- Samsung Display Co., Ltd. v. Solas Oled, Ltd.Rehearing deniedPTAB · Oct 25, 2021 · IPR2019-01668 · APJ Jessica C Kaiser · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1–20 unpatentable over Moran and Joo-based obviousness grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A. Standard of Review The party challenging a decision in a request for rehearing bears the burden of showing that 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 in a motion, an opposition, a reply, or a sur-reply.” Id. A request for rehearing, therefore, is not an opportunity to merely disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner’s arguments regarding motivation to combine the teachings of Moran and Joo. In our Decision, we found that, “[a]s Patent Owner acknowledges (PO Sur-reply 26), Petitioner’s combination does not rely on any manufacturing techniques in Joo.” Dec. 21. We agreed with Petitioner that “creat[ing] additional touch sensitive regions on the sides of the device as taught in Joo,” provides the benefits attributed to Joo, but the benefits “are not wholly dependent upon the injection molding technique of Joo.” Id. (citing Pet. 66–67). Although we appreciate that Joo uses injection molding to form his device, we determined that the “benefits [of Joo] inure from having the touch sensitive portion on the side of the display rather than the manufacturing technique that results in that touch sensitive portion (i.e., injection molding versus bending the touch sensitive portion to wrap it around the edge of the display).” Id. at 21–22. This is consistent with Petitioner’s “Motivation to Combine” set forth in the Petition, i.e., “application of a known technique [Joo’s teaching of wrapping a touch sensor around the edges of a touchscreen display] to a piece of prior art ready for the improvement [Moran’s flexible capacitive touch sensor for a touchscreen device].” Pet. 67 (citing KSR International Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)). Indeed, in our Decision on Institution (Paper 7, 21), we expressly stated that we did not “understand Petitioner’s combination to rely on any manufacturing techniques in Joo.” Accordingly, we determine we did not change reasoning midstream as to why we agreed with Petitioner’s motivation to combine the teachings of Moran and Joo, and thus, did not misapprehend or overlook Petitioner’s motivation to combine the teachings of Moran and Joo.” slip op. at 4
- Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for petitioner
“We disagree. In our Decision, we found Dr. Wolfe’s testimony “credible and persuasive that resolving [implementation] details would have been well within the skill of a person of ordinary skill in the art.” Dec. 23 (citing Ex. 1023 ¶¶ 178–183). Dr. Wolfe provided detailed testimony supported by objective evidence on this point. See id. (citing Pet. 68); Ex. 1023 ¶¶ 182–183 (citing Ex. 1007, 8:13–21; Ex. 1012 ¶¶ 8–9; Ex. 1018, 2955, 2962; Ex. 1019 ¶¶ 25, 33, 81; Ex. 1003, 21:8–12, 27:48–28:38, 29:55– 30:33). Thus, even if Mr. Credelle’s testimony was not directly rebutted, we properly weighed Mr. Credelle’s testimony against Dr. Wolfe’s testimony. As such, we determined that a preponderance of the evidence supported Petitioner’s contention that an ordinary artisan would have known how to modify Moran to arrive at a substrate and touch sensor configured to wrap around an edge of a display. See Dec. 26. Accordingly, we are not persuaded that we overlooked or failed to consider any argument or evidence related to how the proposed modification would have been achieved.” slip op. at 6
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Not reached
“D. Constitutionality The remainder of Patent Owner’s arguments on rehearing are devoted to contesting the constitutionality of the appointments of the Administrative Patent Judges. Req. Reh’g 9–12. We decline to address Patent Owner’s constitutional challenge except to note that the constitutionality of the appointments of the Administrative Patent Judges was addressed by the U.S. Supreme Court in United States v. Arthrex, Inc., 141 S. Ct. 1970, 1986–87, 1997 (2021).” slip op. at 9
§ 103 obviousnesscites KSRPatents in suitUS 9,256,311 - Foster-Miller Inc. v. Flir Detection Inc.Rehearing deniedPTAB · Oct 20, 2021 · IPR2020-00301 · APJ Meredith C Petravick · IPR · Rehearing
