- Mercedes-Benz USA, LLC v. Carucel Investments, L.P.Rehearing deniedPTAB · Mar 3, 2021 · IPR2019-01298 · APJ Thomas L Giannetti · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving in place its decision that all challenged claims were unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: 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. A rehearing request is not an opportunity for the requesting party to reargue its case or merely to express disagreement with the Final Written Decision. Nor is it an opportunity for the moving party to present new arguments that were not in its original submissions.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“As discussed further below, after considering all the evidence, we provided in the Final Written Decision a detailed analysis of Patent Owner’s arguments, and rejected Patent Owner’s proposed limitations for “mobile unit,” determining that the ordinary meaning should apply and no further construction was necessary. Final Dec. 14–26. D. The Final Written Decision Our analysis of “mobile unit” in the Final Written Decision was guided by Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Final Dec. 11. In summary, for the reasons that follow, we are not persuaded that our analysis of “mobile unit” under Phillips was incorrect, or that we overlooked or misapprehended Patent Owner’s arguments or evidence in that analysis.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,221,904 - Mercedes-Benz USA, LLC v. Carucel Investments, L.P.Rehearing deniedPTAB · Mar 3, 2021 · IPR2019-01404 · APJ Daniel J Galligan · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1, 4–11, and 14–23 unpatentable based on its construction of “mobile device” and findings on combining CDMA and TDMA.
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. A rehearing request is not an opportunity for the requesting party to reargue its case or merely to express disagreement with the Final Written Decision. Nor is it an opportunity for the moving party to present new arguments that were not in its original submissions.” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We disagree that we misapprehended or overlooked any matters in addressing Patent Owner’s proposed construction for “mobile device.” Rather, we provided a comprehensive analysis of the term “mobile device.” anything that was overlooked or misapprehended in this analysis, as required by 37 C.F.R. § 42.71(d). Instead, Patent Owner merely expresses its disagreement with our conclusions and proceeds to reargue points and evidence already considered and rejected in the Final Written Decision. This approach is not proper in a rehearing request. Furthermore, Patent Owner’s own arguments show the error in its proposed construction. For example, Patent Owner argues that the recited “mobile device” “must register with and be able to directly communicate with the cellular network.” PO Resp. 13; Req. Reh’g 1 n.1. Yet, Patent Owner acknowledges that “the claims of the ’023 Patent require the apparatus/movable base station to communicate directly with the cellular network (and not the ‘mobile device’).” Req. Reh’g 3 (emphasis added). As we pointed out in the Final Decision, the only claimed communication involving the mobile device is between the claimed “apparatus” (the mobile base station) and the mobile device, and Patent Owner acknowledges that this communication need not be cellular. Final Dec. 14 (citing PO Sur-reply 9). Thus, Patent Owner’s arguments undermine its proposed construction.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundOther
“[t]he Board erred in finding that that ‘CDMA and TDMA are not incompatible’ by improperly disregarding substantial evidence set forth by Patent Owner and its expert—that undermines any expectation of success and would have discouraged a [person of ordinary skill in the art] from attempting Petitioner’s combinations.” Req. Reh’g 14 (citing Final Dec. 79). Patent Owner does not attempt to identify any specific errors in citing pages from Patent Owner’s written submissions and testimony from its declarant. Req. Reh’g 14 n.31. We disagree that we misapprehended or overlooked any matters in this regard. Rather, we considered Patent Owner’s submissions and disagreed with them, finding instead that the record demonstrated that CDMA and TDMA can be combined, and we relied on, among other evidence, a prior art reference that expressly discloses a combination of CDMA and TDMA. Final Dec. 56–57 (citing Ex. 1033), 79. We further found that a person of ordinary skill in the art would have had reason to make the proposed combinations and would have had a reasonable expectation of success in doing so. Final Dec. 57–58, 79–81. slip op. at 6
