- Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Regents Of The University Of MinnesotaRehearing deniedPTAB · Sep 18, 2020 · IPR2017-01186 · APJ Robert J Weinschenk · IPR · Rehearing
The Board denied Ericsson’s rehearing request, leaving institution denied because the petition was time-barred under § 315(b) based on privity with district court defendants.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS When considering a request for rehearing of a decision whether to institute an inter partes review, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears 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 › §315(b) time barDecided for patent owner
“In the Decision, we explained that 35 U.S.C. § 315(b) provides that an inter partes review “may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Dec. 4. We also explained that in determining whether a petitioner is in privity with another party, we consider the Supreme Court’s decision in Taylor v. Sturgell, 553 U.S. 880 (2008). Dec. 4–5. Taylor provides six categories of exceptions to the rule against nonparty preclusion, namely 1) when “[a] person . . . agrees to be bound by the determination of issues in an action between others”; 2) “based on a” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“In the Decision, we explained that 35 U.S.C. § 315(b) provides that an inter partes review “may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Dec. 4. We also explained that in determining whether a petitioner is in privity with another party, we consider the Supreme Court’s decision in Taylor v. Sturgell, 553 U.S. 880 (2008). Dec. 4–5. Taylor provides six categories of exceptions to the rule against nonparty preclusion, namely 1) when “[a] person . . . agrees to be bound by the determination of issues in an action between others”; 2) “based on a” slip op. at 2
Discretionary denialPatents in suitUS 8,774,309 - Unified Patents Inc. v. Synchview Technologies, LLCRehearing deniedPTAB · May 28, 2020 · IPR2019-00470 · APJ Monica S Ullagaddi · IPR · Rehearing
The Board denied rehearing and maintained denial of institution because the record lacked evidence to determine the scope of “DVR” and whether the prior art met that limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“In summary, the record does not include sufficient information for a determination of the claim scope of “DVR.” It is Petitioner’s burden to show, in the Petition, “[h]ow the challenged claim is to be construed” and “[h]ow the construed claim is unpatentable.” 37 C.F.R. § 42.104(b)(3)–(4). Without such an explanation of Petitioner’s position and supporting evidence, we cannot conduct the necessary factual inquiry for determining whether Petitioner has shown a reasonable likelihood in demonstrating that the prior art meets this limitation. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) (reversing the Board’s decision of obviousness because it relied on “what at best are speculative assumptions as to the meaning of the claims”).” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In summary, the record does not include sufficient information for a determination of the claim scope of “DVR.” It is Petitioner’s burden to show, in the Petition, “[h]ow the challenged claim is to be construed” and “[h]ow the construed claim is unpatentable.” 37 C.F.R. § 42.104(b)(3)–(4). Without such an explanation of Petitioner’s position and supporting evidence, we cannot conduct the necessary factual inquiry for determining whether Petitioner has shown a reasonable likelihood in demonstrating that the prior art meets this limitation. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) (reversing the Board’s decision of obviousness because it relied on “what at best are speculative assumptions as to the meaning of the claims”). We are unable to conclude, therefore, that there is a reasonable likelihood that Petitioner would prevail in demonstrating the unpatentability of any of the challenged claims.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In summary, the record does not include sufficient information for a determination of the claim scope of “DVR.” It is Petitioner’s burden to show, in the Petition, “[h]ow the challenged claim is to be construed” and “[h]ow the construed claim is unpatentable.” 37 C.F.R. § 42.104(b)(3)–(4). Without such an explanation of Petitioner’s position and supporting evidence, we cannot conduct the necessary factual inquiry for determining whether Petitioner has shown a reasonable likelihood in demonstrating that the prior art meets this limitation. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) (reversing the Board’s decision of obviousness because it relied on “what at best are speculative assumptions as to the meaning of the claims”).” slip op. at 5
Claim constructionPatents in suitUS 6,788,882 - Apple Inc. v. Uniloc Luxembourg, S.A.Rehearing deniedPTAB · Feb 18, 2020 · IPR2018-00289 · APJ Garth D Baer · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving intact its obviousness findings for claims 1, 3, 5–11, 13–18, and 20.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS 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.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 2
NonePatents in suitUS 8,872,646 - PTAB · Sep 4, 2019 · IPR2017-00909 · APJ Jacqueline T Harlow · IPR · Rehearing
