- PNC Bank N.A. v. United Services Automobile AssociationRehearing deniedPTAB · Mar 8, 2023 · IPR2021-01077 · APJ Juliet Mitchell Dirba · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving in place the final written decision finding claims 1–18 unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD FOR REHEARING 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 in a motion, an opposition, a reply, or a sur-reply.” 37 C.F.R. § 42.71(d). “The burden of showing a decision should be modified lies with the party challenging the decision.” Id.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“misapprehended or overlooked matters relevant to whether an ordinary artisan would have reasonably expected success in combining Garcia and Randle. Req. 1–5. We have reviewed and carefully considered all of the arguments presented, but determine Patent Owner fails to show that the Decision misapprehended or overlooked any material arguments or evidence. To provide context for our discussion, we begin with a targeted summary of the Decision, and then we turn to Patent Owner’s specific arguments.” slip op. at 2
§ 103 obviousnessPatents in suitUS 10,621,559 - Quectel Wireless Solutions Co. Ltd. v. Koninklijke Philips N.V.Rehearing deniedPTAB · Mar 7, 2023 · IPR2021-00563 · APJ Kevin F Turner · IPR · Rehearing
The Board denied Patent Owner’s rehearing request and left claim 9 unpatentable as obvious over Agin and Chen under § 103.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c) (2020). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, the request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, [or] a reply.” Id.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We do not agree with Patent Owner’s arguments. As stated in our Decision, Agin discloses that parameters may be determined based on statistics on power control results for a transmission period before said transmission interruption, including “the largest [of] the variations of a received signal power before the interruption. See Dec. 24; Ex. 1004, 6:9– 13. Thus, Agin acknowledges that variations are possible, and can be taken into account, even with a single base station. Chen discusses that a power control processor determines the correct power control command by use of averaging or weighted averaging from “each transmitter’s signal at the receiver.” Ex. 1005, 10:45–56. Thus, although Patent Owner is correct that those signals are received from multiple transmitters, in Chen, Agin demonstrates that variations can occur and can be compensated for with even a single transmitter, countering Patent Owner’s argument that there would be nothing to average over. Taking Agin and Chen together, as Petitioner has asserted, we remain persuaded that ordinarily skilled artisans would have applied the weighted average, disclosed in Chen, in Agin, even if a single transmitter/ base station is utilized. See Dec. 23–25. We remain persuaded that those of ordinary skill in the art would have been able to apply the concept of a weighted average to signals received from a single base station.” slip op. at 10
§ 103 obviousnessPatents in suitUS 8,195,216 - Liquidia Technologies, Inc. v. United Therapeutics CorporationRehearing deniedPTAB · Feb 2, 2023 · IPR2021-00406 · APJ Christopher M Kaiser · IPR · Rehearing
Rehearing was denied; claims 1–8 remain unpatentable because conference distribution established Voswinckel JESC and Voswinckel JAHA as prior art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“the abuse of discretion standard. 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, reply, or a sur-reply.” Id. An abuse of discretion may be found where a decision “(1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision.” Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (quoting Abrutyn v. Giovanniello, 15 F.3d 1048, 1050–51 (Fed. Cir. 1994) (citation omitted)). D. We Overlooked Patent Owner’s Argument Patent Owner is correct that its argument that the Ghofrani and Sulica research aids were dated after May 15, 2005, appeared in the Sur-Reply. Sur-Reply 9–11. Patent Owner also is correct that we overlooked this argument in relying on these research aids as supporting that Petitioner had established that Voswinckel JESC and Voswinckel JAHA were prior art to the ’793 patent. Final Dec. 11–12; Paper 81, 2 (“the Board’s analysis did not consider whether the research aids themselves were available prior to the critical date”).” slip op. at 5
