- Nautilus Hyosung, Inc. v. Diebold, Inc.Rehearing deniedPTAB · Jan 31, 2017 · IPR2016-00580 · APJ Georgianna W Braden · IPR · Rehearing
The Board denied the petitioner’s rehearing request, leaving in place the denial of institution on claims 1, 5-8, 10, 16, 26, and 27 because the obviousness arguments were insufficient.
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 addressed previously 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). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). Applying these legal standards, we address the arguments presented by Petitioner.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“overlooked an explanation as to how and why it would have been obvious to modify Dickenson to have the service opening of Gussack. Petitioner provided multiple reason for why a “[person of ordinary skill in the art] would have been prompted to modify the device of Dickenson to have a bottom service opening as described in Gussack.” Pet. 16–18 (emphasis added). Yet, as explained in the Decision Denying Institution, Petitioner’s arguments for combining the cited art for very specific limitations are insufficient, because Petitioner failed to “explain why a person of ordinary skill in the art would combine together the prior art teachings to arrive at the challenged claim as a whole.” Dec. 25. The Petition merely offers conclusory statements that someone of ordinary skill in the art could have modified Dickenson, yet fails to explain persuasively why a person of ordinary skill in the art would have modified the gaming machine of Dickenson to use the removable bottom panel of Gussack in order to have a service opening as required by claim 1.6 Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374, n. 3 (Fed. Cir. 2008) (criticizing “a complete absence of any proof that one skilled in the art would find the particular claimed method obvious . . . for any reason”). Therefore, as our Decision Denying Institution states, Petitioner’s analysis is conclusory and fails to explain adequately how the evidence supports the contentions that Dickenson in view of Gussack would have rendered the limitations of challenged claim 1 obvious. See Dec. 17–22, 24–28. 6 We specifically address claim 1, because it was only for claim 1 where Petitioner provided the list of reasons for modifying Dickenson in view of Gussack. See Pet. 16–18. 5 Accordingly, we are not persuaded that we misapprehended or overlooked Petitioner’s argument that it would have been obvious to one of ordinary skill in the art to modify Dickenson to use a removable bottom panel from Gussack’s drawer to teach the claimed “service opening.” Although we recognize that removable panels for servicing of components may have been known in the prior art, Petitioner does not explain what would have led a person of ordinary skill in the art at the time of the invention to choose to use Gussack’s removable panel to create a service opening in a wall in Dickenson’s rolling tray. Rather, as discussed in our Decision, we find Petitioner’s arguments fraught with hindsight bias. See KSR Int’l Co. v. Teleflex, 550 U.S. 398, 418 (2007) (“[A] patent composed of several elements is not proved obvious by merely demonstrating that each of its elements was, independently, known in the prior art.”); Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368–69 (Fed. Cir. 2012) (“[Smith & Nephew] never offered evidence articulating why a person having ordinary skill in the art would combine the primary references to obtain the disclosed inventions.”); Innogenetics, N.V., 512 F.3d at 1374, n. 3 (“We must still be careful not to allow hindsight reconstruction of references to reach the claimed invention without any explanation as to how or why the references would be combined to produce the claimed invention.”).” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner
“overlooked an explanation as to how and why it would have been obvious to modify Dickenson to have the service opening of Gussack. Petitioner provided multiple reason for why a “[person of ordinary skill in the art] would have been prompted to modify the device of Dickenson to have a bottom service opening as described in Gussack.” Pet. 16–18 (emphasis added). Yet, as explained in the Decision Denying Institution, Petitioner’s arguments for combining the cited art for very specific limitations are insufficient, because Petitioner failed to “explain why a person of ordinary skill in the art would combine together the prior art teachings to arrive at the challenged claim as a whole.” Dec. 25. The Petition merely offers conclusory statements that someone of ordinary skill in the art could have modified Dickenson, yet fails to explain persuasively why a person of ordinary skill in the art would have modified the gaming machine of Dickenson to use the removable bottom panel of Gussack in order to have a service opening as required by claim 1.6 Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374, n. 3 (Fed. Cir. 2008) (criticizing “a complete absence of any proof that one skilled in the art would find the particular claimed method obvious . . . for any reason”). Therefore, as our Decision Denying Institution states, Petitioner’s analysis is conclusory and fails to explain adequately how the evidence supports the contentions that Dickenson in view of Gussack would have rendered the limitations of challenged claim 1 obvious. See Dec. 17–22, 24–28. 6 We specifically address claim 1, because it was only for claim 1 where Petitioner provided the list of reasons for modifying Dickenson in view of Gussack. See Pet. 16–18. 