- Ykk Corporation v. 3M Innovative Properties Co.Rehearing deniedPTAB · Feb 10, 2022 · IPR2020-00699 · APJ Matthew S Meyers · IPR · Rehearing
The Board denied rehearing, leaving claim 12 not shown unpatentable under Grounds 8 and 9 because the petition lacked evidence tying the claimed shear strength to the required loop basis weight.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. LEGAL STANDARDS A party requesting rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d). The party must specifically identify all matters it believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. A request for rehearing, therefore, is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. See, e.g., Presidio Components, Inc.v. AVX Corporation, IPR2015-01332, Paper 21, 4 (PTAB Feb. 21, 2016) (“Patent Owner’s arguments in this regard amount to a mere disagreement with our analysis or conclusion. But mere disagreement with our analysis or conclusion is not a sufficient basis for rehearing. It is not an abuse of discretion to provide analysis or conclusion with which Patent Owner disagrees.”)” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Id. at 9. As to Petitioner’s first and second arguments, we specifically addressed Petitioner’s argument that the proposed combination of Petersen-1 and Busam would meet the shear strength limitation of claim 12. Dec. 69– 73. After reviewing the evidence and arguments presented by both parties, we agreed with Patent Owner’s position. As to Petitioner’s third argument, that we overlooked Busam’s disclosure of an overlapping loop basis weight range, that disclosure was never in dispute. Petitioner argues that “Patent Owner attempted to shift the focus of the Board to the unrelated issue of whether Busam explicitly discloses an anticipating example.” Req. Reh. 11. Petitioner seems to be implying that we applied an anticipation standard to its obviousness arguments, but we did not. Instead, our decision was based 6 on a lack of record evidence of obviousness. See, e.g., Dec. 72–73 (“Petitioner does not point us to any evidence that Busam’s female loop material is capable of engaging with a male fastening portion with a shear strength that was ‘reported to be greater than 500 grammes’ and has ‘a fiber basis weight in a range from 20 grams per square meter to 30 grams per square meter,’ as claim 12 requires.”). We also agreed with Patent Owner that the Petitioner had impermissibly relied on new obviousness theories in its Reply that were not presented in the Petitioner. Dec. 73 (“Petitioner does not explain why the arguments made in its Reply relating to claim 12 could not have been presented in the first instance in the Petition or how the arguments in the Reply are responsive to Patent Owner’s arguments in the Patent Owner Response”).” slip op. at 6
- Strike new argumentNew argument disregardedDecided for patent owner
“Id. at 9. As to Petitioner’s first and second arguments, we specifically addressed Petitioner’s argument that the proposed combination of Petersen-1 and Busam would meet the shear strength limitation of claim 12. Dec. 69– 73. After reviewing the evidence and arguments presented by both parties, we agreed with Patent Owner’s position. As to Petitioner’s third argument, that we overlooked Busam’s disclosure of an overlapping loop basis weight range, that disclosure was never in dispute. Petitioner argues that “Patent Owner attempted to shift the focus of the Board to the unrelated issue of whether Busam explicitly discloses an anticipating example.” Req. Reh. 11. Petitioner seems to be implying that we applied an anticipation standard to its obviousness arguments, but we did not. Instead, our decision was based 6 on a lack of record evidence of obviousness. See, e.g., Dec. 72–73 (“Petitioner does not point us to any evidence that Busam’s female loop material is capable of engaging with a male fastening portion with a shear strength that was ‘reported to be greater than 500 grammes’ and has ‘a fiber basis weight in a range from 20 grams per square meter to 30 grams per square meter,’ as claim 12 requires.”). We also agreed with Patent Owner that the Petitioner had impermissibly relied on new obviousness theories in its Reply that were not presented in the Petitioner. Dec. 73 (“Petitioner does not explain why the arguments made in its Reply relating to claim 12 could not have been presented in the first instance in the Petition or how the arguments in the Reply are responsive to Patent Owner’s arguments in the Patent Owner Response”).” slip op. at 6
§ 103 obviousnessPatents in suitUS 10,165,833 - PTAB · Jan 26, 2022 · IPR2020-00871 · APJ Frederick C Laney · IPR · Rehearing
