42.5(c)(3), “[a] late action will be excused on a showing of good cause or upon a Board decision that consideration on the merits would be in the interests of justice.” 37 C.F.R. § 42.5(c)(3) (emphasis added). Patent Owners have presented evidence tending to show that their counsel believed that the Request for Rehearing was timely filed on May 8, 2019. See Exs. 2011–2013. It does not appear, however, that they attached any document with their filing before clicking the submit button on PTAB E2E. In this regard, we note that the email generated by the PTAB E2E system and sent to counsel of record on May 8, 2019 clearly stated “THERE WERE NO DOCUMENTS SUBMITTED WITH THIS REQUEST.” Ex. 3001. Patent Owners have not explained why they did not take immediate action after receiving that email to determine whether the Request for Rehearing was actually filed.1 Indeed, Patent Owners remained” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingDecided for petitioner
“http://www.uspto.gov/ip/boards/bpai/prps.jsp#heading-5 (emphasis added). 2 We are also not persuaded that the filing of a Notice of Appeal (Paper 33) by Patent Owners divested the Board of jurisdiction to decide the merits of the Request for Rehearing. The Federal Circuit’s decision in In re Graves, 69 F.3d 1147 (Fed. Cir. 1995), is instructive on this point. There, the applicant had filed a notice of appeal to the Federal Circuit after the Board entered its initial decision but before the Board’s decision on a request for reconsideration. Id. at 1150. Because the notice of appeal was filed too late if based on the initial decision, the court determined that the Board’s initial” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot reached
“misapprehended evidence and arguments showing that Dr. Storey’s experiment was not based on Example 1 of Baumgärtel, and thus insufficient for Petitioners to meet their burden of showing inherent anticipation. Ex. 2010, 4–6. But, as set forth in our Final Written Decision, we fully considered the evidence of record and determined that the experiments conducted by Dr. Storey further support a finding of inherent anticipation by Baumgärtel. Paper 29, 43 (citing Ex. 1022 ¶¶ 12–36). We recognized that the 99.5% pure dichloromethane used by Dr. Storey for his experiments did not include the 1% of additional ingredients identified in Example 1, but took into account Dr. Storey’s unrebutted testimony that those additional ingredients in such small proportions would not have materially affected the rejuvenation characteristics of dichloromethane. Id. at 43–44 (citing Ex. 1005 ¶¶ 81–82). As we noted, Patent Owners did not cross-examine Dr. Storey as to his declaration testimony in this proceeding; nor did Patent Owners’ expert Dr. Grulke address these points in his own declaration. Id. at 44. Thus, we are not persuaded that we misapprehended or overlooked the cited testimony of Dr. Storey regarding inherent anticipation.” slip op. at 7
§ 102 anticipationPatents in suitUS 6,669,991 - Yamaha Golf Car Company v. Club Car, LLCRehearing grantedPTAB · Jun 26, 2018 · IPR2017-02144 · APJ Robert L Kinder · IPR · Rehearing
Rehearing was granted in all four proceedings, and review was instituted on all challenged claims and grounds, except claims 12 and 20, which were disclaimed.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“II. STANDARD OF REVIEW The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). A 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.” Id. Upon a request for rehearing, the decision on a petition will be reviewed 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. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“persuades us to grant Petitioner’s requests for rehearing and institute trial in IPR2017-02141 and IPR2017-02143. In the IPR2017-02142 and IPR2017- 02144 proceedings, which have already been instituted as to one claim, Petitioner’s requests for rehearing convince us to institute as to all claims and all grounds set forth in each petition. In particular, in order to deny institution, or partially institute, we were confronted with competing testimony of witnesses offered as experts, as well as competing prior art translations, and we resolved at least one disputed issue of material fact in favor of Patent Owner to deny each petition. See Dec. 17–20. Our own regulation, however, cautions against such an approach at the institution phase of a proceeding stating, “a genuine issue of material fact created by . . . testimonial evidence [filed by Patent Owner] will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review.” 37 C.F.R. § 42.108(c).” slip op. at 4
