• Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Rehearing denied
  PTAB · Jan 4, 2023 · IPR2022-00182 · APJ Steven M Amundson · IPR · Rehearing

  Denied Patent Owner’s rehearing request; the Board found no abuse of discretion in instituting IPR of claims 1, 24, and 25 on the stated § 103 grounds.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d) (2022). In a rehearing request, the party challenging the decision “must specifically identify” (1) “all matters the party believes the Board misapprehended or overlooked” and (2) “the place where each matter was previously addressed” in an earlier submission. Id.; see Consolidated Trial Practice Guide at 90.3 “A rehearing request is not an opportunity for the requesting party to reargue its case or merely to express disagreement with the underlying decision.” MicroSurgical Tech., Inc. v. Regents of Univ. of Colo., PGR2021-00026, Paper 14 at 2 (PTAB Aug. 12, 2021). “Nor is it an opportunity for the moving party to present new arguments that were not in its original submissions.” Id.” slip op. at 3

  • Obviousness (§103) › Objective indicia / secondary considerations › CopyingObjective indicia no nexusDecided for petitioner

    “Patent Owner does not explain why issue preclusion permits the Board to hold the district court’s finding that Cisco “copied software functionality from the [infringed] patents” against Petitioner. See Prelim. Resp. 16, 54–56; Req. Reh’g 3, 14–15. Issue preclusion “is appropriate only if”: (1) “the issue is identical to one decided in the first action”; (2) “the issue was actually litigated in the first action”; (3) “resolution of the issue was essential to a final judgment in the first action”; and (4) the party defending against preclusion “had a full and fair opportunity to litigate the issue in the first action.” SynQor, Inc. v. Vicor Corp., 988 F.3d 1341, 1353 (Fed. Cir. 2021). Patent Owner does not address any of these requirements for issue preclusion. See Prelim. Resp. 16, 54–56; Req. Reh’g 3, 14–15.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “Regarding the policy’s whitelist processing, if the security device determines that a newly received packet with encrypted data is correlated to the hostname corresponding to the whitelisted destination domain, the security device filters the packet by forwarding it to the remote server with the whitelisted destination domain. See Ex. 1004, 7:52–59, 16:36–42; Ex. 1003 ¶ 90; see also Ex. 1004, 6:1–11. Filtering the newly received packet with encrypted data by forwarding it to the remote server with the whitelisted destination domain occurs “without having to decrypt the encrypted secure tunnel session traffic.” Ex. 1004, 5:24–27, 5:35–42, 7:1–9, 11:7–19; see Ex. 1003 ¶¶ 94, 113. Further, filtering the newly received packet with encrypted data by forwarding it to the remote server with the whitelisted destination domain results from applying a packet-filtering rule (a whitelisted destination domain) to the packet. Hence, we disagree with Patent Owner that Buruganahalli’s security devices process whitelisted packets by “forward[ing] the entire encrypted stream without . . . filtering encrypted packets.” See Req. Reh’g 10. We also disagree with Patent Owner that “encrypted packets in whitelisted sessions” are (1) “forwarded without applying any packet-filtering rules” and (2) “allowed uninspected.” See id. at 11 n.1, 13. Regarding the policy’s blacklist processing, if the security device determines that a newly received packet with encrypted data is correlated to the hostname corresponding to the blacklisted destination domain, the security device either blocks the packet (as Patent Owner contends) or filters the packet by forwarding it to a decryption engine. See Ex. 1004, 7:60–67, 9:61–67, 14:33–36, 16:43–48; Ex. 1003 ¶¶ 90–91, 94, 97, 108, 118, 127, 137; Req. Reh’g 10–11, 13. Filtering the newly received packet with encrypted data by forwarding it to a decryption engine occurs “without having to decrypt the encrypted secure tunnel session traffic.” Ex. 1004, 5:24–27, 5:35–42, 7:1–9, 11:7–19; see Ex. 1003 ¶¶ 94, 113, 135. Further, filtering the newly received packet with encrypted data by forwarding it to a decryption engine results from applying a packet-filtering rule (a blacklisted destination domain) to the packet and corresponds to limitation [1.g] and the similar limitations in claims 24 and 25. See Ex. 1003 ¶¶ 109, 134–135. The Institution Decision explained how Buruganahalli’s security devices may filter packets comprising unencrypted data and packets comprising encrypted data according to claims 1, 24, and 25 by applying a whitelist/blacklist policy to the packets. See, e.g., Inst. Dec. 57–60, 66–67, 69–71. As the Institution Decision explained and as discussed above, “for each session packets comprising unencrypted data and packets comprising encrypted data are correlated and filtered based on the hostname (destination domain) extracted from the handshake traffic, and then the correlated and filtered packets are processed separately from packets destined for other domains.” See Inst. Dec. 69–70; Ex. 1003 ¶¶ 109, 120–121, 133–135; Ex. 1004, 7:39–67, 8:55–60, 11:47–51, 14:21–33, 14:50–55, 16:32–48. Buruganahalli discloses additional filtering after forwarding a newly received packet with encrypted data to a decryption engine, e.g., as occurs in Buruganahalli’s Figure 3B embodiment. See, e.g., Ex. 1004, 6:17–22, 9:67–10:4, 12:4–64, Fig. 3B. But claims 1, 24, and 25 use the transitional term “comprising.” Ex. 1001, 25:14, 28:59, 29:29–30. Hence, the claims do not “exclude unrecited elements,” such as additional filtering after forwarding a newly received packet with encrypted data to a decryption engine. See Regeneron Pharm., Inc. v. Merus N.V., 864 F.3d 1343, 1352 (Fed. Cir. 2017) (citing Manual of Patent Examining Procedure § 2111.03).” slip op. at 8