The Board denied rehearing and left in place its § 314(a) denial of institution for claims 1–68 based on the Fintiv factor analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the 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. 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).” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“the District Court held a hearing regarding venue related issues. Ex. 1044, 6:8–15. During the course of that hearing, the District Court set forth procedures that the parties should follow to address some outstanding venue related issues. Id. at 26:1–10. The District Court also stated that, after the parties followed those procedures and reported back, it would “determine whether [the Court] should leave the current schedule in place or whether [the Court] should enter some kind of a temporary stay to facilitate [additional venue-related discovery].” Id. at 26:11–16. Petitioner argues that this comment by the District Court should tip the Fintiv factor 1 in favor of institution. Reh. Req. 8–9. We disagree. Although the December 20th hearing may indicate the District Court’s willingness to consider whether “some kind of a temporary stay” should be entered to resolve the outstanding venue issues, it provides little, if any, actual evidence that the District Court would, in fact, enter a stay. Even if we were to guess that the District Court would enter a stay, we would still have to speculate further about the length of the “temporary” stay because, if it were for only a few days or weeks, it would still not avoid the concerns of inefficiency and duplicative efforts addressed by Fintiv factor 1. Regarding our alleged failure to apprehend or consider fully Petitioner’s proposed stipulation, we again do not agree. In the Decision, we specifically addressed Petitioner’s proposed stipulation and explained its shortcomings. Dec. 15–16. Although Petitioner clearly does not agree with our analysis, mere disagreement with our opinion is not a valid basis for reconsideration.” slip op. at 10
Discretionary denialPatents in suitUS 9,749,829 - PTAB · Jan 26, 2022 · IPR2020-00870 · APJ Frederick C Laney · IPR · Rehearing
The Board denied rehearing of its decision denying institution, finding no overlooked or misapprehended facts that changed its Fintiv analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the 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. 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 burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): 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. admitted” in connection with a request for rehearing. Patent Trial and Appeal Board Consolidated Trial Practice Guide 90 (Nov. 2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (“CTPG”) (citing Huawei Device Co. v. Optis Cellular Tech., LLC, IPR2018-00816, Paper 19 at 4 (PTAB Jan. 8, 2019) (precedential)). Thus, a request for rehearing is not an opportunity to present new arguments or evidence or merely to disagree with the panel’s assessment of the arguments or weighing of the evidence.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“the District Court held a hearing regarding venue related issues. Ex. 1044, 6:8–15. During the course of that hearing, the District Court set forth procedures that the parties should follow to address some outstanding venue related issues. Id. at 26:1–10. The District Court also stated that, after the parties followed those procedures and reported back, it would “determine whether [the Court] should leave the current schedule in place or whether [the Court] should enter some kind of a temporary stay to facilitate [additional venue-related discovery].” Id. at 26:11–16. Petitioner argues that this comment by the District Court should tip the Fintiv factor 1 in favor of institution. Reh. Req. 8–9. We disagree. Although the December 20th hearing may indicate the District Court’s willingness to consider whether “some kind of a temporary stay” should be entered to resolve the outstanding venue issues, it provides little, if any, actual evidence that the District Court would, in fact, enter a stay. Even if we were to guess that the District Court would enter a stay, we would still have to speculate further about the length of the “temporary” stay because, if it were for only a few days or weeks, it would still not avoid the concerns of inefficiency and duplicative efforts addressed by Fintiv factor 1. Regarding our alleged failure to apprehend or consider fully Petitioner’s proposed stipulation, we again do not agree. In the Decision, we specifically addressed Petitioner’s proposed stipulation and explained its shortcomings. Dec. 15–16. Although Petitioner clearly does not agree with our analysis, mere disagreement with our opinion is not a valid basis for reconsideration.” slip op. at 10
- Additional discoveryAdditional discovery, grantedAdditional discovery, deniedMixed