The Board denied rehearing, finding no abuse of discretion in denying institution because the petition did not adequately show motivation to combine or a reasonable expectation of success.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS Pursuant to 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. 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. 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 exists where a “decision [i]s based on an erroneous conclusion of law or clearly” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“In addition, there is no dispute that the annealing protocol employed by the Wu Thesis “prove[d] deleterious to the functionality of the silicon device, particularly to its infrared wavelength absorptance capabilities.” Id. at 15 (citing Pet. 21). Based on these observations, we concluded that the Petitioner did not “adequately explain why an ordinarily skilled artisan would have sought to anneal the sulfur-doped spiked silicon disclosed by the Wu Thesis in view of the reference’s teachings concerning the characteristics of spiked silicon, and the limitations of annealing such devices.” Id. at 17.” slip op. at 4
- Strike new argumentNew argument disregardedOther
“Hamamatsu’s argument regarding the alleged limitations of passivation by hydrogenation for only healing damage appears to be new. In fact, Hamamatsu’s Petition states that “[a]nnealing typically occurs after a doping process, because the annealing is used to repair damage caused by 7 the doping process, and to ‘activate’ the dopant material in the silicon.” Pet. 4. Hamamatsu did not make a distinction between these two purposes until now, nor have they adequately explained why it matters. As explained in our Decision, the passivation by hydrogenation process as disclosed in the Wu Thesis is used to “cure the structural defects in, and improve the electrical properties of,” the silicon substrate. Decision 18. Even, assuming arguendo, that the passivation by hydrogenation process is not a “full and complete substitute for the annealing process,” this does not change the fact that the Wu Thesis does not suggest any positive effect of annealing on dopant activation or on the electrical properties of spiked silicon. Furthermore, to the extent that annealing was discussed in the Wu Thesis, it had deleterious effects on absorptance.” slip op. at 7
§ 103 obviousnessPatents in suitUS 8,080,467 - Apple Inc. / LG Electronics, Inc. v. Uniloc 2017 LLCRehearing deniedPTAB · Aug 9, 2019 · IPR2018-00361 · APJ Miriam L Quinn · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1, 2, 6-9, 12, 14, and 15 unpatentable over Riggins and Devarakonda and claim 20 not shown unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified lies with the party challenging the decision,” and the “request must specifically identify all matters the party believes the Board misapprehended or overlooked.” The burden here, therefore, lies with Patent Owner to show we misapprehended or overlooked the matter it requests that we review. We are not persuaded that Patent Owner has shown that we misapprehended or overlooked the matter raised in the Request for Rehearing.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
§ 103 obviousnessPatents in suitUS 6,216,158 - Facebook, Inc. / Whatsapp, Inc. et al. v. Uniloc 2017 LLCRehearing deniedPTAB · Jan 17, 2019 · IPR2017-01428 · APJ Miriam L Quinn · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving intact the determination that claims 9–12, 14–17, 25, and 26 are unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“issue of claim scope was raised in connection with Patent Owner’s arguments of attaching one or more files to an “instant voice message.” Paper 8, 11−12. Similarly, in our Final Written Decision we noted that simply construing “instant voice message,” without more, does not resolve the dispute of the parties because Patent Owner raised arguments distinguishing the prior art on the basis of “attaching” a file to the data content itself. Final Dec. 18. The Board construes terms that resolve the dispute of the parties, and “attaches” was one of those terms. Id.; see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“issue of claim scope was raised in connection with Patent Owner’s arguments of attaching one or more files to an “instant voice message.” Paper 8, 11−12. Similarly, in our Final Written Decision we noted that simply construing “instant voice message,” without more, does not resolve the dispute of the parties because Patent Owner raised arguments distinguishing the prior art on the basis of “attaching” a file to the data content itself. Final Dec. 18. The Board construes terms that resolve the dispute of the parties, and “attaches” was one of those terms. Id.; see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 3
Claim constructionPatents in suitUS 8,995,433 - Facebook, Inc. / Whatsapp Inc. et al. v. Uniloc 2017 LLCRehearing deniedPTAB · Jan 17, 2019 · IPR2017-01427 · APJ Miriam L Quinn · IPR · Rehearing
The Board denied rehearing, rejecting Patent Owner’s argument that LG Electronics was estopped from maintaining the proceeding because its joinder made it Facebook and WhatsApp’s privy.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Finally, we are not persuaded that in our Final Written Decision we overlooked or misapprehended the role of LG Electronics in this proceeding as an alleged “privy,” as this issue is presented for the first time on rehearing. III. ORDER Patent Owner’s Request for Rehearing is denied.” slip op. at 6