Claim construction§ 103 obviousnessPatents in suitUS 7,979,023 - Intel Corporation v. Hera Wireless S.A.Rehearing deniedPTAB · Nov 8, 2019 · IPR2018-01687 · APJ Jacqueline T Harlow · IPR · Rehearing
The Board denied Intel’s rehearing request, leaving institution denied for claims 1–6 because the proposed obviousness combinations relied on hindsight and lacked sufficient support.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS Pursuant to 37 C.F.R. § 42.71(d): A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion exists where a “decision [i]s based on an erroneous conclusion of law or clearly 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).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“the proposed combination of Hansen and Ramasubramanian manifests hindsight reasoning, as it would abandon the receiver-based channel estimation techniques central to Ramasubramanian in favor of an incompatible transmitter-based threshold control system that mirrors the disclosures of the challenged patent, but is neither suggested by the prior art, nor supported by the background knowledge possessed by a person having ordinary skill in the art. Id. at 18–19; see also id. at 27–28 (explaining that the same reasoning applies to the combination of Mujtaba and Ramasubramanian). More particularly, the Decision finds that Petitioner discounts the core disclosures of Ramasubramanian, and argues instead that an ordinarily skilled artisan would have been motivated, based on the problem identified by Ramasubramanian, to pursue an undisclosed solution wholly incompatible with the solution Ramasubramanian proposes. In view of Ramasubramanian’s teachings concerning the advantages of the disclosed receiver-based channel estimation system and method, and Hansen’s silence regarding smoothing, we are not persuaded by Petitioner’s argument.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner
“the proposed combination of Hansen and Ramasubramanian manifests hindsight reasoning, as it would abandon the receiver-based channel estimation techniques central to Ramasubramanian in favor of an incompatible transmitter-based threshold control system that mirrors the disclosures of the challenged patent, but is neither suggested by the prior art, nor supported by the background knowledge possessed by a person having ordinary skill in the art. Id. at 18–19; see also id. at 27–28 (explaining that the same reasoning applies to the combination of Mujtaba and Ramasubramanian). More particularly, the Decision finds that Petitioner discounts the core disclosures of Ramasubramanian, and argues instead that an ordinarily skilled artisan would have been motivated, based on the problem identified by Ramasubramanian, to pursue an undisclosed solution wholly incompatible with the solution Ramasubramanian proposes. In view of Ramasubramanian’s teachings concerning the advantages of the disclosed receiver-based channel estimation system and method, and Hansen’s silence regarding smoothing, we are not persuaded by Petitioner’s argument.” slip op. at 4
- Expert testimonyPetitioner expert discountedDecided for patent owner
“instances,” we improperly “adopted Dr. Sharony’s factual position despite conflicting testimony from Dr. Wicker” (Req. Reh’g. 9). In deciding whether to institute, we are required by our rules to view testimonial evidence “in the light most favorable to the petitioner” only where there is a genuine issue of material fact created by the testimony. See 37 C.F.R. § 42.108 (c). The rule, however, does not require us to accept the testimony 5 of any expert. The Board has broad discretion to assign weight to be accorded expert testimony. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010). Aside from identifying the evidence relied upon by the parties, and describing their positions regarding the level of ordinary skill in the art, our Decision does not refer to Drs. Wicker or Sharony or discuss, much less rely on, their testimony. See Dec. 7–9. Our determination that Petitioner failed to carry its burden to demonstrate a reasonable likelihood of establishing the unpatentability of at least one claim of the ’377 patent is premised on the inadequacy of Petitioner’s showing, and our finding that Petitioner’s proposed obviousness combinations reflect improper hindsight bias. See Dec. 17–28. Moreover, acceptance of Petitioner’s contention that the Board must automatically adopt the reasoning of a petitioner’s expert in deciding whether to institute inter partes review––irrespective of the sufficiency of that testimony––would compel institution in every case where expert testimony is presented. Petitioner’s argument is another instance of a disagreement with our Decision and not a proper basis for rehearing.” slip op. at 5