“Although Petitioner did bring the District Court’s Orders to our attention in a timely manner, we are not persuaded good cause has been shown to exist for us to consider these Orders. First, the Orders are all from cases that are separate and distinct from the parallel litigation involving the parties before us. Ex. 1040, 1; Ex. 1041, 1; Ex. 1042, 1; Ex. 1043, 1. Second, each Order is limited to cases that are “set for in-person jury trials during December of 2020 and January through February of 2021.” Id. That limitation further diminishes the value of the Orders in this proceeding because the jury trial in the parties’ parallel litigation was scheduled to begin on April 5, 2021 (Ex. 2003, 1). In fact, Petitioner acknowledges that the Orders have “not yet been applied in the underlying litigation.” See Reh. matter to be speculative at best. In the Rehearing Request, Petitioner argues that Exhibits 1040–1043 provide evidence that the parallel litigation may be stayed. Reh. Req. 7. However, in addition to the fact that the Orders in those exhibits do not relate to the parties’ or their parallel litigation, none of the Orders actually stays a case, which diminishes the relevance of the Orders to the first Fintiv factor even further. Petitioner argues additionally that these Orders along with other COVID-related facts demonstrate the uncertainty of the trial date in the parties’ parallel litigation. Nevertheless, Petitioner never argued prior to our Decision that the parallel litigation was uncertain because of COVIDrelated facts. See Pet. 70–71; Pet. Reply 1–5. In other words, Petitioner is not offering this new information to support an argument that was made before the Decision was entered. Petitioner instead offers Exhibits 1040– 1043 to support a new argument introduced for the first time in the Rehearing Request, which is improper and immaterial as to any alleged errors in the Decision. Therefore, we do not find Petitioner has carried its burden of showing good cause exists to justify consideration of those exhibits to evaluate whether we erred by “overlooking or misapprehending” anything in the Decision.” slip op. at 5
Discretionary denialPatents in suitUS 9,749,829 - Helmerich & Payne International Drilling Company / Helmerich & Payne Technologies, LLC et al. v. Nabors Drilling Technologies USA, Inc.Rehearing deniedPTAB · Jan 21, 2022 · IPR2021-01018 · APJ Sean P O’Hanlon · IPR · Rehearing
The Board denied rehearing and upheld denial of institution, finding the Petition did not show a reasonable likelihood that any challenged claim was unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d) (2020). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star 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).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsNot shown unpatentable
“overlooked any matter in the Institution Decision. As we explained, the Petition “does little more than cite to its annotated version of Haci Figure 3 and the Schaaf Declaration, which in large measure presents the same conclusory assertions advanced in the Petition.” Inst. Dec. 17 (citing Pet. 43–46; Ex. 1005 ¶¶ 126–133). We explained that neither Petitioner nor its declarant addressed Haci’s full disclosure or attempted to reconcile the disclosure with the assertion that Haci’s “small dots” are toolface orientation data, and we provided several examples of the disclosure Petitioner and its declarant failed to consider. Id. at 17–20. For example, we noted that Petitioner and its declarant failed to reconcile Haci’s discussion of toolface orientation omitting reference to Haci’s graphical display 113 and the discussion of the graphical display omitting reference to the “small dots” relied upon by Petitioner. Id. at 17. We also noted the failure of Petitioner and its declarant to explain how any useful information could be conveyed by the “small dots” relied upon by Petitioner. Id. at 18. For example, Petitioner does not present an example case of the “small dots” conveying a specific tool face orientation at any given time. To the contrary, it appears that any vertical line passing through the “small dots”—during times of both rotary drilling and slide drilling— would intersect multiple dots. Moreover, as we noted in the Institution Decision, both Petitioner and its declarant failed to explain how the 242° tool face orientation disclosed via tool face indicator 73 in Figure 3 is conveyed by the “small dots” relied upon by Petitioner. Id. at 18. In essence, Petitioner argues in the Petition that because Haci’s graphical display 113 shows a toolface degree legend on the Y-axis in Figure 3, the “small dots” relied upon by Petitioner must be toolface orientation data. As explained in the Institution Decision, however, we disagree with this presumption. At best, the Y-axis legend suggests that toolface orientation data could be presented via the graphical display, but does not imply that the “small dots” relied upon by Petitioner are that data. By failing to reconcile Haci’s full disclosure with its assertions of what is conveyed in Figure 3, the Petition merely speculates about what is disclosed in Figure 3. However, “[s]uch speculation is inadequate to support Petitioner’s contentions.” Inst. Dec. 17.” slip op. at 3