- PTAB / AIA Trials › §315(e) estoppelDecided for patent owner
“When deciding “privity,” for estoppel purposes, however, it makes sense to focus on the relationship between the named Petitioner and the alleged privy in the prior inter partes review, i.e., the -225 case. See WesternGeco LLC v. Ion Geophysical Corp., 889 F.3d 1308, 1317–22 (Fed. Cir. May 7, 2018) (discussing that a privity inquiry must be grounded in due process and that, in the context of § 315(b), the inquiry focuses on the relationship between the named IPR petitioner and the party in the prior lawsuit and noting that “privity analysis seeks to determine whether the relationship between the purported privy and the relevant other party is sufficiently close such that both should be bound by the trial outcome and related estoppels”); see also Shamrock Techs. Inc. v. Medical Sterilization, Inc., 903 F.2d 789, 793 (“What constitutes ‘privity’ varies, depending on the purpose for which privity is asserted.”). LG Electronics was not a party to the -225 case, and there is neither fact nor allegation in the record of actions 5 by LG Electronics in connection with any prior inter partes review that warrants a privity inquiry, at this stage in the proceeding.” slip op. at 5
- PTAB / AIA Trials › Real party in interest / privityNot reached
“sense to focus on the relationship between the named Petitioner and the alleged privy in the prior inter partes review, i.e., the -225 case. See WesternGeco LLC v. Ion Geophysical Corp., 889 F.3d 1308, 1317–22 (Fed. Cir. May 7, 2018) (discussing that a privity inquiry must be grounded in due process and that, in the context of § 315(b), the inquiry focuses on the relationship between the named IPR petitioner and the party in the prior lawsuit and noting that “privity analysis seeks to determine whether the relationship between the purported privy and the relevant other party is sufficiently close such that both should be bound by the trial outcome and related estoppels”); see also Shamrock Techs. Inc. v. Medical Sterilization, Inc., 903 F.2d 789, 793 (“What constitutes ‘privity’ varies, depending on the purpose for which privity is asserted.”). LG Electronics was not a party to the -225 case, and there is neither fact nor allegation in the record of actions 5 by LG Electronics in connection with any prior inter partes review that warrants a privity inquiry, at this stage in the proceeding.” slip op. at 5
NonePatents in suitUS 8,995,433 - Google LLC v. Uniloc Luxembourg, S.A.Rehearing deniedPTAB · Dec 13, 2018 · IPR2017-02202 · APJ Charles J Boudreau · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because Richardson and Demeyer did not teach determining the claimed account information or software features through physical device recognition.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision[,]” which party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“machine parameters include . . . information relating to the device’s software configuration” and that a person of ordinary skill in the art would have recognized that “data relating to the client device’s software configuration can contain information regarding features of software that the user of the client device is entitled to use” (Pet. 19 (emphasis added) (citing Ex. 1103 ¶ 52; Ex. 1104 ¶ 22)), we find no support in the cited evidence that Richardson teaches or suggests that any “information regarding features of software that the user of the client device is entitled to use” could be determined by performing physical device recognition. Indeed, as we explained in our earlier Decision, we discern no information regarding “features of software that [a] user is entitled to use” in any of Richardson’s machine parameters cited by Petitioner as examples of “information relating to the device’s software configuration,” namely, “the platform on which a web browser or another application runs,” “unique parameters associated with the firmware in use,” and “software or operating system serial number.” Dec. 17; cf. Pet. 19. Despite Petitioner’s citation to the testimony of its declarant, Mr. James Geier, in support of its argument, the cited testimony in disclosures corresponding to the challenged claim language. Although we agree with Petitioner that “a reference need not use the same terminology to disclose an element” (Req. Reh’g 6 n.1 (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009))), we will not employ the benefit of hindsight from the ’852 patent’s disclosure to find a teaching or suggestion in Richardson. relevant part merely repeats verbatim Petitioner’s argument (compare Ex. 1103 ¶ 52, with Pet. 19) and likewise fails to explain how the cited examples from Richardson would have taught or suggested the claim limitation. See 37 C.F.R. § 42.65(a) (“Expert 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 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“disclosures corresponding to the challenged claim language. Although we agree with Petitioner that “a reference need not use the same terminology to disclose an element” (Req. Reh’g 6 n.1 (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009))), we will not employ the benefit of hindsight from the ’852 patent’s disclosure to find a teaching or suggestion in Richardson. relevant part merely repeats verbatim Petitioner’s argument (compare Ex. 1103 ¶ 52, with Pet. 19) and likewise fails to explain how the cited examples from Richardson would have taught or suggested the claim limitation. See 37 C.F.R. § 42.65(a) (“Expert 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 9