§ 103 obviousnesscites KSRPatents in suitUS 8,737,377 - Intel Corporation v. Hera Wireless S.A.Rehearing deniedPTAB · Nov 8, 2019 · IPR2018-01686 · APJ Jacqueline T Harlow · IPR · Rehearing
The Board denied Intel’s rehearing request, leaving in place the denial of institution on claims 1–6 because the obviousness combinations relied on hindsight and did not show a reasonable likelihood of success.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS Pursuant to 37 C.F.R. § 42.71(d): A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion exists where a “decision [i]s based on an erroneous conclusion of law or clearly 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).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“contention, rather than ignoring or misapprehending the obviousness standard set forth in KSR, the Decision discusses KSR throughout as a basis for our determination that Petitioner had failed to demonstrate a reasonable likelihood of prevailing on its obviousness challenge. See, e.g., Dec. 11, 24, 25, 28. Indeed, the Decision properly applies KSR, including its instruction that the factfinder should be mindful “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning,” KSR, 550 U.S. at 421, in finding that the Petition relies improperly on hindsight in its obviousness arguments. Dec. 24–25, 28. Petitioner’s argument that KSR was “overlooked” is merely an attempt to reargue its case, which is not a proper ground for rehearing.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for patent owner
“contention, rather than ignoring or misapprehending the obviousness standard set forth in KSR, the Decision discusses KSR throughout as a basis for our determination that Petitioner had failed to demonstrate a reasonable likelihood of prevailing on its obviousness challenge. See, e.g., Dec. 11, 24, 25, 28. Indeed, the Decision properly applies KSR, including its instruction that the factfinder should be mindful “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning,” KSR, 550 U.S. at 421, in finding that the Petition relies improperly on hindsight in its obviousness arguments. Dec. 24–25, 28. Petitioner’s argument that KSR was “overlooked” is merely an attempt to reargue its case, which is not a proper ground for rehearing.” slip op. at 3
- Expert testimonyPetitioner expert discountedDecided for patent owner
“instances,” we improperly “adopted Dr. Sharony’s factual position despite conflicting testimony from Dr. Wicker” (Req. Reh’g. 9). In deciding whether to institute, we are required by our rules to view testimonial evidence “in the light most favorable to the petitioner” only where there is a genuine issue of material fact created by the testimony. See 37 C.F.R. § 42.108 (c). The rule, however, does not require us to accept the testimony of any expert. The Board has broad discretion to assign weight to be accorded expert testimony. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 5 2010). Aside from identifying the evidence relied upon by the parties, and describing their positions regarding the level of ordinary skill in the art, our Decision does not refer to Drs. Wicker or Sharony or discuss, much less rely on, their testimony. See Dec. 7–9. Our determination that Petitioner failed to carry its burden to demonstrate a reasonable likelihood of establishing the unpatentability of at least one claim of the ’377 patent is premised on the inadequacy of Petitioner’s showing, and our finding that Petitioner’s proposed obviousness combinations reflect improper hindsight bias. See Dec. 18–28. Moreover, acceptance of Petitioner’s contention that the Board must automatically adopt the reasoning of a petitioner’s expert in deciding whether to institute inter partes review––irrespective of the sufficiency of that testimony––would compel institution in every case where expert testimony is presented. Petitioner’s argument is another instance of a disagreement with our Decision and not a proper basis for rehearing.” slip op. at 5
§ 103 obviousnesscites KSRPatents in suitUS 8,737,377 - PTAB · May 8, 2019 · IPR2017-02108 · APJ Norman H Beamer · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no overlooked or misapprehended matter in its denial of the motion to amend proposed substitute claims 21–25 and 27 as obvious.