NonePatents in suitUS 7,802,634 - Abs Global, Inc. / Genus, PLC v. Cytonome/St, LLCRehearing deniedPTAB · Jan 7, 2022 · IPR2021-00306 · APJ Lynne H Browne · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution under § 325(d) because Petitioner did not show material error concerning Weigl, Ohki, or Wada.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the 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). Additionally, 37 C.F.R. § 42.71(d) further provides that “[t]he burden of showing a decision should be modified lies with the party challenging the decision,” i.e., Petitioner, 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.”” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“pursuant to 35 U.S.C. § 325(d). Paper 13 (“Dec.”). The Decision explains the two-part framework used to assess arguments under § 325(d) and that the Board considers several factors (i.e. the “Becton, Dickinson” factors) when determining: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Dec. 8. In the Decision, the Board determined that “Weigl, Ohki, and Wada were previously presented to the Office” and that Petitioner had “not demonstrated that the Examiner materially erred when considering these references.” Id. at 16. Based on this determination, the Board exercised discretion to deny institution of inter partes review. Id.” slip op. at 2
Discretionary denialPatents in suitUS 10,689,210 - Juniper Networks, Inc. v. Correct Transmission, LLCRehearing deniedPTAB · Dec 16, 2021 · IPR2021-00814 · APJ Stephen E Belisle · IPR · Rehearing
The Board denied Juniper’s rehearing request, leaving intact its denial of institution because the petition did not show a reasonable likelihood of prevailing on any challenged claim.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“because the Board was not persuaded by Petitioner’s arguments and evidence for purposes of institution does not mean that we overlooked or misapprehended Petitioner’s arguments and evidence, and importantly, a request for rehearing is not an opportunity merely to reargue one’s case or to express disagreement with the Board’s decision.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“But Bruckman’s “trunk link” (or LAG as argued by Petitioner) is explicitly disclosed as a link to a core network, not as the links (or traces 34 on backplane 26) to subsidiary modules 24, as argued by Petitioner: “In network access systems, for example, a backplane may be used to connect a main module, having a trunk link to a core network, to a number of subsidiary modules, such as line cards, with ports serving network users. Ex. 1007, 1:25–30 (emphasis added); see id. at 1:61–2:4 (“The master module comprises a switch, which is typically used for linking the subsidiary modules via the connection lines to a network trunk.” (emphases added)); Dec. 25. Bruckman also explicitly discloses that “[a]t any given time, a number of the connection lines [between main module 22 and subsidiary modules 24, i.e., traces 34] are likely to be idle” (Ex. 1007, 2:2–4), which is contrary to a purpose of a LAG (see Ex. 1001, 2:10–16 (“The [LAG] forwarding entity usually attempts to distribute the load evenly over each physical output port of the aggregated logical link.” (emphasis added))). See Dec. 25–28. Thus, in the Decision, we found neither Petitioner nor its declarant had explained sufficiently, let alone with particularity, why the skilled artisan, but for hindsight, would have understood Bruckman to teach the Physical/Logical Link Limitations, of which the physical links are subject to the Designating Limitations, as recited, for example, in claim 1. Indeed, we were not persuaded by Petitioner’s arguments in its Petition as to the Physical/Logical Link Limitations, and having reviewed the Request, remain unpersuaded. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”).” slip op. at 4
