- 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 - 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 - Amazon.Com, Inc. v. M2m Solutions LLCRehearing deniedPTAB · Jun 6, 2019 · IPR2017-01893 · APJ David C Mckone · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, maintaining its claim construction and its finding that Kloba and Multer render claims 1–30 obvious.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS The burden of showing that the FWD should be modified is on Patent Owner, the party challenging the FWD. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“As explained above, the Final Written Decision concluded that the ordinary meaning of the claim language is broad enough to encompass the sending of communications, based upon the results of processing consumer usage information, containing management instructions. FWD 25. Patent Owner does not explain persuasively why that conclusion was incorrect. We maintain that conclusion here. In claim 1, for example, it is reasonable to read the phrase “based upon the results of having processed at least some of the received consumer usage information” as modifying either “configured to send communications” or “management instructions that cause the stored data content files of one or more assets to be automatically modified.” Id. at 24. Patent Owner does not explain persuasively why such language could only modify management instructions.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“In any case, we addressed these limitations under the construction we adopted in the Final Written Decision, which is close to Patent Owner’s new construction, and found them taught by Kloba. FWD 51–55. Specifically, we found that Kloba’s figures 1I1 and 1X, and the corresponding description, showed that all instructions and objects, including the deltas (differences between objects currently in a client’s database and objects offered by content providers), are transmitted from the server to the client in one transmission during a synchronization, and that this transmission is based, in part, upon the results of processing the information collected through the interfaces of Figures 12 and 17. Id. at 52–54 (citing Ex. 1015, 8:7–19, 19:47, 19:51–25, 20:50–56; Pet. 33–34; Reply 8–9). We rejected Patent Owner’s argument that deltas were communicated separately from other synchronization information. Id.” slip op. at 15
Claim construction§ 103 obviousnessPatents in suitUS 8,577,359 - Amazon.Com, Inc. v. M2m Solutions LLCRehearing deniedPTAB · Jun 6, 2019 · IPR2017-01892 · APJ David C Mckone · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no error in its claim construction and concluding that Kloba and Multer render claims 1–30 obvious.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS The burden of showing that the FWD should be modified is on Patent Owner, the party challenging the FWD. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“In any case, we agree with Petitioner that the language of the claims is clear. As we stated in the Final Written Decision, according to the plain language of claims 1 and 20, it is the communication of management instructions, not the management instructions themselves, that is based upon the results of processing at least some of the received consumer usage information. FWD 17–18. We maintain that conclusion here. The natural reading of the claim language (claim 1, for example) is that “managing” is “based upon the results of having processed at least some of the received consumer usage information” and that the managing is, in turn, accomplished “by sending communications containing management instructions that cause the stored data content files of one or more assets to be automatically modified.” It is the managing, and thus the sending of communications containing management instructions, that is based on the results of having processed consumer usage information, not the management instructions themselves. To the extent Patent Owner still argues that the management instructions themselves must be based on the results of having processed consumer usage information in order to accomplish the recited management, that is not recited in the claims. Rather, the only limitation placed on the “management instructions” by the plain language of the claims is that they “cause the stored data content files of one or more assets to be automatically modified.”” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Ex. 1015, 20:11–21. We found that this teaches communicating management instructions “based upon the results of processing at least some of the received consumer usage information,” as recited in claim 1. FWD 53 (“The server communicates its single set of instructions to the client as a result of processing all of the information it receives in the single-up transmission from the client. This includes deltas, requests for new channels, and changes to preferences.”); see also Ex. 1015, 8:7–19. This finding applies equally under Patent Owner’s new proposed construction, namely, “the server’s determination to communicate the claimed management instruction(s) in particular as part of a transmission sent to at least one consumer device asset is what needs to be ‘based upon the results of processing at least some of the received consumer usage information.’” PO CC Br. 4 (emphasis omitted). Specifically, the decision to communicate synchronization information (including deltas and new channels) from the server to the client is based, in part, on the server’s synchronization of the client’s channel information (including deltas and new channels) with the providers of the channels, which involves processing the requests for new channels and changes to preferences. Ex. 1015, 8:7–19, 20:1–21. Thus, Kloba and Multer (US 6,671,757 B1, Ex. 1016) render claims 1 and 20 obvious even under Patent Owner’s new proposed construction.” slip op. at 16