  § 103 obviousness
  Patents in suitUS 9,917,856
• 3shape A/S / 3shape Inc. v. Align Technology, Inc.Rehearing denied
  PTAB · Dec 30, 2019 · IPR2019-00152 · APJ Neil T Powell · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request and maintained institution of review of claims 1–20, finding no overlooked or misapprehended matter.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW The applicable standard for a request for rehearing of the Institution Decision is set forth in 37 C.F.R. § 42.71(c), which provides that, [w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 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, or a reply.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 3

  • PTAB / AIA Trials › Discretionary denialDecided for petitioner

    “Having considered the parties’ arguments, we are not persuaded that we overlooked or misapprehended Deeper, Chevron, or the principle on which those cases rest. Instead, we maintain that unlike the facts in Deeper and Chevron, the facts of the present case do not compel denying inter partes review due to considerations of efficiency. As an initial matter, in Deeper and Chevron, a reasonable likelihood of success had been shown for the challenges of only a very small proportion of the challenged claims. In Deeper, there was a reasonable likelihood of success for only two among 23 challenged claims. Deeper at 42–43. In Chevron, there was a reasonable likelihood of success for only two dependent claims among 20 challenged claims. Chevron at 11. Although we do not have a specific threshold in mind, here, there is a significantly larger portion of claim challenges for which a reasonable likelihood exists than in either Deeper or Chevron. More importantly, in our view, Patent Owner’s efficiency arguments overlook that this proceeding involves one of multiple, similar patents that Patent Owner has asserted against Petitioner, and which Petitioner has challenged in petitions for inter partes review in IPR2019-00150, IPR2019-00151, and IPR2019- 00152. In these proceedings, the asserted prior art and the issues overlap. In each proceeding, Petitioner asserts the prior art references Picard, Ishihara, Tiziani, Gmitro, and Kino. Pet. 7; IPR2019-00150, Paper 3, 7–8; IPR2019-00151, 7. In IPR2019-00150, IPR2019-00151, and IPR2019-00152 collectively, Petitioner demonstrated a reasonable likelihood of prevailing with respect to 17 of 45 challenged claims. See Dec. on Inst. 3, 28–29 (noting a reasonable likelihood of prevailing on challenge of eight claims); IPR2019-00150, Paper 11, 3, 27 (noting reasonable likelihood of prevailing on challenge of five claims); IPR2019-00151, Paper 10, 3, 28 (noting a reasonable likelihood of prevailing on challenge of four claims). Given that Petitioner has demonstrated a reasonable likelihood of prevailing on a significant portion of similar assertions of unpatentability of the claims of multiple, similar patents asserted by Patent Owner against Petitioner, we do not agree with Patent Owner’s assertion that the efficiency considerations noted in Deeper and Chevron weigh heavily in favor of denying inter partes review of the present case.” slip op. at 5

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “considered the arguments and precedent presented by Patent Owner, we disagree with Patent Owner’s suggestion that Petitioner’s proposed means-plus-function constructions must be substantively addressed in the Institution Decision. Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). As the Institution Decision explained, the Preliminary Response did not identify any specific reason that the differences between the parties’ proposed claim constructions would affect the ultimate analysis of the patentability of the challenged claims over the cited prior art. Dec. on Inst. 10. In particular, the Preliminary Response did not present any specific reason that the alleged teachings of the cited prior art would not meet Patent Owner’s proposed claim constructions, if we adopted Patent Owner’s proposed claim constructions over Petitioner’s. Thus, the Preliminary Response’s general disagreement regarding the correct construction of the claims did not create any controversy regarding the patentability of the challenged claims over the cited references, making it unnecessary for the Institution Decision to reach a conclusion on claim construction. Thus, the Rehearing Request does not persuade us that we overlooked or misapprehended the law by not construing the claims in the Institution Decision. To the extent Patent Owner later identifies any specific reason that the ultimate question of patentability is affected by specific claim construction issues, those issues can be resolved in the inter partes review. The Federal Circuit has noted expressly a lack of concern for “the Board adopting a construction in its final written decision, as the Board is free to do.” SAS Institute, Inc. v. ComplementSoft, LLC, 825 F.3d 1341, 1352 (Fed. Cir. 2016). Indeed, the Board may construe claim language in its final written decision, after omitting any construction of the language in a decision to institute. TQ Delta, LLC, v. DISH Network LLC, 929 F.3d 1350, 1355 (Fed. Cir. 2019). The Supreme Court’s observation that Petitioner “gets to define the contours of the proceeding” addresses the Board’s prior practice of instituting inter partes review only for a subset of the claim challenges brought by a Petitioner. See SAS, 138 S. Ct. at 1354–1355. Patent Owner does not persuade us that the Supreme Court’s SAS decision requires the Board to adopt a claim construction in its institution decision. Here, having reviewed the record evidence, including the language of the claims, the Specification of the ’901 patent, and the asserted art, we found the claim constructions and prior art mapping advanced by Petitioner sufficiently viable to demonstrate a reasonable likelihood of prevailing with respect to at least one claim challenged in the Petition. The Rehearing Request does not persuade us of error in that determination.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner

    “Petitioner failed to explain why a person of ordinary skill in the art would have placed certain components in certain relative positions, as well as how those components would have worked in those positions. The Institution Decision addressed those arguments. Inst. Dec. 25–27. The Rehearing Request does not reiterate or further explain the arguments from the Preliminary Response that Petitioner failed to explain why a person of ordinary skill in the art would have arranged the components in a certain way, or how such an arrangement would have worked. Instead, the Rehearing Request argues that the arrangement of Picard’s and Ishihara’s components proposed by Petitioner does not meet the claims. Pages 32–36 of the Preliminary Response simply did not make such an argument. For that reason alone, we find unpersuasive the Rehearing Request’s assertion that we overlooked or misapprehended arguments regarding the “illogical arrangement” of certain components. Reh’g Req. 9–13. Additionally, even if the Preliminary Response had made the arguments presented in the Rehearing Request, at this stage, we do not find Patent Owner’s arguments persuasive. In particular, we do not agree with Patent Owner’s assertion that Petitioner places at least a portion of the alleged “illumination unit” downstream of the alleged “optical system.” Instead, Petitioner’s mapping places components of the alleged “illumination unit” upstream of some components of the alleged “optical system” and downstream of one component of the alleged “optical system.” Indeed, such positioning appears in the Rehearing Request’s annotated version of Picard’s Figure 8, which shows Nipkow disk 8 upstream of the alleged optical system’s fiber optic bundle 30 and lenses 15, 321, but downstream of the alleged optical system’s separator cube 11. As Patent Owner notes, Petitioner asserts that Nipkow disk 8 forms part of the claimed “illumination unit . . . configured to generate a plurality of incident light beams.” Reh’g Req. 9–10; Pet. 20–23. Thus, Petitioner identifies a portion of the alleged illumination unit as sitting upstream of the alleged optical system’s fiber optic bundle 30 and lens 15, 32, while placing the same portion of the alleged illumination unit downstream of the alleged optical system’s separator cube 11. This arrangement of components appears to satisfy Patent Owner’s asserted requirement that the illumination unit must create the plurality of incident light beams before the optical system can focus them. Reh’g Req. 9. In particular, Petitioner asserts that Picard’s Nipkow disk 8 generates a plurality of incident light beams and that lens 15, situated downstream of Nipkow disk 8, focuses the plurality of incident light beams. Pet. 22, 25. With Nipkow disk 8 situated upstream of lens 15, any light beam produced by Nipkow disk 8 would be generated before lens 15 receives it. Because lens 15 is part of the alleged optical system, to the extent lens 15 focuses light beams from Nipkow disk 8, it seemingly would follow that the optical system focuses the plurality of incident light beams after Nipkow disk 8 (the alleged module) generates them.” slip op. at 13

  Claim construction§ 103 obviousnessDiscretionary denial
  Patents in suitUS 9,615,901
• 3shape A/S / 3shape Inc. v. Align Technology, Inc.Rehearing denied
  PTAB · Dec 30, 2019 · IPR2019-00151 · APJ Neil T Powell · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request and maintained institution of inter partes review of claims 15–30, finding no error in its institution decision.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “Decision is set forth in 37 C.F.R. § 42.71(c), which provides that, [w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 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, or a reply.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 3

  • PTAB / AIA Trials › Discretionary denialDecided for petitioner

    “Having considered the parties’ arguments, we are not persuaded that we overlooked or misapprehended Deeper, Chevron, or the principle on which those cases rest. Instead, we maintain that unlike the facts in Deeper and Chevron, the facts of the present case do not compel denying inter partes review due to considerations of efficiency. As an initial matter, in Deeper and Chevron, a reasonable likelihood of success had been shown for the challenges of only a very small proportion of the challenged claims. In Deeper, there was a reasonable likelihood of success for only two among 23 challenged claims. Deeper at 42–43. In Chevron, there was a reasonable likelihood of success for only two dependent claims among 20 challenged claims. Chevron at 11. Although we do not have a specific threshold in mind, here, there is a larger portion of claim challenges for which a reasonable likelihood exists than in either Deeper or Chevron. More importantly, in our view, Patent Owner’s efficiency arguments overlook that this proceeding involves one of multiple, similar patents that Patent Owner has asserted against Petitioner, and which Petitioner has challenged in petitions for inter partes review in IPR2019-00150, IPR2019-00151, and IPR2019- 00152. In these proceedings, the asserted prior art and the issues overlap. In each proceeding, Petitioner asserts the prior art references Picard, Ishihara, Tiziani, Gmitro, and Kino. Pet. 7; IPR2019-00150, Paper 3, 7–8; IPR2019-00152, Paper 3, 7. In IPR2019-00150, IPR2019-00151, and IPR2019-00152 collectively, Petitioner demonstrated a reasonable likelihood of prevailing with respect to 17 of 45 challenged claims. See Dec. on Inst. 3, 28 (noting reasonable likelihood of prevailing on challenge of four claims); IPR2019-00150, Paper 11, 3, 27 (noting reasonable likelihood of prevailing on challenge of five claims); IPR2019-00152, Paper 11, 3, 28–29 (noting a reasonable likelihood of prevailing on challenge of eight claims). Given that Petitioner has demonstrated a reasonable likelihood of prevailing on a significant portion of similar assertions of unpatentability of the claims of multiple, similar patents asserted by Patent Owner against Petitioner, we do not agree with Patent Owner’s assertion that the efficiency considerations noted in Deeper and Chevron weigh heavily in favor of denying inter partes review of the present case.” slip op. at 5

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “Patent Owner does not persuade us that we misapprehended the law. Having considered the arguments and precedent presented by Patent Owner, we disagree with Patent Owner’s suggestion that Petitioner’s proposed means-plus-function constructions must be substantively addressed in the Institution Decision. Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). As the Institution Decision explained, the Preliminary Response did not identify any specific reason that the differences between the parties’ proposed claim constructions would affect the ultimate analysis of the patentability of the challenged claims over the cited prior art. Dec. on Inst. 10. In particular, the Preliminary Response did not present any specific reason that the alleged teachings of the cited prior art would not meet Patent Owner’s proposed claim constructions, if we adopted Patent Owner’s proposed claim constructions over Petitioner’s. Thus, the Preliminary Response’s general disagreement regarding the correct construction of the claims did not create any controversy regarding the patentability of the challenged claims over the cited references, making it unnecessary for the Institution Decision to reach a conclusion on claim construction. Thus, the Rehearing Request does not persuade us that we overlooked or misapprehended the law by not construing the claims in the Institution Decision. To the extent Patent Owner later identifies any specific reason that the ultimate question of patentability is affected by specific claim construction issues, those issues can be resolved in the inter partes review. The Federal Circuit has noted expressly a lack of concern for “the Board adopting a construction in its final written decision, as the Board is free to do.” SAS Institute, Inc. v. ComplementSoft, LLC, 825 F.3d 1341, 1352 (Fed. Cir. 2016). Indeed, the Board may construe claim language in its final written decision, after omitting any construction of the language in a decision to institute. TQ Delta, LLC, v. DISH Network LLC, 929 F.3d 1350, 1355 (Fed. Cir. 2019). The Supreme Court’s observation that Petitioner “gets to define the contours of the proceeding” addresses the Board’s prior practice of instituting inter partes review only for a subset of the claim challenges brought by a Petitioner. See SAS, 138 S. Ct. at 1354–1355. Patent Owner does not persuade us that the Supreme Court’s SAS decision requires the Board to adopt a claim construction in its institution decision. . Here, having reviewed the record evidence, including the language of the claims, the Specification of the ’448 patent, and the asserted art, we found the claim constructions and prior art mapping advanced by Petitioner sufficiently viable to demonstrate a reasonable likelihood of prevailing with respect to at least one claim challenged in the Petition. The Rehearing Request does not persuade us of error in that determination.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation foundDecided for petitioner