Nonecites KSRPatents in suitUS 7,768,928 - Platform Science, Inc. v. XRS CorporationRehearing deniedPTAB · Dec 14, 2021 · IPR2021-00325 · APJ Neil T Powell · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because the Petition did not show a reasonable likelihood that claims 1–24 were unpatentable as obvious.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “The 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” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner has not offered persuasive evidence of any suggestion in the prior art that Nehowig’s onboard computer may be used with multiple different engine control modules that communicate data in different languages. Nor has Petitioner offered persuasive evidence of any suggestion in Nehowig that its engine control module uses more than one language. Contrarily, Nehowig suggests that the onboard computer and engine control module are vehicle specific without an indication that either needs to be adaptable for use in multiple different vehicles. . . . Additionally, regardless of whether Nehowig’s ECM uses one or multiple communication protocols, Petitioner does not provide persuasive evidence that it would have been obvious to modify Nehowig’s OBC 204 to meet limitation 1A.1. Fedorchuk discloses a device configured for connecting to and communicating with a diagnostic communication port of any of a variety of vehicles using any of a number of different possible protocols, enabled by interface device 10’s ability to detect the different possible protocols. . . . Petitioner does not provide persuasive evidence that Nehowig’s OBC 204 would be connected to any ECM without OBC 204 and the ECM already configured to communicate specifically with one another using one more predesignated protocols. . . . Petitioner does not provide persuasive evidence that Nehowig’s OBC 204 would not already have dedicated provisions for communicating with the ECM in the specific protocol(s) the ECM uses. Nehowig clearly discloses that OBC 204 already can communicate with Nehowig’s ECM, apparently using whatever protocol(s) the ECM uses. [Ex. 1005] ¶ 23. Accordingly, Petitioner has not shown sufficiently a reason that a person of ordinary skill in the art would have modified Nehowig’s OBC 204 to allow it to communicate with the ECM.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“misapprehended that the Petition identified a particular proposed combination. We acknowledged Petitioner’s proposed combination. See Dec. 25–26 (“Petitioner then describes a scenario, argued ‘[t]o achieve this goal [of not having the official enter the vehicle],’ where the official ‘will provide a cable to the driver to plug into the EOBR’ . . . . Based on this, Petitioner concludes ‘[t]herefore, the combined system of Nehowig and Fedorchuk implementing the DOT regulations discloses transferring the hours of service information from the OBC to a safety assurance officer’s computer via a data cable.’”). And, even had we overlooked or misapprehended it, the outcome would not change. Again, the basis for the Decision is that Petitioner failed to explain adequately and persuasively why a person of ordinary skill in the art would arrange the data flow in this manner. Dec. 27. In view of the foregoing, we are not persuaded of any error in our Decision that the Petition did not demonstrate a reasonable likelihood of establishing obviousness of limitation 1B.1. See Dec. 27–28. IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated that we abused our discretion in not instituting an inter partes review of the challenged claims of the ’575 patent.” slip op. at 19
§ 103 obviousnessPatents in suitUS 10,255,575 - Tomofun, LLC v. Doggyphone LLCRehearing deniedPTAB · Dec 10, 2021 · IPR2021-00260 · APJ Patrick R Scanlon · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because Petitioner did not show the Board overlooked or misapprehended its arguments or abused its discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a single 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, an opposition, or a reply. We review our Decision under an abuse of discretion standard. 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 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). “Substantial evidence is ‘such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.’” OSI Pharm., LLC v. Apotex” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Claim(s) Ground 35 U.S.C. § Reference(s)/Basis Challenged 1 7 102(b) Alasaarela1 2 8 103(a) Alasaarela 3 7–9 102(b) Beccaria2 4 7–9 103(a) Carelli,3 Beccaria 5 7–9 103(a) Bloksberg,4 Beccaria Pet. 4. Petitioner asserts that Alasaarela discloses the audio signal limitation for Grounds 1 and 2. Id. at 23–24, 31. Petitioner asserts that Beccaria discloses the audio signal limitation for Ground 3, and Carelli discloses the audio signal limitation for Ground 4. Id. at 36–37, 48. For Ground 5, Petitioner asserts that Bloksberg discloses the audio signal limitation. Id. at 60.” slip op. at 3
- BurdenDecided for patent owner