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached
“’569 patent was entitled to priority and adequately disclosed by the ’894 Provisional.8 Claim 11 requires “disabling golf cart movement towards the predetermined area further comprises disabling golf cart movement except in a reverse direction,” and Petitioner contends that this limitation was not adequately supported in the ’894 Provisional. Petitioner argues that we improperly weighed competing expert testimony at this phase of the proceeding to resolve the disputed issue in favor of Patent Owner. Specifically, Petitioner argues:” slip op. at 8
- Adverse judgmentAdverse judgmentOther
“9 On April 27, 2018, Club Car (Patent Owner) filed a statutory disclaimer under 35 U.S.C. § 253 for claim 12 of the ’569 patent. See IPR2017-02144, Paper 22, Exhibit B (Disclaimer of claim 12). Because claim 12 has been disclaimed, we need not issue a final written decision addressing the patentability of this claim.” slip op. at 10
§ 102 anticipationPatents in suitUS 7,480,569 - PTAB · Mar 29, 2017 · IPR2016-01492 · APJ Mitchell G Weatherly · IPR · Rehearing
The Board granted rehearing in part to explain institution on Eizenhöfer and Miller anticipation grounds for claims 13–15 and require claim-interpretation briefing; it denied rehearing on § 325(d).
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“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 P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party challenging the decision has the burden of showing a decision should be modified, and the request for rehearing must specifically” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“terminal demand” in a single sentence supported by citations to portions of the Specification and testimony from Dr. Lomp. Id. at 15–16 (citing Ex. 1001, 7:8–11, 18:50–54, 19:1–4, Figure 15A; Ex. 2001 ¶¶ 7, 16, 19–21). Based on our review of the cited portions of the Specification, it is not apparent how those sections support WPI’s proffered meaning of “subscriber terminal demand.” None of the cited portions explicitly defines “subscriber terminal demand” or uses the term, and WPI does not explain why those cited portions are relevant to the inquiry. The cited testimony from Dr. Lomp reflects his opinion but is not supported by any citations to other evidence, including the Specification itself. To the extent that WPI’s argument regarding the meaning of “subscriber terminal demand” relies upon Dr. Lomp’s testimony, we currently find that argument unpersuasive because it is unsupported by other evidence. TCT has not expressly argued the meaning of “subscriber terminal demand” but instead implies a meaning by identifying specific portions of Eizenhöfer that allegedly teach this limitation. Pet. 31–32 (citing Ex. 1004, 3:7–10, Abstract). Absent briefing with citations to relevant evidence, we decline to offer our own express interpretation of “subscriber terminal demand.” Rather, we determine that TCT’s implied interpretation and its argument based on that interpretation demonstrates a reasonable likelihood of establishing that Eizenhöfer describes the recited limitation. Because resolution of the dispute may require an express interpretation of “subscriber terminal demand,” we also direct the parties to address explicitly the meaning of this phrase at trial and cite relevant evidence from among at least other claims, the Specification, and the prosecution history.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“reasons. First, WPI has failed, as required under Rule 42.71(c), to identify an abuse of discretion stemming from our allegedly “unreasonable” failure to exercise discretion under § 325(d) and deny institution of challenges based on Miller. Second, WPI merely reiterates an argument already considered and rejected, and thus fails to meet its obligation under Rule 42.71(d) to “identify all matters . . . misapprehended or overlooked.” We disagree that WPI offered a “clear comparison” of the entirety of the claims that were allegedly previously considered by the Office during reexamination of the ’326 patent to the claims at issue in this proceeding. Describing claims in the ’326 patent as “closely related” or reciting “similar features” without providing the actual text of those claims fails to provide an adequate basis for comparing those claims to the claims at issue in this proceeding. The paraphrased comparison of claims in the ’326 patent to the claims here is similarly lacking in clarity. Third, even if we were to determine that WPI sufficiently compared the “orthogonal code generator” recited in claims of the ’326 patent to the one recited in the claims at issue, such a comparison fails to demonstrate enough similarity in the claims overall to justify a discretionary denial of TCT’s challenge based on Miller.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached
“TCT has not expressly argued the meaning of “subscriber terminal demand” but instead implies a meaning by identifying specific portions of Eizenhöfer that allegedly teach this limitation. Pet. 31–32 (citing Ex. 1004, 3:7–10, Abstract). Absent briefing with citations to relevant evidence, we decline to offer our own express interpretation of “subscriber terminal demand.” Rather, we determine that TCT’s implied interpretation and its argument based on that interpretation demonstrates a reasonable likelihood of establishing that Eizenhöfer describes the recited limitation. Because resolution of the dispute may require an express interpretation of “subscriber terminal demand,” we also direct the parties to address explicitly the meaning of this phrase at trial and cite relevant evidence from among at least other claims, the Specification, and the prosecution history.” slip op. at 5
Claim construction§ 102 anticipationDiscretionary denialPatents in suitUS 6,381,211 - Westerngeco LLC v. PGS Geophysical AsRehearing grantedPTAB · Feb 3, 2017 · IPR2015-00313 · APJ Justin Busch · IPR · Rehearing
On rehearing, the Board held claim 2 unpatentable as anticipated by Gallagher, modifying the final written decision; no other aspect was modified.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“On rehearing, 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 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. For the reasons that follow, Petitioner’s request for rehearing is granted. This decision on rehearing modifies our Final Written Decision only to the extent that we now hold claim 2 of the ’059 patent to be unpatentable as anticipated by Gallagher. Neither party challenges our holdings with respect to any other claims in our Final Written Decision.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Owner, and Petitioner does not contest, that traces “have the same coordinates” when those traces populate the same bin in the “set of bins.” We agree with Petitioner, however, that the disputed limitation is tied to the assignment of coordinates, not to the organizing step, and we are unpersuaded by Patent Owner’s arguments that a trace can only populate a particular bin after “the coordinate-designated set of traces” has been organized.” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“interpreted properly (i.e., not tied to the organizing step), Gallagher teaches or suggests the disputed limitation. Req. Reh’g 5–6. We found persuasive Petitioner’s mappings of (1) Gallagher’s assignment of sections and shells in a common reference point bin to the assigning step, (2) the section-shell segments created from that assignment to the recited set of bins, and (3) Gallagher’s decimation process, which in one example leaves one trace per section-shell segment (or bin), to the organizing step. Dec. 14–19; see Pet. 45–48. In Gallagher, it is the combination of the acquisition geometry and the selection of the sections and shells that defines the coordinate-designated set of traces and the bins. Prior to Gallagher’s decimation,” slip op. at 10
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 6,026,059 - Sandisk Corporation v. Netlist, Inc.Rehearing grantedPTAB · Apr 27, 2016 · IPR2014-00971 · APJ Linda M Gaudette · IPR · Rehearing
Rehearing was granted for claims 9 and 10, held unpatentable over Averbuj and JEDEC Standard and over Huang and JEDEC Standard; rehearing was denied for claims 4 and 15.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“II. STANDARD OF REVIEW The party requesting rehearing has the burden of showing the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d).” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“C. Analysis Petitioner’s arguments are based on an underlying contention that, because the Board sua sponte raised a patentability challenge based on Huang alone, whereas Petitioner’s challenge was based on a combination of Huang and Tsern, the Board relied on evidence that was not cited in the Petition. Petitioner has not identified, nor do we find, however, any indication in our Institution Decision that we relied on evidence other than that expressly cited by Petitioner, e.g., Dr. Alpert’s statement that “[t]o the extent th[e] additional claim [4] element may not be disclosed by Huang alone, it is disclosed by Tsern” (Dr. Alpert’s first declaration (Ex. 1007) ¶ 156, cited in Pet. 42). See Dec. on Inst. 17–18. Petitioner has not explained, moreover, why it delayed more than a year to bring to our attention the alleged error in our finding that the Petition “identifies where Huang discloses or suggests every element of challenged claim[ 2].” (Dec. on Inst. 18). For example, Petitioner did not file a request for rehearing of our decision denying institution of trial on Petitioner’s challenge based on Huang and Tsern and/or instituting trial based on unpatentability in view of Huang alone. See 37 C.F.R. § 42.71(d) (“A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board.”). Nor did Petitioner seek our authorization to withdraw the instituted challenge of claim 4 based on Huang alone. Cf. Ericsson Inc. v. Intellectual Ventures I LLC, 2015 WL 8651563, at *9–10 (PTAB 2015) (denying Petitioner’s motion to withdraw its challenge as to some of the claims where Petitioner delayed in seeking to correct its petition: “[O]ur Decision to Institute should have apprised Ericsson of the problem with its challenge to claim 55.”).” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“In any event, we find the declaration testimony relied on by Petitioner in support of this Request (see Req. Reh’g 13–14) supports our determination that Petitioner failed to show, by a preponderance of the evidence, that Averbuj anticipates claim 15. Dr. Alpert testified that if the “configuration [to selectively input to the address and control ports] is determined to require the structure that performs the selection itself, then the disclosed control module also includes multiplexer 46 of memory interface 41.” Ex. 1007 ¶ 87 (emphasis added). Petitioner did not explain (see Pet. 24–25; Reply 14–15) how Averbuj describes multiplexer 46 as being part of sequencer 8 (the alleged control circuit). See Final Dec. 43–44 (explaining that Petitioner has not addressed Patent Owner’s argument that the device that selectively inputs address and control signals to memory modules 12 is multiplexer 46 of memory interface 41 (the alleged data handler), not sequencer 8 (the alleged control circuit)). In sum, for the above reasons, we are not persuaded of error in our determination that Petitioner did not meet its burden to establish unpatentability of claim 15 under 35 U.S.C. § 102(b) based on Averbuj.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“In its Response, Patent Owner argues that claims 9 and 10 require a system configured to record “failures,” but in the system described in JEDEC Standard, testing stops after only one failure is recorded. Resp. 59– 60. Patent Owner further argues claims 9 and 10 require an internal tester, but the tester in JEDEC Standard is external to the memory system being tested. Id. at 60. In support of these arguments, Patent Owner relies on the declaration testimony of its witness, Dr. Sechen (Exhibit 2012). Id. at 59–60 (citing Ex. 2012 ¶¶ 229–32). Petitioner, in its Reply, argues “[t]he claims are not limited to recording failures during a single test. Instead, the cla[i]ms only require that the data and addresses associated with the failures be stored.” Reply 22. Petitioner directs us to the section of JEDEC Standard relied on its Petition, noting there is a subsection on “Multiple Failures” and a description of “a procedure to generate ‘a complete data log of all failures’ including the address and data associated with the failure.” Id. (citing Ex. 1006 § 8.2.4.5). In response to Patent Owner’s argument that the system in JEDEC Standard uses an external tester, Petitioner, relies on testimony in Dr. Alpert’s second Declaration (Ex. 1009). See Reply 22–23. Petitioner argues Dr. Sechen’s testimony is based on disclosure in JEDEC Standard relating to transparent mode testing (Ex. 1006 § 8.1), which differs from Memory BIST, described in the section of JEDEC Standard cited in the Petition (id. at § 8.2). See id.; Ex. 1009 ¶ 79 (asserting that the sections of JEDEC Standard relied on by Dr. Sechen, e.g., sections 5.1 and 5.5, relate to transparent mode). Dr. Alpert explains that “Transparent Mode is used during FB-DIMM manufacturing to detect defects in the memory devices, interface, and board assembly using data patterns supplied by an external tester. Memory BIST is used for testing a FB-DIMM in a system at power-on initialization without using test equipment external to the system.” Ex. 1009 ¶ 78. During the oral hearing, Patent Owner did not dispute