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 merely to 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
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“In our Final Decision, we construed “a video stream comprising a series of frame images” as “a series of frame images captured automatically, but not necessarily continuously at a constant rate.” Decision 14. Because this exact language was added to the claim by the motion to amend, we could not have construed it earlier. We do not agree, however, that Patent Owner was denied “an opportunity to present argument under the Board’s new construction.” Request 1. Patent Owner has long been on notice that construction of the term “video,” and the distinction between still frame images and an image made up of a video stream, was central to the case. In particular, Petitioner, relying on its expert, argued that a video image is made up of a series of still images: “The plurality of still images, which are captured, constitute the video image.” Paper 3, 9; Ex. 1020 ¶ 24; see also Paper 16, 11 (“still images make up the video image”). During cross examination, Patent Owner’s testimony supported the view that a single frame image of a video stream is essentially the same as a still frame image. Rodriguez Dep. 13:14–19, 14:6–13, 15:12–16, 16:14−20. Petitioner emphasized that only “in some scenarios, a series of frame images can form a video image. . . .” Paper 16, 10. In arguing that it would have been obvious to modify the prior art Morichika reference to use a video camera in place of a still camera, Petitioner asserted that such substitution amounted to “continuously capturing images of a target area using a video camera [to]” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“amounts to a disagreement with the Board’s findings on the motivation to combine references. Patent Owner does not demonstrate that the Board misapprehended or overlooked the applicable law. Request 6–14. Patent Owner argues, “the Board provided vague, generalized combinations and did not mention its own claim construction in its obviousness analysis, leaving the specific basis for its legal conclusion unclear.” Request 8. Patent Owner further asserts that the Board applied “a double standard” because, “the Board’s construction of ‘video stream comprising a series of frame images’ never appears in the obviousness analysis.” Request 10. We disagree with both arguments. To the contrary, the Board relied on its claim construction in its obviousness findings when it stated, “as discussed above . . . the distinction between capturing a series of still frame images and capturing a video stream of frame images, is that a video stream is made up of a series of frame images that are automatically captured.” Final Decision 44. Nothing was misapprehended or overlooked in making those determinations. Patent Owner further argues, “no motivation to entirely replace the still image camera with a video camera and separate video processor is specifically taught or suggested.” Request 9, see also Request 11. However, the Board relied on extensive teachings in the art that established such a motivation. Final Decision 35–43.” slip op. at 9
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 8,508,751 - Airwatch LLC / Vmware, Inc. v. Route1 Inc.Rehearing deniedPTAB · Aug 3, 2018 · IPR2017-02145 · APJ John A Evans · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution because Petitioner did not show that the Board overlooked or misapprehended its obviousness arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“37 C.F.R. § 42.71(d), which provides in relevant part: 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. A rehearing request is not an opportunity for the requesting party to reargue its case or merely to express disagreement with the Final Decision, which is all Petitioner has done in this instance.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In denying the Petition, the Board determined Petitioner did not present a sufficient rationale for combining either Dingman (Ex. 1007, US 2004/0024879 A1) or Flowers (Ex. 1014, US 2003/0105812 A1) with Cook (Ex. 1011, US Patent No. 7,424,736 B2) under KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)(“‘[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’”) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Decision 17, 19–20. Petitioner requests rehearing of our decision not to institute inter partes review. Paper 10, (“Rehearing Request,” “Req. Reh’g.”). Petitioner states two grounds for rehearing. Req. Reh’g. 1. The stated grounds are: (1) the Board overlooked or misapprehended “the legal significance of the evidence confirming that the ‘notifications’ limitation is trivial”; and (2) the Board overlooked or misapprehended the legal significance of Cook’s teachings of “additional benefits of its notification scheme.” Id. at 1–2. For the reasons that follow, Petitioner’s request for rehearing is denied.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“The Decision concludes that Petitioner failed to provide sufficient persuasive evidence or reasoned explanation upon which we could make a finding of motivation to combine the Dingman and Cook references. Decision 16.” slip op. at 5
§ 103 obviousnesscites KSRPatents in suitUS 7,814,216 - Seabery North America Inc. v. Lincoln Global, Inc.Rehearing deniedPTAB · Nov 17, 2016 · IPR2016-00840 · APJ Thomas L Giannetti · IPR · Rehearing