“As such, the Petition does not indicate with sufficient particularity that Petitioner relies on the Examiner’s finding as a basis for asserting that Bloksberg discloses the audio signal limitation and, thus, does not satisfy Petitioner’s burden on this point. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” (citing 35 U.S.C. § 312(a)(3)); see also Intelligent Bio- Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings the ‘evidence that supports the grounds for the challenge to each claim.’” (quoting 35 U.S.C. § 312(a)(3))). Because the Petition did not indicate clearly that it was relying on the Examiner’s finding, we could not have misapprehended or overlooked such a position. In addition, Patent Owner was not afforded a fair opportunity to dispute any reliance on the Examiner’s finding or the reasoning underlying the finding.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We disagree with Petitioner’s characterization of Ground 3 as being based on obviousness. Rather, the Petition clearly asserts for Ground 3 that “Claims 7-9 are anticipated under 35 U.S.C. § 102 by Beccaria[].” Pet. 4; see also id. at 32 (“Ground 3 – Claims 7–9 Are Unpatentable As Anticipated By Beccaria[]”). Petitioner’s Ground 3 analysis of claim 7 relies on Beccaria disclosing each limitation, including the audio signal limitation. Id. at 32–40. Petitioner’s Rehearing Request does not direct us to any portion of the Petition for Ground 3 that asserts any claim limitation would have been obvious over Beccaria, alone or in combination with another reference. Accordingly, we are not persuaded that we misapprehended Petitioner’s argument with respect to Beccaria.” slip op. at 9
§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,723,813 - PTAB · Dec 8, 2021 · IPR2021-00608 · APJ Thu A Dang · IPR · Rehearing
The Board denied Samsung’s rehearing request, leaving institution denied under § 325(d) because the same or substantially the same arguments were previously presented and examiner error was not shown.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in its petition. Id. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Advanced Bionics, we exercised our discretion under 35 U.S.C. § 325(d) and determined not to institute inter partes review. Dec. 7−26 (citing Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte Gmbh, IPR2019- 01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential)). As to Part 1 of the Advanced Bionics framework, we determined that the same or substantially the same arguments were presented previously to the Office. Id. at 10−13. Under Part 2 of the Advanced Bionics framework, we determined that Petitioner failed to show that the Examiner erred by not realizing that Chu ’330 and Chu ’886 qualify as 35 U.S.C. § 102(b) prior art and are material to the patentability of the claims in the ’654 patent. Id. at 14−26.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner’s arguments are new arguments raised for the first time in its Rehearing Request. Petitioner acknowledges that “NRG and Hollmer were not cited in the Petition.” Req. Reh’g 10. Nevertheless, Petitioner alleges that it “could not have anticipated the Patent Owner’s mischaracterization of the Droplets decision, nor the Board’s reliance on this mischaracterization,” and that Petitioner was not authorized to file a reply to the Patent Owner Preliminary Response. Id.; see also id. at 2−3, fn.1. Petitioner’s new arguments in connection with Hollmer and NRG are improper. As we discussed above, Patent Owner did not mischaracterize and we did not misapprehend Droplets. It was not necessary to authorize Petitioner to file a reply, as we were capable of determining whether Patent Owner mischaracterizes Droplets. As discussed above, Petitioner fails to recognize that the language relied upon by Patent Owner in Droplets is consistent with 37 C.F.R. § 1.57 and MPEP § 608.01(p). Although Petitioner relies on MPEP § 608.01(p) in its Petition, Petitioner now in its Rehearing Request for the first time suggests that we should ignore MPEP § 608.01(p) and the case law cited in MPEP § 608.01(p). Pet. 11–12; Req. Reh’g 6−7. A request for rehearing is not an opportunity to submit new arguments, after the decision has noted the deficiencies in the petitioner’s original analysis. 37 C.F.R. § 42.71(d). It is Petitioner’s burden to identify specifically all matters we misapprehended or overlooked in our Decision to Institute. We could not have misapprehended or overlooked the new arguments that were not presented in the record until after the Decision.” slip op. at 15