Claim construction§ 103 obviousnessPatents in suitUS 8,577,358 - Amazon.Com, Inc. v. M2m Solutions LLCRehearing deniedPTAB · Jun 6, 2019 · IPR2017-01891 · APJ David C Mckone · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, maintaining that claims 1–30 are unpatentable as obvious over Kloba and Multer under the adopted claim construction.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS The burden of showing that the FWD should be modified is on Patent Owner, the party challenging the FWD. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“In any case, we agree with Petitioner that the language of the claims is clear. As we stated in the Final Written Decision, according to the plain language of claims 1 and 20, it is the communication of management instructions, not the management instructions themselves, that is based upon the results of processing at least some of the received consumer usage information. FWD 17–18. We maintain that conclusion here. The natural reading of the claim language is that “based upon the results of processing at least some of the received consumer usage information” modifies “communicate.”” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“In any case, we addressed these limitations under the construction we adopted in the Final Written Decision, which is close to Patent Owner’s new construction, and found them taught by Kloba. FWD 43–48. Specifically, we found that Kloba’s figures 1I1 and 1X, and the corresponding description, showed that all instructions and objects, including the deltas (differences between objects currently in a client’s database and objects offered by content providers), are transmitted from the server to the client in one transmission during a synchronization, and that this transmission is based, in part, upon the results of processing the information collected through the interfaces of Figures 12 and 17. Id. at 44–46 (citing Ex. 1015, 8:7–19, 19:47, 19:51–25, 20:50–56; Pet. 32–33; Reply 6–7). We rejected Patent Owner’s argument that deltas were communicated separately from other synchronization information. Id.” slip op. at 14
Claim construction§ 103 obviousnessPatents in suitUS 8,504,007 - PTAB · Aug 3, 2018 · IPR2017-00198 · APJ Jeffrey S Smith · IPR · Rehearing
The Board denied rehearing, finding no misapprehension or overlooked evidence supporting its determination that claims 1, 2, 5–10, 8–11, 12, and 18–23 were unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“process disclosed by Haims. Req. Reh’g 3.1 Patent Owner’s challenge does not meet the standard set forth for a Request for Rehearing, which requires a party to “identify . . . the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). As Patent Owner did not address this issue in a motion, an opposition, or a reply, the Board could not have misapprehended Patent Owner’s argument.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner
“disclaimed the selection process disclosed by Haims, we find this contention unpersuasive. “[T]he PTO is under no obligation to accept a claim construction proffered as a prosecution history disclaimer, which generally only binds the patent owner.” Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 978 (Fed. Cir. 2014). Assuming arguendo that the doctrine of prosecution history disclaimer applies to this inter partes review, the purported disavowal of claim scope must be unambiguous, clear, and unmistakable to one of ordinary skill in the art. Elbex Video, Ltd. v. Sensormatic Elecs. Corp., 508 F.3d 1366, 1371 (Fed. Cir. 2007) (citations omitted). On the record before us, we conclude that the prosecution history does not evidence such an unambiguous, clear, and unmistakable disavowal. We read the cited portion of the prosecution history as presenting arguments to the Examiner to distinguish the claim from Haims based on the claim’s recited limitations. At most, applicant’s arguments during prosecution merely shed light on the claim limitations that applicant alleged Haims did not teach. We determine that one of ordinary skill in the art would not have understood applicant to have made a clear and unmistakable” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Hamberg and Lamb. See Reh’g Req. 3–4. Therefore, Patent Owner’s allegation that Haims teaches the same selection process as Hamberg, even if true, improperly shifts focus from the combination of Hamberg and Lamb. Patent Owner alleges Petitioner does not provide proper reasoning to combine Hamberg and Lamb. Reh’g Req. 3–4 (arguing “Petitioner parsed” and “Petitioner argued”). These allegations fail to address what the FWD overlooks or misapprehends. In any event, the FWD addresses motivation and the combination. See, e.g., FWD 15–23.” slip op. at 4
- Expert testimonyPatent owner expert discountedDecided for petitioner
“Q. And you – do you agree or disagree that Max is participating in the chat session with the conference call requester? Mr. McDole: Objection, leading. A. I think it is – could kind of go either way. I certainly think that it could be considered participating in the sense that he’s receiving messages, not participating in the sense of sending. So I mean I think it is reasonable to say that it is participating, but – it is arguably the other way, too. It is not clear. Ex. 1017, 253 5–16. As an initial matter, Patent Owner, in the Request for Rehearing, does not identify where this purportedly ignored testimony was brought to our attention by Patent Owner. Nonetheless, Dr. DiEuliis, at best, testified that Max “could be considered participating,” but, in the same sentence, Dr. DiEuliis testified that Max is “not participating in the sense of sending.” Dr. DiEuliis continued, “I think it is reasonable to say that it is participating, but -- it is arguably the other way, too.” Although we did not cite to this testimony, such testimony is cumulative, because Dr. DiEuliis testified here, as in the cited testimony, that Max is not participating. Further, in our Decision, we evaluated the testimony of Dr. DiEuliis in light of Hamberg’s teaching that Max is listed as “absent” and noted as “sleep” to determine that Max is not participating. FWD 29.” slip op. at 5