The Board denied rehearing, leaving institution denied for claims 32, 51, 70–79, and 105–111 because Petitioner did not show Aiteanu taught or suggested comparing performance data to known parameters.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Section 42.71(c), in turn, references 37 C.F.R. § 42.71(d), which provides in relevant part: 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. slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“claims, we did not rely on the lack of disclosure of an algorithm in the ’398 patent in concluding that Petitioner had failed to carry its burden of demonstrating obviousness. Instead, we considered Petitioner’s analysis of Aiteanu and found it insufficient to persuade us that the “comparison” element was met: The description in that analysis does not teach or suggest a comparison to known parameters. See [Pet.] 19–21. Because we conclude that Aiteanu does not teach or suggest such a comparison, we determine that Petitioner has failed to establish a reasonable likelihood of succeeding on its challenge to these claims. Dec. 22–23. These insufficiencies in the Petition are not cured by attacking the ’398 patent’s disclosure, nor is Petitioner relieved its burden of proving the claims unpatentable. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016) (“In an inter partes review . . . , the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.”) (citation omitted).” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Id. at 16 (emphasis added) (citation omitted). The Board found Petitioner’s analysis of this element in relation to Aiteanu insufficient to describe a comparison to known parameters to arrive at this quality characteristic. Dec. 22. Petitioner’s main argument in its Rehearing Request focuses on a different alleged “quality characteristic” in Aiteanu, namely torch position. Req. Reh’g 5–6. The Petition did not present such an argument, and therefore the Board could not have been overlooked or misapprehended it. Instead, we addressed the argument presented by Petitioner: that calculated weld seam thickness was based on a comparison of known parameters. Pet. 16. For the reasons stated in our Institution Decision and in the Preliminary Response (at pp. 38–39), we concluded that Petitioner did not present sufficient proof that Aiteanu met this condition.” slip op. at 5
§ 103 obviousness - General Plastic Industrial Co., Ltd. v. Canon Inc.Rehearing deniedPTAB · May 19, 2016 · IPR2015-01954 · APJ Hung H Bui · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution on the § 102(b) and § 103(a) challenges to the identified claims.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We have reviewed Petitioner’s request for rehearing and carefully considered Petitioner’s arguments and cited authorities. However, we are not persuaded that the Board misapprehended or overlooked Petitioner’s arguments presented with respect to the patentability of claims 1, 7–9, 11, 16–18, 29 and 38 of the ’094 patent or the cited authorities.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached
“Third, Petitioner asserts the Board erred because we declined to adopt Petitioner’s proffered claim construction of the phrase “the opening [of container body] becoming unsealed by relative movement of the sealing member and the container body away from one another” recited in the challenged claims. Req. Reh’g 9–13 (citing Dec. 20–22). However, the Petitioner’s proffered construction is predicated upon the so-called “part-time” anticipation doctrine as discussed above.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableDecided for patent owner
“Because rotary power transmitting member 44 is part of Matsuoka’s copier’s developing agent replenishing apparatus 40, we were not sufficiently persuaded that Matsuoka’s “integrally combined fixed cover 32 and rotary power transmitting member 44” can be said to meet the “sealing member” recited in the challenged claims as a part of the “toner supply container.” Id. at 20.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“obviousness argument to be limited to combining Matsuoka’s fixed cover 32 and rotary power transmitting member 44 as a single-piece construction.” Req. Reh’g 13–15 (citing Dec. 23–26). According to Petitioner, “a person of ordinary skill would have recognized that the toner cartridge 30 can be withdrawn from the copier with the rotary power transmitting member 44 still attached to the fixed cover 32” and “this composite structure satisfies all of the limitations” of the challenged claims. Id. at 14 (citing Pet. 57; Ex. 1007 at ¶¶ 62–63, 72–73). However, we did not misapprehend or overlook 5 Petitioner’s obviousness arguments; rather, we provided our explanations on pages 24–26 of the Decision.” slip op. at 5
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,909,094 - Palo Alto Networks, Inc. v. Finjan, Inc.Rehearing deniedPTAB · May 16, 2016 · IPR2015-02001 · APJ Patrick M Boucher · IPR · Rehearing