5 Accordingly, we are not persuaded that we misapprehended or overlooked Petitioner’s argument that it would have been obvious to one of ordinary skill in the art to modify Dickenson to use a removable bottom panel from Gussack’s drawer to teach the claimed “service opening.” Although we recognize that removable panels for servicing of components may have been known in the prior art, Petitioner does not explain what would have led a person of ordinary skill in the art at the time of the invention to choose to use Gussack’s removable panel to create a service opening in a wall in Dickenson’s rolling tray. Rather, as discussed in our Decision, we find Petitioner’s arguments fraught with hindsight bias. See KSR Int’l Co. v. Teleflex, 550 U.S. 398, 418 (2007) (“[A] patent composed of several elements is not proved obvious by merely demonstrating that each of its elements was, independently, known in the prior art.”); Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368–69 (Fed. Cir. 2012) (“[Smith & Nephew] never offered evidence articulating why a person having ordinary skill in the art would combine the primary references to obtain the disclosed inventions.”); Innogenetics, N.V., 512 F.3d at 1374, n. 3 (“We must still be careful not to allow hindsight reconstruction of references to reach the claimed invention without any explanation as to how or why the references would be combined to produce the claimed invention.”).” slip op. at 5
- BurdenDecided for patent owner
“The Board could not have overlooked a detailed explanation or analysis not presented in the Petition. A rehearing request is not a supplemental petition. The petition, itself, must identify “specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(5). “The Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge.” Id. The Petitioner has the responsibility to identify and explain in the petition specific evidence that supports its arguments. See 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”).” slip op. at 10
§ 103 obviousnesscites KSRPatents in suitUS 6,082,616 - Apple Inc. v. Voip-Pal.Com Inc.Rehearing deniedPTAB · Jan 3, 2017 · IPR2016-01201 · APJ Stacy B Margolies · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution in place for claims 1, 7, 27, 28, 34, 54, 72–74, 92, 93, and 111.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“argument that the purported motivation to combine—that allowing users to place calls as if they were dialing from a standard PSTN phone would be desirable—is unsupported by substantial evidence. Reh’g Req. 7–12. Specifically, Patent Owner argues that the Institution Decision relies on testimony from Petitioner’s declarant, Dr. Houh, and that that declaration testimony “do[es] not rely upon any evidence for support.” Id. at 10. Patent Owner also argues that the Board overlooked Patent Owner’s argument that Dr. Houh’s testimony should be entitled to little or no weight. Id. at 11–12.” slip op. at 5
- Expert testimonyPetitioner expert creditedDecided for petitioner
“argument that the purported motivation to combine—that allowing users to place calls as if they were dialing from a standard PSTN phone would be desirable—is unsupported by substantial evidence. Reh’g Req. 7–12. Specifically, Patent Owner argues that the Institution Decision relies on testimony from Petitioner’s declarant, Dr. Houh, and that that declaration testimony “do[es] not rely upon any evidence for support.” Id. at 10. Patent Owner also argues that the Board overlooked Patent Owner’s argument that Dr. Houh’s testimony should be entitled to little or no weight. Id. at 11–12.” slip op. at 5
§ 103 obviousnessPatents in suitUS 8,542,815 - Captioncall, LLC v. Ultratec, Inc.Rehearing deniedPTAB · Dec 1, 2015 · IPR2013-00540 · APJ Barbara A Benoit · IPR · Rehearing
Denied Patent Owner’s request for rehearing of the Final Written Decision, which held claims 1 and 2 unpatentable, and denied its request for an expanded panel.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS A request for rehearing must identify specifically all matters the party believes we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d). Additionally, Patent Owner, as the party challenging the Final Decision, has the burden of showing the decision should be modified. Id.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“Ryan1 did not qualify as prior art because it was not enabled (Paper 30, 15– 24 (“PO Resp.”)), we determined that Ryan was enabled prior to the date of invention of the challenged patent in 1997 and, therefore, qualified as prior art to the challenged claims. Final Dec. 18–23.” slip op. at 3
- ExcludeDecided for petitioner
“transcript is inadmissible because it does not satisfy the requirements that all testimony, other than uncompelled direct testimony, must be in the form of a deposition transcript, 37 C.F.R. § 42.53(a), and that the witness shall be sworn, 37 C.F.R. § 42.53(f)(1). Req. 7. Therefore, according to Patent Owner, the Yamamoto transcript was “not taken, sought, or filed in accordance with these regulations [and] is not admissible.” Id. (citing 37 C.F.R. § 42.61(a)). Rule 42.53, however, is titled “Taking Testimony” and applies only to testimony taken “during a testimony period set by the Board” for purposes of a particular review proceeding. 