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner
“disseminated to the interested public, ‘public accessibility’ has been called the touch-stone in determining whether a reference constitutes a ‘printed publication.’” Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1356 (Fed. Cir. 2018) (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). A reference is considered publicly accessible if it was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Id. at 1355–56 (citing In re Wyer, 655 F.2d 221, 226 (CCPA 1981)). Under at least some circumstances, a reference may be a printed publication under § 102(b) if it was “displayed to the public,” even if it “was not later indexed in any database, catalog, or library.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). There are several factors relating to whether such a display is sufficient to constitute a printed publication, including “the length of time the display was exhibited, the expertise of the target audience, the existence (or lack thereof) of reasonable expectations that the material displayed would not be copied, and the simplicity or ease with which the material displayed could have been copied.” Id. In addition, distribution of a reference at a professional conference may, under at least some circumstances, constitute sufficient dissemination to show public accessibility. Nobel Biocare Services AG v. Instradent USA, Inc., 903 F.3d 1365, 1375–80 (Fed. Cir. 2018); Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380–83 (Fed. Cir. 2018).” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“whether the Voswinckel JESC and Voswinckel JAHA references qualify as prior art” and in particular “whether the Voswinckel JESC and Voswinckel JAHA references were publicly accessible by way of their presentation and/or inclusion in distributed materials, such as at a conference.” Paper 81, 3. As discussed above, we find that both references were distributed sufficiently at professional conferences to be publicly accessible at the time of those conferences. By virtue of this public accessibility, both Voswinckel JESC and Voswinckel JAHA were printed publications early enough to qualify as prior art under 35 U.S.C. § 102(b). G. Asserted Obviousness over ’212 Patent, Voswinckel JESC, and Voswinckel JAHA Petitioner argues that claims 1–8 would have been obvious over the combination of the ’212 patent, Voswinckel JESC, and Voswinckel JAHA. Pet. 30–46. As discussed above, Petitioner has shown by a preponderance of the evidence that both Voswinckel JESC or Voswinckel JAHA qualify as prior art. Accordingly, we do not disturb the obviousness analysis in the Final Written Decision, which relies on the prior-art status of Voswinckel JESC and Voswinckel JAHA. Final Dec. 12–35. slip op. at 12
§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,716,793 - Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Rehearing deniedPTAB · Jan 4, 2023 · IPR2022-00182 · APJ Steven M Amundson · IPR · Rehearing
Denied Patent Owner’s rehearing request; the Board found no abuse of discretion in instituting IPR of claims 1, 24, and 25 on the stated § 103 grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d) (2022). In a rehearing request, the party challenging the decision “must specifically identify” (1) “all matters the party believes the Board misapprehended or overlooked” and (2) “the place where each matter was previously addressed” in an earlier submission. Id.; see Consolidated Trial Practice Guide at 90.3 “A rehearing request is not an opportunity for the requesting party to reargue its case or merely to express disagreement with the underlying decision.” MicroSurgical Tech., Inc. v. Regents of Univ. of Colo., PGR2021-00026, Paper 14 at 2 (PTAB Aug. 12, 2021). “Nor is it an opportunity for the moving party to present new arguments that were not in its original submissions.” Id.” slip op. at 3