The Board denied Foster-Miller’s rehearing requests in both proceedings, leaving institution denied because the petition did not adequately show the challenged claim’s limitations in SuperDroid or Wang.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD 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 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. When rehearing a decision, we review the decision for an abuse of discretion. See generally 37 C.F.R. § 42.71 (b)–(d). 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). A request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence. “It is not an abuse of discretion to have made an analysis or conclusion with which a party disagrees,” and “mere disagreement with the Board’s analysis or conclusion is not a proper basis for rehearing.” EMC Corp. v. PersonalWeb Techs., LLC, IPR2013-00085, Paper 29 at 4 (PTAB June 5, 2013).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner does not persuade us that we overlooked Superdroid’s disclosures. After careful consideration of the evidence presented in the Petition and the Requests for Rehearing, as stated in our Institution Decision, “it is not clear from SuperDroid’s figures h and i or the brief explanation of Steps 2 and 3 that the front end of the robot contacts and ascends the front face of the obstacle, with the support surface generating sufficient traction to climb the riser.” Inst. Dec. 14 (citing Ex. 2001 ¶¶ 26–27 (testimony of testimony of Dr. Robert H. Sturges, declarant for Patent Owner)). Petitioner provides additional argument and analysis of SuperDroid’s figures in support of its Request for Rehearing, but arguments that go beyond the analysis presented as to this limitation in the Petition could not have been misapprehended. See, e.g., Req. Reh’g 3 (providing annotated version of SuperDroid’s figure g), 6 (providing enlarged and annotated version of SuperDroid’s figure h). Petitioner’s argument is mere disagreement with our findings in the Institution Decisions regarding the disclosure of Superdroid.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for patent owner
“plain meaning of Element [1d] for the first time in its Request for Rehearing. Petitioner did not provide any explicit construction of Element [1d] in the Petition. See Pet. 10 (“no claim terms require[] construction, and all claims should be given their plain and ordinary meaning”). We could not have misapprehended an argument that was not adequately made in the Petition. In any event, Petitioner does not persuade us that the plain language of Element [1d] does not require pivoting the trailing arm while the vehicle ascends the stair. Petitioner’s argument relies upon Figs. 5G–5I of the ’752 patent to argue that Element [1d] does not require pivoting the trailing arm while the vehicle ascends the stair. Req. Reh’g 13. Petitioner’s argument, however, does not account for Figs. 5J–5O of the ’752 patent, which depict pivoting the trailing arm to push the robot vehicle upward while driving the vehicle tracks to surmount the stair nose. See Ex. 1001, 10:61–11:4, claims 2–4. Accordingly, the ’752 patent figures are consistent with reading Element [1d] to require pivoting the trailing arm while the vehicle ascends the stair. At a minimum, Petitioner’s reading of the claim required further explanation if not an explicit construction in the Petition, given that the limitation could be read consistent with the specification in a manner different that Petitioner presumed.” slip op. at 6
- BurdenDecided for patent owner
“And, as explicitly pointed out in the Institution Decision, the Petition’s explanation of how Wang meets Element [1d] is insufficient to establish that Wang’s arm pivots while ascending a stair. See Inst. Dec. 20– 21. “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 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 6
Claim construction§ 103 obviousnessPatents in suitUS 8,074,752 - Foster-Miller Inc. v. Flir Detection Inc.Rehearing deniedPTAB · Oct 20, 2021 · IPR2019-01548 · APJ Meredith C Petravick · IPR · Rehearing
The Board denied rehearing in both proceedings, finding no overlooked or misapprehended matter and no abuse of discretion in denying institution on the SuperDroid and Wang/Liu grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD 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 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. When rehearing a decision, we review the decision for an abuse of discretion. See generally 37 C.F.R. § 42.71 (b)–(d). 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). A request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence. “It is not an abuse of discretion to have made an analysis or conclusion with which a party disagrees,” and “mere disagreement with the Board’s analysis or conclusion is not a proper basis for rehearing.” EMC Corp. v. PersonalWeb Techs., LLC, IPR2013-00085, Paper 29 at 4 (PTAB June 5, 2013).” slip op. at 3