    “presented in the Rehearing Request, at this stage, we do not find Patent Owner’s arguments persuasive. In particular, we do not agree with Patent Owner’s assertion that Petitioner places at least a portion of the alleged “illumination unit” downstream of the alleged “optical system.” Instead, Petitioner’s mapping places components of the alleged “illumination unit” upstream of some components of the alleged “optical system” and downstream of one component of the alleged “optical system.” Indeed, such positioning appears in the Rehearing Request’s annotated version of Picard’s Figure 8, which shows Nipkow disk 8 upstream of the alleged optical system’s fiber optic bundle 30 and lenses 15, 321, but downstream of the alleged optical system’s separator cube 11. As Patent Owner notes, Petitioner asserts that Nipkow disk 8 forms part of the claimed “illumination unit . . . configured to generate a plurality of incident light beams.” Reh’g Req. 9–10; Pet. 18–21. Thus, Petitioner identifies a portion of the alleged illumination unit as sitting upstream of the alleged optical system’s fiber optic bundle 30 and lens 15, 32, while placing the same portion of the alleged illumination unit downstream of the alleged optical system’s separator cube 11. This arrangement of components appears to satisfy Patent Owner’s asserted requirement that the illumination unit must create the plurality of incident light beams before the optical system can focus them. Reh’g Req. 9. In particular, Petitioner asserts that Picard’s Nipkow disk 8 generates a plurality of incident light beams and that lens 15, situated downstream of Nipkow disk 8, focuses the plurality of incident light beams. Pet. 20–21, 23–24. With Nipkow disk 8 situated upstream of lens 15, any light beam produced by Nipkow disk 8 would be generated before lens 15 receives it. Because lens 15 is part of the alleged optical system, to the extent lens 15 focuses light beams from Nipkow disk 8, it seemingly would follow that the optical system focuses the plurality of incident light beams after Nipkow disk 8 (the alleged module) generates them. For these reasons, we are not persuaded that it was an abuse of discretion to institute review of claim 15 based on the arrangement of components proposed by 1 Although Patent Owner’s annotated version of Picard’s Figure 8 does not identify Picard’s lens 15 as part of the alleged optical system, the Petition asserts that it forms part of the optical system and serves to focus the plurality of incident light beams. Pet. 23–24. Petitioner. Patent Owner’s argument rests on a claim interpretation that requires that the claimed “optical system” be positioned, in its entirety, downstream of the claimed “illumination unit.” At this stage, neither party has fully addressed the correctness of Patent Owner’s claim interpretation. We, therefore, do not decide at this stage whether Patent Owner’s claim interpretation is correct and make no final determination as to whether Petitioner’s proposed arrangement of components falls within the scope of the claim.” slip op. at 13

  Claim construction§ 103 obviousnessDiscretionary denial
  Patents in suitUS 8,638,448
• Panasonic Avionics Corp. v. Linksmart Wireless Technology, LLCRehearing denied
  PTAB · Oct 8, 2019 · IPR2019-00043 · APJ Brian J Mcnamara · IPR · Rehearing

  The Board denied Panasonic’s rehearing request and left in place its denial of institution because the cited art did not teach the claimed redirection server.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “rehearing of our Decision Denying Institution of inter partes review of U.S. Patent RE46,459 (the ’459 patent) entered as Paper 7 (“Decision” or “Dec.”) on May 14, 2019. See Paper 8 (“Req. Reh’g.”). When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “redirecting a packet, i.e., one in which the NAS removes the request for the Subscriber’s packet and places it in a new packet to be sent to server 14. Req. Reh’g. 5–6 (citing Pet. 71, 78). Petitioner refers to this second technique as an address-replacement approach. Id. at 5. According to Petitioner, Malkin’s address replacement approach is consistent with our analysis that the ’459 patent requires modifying a request to access a destination on the network by changing the requested destination. Id. at 5–6 (citing Dec. 18). Petitioner overlooks that our analysis of Malkin is independent of how server 14 is accessed. Our Decision states, “When the NAS detects a user attempting unauthorized access, Malkin routes the user’s request to redirection server 14 within ISP 16.” Dec. 17 (emphasis added). We also stated that “Malkin either allows network access for authorized user requests or blocks network access for unauthorized user requests, but it does not redirect a request to another location on the network.” Id. (emphasis added). As our construction requires that the claimed redirection server perform some function other than allowing or blocking access to a network, i.e., redirecting the user to a network location that is different from the requested network location, we concluded that Malkin, which blocks access to the network, does not disclose the claimed redirection server. Id. at 17–18.” slip op. at 5

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “redirection server” means “a server operable to control network access by applying the following actions: block, allow, direct.” Pet. 15. We explained that a prior panel of the Board construed “redirection server” as “requiring[ing] some sort of redirection functionality” and that “blocking and allowing are ‘further’ functions of the redirection server.” Dec. 10. We agreed that “‘redirection’ requires the server perform a redirection function as distinguished from merely blocking or allowing user access, i.e., there must be some form of redirection of the user’s request.” Id. at 11. We phrased the construction of “redirection server” to mean a server that “at least must be capable of redirecting a user to a network location that is different from the network location in the user’s request.” Dec. 12. Our slip op. at 3