- Obviousness (§103) › Objective indicia / secondary considerations › CopyingObjective indicia no nexusDecided for petitioner
“Patent Owner does not explain why issue preclusion permits the Board to hold the district court’s finding that Cisco “copied software functionality from the [infringed] patents” against Petitioner. See Prelim. Resp. 16, 54–56; Req. Reh’g 3, 14–15. Issue preclusion “is appropriate only if”: (1) “the issue is identical to one decided in the first action”; (2) “the issue was actually litigated in the first action”; (3) “resolution of the issue was essential to a final judgment in the first action”; and (4) the party defending against preclusion “had a full and fair opportunity to litigate the issue in the first action.” SynQor, Inc. v. Vicor Corp., 988 F.3d 1341, 1353 (Fed. Cir. 2021). Patent Owner does not address any of these requirements for issue preclusion. See Prelim. Resp. 16, 54–56; Req. Reh’g 3, 14–15.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Regarding the policy’s whitelist processing, if the security device determines that a newly received packet with encrypted data is correlated to the hostname corresponding to the whitelisted destination domain, the security device filters the packet by forwarding it to the remote server with the whitelisted destination domain. See Ex. 1004, 7:52–59, 16:36–42; Ex. 1003 ¶ 90; see also Ex. 1004, 6:1–11. Filtering the newly received packet with encrypted data by forwarding it to the remote server with the whitelisted destination domain occurs “without having to decrypt the encrypted secure tunnel session traffic.” Ex. 1004, 5:24–27, 5:35–42, 7:1–9, 11:7–19; see Ex. 1003 ¶¶ 94, 113. Further, filtering the newly received packet with encrypted data by forwarding it to the remote server with the whitelisted destination domain results from applying a packet-filtering rule (a whitelisted destination domain) to the packet. Hence, we disagree with Patent Owner that Buruganahalli’s security devices process whitelisted packets by “forward[ing] the entire encrypted stream without . . . filtering encrypted packets.” See Req. Reh’g 10. We also disagree with Patent Owner that “encrypted packets in whitelisted sessions” are (1) “forwarded without applying any packet-filtering rules” and (2) “allowed uninspected.” See id. at 11 n.1, 13. Regarding the policy’s blacklist processing, if the security device determines that a newly received packet with encrypted data is correlated to the hostname corresponding to the blacklisted destination domain, the security device either blocks the packet (as Patent Owner contends) or filters the packet by forwarding it to a decryption engine. See Ex. 1004, 7:60–67, 9:61–67, 14:33–36, 16:43–48; Ex. 1003 ¶¶ 90–91, 94, 97, 108, 118, 127, 137; Req. Reh’g 10–11, 13. Filtering the newly received packet with encrypted data by forwarding it to a decryption engine occurs “without having to decrypt the encrypted secure tunnel session traffic.” Ex. 1004, 5:24–27, 5:35–42, 7:1–9, 11:7–19; see Ex. 1003 ¶¶ 94, 113, 135. Further, filtering the newly received packet with encrypted data by forwarding it to a decryption engine results from applying a packet-filtering rule (a blacklisted destination domain) to the packet and corresponds to limitation [1.g] and the similar limitations in claims 24 and 25. See Ex. 1003 ¶¶ 109, 134–135. The Institution Decision explained how Buruganahalli’s security devices may filter packets comprising unencrypted data and packets comprising encrypted data according to claims 1, 24, and 25 by applying a whitelist/blacklist policy to the packets. See, e.g., Inst. Dec. 57–60, 66–67, 69–71. As the Institution Decision explained and as discussed above, “for each session packets comprising unencrypted data and packets comprising encrypted data are correlated and filtered based on the hostname (destination domain) extracted from the handshake traffic, and then the correlated and filtered packets are processed separately from packets destined for other domains.” See Inst. Dec. 69–70; Ex. 1003 ¶¶ 109, 120–121, 133–135; Ex. 1004, 