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“forward end of the vehicle to ascend a riser of the stair, the support surface generating sufficient traction against the riser to climb the riser as the support surface is driven.” Ex. 1001, 16:56–59. As it did in the Petition (Pet. 18–19), Petitioner argues that steps 2 and 3 and corresponding figures h and i of Superdroid show the forward end of the vehicle ascending a riser of a stair and that “‘[o]ne of ordinary skill would have understood that in order for the vehicle to climb as shown in Superdroid, the treads must generate sufficient traction against the front of the obstacle (riser)’” (Id. at19). Req. Reh’g 2–11.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“plain meaning of Element [1d] for the first time in its Request for Rehearing. Petitioner did not provide any explicit construction of Element [1d] in the Petition. See Pet. 10 (“no claim terms require[] construction, and all claims should be given their plain and ordinary meaning”). We could not have misapprehended an argument that was not adequately made in the Petition.” slip op. at 6
- BurdenNot shown unpatentable
“And, as explicitly pointed out in the Institution Decision, the Petition’s explanation of how Wang meets Element [1d] is insufficient to establish that Wang’s arm pivots while ascending a stair. See Inst. Dec. 20– 21. “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 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 6
§ 103 obviousnessPatents in suitUS 8,074,752 - Energysource Minerals, LLC v. Terralithium LLCRehearing deniedPTAB · Aug 26, 2021 · IPR2019-01603 · APJ Hubert C Lorin · IPR · Rehearing
The Board denied EnergySource’s rehearing request, finding no overlooked or misapprehended arguments or evidence that warranted changing the final written decision on claims 1–18.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A request for rehearing must identify specifically all matters that the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 3
- BurdenNot shown unpatentable
“In that regard, Petitioner contends that Christopher’s “aging process resulted in a reduction in ‘at least one elemental component’ (i.e., silica).” Pet. Reply 5–6 (emphasis added). However, this is not buttressed with any evidence. Petitioner has not presented any evidence showing Christopher’s “aging” process reduces “the concentration of at least one … elemental component” to support its contention that Christopher’s brine of Table 1 is a “treated” brine as claimed. Accordingly, on this record, Petitioner has not shown that the “treated” brine of the claims reads on Christopher’s “aged” brine by a preponderance of the evidence.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable
“The Petition discusses Grounds I and II on pages 27–30 of the Petition. Ground I challenges the patentability of claims 1–20 as anticipated by Christopher and Ground II challenges the patentability of claims 1–20 as anticipated and/or obvious over Christopher. Reading pages 27–30 it is plainly evident that it is focused on making the case that Christopher discloses all that is claimed. It is devoid of any reasoning with respect to the obviousness of the claims over Christopher. The Graham factors are not addressed. See Graham v. John Deere Co., 383 U.S. 1 (1966). The differences between the claimed invention and Christopher are not identified and no rationale as to why one of ordinary skill would have been led to modify Christopher to reach the claimed subject matter is provided. Rather, the entire discussion goes to explaining why, in fact, Christopher discloses all that is claimed. The Board was consistent with that position. Petitioner cites page 12–14 of the Reply as evidence that an obviousness challenge was presented. We disagree. The Reply does not add anything significant to the obviousness challenge presented in the Petition. The Reply is likewise devoid of any reasoning with respect to the obviousness of the claims over Christopher. It repeats that “Christopher teaches using air oxidation and pH modification to selectively precipitate silica, iron, and other heavy metals from a Salton Sea geothermal brine” (Reply 13, emphasis added), where “a POSITA could readily ‘tune’ these parameters to produce the desired results if such were not obtained immediately.” Id. The Board addressed that argument. See Dec. 17.” slip op. at 14
- Expert testimonyOther
“Petitioner cites footnote 3 [sic. 1] in the Petition but it merely states “mg/kg=(g/L*1000)/1.18kg/L due to the density of Salton Sea geothermal brines.” There is no evidence cited to support it. Petitioner cites “Reply, 3; Ex. 2025, 337:5-9” and “337:5-13” (Req. 6) but the Reply does not cite to those lines in Dr. Gallup’s Declaration. See Pet. Reply 3 (“Ex. 2025, 336:3-5-337:2”). We were unable to locate these lines of testimony in the Reply. The Board could not have misapprehended or overlooked evidence demonstrating Petitioner’s 1.18 kg/L density that was not before it.” slip op. at 11
§ 103 obviousnesscites GrahamPatents in suitUS 9,644,126 - Platform Science, Inc. v. XRS CorporationRehearing deniedPTAB · Aug 26, 2021 · IPR2021-00323 · APJ Ken B Barrett · IPR · Rehearing