Claim construction§ 103 obviousnessPatents in suitUS 7,853,000 - Unified Patents, Inc. v. Harry Heslop & Sportbrain Holdings LLCRehearing deniedPTAB · Apr 18, 2018 · IPR2016-01464 · APJ Jeffrey S Smith · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1–16 unpatentable based on Vock and Smith and the failure to establish conception of periodic transmission.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW 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.” An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See 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 request must identify, with specificity, all matters that the moving party believes the Board misapprehended or overlooked. See 37 C.F.R. § 42.71(d). Section 42.71(d) further provides that the request must identify where each matter was previously addressed.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We determine that Patent Owner’s contention that Vock teaches away from using the pedometer of system 620 shown in Figure 21 with the system shown in Figure 1 is inconsistent with Vock’s disclosure that “system 620 [shown in Figure 21] is useful to joggers who can gate it to serve as a pedometer” and that “[d]ata may also be acquired by the accelerometer and telemetered to the electronics 626 via an RF link 631 back to a remote base 632 for storage and processing (e.g., such as the base station 70, FIG. 1).” Ex. 1006, 50:5, 49:21–23, and Fig. 21. We determine that the Petition and supporting testimony of Dr. Eldering show that it would have been obvious to a person of ordinary skill in the art to modify the sensing unit of Vock to measure and transmit the number of steps taken by a user, and to modify the base station of Vock to provide feedback based on the number of steps, in light of the teachings of Smith, for the benefit of providing a user with additional information with which to quantitatively assess performance during a physical activity, and that such modifications would have been accomplished with a high chance of success. See Ex. 1009 ¶¶ 50–52. Dec. 16–17. In our Decision, we relied on the Petition and supporting testimony of Dr. Eldering to determine that it would have been obvious to a person of ordinary skill in the art to modify the sensing unit of Vock to measure and transmit the number of steps taken by a user, and to modify the base station to provide feedback based on a number of steps, in light of the teachings of Smith. Dec. 17 (citing Ex. 1009 ¶¶ 50–52).” slip op. at 4
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We determine that the Petition and supporting testimony of Dr. Eldering show that it would have been obvious to a person of ordinary skill in the art to modify the sensing unit of Vock to measure and transmit the number of steps taken by a user, and to modify the base station of Vock to provide feedback based on the number of steps, in light of the teachings of Smith, for the benefit of providing a user with additional information with which to quantitatively assess performance during a physical activity, and that such modifications would have been accomplished with a high chance of success. See Ex. 1009 ¶¶ 50–52. Dec. 16–17. In our Decision, we relied on the Petition and supporting testimony of Dr. Eldering to determine that it would have been obvious to a person of ordinary skill in the art to modify the sensing unit of Vock to measure and transmit the number of steps taken by a user, and to modify the base station to provide feedback based on a number of steps, in light of the teachings of Smith. Dec. 17 (citing Ex. 1009 ¶¶ 50–52).” slip op. at 4
- BurdenDecided for petitioner
“periodically transmitting the personal data from the wireless communication device to a network server over a wireless network.” We determined that the cited disclosure of a user telephoning a workstation to transfer data does not show conception of “periodically transmitting the personal data from the wireless communication device to a network server over a wireless network” as claimed. Dec. 31–32. Accordingly, the Decision did not misapprehend or overlook any slip op. at 7
§ 103 obviousnessPatents in suitUS 7,454,002 - PTAB · Mar 2, 2016 · IPR2015-01448 · APJ Bryan F Moore · IPR · Rehearing
The Board denied Petitioner’s rehearing request, leaving in place the denial of institution for claims 1 and 3–6 because Petitioner showed no overlooked or misapprehended matter.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the Decision should be modified, and “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“electrode is referred to with the reference numeral 24, the Decision found that the pixel electrode in Figure 36 is single unitary electrode, as is shown clearly in Figure 36, and the pixel electrode in Figure 52 is a combination of two sub-pixel electrodes. Dec. 8–9. The Decision found that Petitioner had not shown sufficient evidence in the record that the unitary electrode embodiment would be combined with the two sub-pixel electrode embodiment. Thus, the Decision did not overlook or misapprehend Petitioner’s arguments or evidence. We fully considered Petitioner’s position and determined that the evidence on which Petitioner relied was not persuasive in establishing that Figures 36 and 52 could be combined. 