7:39–67, 8:55–60, 11:47–51, 14:21–33, 14:50–55, 16:32–48. Buruganahalli discloses additional filtering after forwarding a newly received packet with encrypted data to a decryption engine, e.g., as occurs in Buruganahalli’s Figure 3B embodiment. See, e.g., Ex. 1004, 6:17–22, 9:67–10:4, 12:4–64, Fig. 3B. But claims 1, 24, and 25 use the transitional term “comprising.” Ex. 1001, 25:14, 28:59, 29:29–30. Hence, the claims do not “exclude unrecited elements,” such as additional filtering after forwarding a newly received packet with encrypted data to a decryption engine. See Regeneron Pharm., Inc. v. Merus N.V., 864 F.3d 1343, 1352 (Fed. Cir. 2017) (citing Manual of Patent Examining Procedure § 2111.03).” slip op. at 8
§ 103 obviousnessPatents in suitUS 9,917,856 - Apple Inc. v. Identity Security LLCRehearing deniedPTAB · Dec 15, 2022 · IPR2022-00171 · APJ Sharon Fenick · IPR · Rehearing
The Board denied Apple’s rehearing request, leaving the denial of institution for claims 1–4, 12, and 13 unchanged because Apple showed no abuse of discretion or overlooked matter.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. THE REQUEST FOR REHEARING On request for rehearing, “[t]he burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, a reply, or a surreply.” Id. Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”” slip op. at 2
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“conclusions on the basis that Dr. Russ’s testimony is conclusory. Id. at 11. We disagree. We indicated in the Decision Denying Institution that Dr. Neuman’s testimony is conclusory. Dec. 22. For instance, Dr. Neuman testifies that the modifications that would have been needed for Petitioner’s proposed combination would have been “straightforward.” Ex. 1003 ¶ 81. Dr. Neuman’s testimony, however, is simply a conclusory statement without persuasive, supporting explanation or evidence. Id. As we indicated in the Decision Denying Institution, “Petitioner does not indicate or provide evidence supporting that the proposed modifications would have been made without introducing complexities.” Dec. 24. “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Decision to Institute as relating to only convenience. Req. 1–2, 8–11. In the Decision Denying Institution, we explained that Petitioner’s reasons to combine are insufficient because “Petitioner does not address the full teachings of Gullman.” Dec. 22, 25. We stated “[c]ontrary to Petitioner’s assertion (Pet. 33; Ex. 1003 ¶ 81) and consistent with Patent Owner’s position and Dr. Russ’s testimony that Gullman’s system eliminates the risk of the biometric template and input from being stolen during transmission (Ex. 2001 ¶ 119), Gullman describes its system as ‘secure,’ providing ‘secure identification,’ and, importantly, as providing ‘[t]ransmission security.’” Dec. 22–23 (citing Ex. 1004, 6:46–56). We particularly noted (id. at 23) Gullman’s teachings as follows: The method and apparatus of the present invention have significant advantages over known security systems. Reliable and secure identification is provided which eliminates the need for the user to memorize a code or carry a printed memorandum of the code. Transmission security is provided which is convenient, secure and useful on existing access devices of host systems in current use. In particular, the method and apparatus obviate the need for specially-designed hardware additions or modifications to existing access devices. Ex. 1004, 6:46–56. As we noted in the Decision to Institute, the Petition did not address Gullman’s teaching that its system provides “significant advantages” over known, more complex systems, which might have led an ordinarily skilled artisan away from using Padgett’s more complicated hashing process. Dec. 23–24.” slip op. at 4
§ 103 obviousnessPatents in suitUS 8,020,008 - Intel Corporation / Cavium, LLC et al. v. Alacritech, Inc.Rehearing deniedPTAB · Jun 13, 2022 · IPR2017-01410 · APJ Charles J Boudreau · IPR · Rehearing
The Board denied Petitioner’s rehearing request and maintained that claims 41–43 were not shown unpatentable because the evidence did not establish network-interface reassembly.