The Board denied rehearing of its decision denying institution on claims 1–24, finding no abuse of discretion in its conclusion that the Petition inadequately explained the proposed data flow.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Dec. 13. We determined that “Petitioner does not explain adequately and persuasively why, in such circumstances—where the portable unit could directly transmit the report to the inspector—a person of ordinary skill in the art would see a reason to configure the system in a seemingly awkward way where the report is sent to the onboard system and then sent to the inspector.” Id. at 14.” slip op. at 7
§ 103 obviousnessPatents in suitUS 8,626,568 - ROKU, Inc. v. Universal Electronics, Inc.Rehearing deniedPTAB · Aug 17, 2021 · IPR2019-01615 · APJ Sharon Fenick · IPR · Rehearing
The Board denied Roku’s rehearing request, leaving intact its determination that claims 1, 3, 5, and 7 were not shown unpatentable over Chardon.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION 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, reply, or a sur-reply.” Id. We have reviewed Petitioner’s Request and carefully considered all of the arguments presented. We are not persuaded that we misapprehended or overlooked any arguments or evidence, and thus we decline to modify the Decision.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“first communication method” and “second communication method” recited in claim 1 with Chardon’s “CEC command codes” and “IR command codes,” respectively, where Chardon’s command codes are stored in a database linked to the Extended Display Identification Data (EDID) for target devices. Dec. 20–21. We thus evaluated whether command codes in an EDID-linked database teach or suggest the claimed listing comprised of at least a first communication method and a second communication method, and determined that “the record falls short of providing evidence that one of ordinary skill in the art would have understood stored command codes to act as an identification of communication methods to be used.” Id. at 21–22. slip op. at 3
§ 103 obviousnessPatents in suitUS 9,716,853 - 10x Genomics, Inc. v. Bio-Rad Laboratories, Inc.Rehearing deniedPTAB · Jul 28, 2021 · IPR2020-00088 · APJ Elizabeth M Roesel · IPR · Rehearing
The Board denied 10X Genomics’ rehearing request, leaving intact the finding that claims 15–17 were not shown unpatentable over Ismagilov 091 and US Pub. No. 2002/0058332 A1.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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. 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 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“Petitioner had the burden of proving that the challenged claims are unpatentable. There is no requirement for the Board to provide notice to Petitioner and an opportunity to fill gaps in its case before issuing a final decision that Petitioner did not meet its burden of proof. Allowing Petitioner to submit new evidence under the circumstances presented here would be inconsistent with the standard applicable to a request for rehearing, which” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable
“emulsion-breaking would have been either necessary or desirable when synthesizing biological compounds, pharmaceuticals, or nanoparticles, as disclosed in Ismagilov 091. Dr. Fair’s testimony that Ismagilov 091’s uses “would require breaking the emulsions” is conclusory and unexplained. Ex. 1008 ¶ 191 (testifying without explanation that Ismagilov’s “uses would require breaking the emulsions to aggregate sufficient quantities of reaction product”). In addition, Petitioner did not cite even this conclusory testimony in its argument that emulsion-breaking was necessary. Pet. 51. Meanwhile, Ismagilov 091 provides numerous examples of uses of its methods and devices, but no suggestion that emulsion-breaking would be necessary or desirable. Accordingly, we determined that Petitioner did not “direct us to evidence sufficient to establish that it would have been obvious to place the droplets onto a second continuous phase carrier fluid comprising a destabilizing surfactant to destabilize the droplets, as recited in claims 15–17.” Dec. 63. As discussed more fully below, none of Petitioner’s arguments for rehearing persuades us that we erred in determining that the evidence of record failed to show a reason why a person of ordinary skill in the art would have used PFO to break the emulsions in Ismagilov 091.” slip op. at 13
§ 103 obviousnessPatents in suitUS 9,896,722 - Scentair Technologies, LLC v. Prolitec, Inc.Rehearing deniedPTAB · Jun 24, 2021 · IPR2021-00013 · APJ Grace Karaffa Obermann · IPR · Rehearing