NonePatents in suitUS 8,239,852 - Google LLC v. Uniloc Luxembourg, S.A.Rehearing deniedPTAB · Nov 1, 2018 · IPR2017-02080 · APJ Charles J Boudreau · IPR · Rehearing
The Board denied Google's rehearing request, leaving institution denied for claims 3–23 because the petition did not show Zydney disclosed the claimed object field.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We have considered Petitioner’s contentions but are not persuaded of any error in our Decision. Our Decision was premised not on a rejection of Petitioner’s proposed formulation of the broadest reasonable interpretation of the “object field” limitation recited in claim 3, but instead on Petitioner’s failure to persuade us that Zydney’s “body” maps to the recited object field. A prior art reference cannot anticipate “unless [it] discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Moreover, “[a]nticipation requires that a single reference ‘describe the claimed invention with sufficient precision and detail to establish that the subject matter existed in the prior art.’” Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1284 (Fed. Cir. 2017) (alteration in original) (quoting Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed. Cir. 2002)). “For this reason, it has long been understood that ambiguous references do not, as a matter of law, anticipate a claim.” Id. But the disclosure of Zydney relied upon by Petitioner for the object field limitation of claim 3 is, at best, ambiguous.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In our Decision, we found that there was insufficient evidence on the record to support Petitioner’s contention that Zydney’s disclosure of a message “body” expressly discloses the recited object field and, further, that Petitioner did not establish a reasonable likelihood of showing that the claimed object field is inherently anticipated by Zydney. Dec. 17. We explained, in particular, that “[a]lthough Zydney discloses that its voice container includes ‘voice data,’ . . . Petitioner has not shown that voice data necessarily would be included in an ‘object field.’” Id. We, accordingly, determined that Petitioner did not demonstrate a reasonable likelihood of showing that the object field limitation of claim 3 is disclosed by Zydney.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“record to support Petitioner’s contention that Zydney’s disclosure of a message “body” expressly discloses the recited object field and, further, that Petitioner did not establish a reasonable likelihood of showing that the claimed object field is inherently anticipated by Zydney. Dec. 17. We explained, in particular, that “[a]lthough Zydney discloses that its voice container includes ‘voice data,’ . . . Petitioner has not shown that voice data necessarily would be included in an ‘object field.’” Id. We, accordingly, determined that Petitioner did not demonstrate a reasonable likelihood of showing that the object field limitation of claim 3 is disclosed by Zydney.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“recites, in part, “a messaging system communicating with a plurality of instant voice message client systems . . . wherein the messaging system receives an instant voice message from one of the plurality of instant voice message client systems, and wherein the instant voice message includes an object field including a digitized audio file.” Ex. 1001, 24:15–27 (emphasis added). Petitioner alleges that claims 3–8, 11, 13, and 18–21 are anticipated by Zydney1 and that claims 3–23 also are unpatentable as obvious over the combined teachings of Zydney and certain other references (Pet. 6, 11–68), relying in each of the asserted grounds on Zydney as teaching the recited “object field including a digitized audio field” (id. at 17–19, 38).” slip op. at 3
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,724,622 - Apple Inc. / Snap Inc. et al. v. Uniloc Luxembourg S.A.Rehearing deniedPTAB · Sep 6, 2018 · IPR2017-00225 · APJ Miriam L Quinn · IPR · Rehearing
The Board denied Petitioner’s rehearing request, leaving unchanged its finding that the challenged claims were not shown unpatentable based on Abburi and Holtzberg.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified lies with the party challenging the decision,” and the “request must specifically identify all matters the party believes the Board misapprehended or overlooked.” The burden here, therefore, lies with Petitioner to show we misapprehended or overlooked the matters it requests that we review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner
“disclosures that Petitioner provided, together with the testimony of Dr. Forys in support, to reach our finding that a person of ordinary skill in the art would not have been motivated to combine Abburi and Holtzberg as Petitioner alleged in the Petition. Thus, we are not persuaded that we overlooked the evidence that Petitioner raises in the Request for Rehearing.” slip op. at 4
§ 103 obviousnessPatents in suitUS 8,995,433
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.