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.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Put another way, the finding that Petitioner did not admit that the disputed limitation is not taught by Tanenbaum was not a finding that Petitioner proved that that limitation is taught or suggested by the asserted prior art. As the Federal Circuit explained, “the Board’s rejection of certain arguments made by [Patent Owner] does not necessarily support the Board’s finding that the asserted prior art teaches or suggests reassembly in the network interface,” and “[t]hat is especially the case here, where the parties’ briefing focuses on the disclosure of the reassembly limitations by one reference (Thia), but the Board appears to have relied on a different reference (Tanenbaum) to support its finding.” Id. at 1371–72 (emphasis added). The Court, accordingly, vacated the Board’s obviousness determination as to claims 41–43 and remanded “for the Board to reconsider whether the asserted prior art teaches or suggests the entirety of the reassembly limitations, including the requirement that reassembly takes place in the network interface.” Id. at 1373 (emphasis added). And as we explained in the Decision on Remand, after such reconsideration, we were not persuaded that the combination of Thia and Tanenbaum teaches or suggests “a flow re-assembler, disposed in the network interface,” as recited in claim 41, or a “network interface comprising . . . a re-assembler,” as recited in claim 43. RFWD 22–25. While Petitioner argues that “the RFWD tacitly acknowledges that the Petition’s discussion of Tanenbaum is much more extensive than the discussion on p. 77 that the Federal Circuit described as ‘conclusory’” (Req. Reh’g 3 n.4 (citing RFWD 23–24)), we find nothing in that “more extensive” discussion that establishes by a preponderance of the evidence that the asserted combination teaches or suggests reassembly in the network interface.” slip op. at 6
§ 103 obviousnessPatents in suitUS 8,131,880 - 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 - 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 - SNF S.A. v. Solenis Technologies, L.P.Rehearing deniedPTAB · Nov 4, 2021 · IPR2020-01730 · APJ David Cotta · IPR · Rehearing
The Board denied rehearing and, despite finding a reasonable likelihood of obviousness for claims 12 and 13, denied institution because most challenged claims did not meet the threshold and review would be inefficient.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be found 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). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 2
- Obviousness (§103) › KSR rationalesNot reached
“Petitioner offers to waive its arguments with respect to invalidity grounds 2 and 3 if we institute inter partes review. Id. This offer makes our exercise of discretion a closer call, but even absent grounds 2 and 3, granting institution would require that we institute on all claims. We have determined that, for a sizeable majority of challenged claims, Petitioner has not demonstrated a reasonable likelihood of prevailing. Under the circumstances presented here, we determine it would not be an efficient use of the Board’s time and resources to institute review. See Chevron, Paper 9 at 10–11; Deeper, Paper 7. Accordingly, we exercise discretion under 35 U.S.C. § 324(a) to decline to institute post-grant review.” slip op. at 11
- Other 314aInstitution denied discretionary otherInstitution denied
“reasons discussed herein and in the Decision, Petitioner has failed to demonstrate a reasonable likelihood that it will prevail with respect to challenged claims 1–11 and 14–21. However, based on the preliminary record, Petitioner has demonstrated a reasonable likelihood that claims 12 and 13 would have been obvious over the cited art. Accordingly, this case presents the question whether we should exercise our discretion to deny institution. Our decision as to whether discretionary denial is warranted is guided by Chevron Oronite Co. v. Infineum USA L.P., IPR2018-00923, Paper 9 (PTAB Nov. 7, 2018) (informative) and Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 (PTAB Jan. 24, 2019) (informative). Both of these cases explain that “the Board may consider the number of claims and grounds that meet the reasonable likelihood standard when deciding whether to institute inter partes review under 35 U.S.C. § 314(a).” Chevron, Paper 9 at 10–11; Deeper, Paper 7 at 42. In Chevron, the panel ultimately exercised discretion to deny institution where “Petitioner demonstrate[d], at most, a reasonable likelihood of prevailing with respect to two dependent claims out of a total of twenty challenged claims.” Chevron, Paper 9 at 12. Similarly, in Deeper, the panel exercised discretion to deny institution where Petitioner demonstrated a reasonable likelihood of prevailing with respect to only two out of twenty three challenged claims. Deeper, Paper 7 at 43.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Mixed
“art – selecting values within the ranges disclosed in the prior art to calculate a ratio – did not support institution because Petitioner never explained how or why it selected any of the specific values it used to calculate the claimed ratio. Dec. 13. We concluded that Petitioner’s second use of the ranges disclosed in the art – optimizing within the disclosed ranges – did not support institution because the prior art did not disclose that the ratio of WAMW to % DADMAC was a result effective variable (id. at 17) and because Petitioner had not shown that independently optimizing WAMW and % DADMAC would lead to copolymer having the claimed ratio (id. at 17–20).” slip op. at 4
§ 103 obviousnessDiscretionary denialPatents in suitUS 9,644,320
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.