The Board denied the petitioner’s rehearing request, finding its new arguments untimely and unpersuasive as to the aerosol outlet limitation for claims 1–19.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A request for rehearing is not an opportunity to present new arguments or evidence that could have been presented in a petition. We could not have misapprehended or overlooked matters or arguments that were not asserted in the Petition. We deny the Rehearing Request because it is based on new arguments that Petitioner did not present in the Petition. B. Petitioner’s Arguments Are Unpersuasive Alternatively, even if we consider the new arguments raised for the first time in the Rehearing Request, we find none persuasive to show reversible error in the Decision. The ’767 patent describes and claims “a cap assembly” that is characterized by three distinct structures, namely, “a cap, a venturi insert, and a base attached together without welds or separate fasteners to define . . . an air outlet chamber” that is “partitioned from the interior of the receptacle by the base.” Ex. 1001, 15:6–13 (claim 1) (emphasis added); see id. at 3:30–43, 9:45–62 (written description).” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“The Petition advances three grounds, each of which is based on obviousness and asserts Benalikhoudja1 as a prior art reference. Pet. 5. We found in the Decision, and Petitioner does not dispute in the Rehearing Request, that each ground “depends on Petitioner’s assertion that Benalikhoudja discloses or suggests ‘an aerosol outlet chamber partitioned 1 We refer to US 2006/0237090 A1, published Oct. 26, 2006 (Ex. 1004). from the interior of the receptacle by the base.’” Dec. 5–6. As we did in the Decision, we refer herein to that feature of the claimed invention as “the aerosol outlet limitation.” Id. at 6. Based on the information presented in the Petition and Preliminary Response, we determined Petitioner did not show sufficiently, for purposes of trial institution, that Benalikhoudja discloses the aerosol outlet limitation. Id. at 9–10. Petitioner argues we erred on that point. Req. Reh’g 1–6.” slip op. at 3
§ 103 obviousnessPatents in suitUS 9,480,767 - Google LLC v. Uniloc 2017 LLCRehearing deniedPTAB · May 25, 2021 · IPR2020-00170 · APJ Lynne E Pettigrew · IPR · Rehearing
The Board denied Google’s rehearing request, leaving institution denied for claims 1–14 and 17–20 because the petition did not adequately explain combining Hull and Barber.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“disclosure or that the Decision’s analysis of Hull is unsupported by substantial evidence. Petitioner does not point to any disclosure in Hull of descriptors that are not invariant to distortions such as those caused by translation, rotation, and scaling. See Req. Reh’g 2–8. Although Petitioner cites references in Hull to “other” or “alternative” embodiments, Petitioner does not identify, nor do we see, any descriptors other than distortion- invariant descriptors in those embodiments. See id. at 3–8. Nor does Petitioner cite any disclosure in Hull explicitly stating that distortion-invariant descriptors are “optional” or “exemplary,” as Petitioner contends. See id. at 1, 6, 8.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“adequate showing in its obviousness analysis that a person of ordinary skill in the art would have combined the teachings of Hull1 and Barber2 in the manner proposed to achieve the claimed invention, which relates to a system and method for matching a target image to images stored in a database.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“adequate showing in its obviousness analysis that a person of ordinary skill in the art would have combined the teachings of Hull1 and Barber2 in the manner proposed to achieve the claimed invention, which relates to a system and method for matching a target image to images stored in a database.” slip op. at 2
§ 103 obviousnessPatents in suitUS 6,253,201 - ROKU, Inc. v. Universal Electronics, Inc.Rehearing deniedPTAB · May 13, 2021 · IPR2019-01595 · APJ Minn Chung · IPR · Rehearing
The Board denied rehearing of its decision denying institution on claims 1 and 2, finding no abuse of discretion on priority entitlement or motivation to combine Darbee and Golender.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the party challenging the decision,” and the challenging 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 1 Petitioner also filed a request for the Precedential Opinion Panel (“POP”) to review the Decision (Paper 13 (Notification of Receipt of POP Request)), which the POP denied (Paper 14 (Order)). paper of record. 37 C.F.R. § 42.71(d). Because Petitioner seeks rehearing of our Decision denying institution of trial based on the Petition, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”). 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). Thus, a request for rehearing 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 that could have been presented in the Petition.