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “the user’s rule set correlated to a temporarily assigned network address. As an initial matter, we note that the Petition (i) cites Abraham as disclosing denying or allowing transmission of IP packets and (ii) argues it would have been obvious to augment the network server’s ability to deny or allow packets, as disclosed by Abraham, with Malkin’s packet redirection technique, thereby making Abraham’s network server a redirection server. Pet. 30–31. According to Petitioner, “it would have been obvious for Abraham’s network server to redirect packets that are blocked, as described by Malkin.” Id. at 32. As discussed above, because Malkin’s packet redirection technique is a blocking technique that fails to disclose Abraham does not alter our decision to deny institution. See also Dec. 18 (“As we are persuaded that Petitioner has not demonstrated the references disclose a redirection server as that term is properly construed within the meaning of the challenged claims, we conclude that Petitioner has not demonstrated a likelihood that it will prevail on its challenge to any of the claims.”).” slip op. at 6

  Claim construction§ 103 obviousness
• 3shape A/S / 3shape Inc. v. Align Technology, Inc.Rehearing denied
  PTAB · Oct 2, 2019 · IPR2019-00150 · APJ Neil T Powell · IPR · Rehearing

  The Board denied the Patent Owner’s rehearing request, leaving institution in place for claims 17–25 based on the grounds identified in the institution decision.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW The applicable standard for a request for rehearing of the Institution Decision is set forth in 37 C.F.R. § 42.71(c), which provides that, [w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 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, or a reply.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 3

  • PTAB / AIA Trials › Discretionary denialDecided for petitioner

    “2018) (informative). Reh’g Req. 3–5. Patent Owner contends that the Institution Decision “misapprehends or overlooks that efficiency considerations, such as those outlined in Deeper and Chevron, weigh strongly in favor of denial of this case.” Id. at 4–5. In support of this contention, Patent Owner argues that “[a]ccording to the Board’s decision on institution, [Petitioner] has demonstrated, at best a reasonable likelihood of prevailing on five of the 14 claims challenged in its petition based on only one of four asserted grounds.” Id. at 4. Consequently, Patent Owner contends, instituting inter partes review on all challenges and all claims would not use the limited time and resources of the Board efficiently (id.), as in Deeper and Chevron. See Deeper at 41–43; Chevron at 10–11. In its Opposition, Petitioner argues that Patent Owner misstates this case’s facts, which Petitioner asserts differ significantly from those in Chevron and Deeper. Opp. 1–2. Petitioner notes that, contrary to Patent Owner’s assertion that the Institution Decision found a reasonable likelihood of prevailing on five out of fourteen challenged claims, we actually found a reasonable likelihood of prevailing on five out of nine challenged claims. Id. at 1. Petitioner also argues that each of Deeper and Chevron involved a far different proportion of claims for which a reasonable likelihood of prevailing had been demonstrated. Id. at 1–2. Having considered the parties’ arguments, we are not persuaded that we overlooked or misapprehended Deeper, Chevron, or the principle on which those cases rest. Instead, we maintain that unlike the facts in Deeper and Chevron, the facts of the present case do not compel denying inter partes review due to considerations of efficiency. In both Deeper and Chevron, a reasonable likelihood of success had been shown for the challenges of only a very small proportion of the challenged claims. In Deeper, there was a reasonable likelihood of success for only two among 23 challenged claims. Deeper at 42–43. In Chevron, there was a reasonable likelihood of success for only two dependent claims among 20 challenged claims. Chevron at 11. Petitioner correctly observes that, in both Deeper and Chevron, a reasonable likelihood was shown for only a subset of claims within a ground. Opp. 2; Deeper at 15, 35, 52–43; Chevon, 4, 11. Here, consistent with Petitioner’s correct observations, the Institution Decision found a reasonable likelihood of Petitioner prevailing on five of nine challenged claims (Dec. on Inst. 3, 27), which is a majority of the challenged claims and all of the claims challenged in Petitioner’s ground based on Picard and Ishihara. Therefore, we disagree with Patent Owner’s position that Deeper and Chevron weigh heavily in favor of denying inter partes review of the present case.” slip op. at 4