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 performed an analysis or reached a conclusion with which Petitioner disagrees, and mere disagreement with the Board’s analysis or conclusion is not a proper basis for rehearing. We are not” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“[a]s our reviewing court’s predecessor stated, for anticipation, the prior art reference “must clearly and unequivocally disclose the claimed compound or direct those skilled in the art to the compound without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.” In re Arkley, 455 F.2d 586, 587 (CCPA 1972).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Yamamoto, the Petition does not state that Koike could be combined with the admitted prior art in the patent as would be required to prove obviousness. Nor does the Petition state a rationale for combining Koike or Yamamoto with the admitted prior art in the patent as also would be required to prove obviousness. Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1125 (Fed. Cir. 2000). Further, in its anticipation ground, the Petition does not state that the “opening” was within the knowledge of one of ordinary skill such that it could be combined with the disclosure of Koike for the purpose of anticipation. An argument that a particular limitation in a claim is a “point of novelty” does not relieve the Petitioner from showing each element of the claim is in the prior art and that the elements would have been combined with each other by one of ordinary 4 skill. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (holding that “unless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102”). Thus, we are not persuaded by this argument.” slip op. at 4
§ 102 anticipation§ 103 obviousnessPatents in suitUS 5,995,176 - PTAB · Feb 29, 2016 · IPR2015-01468 · APJ Karl D Easthom · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving in place institution on claims 4–10 under § 103 over Yamada because the request did not show an overlooked matter or abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). A rehearing “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. slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“may extend across, and from, the whole width of a symmetrical wiring portion edge, thereby making the edge of the symmetrical wiring pattern coextensive with the edge of the beginning of the protrusion, as Yamada’s Figure 5 depicts. Patent Owner simply does not address this underlying finding and rationale of the Institution Decision squarely in its Request for Rehearing.3” slip op. at 5
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“may extend across, and from, the whole width of a symmetrical wiring portion edge, thereby making the edge of the symmetrical wiring pattern coextensive with the edge of the beginning of the protrusion, as Yamada’s Figure 5 depicts. Patent Owner simply does not address this underlying finding and rationale of the Institution Decision squarely in its Request for Rehearing.3” slip op. at 5
§ 103 obviousnesscites KSRPatents in suitUS 6,909,053 - SAP America, Inc. v. Lakshmi ArunachalamRehearing deniedPTAB · May 22, 2015 · CBM2014-00018 · APJ Brian J Mcnamara · CBM · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 4–6 and 9–10 unpatentable based on the prior final written decision.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“§ 42.6(a)(3). We consider only those arguments advanced in Patent Owner’s Request for Rehearing concerning subject matter Patent Owner contends we overlooked or misapprehended in our Final Written Decision. 37 C.F.R. § 42.71(d). We are not persuaded by Patent Owner’s argument that we misapprehended or overlooked that the subject matter of the ’158 Patent is drawn to a technical solution to a technical problem because Patent Owner coined terms such as POSvc application, VAN service, object routing, service network, and VAN switch. Req. Rh’g. 3–4. We addressed these issues extensively in our Final Written Decision, noting that claim 1, from which claim 4 depends, is directed to a method of performing a transaction that includes providing a webpage for display, providing an application the user can select to access checking and savings accounts, accepting signals from an input device, and transferring funds. Final Dec. 14. We also addressed the terminology used in the claims and determined that none of these features changes the non-technological nature of the claim. Id. at 13–15. Patent Owner has not identified any matter that we overlooked or failed to apprehend on this issue.” slip op. at 5
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Not reached
“In a conclusory fashion, Patent Owner states that we have erroneously applied the Supreme Court’s Decision in Alice Corp. Pty, Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014). Req. Rh’g. 15. However Patent Owner does not otherwise address our conclusion that claims 9 and 10 are unpatentable subject matter under 35 U.S.C. § 101 and does not explain how we misapplied the Court’s decision in Alice.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Patent Owner takes a similar approach to our analysis of the prior art, stating that SFCU and Computerworld did not conduct real-time transactions and that Lawlor operates over phone lines. Id. at 15. However, the Request for Rehearing does not address our combinations of the art, i.e., Lawlor and Computerworld, Final Dec. 20–23, and EB and SFCU, id. at 23–26, along with CORBA 1 and CORBA 2, id. at 26–36. Patent Owner does not address the further combination with respect to claims 5 and 6 with SNMP.” slip op. at 7
§ 101 eligibility§ 103 obviousnesscites AlicePatents in suitUS 8,037,158
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.