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“issue upon which the priority determination turns—what the priority applications reasonably would have conveyed to a person of ordinary skill in the art—because Dr. Medvidovic did not provide any testimony on that issue. And we did not overlook or misapprehend any testimony of Dr. Medvidovic regarding what the priority applications reasonably would have conveyed to a person of ordinary skill in the art because we could not have overlooked or misapprehended any testimony that was not presented in the Medvidovic Declaration. As discussed above, Dr. Medvidovic’s testimony based on what is expressly disclosed in or necessarily follows from the disclosures of the priority applications was insufficient because Dr. Medvidovic did not explain adequately why the disclosures in the priority applications would not reasonably have conveyed to a person of ordinary skill in the art the subject matter of the User Action Limitation. Thus, Dr. Medvidovic’s testimony was insufficient to raise a genuine issue of material fact on the issue of what the priority applications reasonably would have conveyed to a person of ordinary skill in the art. Although Patent Owner’s declarant, Mr. Bear, provided detailed testimony and explanations regarding how a person of ordinary skill in the art would have understood the priority applications to describe the subject matter recited in the User Action Limitation (see Ex. 2001 ¶¶ 111–122, 126–127), Dr. Medvidovic did not provide adequate testimony or explanations to the contrary on the issue (see Ex. 1010 ¶¶ 53–63).” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“misapprehend or overlook 37 C.F.R. § 42.108(c). The mere fact that Dr. Medvidovic provided testimony different from the testimony of Mr. Bear does not by itself raise a genuine issue of material fact. See Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325–26 (Fed. Cir. 2016) (“The mere existence in the record of dueling expert testimony does not necessarily raise a genuine issue of material fact.”). As the Request acknowledges, Dr. Medvidovic in his Declaration (Ex. 1010, “Medvidovic Declaration”) testified that the subject matter of the User Action Limitation is “neither expressly disclosed [in] nor necessarily follows from” the descriptions in the priority applications about event journal data. Req. 3 (emphases added) (citing Ex. 1010 ¶¶ 57–62). As discussed above, however, the test for determining compliance with the written description requirement under 35 U.S.C. § 112 is whether the original disclosure of the earlier-filed application reasonably would have conveyed to a person of ordinary skill in the art that the inventor had possession of the claimed subject matter at the time of the earlier-filed application. Ariad Pharm., 598 F.3d at 1351. The record shows that Dr. Medvidovic did not provide any testimony in his Declaration as to what the disclosures in the priority applications reasonably would have conveyed to a person of ordinary skill in the art. See Ex. 1010 ¶¶ 53–63. Nor did Dr. Medvidovic explain adequately in his Declaration why the disclosures in the priority applications would not reasonably have conveyed to a person of ordinary skill in the art the subject matter of the User Action Limitation. See id.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Under Petitioner’s definition of the level of ordinary skill in the art, however, “less education can be remedied with additional work experience (e.g., 5–6 years).” Pet. 7 (citing Ex. 1010 ¶¶ 64–67). As stated in the Bear Declaration, Mr. Bear’s work experience includes at least 9 years of computer software programming using a variety of coding languages, such as BASIC, Pascal, C, C++, and 68000 Assembly Language. See Ex. 2001 ¶¶ 10–12. Thus, Mr. Bear is qualified to testify from the perspective of a person of ordinary skill in the art under Petitioner’s definition of a person of ordinary skill in the art. As discussed in the Decision, although we did not find the parties’ proposals for the level of ordinary skill in the art to be materially different, to the extent the testimony from the parties’ declarants on the level of ordinary skill in the art raised a genuine issue of material fact, we adopted and applied Petitioner’s definition for purposes of the Decision, being mindful of the rule that “a genuine issue of material fact created by such testimonial evidence will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review.” Dec. 9 (citing 37 C.F.R. § 42.108(c)). Thus, the record shows that, under Petitioner’s definition of the level of ordinary skill in the art adopted in consideration of § 42.108(c), the Decision appropriately credited Mr. Bear’s testimony on what the priority applications reasonably would have conveyed to a person of ordinary skill in the art.” slip op. at 11
§ 103 obviousness§ 112 disclosurePatents in suitUS 8,015,446
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.