these assertions. See generally, Paper 33 (transcript of the oral hearing). We find that Dr. Sechen’s testimony is related to JEDEC Standard’s description of testing in transparent mode and does not address adequately JEDEC Standard’s discussion of Memory BIST, i.e., the section of JEDEC Standard relied on by Petitioner in support of its patentability challenges as to claims 9 and 10. We also agree with Petitioner that Patent Owner’s arguments are not commensurate in scope with claims 9 and 10. We find Petitioner’s contentions with respect to the teachings of JEDEC Standard and motivation for modifying the respective systems of Averbuj and Huang are supported by JEDEC Standard, and conclude Petitioner has met its burden to show, by a preponderance of the evidence that claims 9 and 10 are” slip op. at 14
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,359,501 - Daicel Corporation v. Celanese International CorporationRehearing grantedPTAB · Jun 26, 2015 · IPR2015-00173 · APJ Linda M Gaudette · IPR · Rehearing
Rehearing was granted in part; IPR was instituted on claims 58–60, 67, 69, 71, and 72 for anticipation by the ’095 patent and claim 73 for obviousness over the ’095 patent and JP ’712.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing that the decision should be modified, 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
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“the Petition, and overlooked the fact that Mr. Cooper’s opinion is also based on his own calculations and data in two published articles. See Ex. 1003 ¶ 97. Specifically, Mr. Cooper approximates reactor DME equilibrium concentrations in the ’095 patent examples and explains how these approximations were obtained using readily available data, specifically identifying data in two published articles. Ex. 1003 ¶ 97 (citing Exs. 1029, 1030). Mr. Cooper goes on to explain why, based on the reactor contents and distillation conditions in the ’095 patent examples, DME and” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureReference is prior artInherency foundInstituted
“the Petition, and overlooked the fact that Mr. Cooper’s opinion is also based on his own calculations and data in two published articles. See Ex. 1003 ¶ 97. Specifically, Mr. Cooper approximates reactor DME equilibrium concentrations in the ’095 patent examples and explains how these approximations were obtained using readily available data, specifically identifying data in two published articles. Ex. 1003 ¶ 97 (citing Exs. 1029, 1030). Mr. Cooper goes on to explain why, based on the reactor contents and distillation conditions in the ’095 patent examples, DME and acetaldehyde would be present in the overhead distillation streams. Id. ¶¶ 99–100. Because Petitioner has shown Mr. Cooper’s testimony is supported by underlying factual evidence, and is not based solely on an unsupported assumption and the Miura Declaration, we determine Mr. Cooper’s testimony provides persuasive support for Petitioner’s contention that DME is inherently present in an overhead distillation stream of the ’095 patent process, and that claim 58 is anticipated by the ’095 patent. We have also reviewed the Petition’s analysis of dependent claims 59, 60, 67, 69, 71, and 72, and conclude Petitioner has provided sufficient explanation and evidence to support a reasonable likelihood that the additional limitations of these claims are described in the ’095 patent. See Pet. 25–30.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“on the combination of the ’095 patent and Akinori, based on our determination in Section 1.A., above, that Petitioner had established a reasonable likelihood it would prevail on the merits in showing claim 58 was anticipated by the ’095 patent alone, and the Petition did not articulate a substantive difference between the two challenges. In the present challenge, the Petition fails to explain how Akinori is relied upon for a teaching of a claim 73 feature not described in the ’095 patent. See Pet. 47–51. The Petition does explain, however, why claim 73 would have been obvious over the combination of the ’095 patent and JP ’712. See id. at 50–51. Based on the record before us, Petitioner has established a reasonable likelihood it would prevail in showing claim 73 would have been obvious over the ’095 patent and JP ’712. Therefore, the Request for Rehearing is granted as to claim 73, and trial is instituted based on the combination of the ’095 patent and JP ’712.” slip op. at 11