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“Contrary to Petitioner’s contentions, section 1.57 of Title 37 of the Code of Federal Regulations is not a “statute,” but a regulation that became effective on September 21, 2004. See 69 Fed. Reg. 56,482. The ’882 application, which incorporated Chu ’886 by reference, was filed on September 8, 1998, and issued as Chu ’330 on February 5, 2002. Ex. 1005, codes (21), (22), (45), (60), 6:1–7. The ’654 patent, which incorporated the ’882 application by reference, is a reissue of Application No. 09/312,199 (“the ’199 application”) filed on May 14, 1999, now U.S. Patent No. 6,634,777 (“the ’777 patent”), issued on November 4, 2003. Ex. 1001, codes (63), (64); 5:63–67. Both the ’882 application (issued as Chu ’330) and the ’199 application (reissued as the ’654 patent) were filed and issued as patents prior to the effective date, September 21, 2004, of 37 C.F.R. § 1.57. Petitioner does not explain why the applicant should have complied with 37 C.F.R. § 1.57, which did not exist at the time of filing of those applications or issuance of those patents that incorporated by reference Chu ’886 and the ’882 application. Pet. 7–8, 10−17; Req. Reh’g 1−12. We decline to apply 37 C.F.R. § 1.57 retroactively to the incorporation by reference statements submitted in the ’882 application and the ’199 application.” slip op. at 6
§ 102 anticipationDiscretionary denial - PTAB · Dec 6, 2021 · IPR2021-00605 · APJ Thu A Dang · IPR · Rehearing
The Board denied Samsung’s rehearing request, leaving institution denied under § 325(d) because the same or substantially the same arguments were previously presented and material Examiner error was not shown.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in its petition. Id. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Under Part 2 of the Advanced Bionics framework, Petitioner has the burden to show that “[t]he Examiner erred by not realizing that Chu ’330, Chu ’185, and Chu ’886 qualify as 35 U.S.C. § 102(b) prior art and are material to the patentability of the ’768 Patent claims,” as Petitioner alleges in its § 325(d) analysis. Pet. 7, 9−18. Upon consideration of Petitioner’s Request for Rehearing, we are not persuaded by Petitioner’s arguments of Examiner error.” slip op. at 4
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner’s arguments are new arguments raised for the first time in its Rehearing Request. Petitioner acknowledges that “Hollmer and NRG were not cited in the Petition.” Req. Reh’g 10. Nevertheless, Petitioner alleges that it “could not have anticipated the Patent Owner’s mischaracterization of the Droplets decision, nor the Board’s reliance on this mischaracterization,” and that Petitioner was not authorized to file a reply to the Patent Owner Preliminary Response. Id.; see also id. at 2−3, fn.1. Petitioner’s new arguments in connection with Hollmer and NRG are improper. As we discussed above, Patent Owner did not mischaracterize and we did not misapprehend Droplets. It was not necessary to authorize Petitioner to file a reply, as we were capable of determining whether Patent Owner mischaracterizes Droplets. As discussed above, Petitioner fails to recognize that the language relied upon by Patent Owner in Droplets is consistent with 37 C.F.R. § 1.57 and MPEP § 608.01(p). Although Petitioner relies on MPEP § 608.01(p) in its Petition, Petitioner now in its Rehearing Request for the first time suggests that we should ignore MPEP § 608.01(p) and the case law cited in MPEP § 608.01(p). Pet. 11; Req. Reh’g 6−7. A request for rehearing is not an opportunity to submit new arguments, after the decision has noted the deficiencies in the petitioner’s original analysis. 37 C.F.R. § 42.71(d). It is Petitioner’s burden to identify specifically all matters we misapprehended or overlooked in our Decision to Institute. We could not have misapprehended or overlooked the new arguments that were not presented in the record until after the Decision.” slip op. at 15
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“codes (21), (22), (45), (60), 6:1–7. The initial parent application in the ’768 patent’s priority chain, U.S. Application No. 09/569,758 (“the ’758 application”), which incorporated the ’882 application by reference, was filed on May 12, 2000, and issued as U.S. Patent No. 6,718,415 B1 (“the ’415 patent”) on April 6, 2004. See Ex. 1001, code (63); Ex. 1008, code (45), 4:50–53. Both the ’882 application (issued as Chu ’330) and the ’758 application (issued as the ’415 patent) were filed and issued as patents prior to the effective date, September 21, 2004, of 37 C.F.R. § 1.57. Petitioner does not explain why the applicant should have complied with 37 C.F.R. § 1.57, which did not exist at the time of filing of those applications or issuance of those patents that incorporated by reference Chu ’886 and the ’882. Pet. 7, 9−18; Req. Reh’g 1−13. We decline to apply 37 C.F.R. § 1.57 retroactively to the incorporation by reference statements submitted in the ’882 application and the ’758 application.” slip op. at 7
§ 102 anticipationDiscretionary denialPatents in suitUS 9,529,768
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.