The Board denied Finjan’s rehearing request, finding no matter it had misapprehended or overlooked in instituting review of the challenged claims.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The two-stage process described by Chandnani is not unambiguous: The data stream, in an embodiment in which the target script languages are defined by pattern matching rules and the patterns are associated with output tokens (described above), may be converted to a stream of tokens. The tokens may correspond to respective language constructs, and each token may be a corresponding unique number, symbol, etc. A detection process in that embodiment has two stages: (i) tokenize the data stream; and (ii) process the tokens using the detection data. Ex. 1003, col. 7, ll. 51–59. That is, it is not apparent from this description that the two stages identified by Chandnani occur, as Patent Owner contends, as a “sequential, disjointed process,” rather than as interleaved stages. At this stage of the proceeding, we credit the testimony of Dr. Rubin that “[i]n the context of the Chandnani + Kolawa combination, [operation on a stream of tokens] means that at any given time, the continuous data stream will intersect with both the tokenizer (which feeds nodes from the stream to the parse tree for storage) and the analyzer (which searches the nodes[’] output by the parsing stage for patterns that represent potential exploits).” Ex. 1002 ¶ 190. Such testimony regarding what one of skill in the art would understand from Chandnani and Kolawa is not unambigously contradicted by the disclosure identified by Patent Owner, and Patent Owner provides insufficient reason for us to discount it at this stage of the proceedings.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“The two-stage process described by Chandnani is not unambiguous: The data stream, in an embodiment in which the target script languages are defined by pattern matching rules and the patterns are associated with output tokens (described above), may be converted to a stream of tokens. The tokens may correspond to respective language constructs, and each token may be a corresponding unique number, symbol, etc. A detection process in that embodiment has two stages: (i) tokenize the data stream; and (ii) process the tokens using the detection data. Ex. 1003, col. 7, ll. 51–59. That is, it is not apparent from this description that the two stages identified by Chandnani occur, as Patent Owner contends, as a “sequential, disjointed process,” rather than as interleaved stages. At this stage of the proceeding, we credit the testimony of Dr. Rubin that “[i]n the context of the Chandnani + Kolawa combination, [operation on a stream of tokens] means that at any given time, the continuous data stream will intersect with both the tokenizer (which feeds nodes from the stream to the parse tree for storage) and the analyzer (which searches the nodes[’] output by the parsing stage for patterns that represent potential exploits).” Ex. 1002 ¶ 190. Such testimony regarding what one of skill in the art would understand from Chandnani and Kolawa is not unambigously contradicted by the disclosure identified by Patent Owner, and Patent Owner provides insufficient reason for us to discount it at this stage of the proceedings.” slip op. at 4
- Expert testimonyPetitioner expert creditedDecided for petitioner
“The two-stage process described by Chandnani is not unambiguous: The data stream, in an embodiment in which the target script languages are defined by pattern matching rules and the patterns are associated with output tokens (described above), may be converted to a stream of tokens. The tokens may correspond to respective language constructs, and each token may be a corresponding unique number, symbol, etc. A detection process in that embodiment has two stages: (i) tokenize the data stream; and (ii) process the tokens using the detection data. Ex. 1003, col. 7, ll. 51–59. That is, it is not apparent from this description that the two stages identified by Chandnani occur, as Patent Owner contends, as a “sequential, disjointed process,” rather than as interleaved stages. At this stage of the proceeding, we credit the testimony of Dr. Rubin that “[i]n the context of the Chandnani + Kolawa combination, [operation on a stream of tokens] means that at any given time, the continuous data stream will intersect with both the tokenizer (which feeds nodes from the stream to the parse tree for storage) and the analyzer (which searches the nodes[’] output by the parsing stage for patterns that represent potential exploits).” Ex. 1002 ¶ 190. Such testimony regarding what one of skill in the art would understand from Chandnani and Kolawa is not unambigously contradicted by the disclosure identified by Patent Owner, and Patent Owner provides insufficient reason for us to discount it at this stage of the proceedings.” slip op. at 4
§ 103 obviousnessPatents in suitUS 8,225,408 - Symantec Corp. v. Finjan, Inc.Rehearing deniedPTAB · Feb 25, 2016 · IPR2015-01546 · APJ Thomas L Giannetti · IPR · Rehearing
The Board denied rehearing, leaving its denial of institution for claims 1–7 in place because the Petition did not sufficiently show Binding disclosed the claimed client-directed management information.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“In the “Ground 2” obviousness challenge, the Petition applies the limitations of claims 1, 4, and 7 to the APA-Binding combination. One section specifically relates to the claim limitation “receiving non-HTTP management data intended for the client from a management server.” Pet. 36–39. In that section, the Petition states: “Although the APA does not explicitly teach that the non-HTTP management data is received by the gateway computer, this would have been obvious based on the teachings in Binding.” Pet. 37 (emphasis added) (citations omitted). The Petition goes on to state: “Binding further explains that this server or gateway computer includes an HTTP ‘communications protocol engine’ (i.e., gateway communicator), for communicating with the clients by connecting to another ‘communications protocol engine’ on each client.” Id. at 37 (emphasis added). The Petition further states: “Binding also teaches that the server or gateway computer sends various non-HTTP management messages and data, such as security information and parameters to the client by piggy-backing the