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “Patent Owner does not persuade us that we misapprehended the law. Having considered the arguments and precedent presented by Patent Owner, we disagree with Patent Owner’s suggestion that Petitioner’s proposed means-plus-function constructions must be substantively addressed in the Institution Decision. Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). As the Institution Decision explained, the Preliminary Response did not identify any specific reason that the differences between the parties’ proposed claim constructions would affect the ultimate analysis of the patentability of the challenged claims over the cited prior art. Dec. on Inst. 10. In particular, the Preliminary Response did not present any specific reason that the alleged teachings of the cited prior art would not meet Patent Owner’s proposed claim constructions, if we adopted Patent Owner’s proposed claim constructions over Petitioner’s. Thus, the Preliminary Response’s general disagreement regarding the correct construction of the claims did not create any controversy regarding the patentability of the challenged claims over the cited references, making it unnecessary for the Institution Decision to reach a conclusion on claim construction. For this reason alone, the Rehearing Request does not persuade us that we overlooked or misapprehended the law by not construing the claims in the Institution Decision. To the extent Patent Owner later identifies any specific reason that the ultimate question of patentability is affected by specific claim construction issues, those issues can be resolved in the inter partes review. The Federal Circuit has noted expressly a lack of concern for “the Board adopting a construction in its final written decision, as the Board is free to do.” SAS Institute, Inc. v. ComplementSoft, LLC, 825 F.3d 1341, 1352 (Fed. Cir. 2016). Indeed, the Board may construe claim language in its final written decision, after omitting any construction of the language in a decision to institute. TQ Delta, LLC, v. DISH Network LLC, 929 F.3d 1350, 1355 (Fed. Cir. 2019). The Supreme Court’s observation that Petitioner “gets to define the contours of the proceeding” addresses the Board’s prior practice of instituting inter partes review only for a subset of the claim challenges brought by a Petitioner. See SAS, 138 S. Ct. at 1354–1355. Patent Owner does not persuade us that the Supreme Court’s SAS decision requires the Board to adopt a claim construction in its institution decision. .” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Additionally, even if the Preliminary Response had made the arguments presented in the Rehearing Request, at this stage, we do not find Patent Owner’s arguments persuasive. In particular, we do not agree with Patent Owner’s assertion that Petitioner places the alleged “module” downstream of the alleged “optical system.” Instead, Petitioner’s mapping places the alleged “module” upstream of some components of the alleged “optical system” and downstream of one component of the alleged “optical system.” Indeed, such positioning appears in the Rehearing Request’s annotated version of Picard’s Figure 8, which shows Nipkow disk 8 upstream of the alleged optical system’s fiber optic bundle 30 and lenses 15, 321, but downstream of the alleged optical system’s separator cube 11. As Patent Owner notes, Petitioner asserts that Nipkow disk 8 corresponds to the claimed “module . . . configured to 1 Although Patent Owner’s annotated version of Picard’s Figure 8 does not identify Picard’s lens 15 as part of the alleged optical system, the Petition asserts that it forms part of the optical system and serves to focus the plurality of incident light beams. Pet. 29. generate a plurality of incident light beams.” Reh’g Req. 9–10; Pet. 25–26. Thus, Petitioner identifies the alleged module as sitting upstream of the alleged optical system’s fiber optic bundle 30 and lens 15, 32, while placing the alleged module downstream of the alleged optical system’s separator cube 11. This arrangement of components appears to satisfy Patent Owner’s asserted requirement that the module must create the plurality of incident light beams before the optical system can focus them. Reh’g Req. 8–9. In particular, Petitioner asserts that Picard’s Nipkow disk 8 generates a plurality of incident light beams and that lens 15, situated downstream of Nipkow disk 8, focuses the plurality of incident light beams. Pet. 25–26, 29. With Nipkow disk 8 situated upstream of lens 15, any light beam produced by Nipkow disk 8 would be generated before lens 15 receives it. Because lens 15 is part of the alleged optical system, to the extent lens 15 focuses light beams from Nipkow disk 8, it seemingly would follow that the optical system focuses the plurality of incident light beams after Nipkow disk 8 (the alleged module) generates them.” slip op. at 12

  Claim construction§ 103 obviousnessDiscretionary denial
  Patents in suitUS 8,638,447
• Nikon Corporation v. ASML Netherlands B.V., Carl Zeiss AGRehearing denied
  PTAB · Sep 10, 2018 · IPR2018-00227 · APJ Brian J Mcnamara · IPR · Rehearing

  The Board denied rehearing of the denial of institution, finding the Kerns-Niikawa combination did not sufficiently teach or suggest initiating audio capture based on focus adjustment for claims 15, 20, and 23.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “not persuaded that the Request for Rehearing demonstrates any error or misapprehension in our analysis of the Petition, the ’167 patent, or the references. Kerns uses a two-position shutter button (ready and picture taking positions) that in the first position begins to take a series of photographs and record a series of sound images in ring buffers that are filled and then overwritten as recording progresses. See e.g., Ex. 1005, 3:17–23. When the user presses the button into the second position, additional pictures are snapped and recording stops, with the ring buffers remaining intact. Id. at 3:24–33. Kerns does not explicitly discuss auto focusing. Niikawa uses a separate button for sound recording. See, e.g., Ex. 1006 ¶ 155. The Petition describes Kerns at pages 27–30 without mentioning focusing. The relevant claim chart in the Petition cites Kerns’ disclosure of a two-position shutter, but does not cite a portion of Kerns that discloses responding to a detection in focus adjustment. Id. at 43. Petitioner’s chart of claim 15 cites Niikawa as disclosing “generating a trigger signal in response to detection of focus adjustment when the camera is manipulated prior to image capture.” Petitioner acknowledges “Niikawa discloses recording sound in association with an image by using sound recording button 53 during ‘after view’ display following image capture.” Pet. 32 (citing Ex. 1006 ¶ 106). Although Niikawa discloses audio capture, Niikawa does not disclose audio capture based on focusing adjustment. Accordingly, neither Kerns nor Niikawa individually discloses initiating audio capture based on focusing adjustment. The Petition argues that “it would have been obvious to one of skill in the art to employ the two-step shutter control of Kerns in the camera of Niikawa to provide simplified sound recording control in connection with image capture” (id. at 32). As noted above, Kerns does not discuss explicitly responding to focus adjustment to trigger audio recording. The Petition also acknowledges that “Niikawa discloses numerous sensors relating to image taking operations that will cause the camera to be switched to capture mode.” Id. at 34. Petitioner’s assertion that one of ordinary skill would have modified Niikawa to replace sound recording button 53 with Kerns’ two-step shutter and further modified the combination to select autofocusing as the sensor parameter that initiates sound recording, as recited in claim 15, is not supported by the references and represents an impermissible level of hindsight. Thus, we further determine the Petition did not demonstrate sufficiently that the combination of Kerns and Niikawa would have taught or suggested initiating audio capture based on focusing adjustment to the ordinarily skilled artisan during the relevant timeframe.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “Claim 15 explicitly recites that “the detection circuit [is] configured to generate a trigger signal when the camera is manipulated prior to image-capture” and that “the detection circuit is configured to sense focus adjustments by the camera while the camera is powered-up and in a wait state, sense activation of a viewfinder display of the digital camera, and generate the trigger signal in response to detection of a focus adjustment.” Claim 15 recites that the detection circuit configured to generate the trigger signal performs all of these functions, as opposed to one or more of them. Petitioner identifies no disclosure in the Specification supporting its proposed construction that claim 15 should be construed to mean a system in which generating a trigger signal when the camera is manipulated does not require both sensing activation of the viewfinder and detecting focus adjustment. As Petitioner points out, the ’167 patent acknowledges that it was known to use the shutter release button to initiate both audio capture and focusing. Id. at 10 (citing Pet. 33, Ex. 1001, 1:14–16 (disclosing that “[s]ome still cameras utilize a first position on a shutter-release button to initiate audio capture and/or focusing”)). The ’167 patent recognizes that in such systems “the user is limited to capturing an image during the audio recording period in order to obtain the best coordination between picture and sound.” Ex. 1001, 1:44–47. The ’167 patent addresses this limitation of the prior art with a system in which “[m]anipulation of the camera is detected prior to image capture, and sensory data are generated in response to detecting the manipulation.” Ex. 1001, 1:54–56. Construing apparatus claim 15 as a whole, the functional limitation, “the detection circuit configured to generate a trigger signal when the camera is manipulated prior to image-capture,” must be view the claimed manipulation in the context of the additional functional limitation that the detection circuit is configured to sense activation of the viewfinder. Recognizing that the Specification articulates one purpose of the invention is to avoid the technical constraints of using the shutter button alone to initiate both audio capture and focusing, we do not construe the claim to mean only focusing adjustment is required to begin audio recording merely because the claim also recites that the sensory data used to generate the trigger signal is a focus adjustment.” slip op. at 5