§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 8,076,507 - Daicel Corporation v. Celanese International CorporationRehearing grantedPTAB · Jun 26, 2015 · IPR2015-00170 · APJ Linda M Gaudette · IPR · Rehearing
Rehearing was granted in part and review instituted on claims 1–4, 6–11, and 13 as obvious over Singh, the ’095 patent, and Akinori.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing that the decision should be modified, 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
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“overlooked the discussion on page 26 of the Petition which relies on Mr. Cooper’s declaration testimony. Mr. Cooper’s testimony is supported by underlying factual evidence, and is not based solely on unsupported assumptions and the Miura Declaration, which we determined were not persuasive evidence that DME would be present inherently in the overhead distillation of the ’095 patent Example. Thus, we agree with Petitioner that on the record before us, and for purposes of our decision on whether to institute trial on this challenge, Mr. Cooper’s testimony provides persuasive support for Petitioner’s contention that DME is inherently present in an overhead distillation stream of the ’095 patent process. Further, for purposes of this decision, the Petition identifies sufficiently how Singh discloses features in the dependent claims that are not explicitly described in the ’095 patent. See, e.g., Pet. 56 (claim 2), id. at 57 (claim 8). The Petitioner also provides adequate explanation of reasons for combining the references. See Pet. 50. In sum, upon reconsideration of this challenge in light of the Request for Rehearing, we determine Petitioner has provided sufficient explanation and evidence to support a reasonable likelihood that it would prevail on the merits in showing claims 1–4, 6–11, and 13 would have been unpatentable over Singh, the ’095 patent, and Akinori. Therefore, the Request for Rehearing is granted and trial is instituted as to this challenge.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“declaration testimony; rather, we assessed the persuasiveness of Mr. Miura’s testimony in light of other factual evidence in the record. See Dec. 16–20; Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“It is within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate. . . . In giving more weight to prior publications than to subsequent conclusory statements by experts, the Board acted well within that discretion.”). We did not conclude DME is absent in the distillation overhead in the ’095 patent Example. We found Mr. Miura’s testimony and Experiment 1 were not persuasive evidence that DME would be present inherently in the overhead distillation of the ’095 patent Example given the differences in the ’095 patent Example and Experiment 1 reaction liquids. Thesedifferences were not addressed adequately by Mr. Miura. In this regard, we found Mr. Miura’s dismissal of these differences as “slight,” without further discussion, was not persuasive in light of our actual comparison of the ’095 patent Example and Experiment 1, that revealed “Miura’s Experiment 1 contained more than twice the amount of rhodium and about 34% of the amount of water used in the ’095 patent Example,” Dec. 19, and our review of the ’095 patent and Petitioner’s own patent, U.S. Patent No. 7,683,212 B2 (Ex. 2014), that indicate these differences would affect the reaction product, Dec. 20.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“overlooked the discussion on page 26 of the Petition which relies on Mr. Cooper’s declaration testimony. Mr. Cooper’s testimony is supported by underlying factual evidence, and is not based solely on unsupported assumptions and the Miura Declaration, which we determined were not persuasive evidence that DME would be present inherently in the overhead distillation of the ’095 patent Example. Thus, we agree with Petitioner that on the record before us, and for purposes of our decision on whether to institute trial on this challenge, Mr. Cooper’s testimony provides persuasive support for Petitioner’s contention that DME is inherently present in an overhead distillation stream of the ’095 patent process. Further, for purposes of this decision, the Petition identifies sufficiently how Singh discloses features in the dependent claims that are not explicitly described in the ’095 patent. See, e.g., Pet. 56 (claim 2), id. at 57 (claim 8). The Petitioner also provides adequate explanation of reasons for combining the references. See Pet. 50.” slip op. at 9
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,076,507
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.