data within an HTTP message.” Id. at 38 (emphasis added). The Petition then states: “Binding further describes a “Second Preferred Embodiment,” in which the gateway computer communicates with a “Trusted Third Party” (TTP) in order to establish a secure communication session with the client.” Id. (emphasis added). The Petition also asserts that “Binding explains that security information, parameters and metadata is piggy-backed (i.e., inserted) within an HTTP message being sent to the client.” Id. at 39–40 (emphasis added). We are, therefore, persuaded that the Petition’s reliance on Binding went beyond “piggy-backing.” Petitioner also relied on Binding for its asserted teaching of a gateway receiving piggy-backed non-HTTP management information intended for a client, a feature that is missing from the APA. We, therefore, are not persuaded that we misapprehended or overlooked anything in concluding that because Petitioner did not present sufficient evidence that Binding disclosed this feature, Petitioner had not carried its burden and we should not institute a trial.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In the “Ground 2” obviousness challenge, the Petition applies the limitations of claims 1, 4, and 7 to the APA-Binding combination. One section specifically relates to the claim limitation “receiving non-HTTP management data intended for the client from a management server.” Pet. 36–39. In that section, the Petition states: “Although the APA does not explicitly teach that the non-HTTP management data is received by the gateway computer, this would have been obvious based on the teachings in Binding.” Pet. 37 (emphasis added) (citations omitted). The Petition goes on to state: “Binding further explains that this server or gateway computer includes an HTTP ‘communications protocol engine’ (i.e., gateway communicator), for communicating with the clients by connecting to another ‘communications protocol engine’ on each client.” Id. at 37 (emphasis added). The Petition further states: “Binding also teaches that the server or gateway computer sends various non-HTTP management messages and data, such as security information and parameters to the client by piggy-backing the data within an HTTP message.” Id. at 38 (emphasis added). The Petition then states: “Binding further describes a “Second Preferred Embodiment,” in which the gateway computer communicates with a “Trusted Third Party” (TTP) in order to establish a secure communication session with the client.” Id. (emphasis added). The Petition also asserts that “Binding explains that security information, parameters and metadata is piggy-backed (i.e., inserted) within an HTTP message being sent to the client.” Id. at 39–40 (emphasis added). We are, therefore, persuaded that the Petition’s reliance on Binding went beyond “piggy-backing.” Petitioner also relied on Binding for its asserted teaching of a gateway receiving piggy-backed non-HTTP management information intended for a client, a feature that is missing from the APA. We, therefore, are not persuaded that we misapprehended or overlooked anything in concluding that because Petitioner did not present sufficient evidence that Binding disclosed this feature, Petitioner had not carried its burden and we should not institute a trial.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“In the “Ground 2” obviousness challenge, the Petition applies the limitations of claims 1, 4, and 7 to the APA-Binding combination. One section specifically relates to the claim limitation “receiving non-HTTP management data intended for the client from a management server.” Pet. 36–39. In that section, the Petition states: “Although the APA does not explicitly teach that the non-HTTP management data is received by the gateway computer, this would have been obvious based on the teachings in Binding.” Pet. 37 (emphasis added) (citations omitted). The Petition goes on to state: “Binding further explains that this server or gateway computer includes an HTTP ‘communications protocol engine’ (i.e., gateway communicator), for communicating with the clients by connecting to another ‘communications protocol engine’ on each client.” Id. at 37 (emphasis added). The Petition further states: “Binding also teaches that the server or gateway computer sends various non-HTTP management messages and data, such as security information and parameters to the client by piggy-backing the data within an HTTP message.” Id. at 38 (emphasis added). The Petition then states: “Binding further describes a “Second Preferred Embodiment,” in which the gateway computer communicates with a “Trusted Third Party” (TTP) in order to establish a secure communication session with the client.” Id. (emphasis added). The Petition also asserts that “Binding explains that security information, parameters and metadata is piggy-backed (i.e., inserted) within an HTTP message being sent to the client.” Id. at 39–40 (emphasis added). We are, therefore, persuaded that the Petition’s reliance on Binding went beyond “piggy-backing.” Petitioner also relied on Binding for its asserted teaching of a gateway receiving piggy-backed non-HTTP management information intended for a client, a feature that is missing from the APA. We, therefore, are not persuaded that we misapprehended or overlooked anything in concluding that because Petitioner did not present sufficient evidence that Binding disclosed this feature, Petitioner had not carried its burden and we should not institute a trial.” slip op. at 5
§ 103 obviousnessPatents in suitUS 7,756,996
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.