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentableNot shown unpatentable

    “The Petition argues that “it would have been obvious to one of skill in the art to employ the two-step shutter control of Kerns in the camera of Niikawa to provide simplified sound recording control in connection with image capture” (id. at 32). As noted above, Kerns does not discuss explicitly responding to focus adjustment to trigger audio recording. The Petition also acknowledges that “Niikawa discloses numerous sensors relating to image taking operations that will cause the camera to be switched to capture mode.” Id. at 34. Petitioner’s assertion that one of ordinary skill would have modified Niikawa to replace sound recording button 53 with Kerns’ two-step shutter and further modified the combination to select autofocusing as the sensor parameter that initiates sound recording, as recited in claim 15, is not supported by the references and represents an impermissible level of hindsight. Thus, we further determine the Petition did not demonstrate sufficiently that the combination of Kerns and Niikawa would have taught or suggested initiating audio capture based on focusing adjustment to the ordinarily skilled artisan during the relevant timeframe.” slip op. at 8

  Claim construction§ 103 obviousness
  Patents in suitUS 7,209,167
• Duodecad It Services Luxembourg S.à.R.L. / Friendfinder Networks Inc. et al. v. Wag Acquisition, LLCRehearing denied
  PTAB · Apr 4, 2017 · IPR2015-01035 · APJ Trevor M Jefferson · IPR · Rehearing

  The Board denied rehearing and left in place its denial of institution for claims 1–18, finding the petition did not persuasively show Ground 3’s references taught the constant-fill-rate limitation.

  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 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). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “construction and construed “playback rate” (as recited in claims 1, 3, 8, 9, and 14) as “a rate at which the data is encoded for playback to a user.” Dec. 6–7 (citing Paper 2 (“Pet.”) 12; Paper 6 (“Prelim. Resp.”) 17). We also declined to adopt Petitioner’s proposed construction for “at about playback rate” as indefinite as it could represent “any rate” (Pet. 12). Dec. 7. We adopted Patent Owner’s proposed construction that “at about playback rate” as recited in claims 1, 8, and 14, should be construed as “at approximately the rate at which the media will be played out.” Dec. 7 (citing Prelim. Resp. 16–18; Ex. 1001, 3:40–42, 4:33–35, 4:47–50, 5:37–40).” slip op. at 3

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “indefinite, contends, in the alternative, that “the Board erred in giving a special meaning to ‘about’ or ‘approximately’ in the context of the playback rate as being related to variations that may arise as a result of variable encoding. Petitioners submit that ‘about’ should be ‘approximately’ without imparting such special meaning to the term.” Reh’g Req. 6 (citing Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005); Duraflame, Inc. v. Hearthmark, LLC, 2013 U.S. Dist. LEXIS 21229, *23 (N.D. Cal. Feb. 14, 2013)). We disagree with Petitioner’s arguments that the term “about” in the claim phrase “about playback rate” requires further construction. We note that Petitioner’s rehearing request argument with respect to Chen, Chen FH, Carmel, and ISO-11172 teaching that “the media data elements is sent at a rate that matches the constant fill rate of a server buffer” does not depend on the revised construction of either “playback rate” or the construction of “about” in the claim phrase “about playback rate.” Thus, for purposes of this rehearing decision, we do not further construe “about playback rate”” slip op. at 4

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “Nathaniel Polish, Ph.D. (Ex. 1003 ¶ 63) in arguing that the Board erred in finding that Chen and the Chen FH did not “‘teach or suggest that the server buffer in Chen fills at a constant rate that matches the rate of data coming out of the buffer’” as recited in challenged claims. Reh’g Req. 7–9 (quoting Dec. 15.). The Petition, however, makes no reference to “the case where the stream buffer holds one frame of data” and argues only that in Normal mode the Chen server buffer empties at about playback rate to avoid overflow and underflow conditions. Pet. 19; see also Pet. 31 (citing claim 42 of Chen). In addition, neither the Petition nor Dr. Polish’s declaration cited therein discusses the case where one frame of data is in the Chen stream buffer and subsequently leaves the stream buffer, i.e., that one and only one frame of data is loaded into the stream buffer. Compare Req. Reh’g 9 with Pet. 19, 31; Ex. 1003 ¶ 63. The Board did not misapprehend or overlook arguments that were not presented. In addition, Petitioner’s arguments based on the size of the server buffer in Chen, as presented in the Petition, failed to persuasively show that the server buffer in Chen fills at a constant rate that matches the rate of data coming out of the buffer or that rate into its buffer is constant. Petitioner’s arguments that a one frame buffer “necessarily” shows that one frame is loaded into the Chen buffer is conclusory and not persuasive to the extent it was argued in the Petition.” slip op. at 6