37 C.F.R. § 42.53(b); see also 37 C.F.R. § 42.53(c) (providing time limits set by the Board); id. § 42.53(d) (providing notice requirements). As stated in our Final Decision, Petitioner sought to admit the Yamamoto transcript as supplemental information, not as deposition testimony taken in this inter partes proceeding. Final Dec. 31. And based on the parties’ stipulation in district court, we treated the Yamamoto transcript as sworn deposition testimony taken in the district court. Id. at 33–35 (citing Ex. 1062 ¶ 5). Petitioner filed the Yamamoto transcript as supplemental information under 37 C.F.R. § 42.123(b), establishing that the Yamamoto transcript reasonably could not have been obtained earlier and that its consideration was in the interests of justice. Paper 63, 7–8. Therefore, Petitioner’s filing of the Yamamoto transcript complied with Board rules, and we properly relied on it in determining the public accessibility of Yamamoto. See Final Dec. 30– 35.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Specification’s disclosure of “voice pattern.” Req. 10–11. We disagree that our reliance on the Specification’s “Brief Summary of the Invention,” which indicates “a speech recognition computer program which has been trained to the voice pattern of the call assistant,” was improper. See Final Dec. 7 (quoting Ex. 1021, 2:45-48 (emphasis added)). Rather, in our Final Decision, we contrasted the Specification’s use of “voice pattern of the call assistant” in its “Brief Summary of the Invention” with its use of “a voice recognition software package which is specifically trained to the voice of that particular call assistant” in the context of a particular embodiment of the invention shown in Figure 1. Final Dec. 7 (quoting Ex. 1021, 2:45–48, 5:45–48). Based on the evidence in the Specification (including the Specification’s disclosure of “a voice pattern”), we determined that the Specification did not indicate expressly that the voice recognition software is trained to the voice of only that particular call assistant or otherwise indicate that the voice recognition software is trained for the voice of only one call assistant. Final Dec. 7. We concluded that “we will not limit ‘trained to the voice of the call assistant’ to require training to the voice of only one particular call assistant, because the claim language encompasses the invention as disclosed in the Specification—software trained to a voice pattern of a call assistant.” Id. at 8 (citing Ex. 1021, 2:41–49 (“Summary of the Invention”)).” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,233,314 - Captioncall, LLC v. Ultratec, Inc.Rehearing deniedPTAB · Dec 1, 2015 · IPR2013-00545 · APJ Barbara A Benoit · IPR · Rehearing
The Board denied the Patent Owner’s rehearing request, leaving claims 1 and 2 unpatentable over Ryan and Alshawi.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS A request for rehearing must identify specifically all matters the party believes we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d). Additionally, Patent Owner, as the party challenging the Final Decision, has the burden of showing the decision should be modified. Id.” slip op. at 2
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusNot shown unpatentable
“secondary considerations evidence. Req. 5. This is incorrect. We considered the arguments and evidence presented in Patent Owner’s Response. Final Dec. 36–37. We concluded Patent Owner did “not provide sufficient analysis for us to determine whether Patent Owner has provided adequate evidence of secondary considerations and a nexus between any such evidence and the merits of the claimed invention.” Id. In its Request, Patent Owner seems to suggest that we should have reviewed and analyzed the entirety of each of three declarations submitted by Patent Owner in support of its secondary considerations contention (Exs. 2003, 2004, and 2005). Req. 5. This also is incorrect because, in its Patent Owner Response, Patent Owner merely cited each declaration in its entirety without citing with particularity portions of these declarations. PO Resp. 49 (citing “declarations by Brenda Battat (Ex. 2004) and Constance Phelps (Ex. 2005)” and “declaration of Paul Ludwick (Ex. 2003)”). We will not scour the 143 pages of declaration evidence submitted by Patent Owner and generally serve as an advocate for Patent Owner by finding evidence of secondary considerations in the voluminous exhibits submitted. Cf. DeSilva v DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.”); Ernst Haas Studio, Inc. v. Palm Press, Inc., 164 F.3d 110, 111–12 (2d Cir. 1999) (“Appellant’s Brief is at best an invitation to the court to scour the record, research any legal theory that comes to mind, and serve generally as an advocate for appellant. We decline the invitation.”). Testimony of Patent Owner’s Declarant” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“F.3d 1322 (Fed. Cir. 2012) in finding a motivation to combine Ryan1 and Alshawi2 and, therefore, erred in determining that the challenged claims would have been obvious. Req. 7–8 (citing Final Dec. 33). The Final Decision cited Mouttet for the proposition that a “determination of obviousness is not based on bodily incorporation of parts from one disclosed system into another, but what the combined teachings would have suggested to one with one of ordinary skill in the art.” Final Dec. 33 (citing Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012); In re Keller, 642 F.2d 412, 425 (CCPA 1981)). We disagree that we misapprehended Mouttet, which states: It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements. In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (“Etter’s assertions that Azure cannot be incorporated in Ambrosio are basically irrelevant, the criterion being not whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.”); In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”); In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the features of a secondary reference may be bodily 1 U.S. Patent No. 5,809,112 (Ex. 1004). 2 U.S. Patent No. 5,815,196 (Ex. 1010). incorporated into the structure of the primary reference....”). In re Mouttet, 686 F.3d at 1332. Thus, we are not persuaded that we misapprehended Mouttet. Nor did we “disregard[] Patent Owner’s counter-evidence that there would be disincentives for a [person of ordinary skill in the art] to combine Ryan and Alshawi,” “given that Alshawi’s features are incompatible with the TDD devices with which Ryan is used.” Req. 8. Rather, in finding a sufficient reason one of ordinary skill in the art would combine the references, we considered the reasons identified by the Petition, weighed the testimony of the respective declarants, and considered Patent Owner’s arguments. Final Dec. 32–35. Claim Construction” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Rather, in our Final Decision, we contrasted the Specification’s use of “voice pattern of the call assistant” in its “Brief Summary of the Invention” with its use of “a voice recognition software package which is specifically trained to the voice of that particular call assistant” in the context of a particular embodiment of the invention shown in Figure 1. Final Dec. 8–9 (quoting Ex. 1001, 2:51–54, 6:21–24). Based on the evidence in the Specification (including the Specification’s disclosure of “a voice pattern”), we determined that the Specification did not indicate expressly that the voice recognition software is trained to the voice of only that particular call assistant or otherwise indicate that the voice recognition software is trained for the voice of only one call assistant. Final Dec. 8. We concluded that “we will not limit ‘trained to the voice of the call assistant’ to require training to the voice of only one particular call assistant, because the claim language encompasses the invention as disclosed in the Specification—software trained to a voice pattern of a call assistant.” Id. at 9 (citing Ex. 1001, 2:41–49 (“Summary of the Invention”)).” slip op. at 9
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 6,594,346 - Captioncall, LLC v. Ultratec, Inc.Rehearing deniedPTAB · Dec 1, 2015 · IPR2013-00541 · APJ Barbara A Benoit · IPR · Rehearing
The Board denied the Patent Owner’s rehearing request, leaving claims 1–15 unpatentable based on the prior final written decision.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS A request for rehearing must identify specifically all matters the party believes we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d). Additionally, Patent Owner, as the party challenging the Final Decision, has the burden of showing the decision should be modified. Id.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artDecided for petitioner
“Ryan1 did not qualify as prior art because it was not enabled (Paper 28, 16– 25 (“PO Resp.”)), we determined that Ryan was enabled prior to the date of invention of the challenged patent in 1997 and, therefore, qualified as prior art to the challenged claims. Final Dec. 23–28.” slip op. at 3
- ExcludeDecided for petitioner
“record will be treated as a sworn deposition taken in [the district court proceeding] at which both parties appeared and had the opportunity to question the witness.” Ex. 1062 ¶ 5 (Stipulation Regarding Seiichi Yamamoto). As explained in our Final Decision, we granted Petitioner’s motion to submit the Yamamoto transcript as supplemental information under 37 C.F.R. § 42.123(b) relating to the prior art status of Yamamoto and, after supplemental briefing by the parties, determined the Yamamoto transcript was admissible. Final Dec. 36–41.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Specification’s disclosure of “voice pattern.” Req. 10–12. We disagree that our reliance on the Specification’s “Brief Summary of the Invention,” which indicates “a speech recognition computer program which has been trained to the voice pattern of the call assistant,” was improper. See Final Dec. 8–9 (quoting Ex. 1001, 2:46–48 (emphasis added)). Rather, in our Final Decision, we contrasted the Specification’s use of “voice pattern of the call assistant” in its “Brief Summary of the Invention” with its use of “a voice recognition software package which is specifically trained to the voice of that particular call assistant” in the context of a particular embodiment of the invention shown in Figure 1. Final Dec. 8–9 (quoting Ex. 1001, 2:46– 48, 5:44–47). Based on the evidence in the Specification (including the Specification’s disclosure of “a voice pattern”), we determined that the Specification did not indicate expressly that the voice recognition software is trained to the voice of only that particular call assistant or otherwise indicate that the voice recognition software is trained for the voice of only one call assistant. Final Dec. 9. We concluded that “we will not limit ‘trained to the voice of the call assistant’ to require training to the voice of only one particular call assistant, because the claim language encompasses the invention as disclosed in the Specification—software trained to a voice pattern of a call assistant.” Id. at 10 (citing Ex. 1001, 2:41–49 (“Summary of the Invention”)).” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 5,909,482
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.