  Claim construction§ 103 obviousness
  Patents in suitUS 8,185,611
• Eastman Kodak Co. / Agfa Corp. et al. v. CTP Innovations, LLCRehearing denied
  PTAB · Sep 21, 2016 · IPR2014-00790 · APJ Benjamin D M Wood · IPR · Rehearing

  The Board denied rehearing, leaving claims 1–3 not shown unpatentable because the petition did not establish that a plate-ready file was RIPed at the central service facility.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “(d) Rehearing. . . . 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 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “contrary, we understood that Petitioner relied on Jebens and Dorfman to teach the separate end user, central service, and printing company facilities. Final Dec. 23–24, 31. We noted, however, that neither Jebens nor Dorfman teaches generating a plate-ready file as we construed the term above, i.e., a file that has gone through prepress processing and that has been RIPed. Id. at 26, 32. We further noted that although Apogee teaches generating a plateready file from a PDF file, “Petitioner does not assert, much less point us to any evidence, that a person of ordinary skill in the art would have been motivated to combine Jebens and Apogee in such a way that a plate-ready file would have been produced at Jebens’ host facility . . . rather than at its printing facility.” Id. at 27–28; see also id. at 32. Recognizing that neither Jebens nor Dorfman discloses teaches generating a plate-ready file, we understand Petitioner’s argument to be that, to meet the claim language, Petitioner only needed to show that its proposed combinations teach generating at a central service facility files of any type. This is incorrect. It is not sufficient that the proposed combination generates any file, e.g., a PDF file that has not been RIPed, at a central service facility. RIPing is the final, and necessary, step in creating a plate-ready file. Thus, Petitioner needed to establish that the file alleged to be the plate-ready file generated at a central service facility had been RIPed at the central service facility. Petitioner relied on Apogee to teach RIPing a file to create a plate-ready file, not to teach that RIPing occurred someplace other than at the printer. That is why we determined that Petitioner’s showing was insufficient. Accordingly, we are not persuaded that we misapprehended Petitioner’s obviousness grounds.” slip op. at 9

  § 103 obviousness
  Patents in suitUS 6,611,349
• Eastman Kodak Co. / Agfa Corp. et al. v. CTP Innovations, LLCRehearing denied
  PTAB · Sep 21, 2016 · IPR2014-00791 · APJ Benjamin D M Wood · IPR · Rehearing

  The Board denied Petitioner’s rehearing request, leaving in place its determination that claims 10–14 were not shown unpatentable under either § 103 ground.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “A request for rehearing is not an opportunity to present new arguments or evidence that could have been presented in the petition. 37 C.F.R. § 42.71(d). Petitioner had the burden to identify and explain the specific evidence that supports its arguments in the Petition. 35 U.S.C. § 314(a). Thus, the Petition needed to identify “[h]ow the construed claim is unpatentable,” and identify “specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(4)–(5) (emphasis added). Here, Petitioner’s Rehearing Request relies on evidence—Apogee Excerpt 2—and argument—that Apogee teaches providing a plate-ready file to a remote printer—that were not presented in the Petition. In the Petition, Petitioner consistently relied on Apogee to teach generation of a plate-ready file. Pet. 27‒28, 39, 40‒41, 48‒49, 53, 57. In doing so, it relied on Apogee Excerpt 1. Petitioner did not, however, in either its Petition or Reply, argue that Apogee teaches providing a plate-ready file to a remote printer. Instead, it relied on Jebens or Dorfman to teach this limitation. Id. at 41, 57. Moreover, Petitioner failed to refer us to Apogee Excerpt 2, even after Patent Owner expressly disputed that Apogee teaches generating a plate-ready file anywhere other than “at a printing company facility.” PO Resp. 32. Accordingly, we are not persuaded to grant Petitioner’s Rehearing Request on the basis of this newly cited evidence and new argument.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “example, we expressly characterized Petitioner’s position regarding Jebens and Apogee to be that “one of ordinary skill in the art would have been motivated to incorporate Apogee into the Jebens printing system to allow for a printing facility to produce a printing plate for offset printing.” Final Dec. 26 (citing Pet. 29). We noted, however, that Jebens does not teach generating a plate-ready file as we construed the term above, i.e., a file that has gone through prepress processing and that has been RIPed. Id. at 25.5 We further noted that although Apogee teaches generating a plate-ready file from a PDF file, “Petitioner does not point us to any evidence—in Jebens, Apogee, or otherwise—that a person of ordinary skill in the art would have combined Jebens and Apogee in such a way that a plate-ready file would have been produced at Jebens’ host facilities or end user facility rather than at its printing facility.” Id. at 26; see also id. at 30 (“Petitioner has not shown that a person of ordinary skill in the art would have had reason to produce the plate-ready file anywhere other than at Dorfman’s production printing system”). We understand Petitioner’s argument to be that it only needed to show that the proposed combinations provide files of any type to a printer in order to meet the step of “providing a plate-ready file to the 5 We applied the same reasoning to the Dorfman/Apogee ground. Id. at 30. printing company facility.” This is incorrect. It is not sufficient that the proposed combinations provide any file, e.g., a PDF file that has not been RIPed, to a printer. RIPing is the final, and necessary, step in creating a plate-ready file. Thus, Petitioner needed to establish that the file that the proposed combinations provided to the printer had been RIPed before transmission. Neither Jebens nor Dorfman alone teaches this; further Petitioner relied on Apogee to teach RIPing a file to create a plate-ready file, not to teach that RIPing occurred someplace other than at the printer. That is why we determined that Petitioner’s showing was insufficient. Accordingly, we are not persuaded that we misapprehended Petitioner’s obviousness grounds.” slip op. at 8

  • BurdenNot shown unpatentable

    “A request for rehearing is not an opportunity to present new arguments or evidence that could have been presented in the petition. 37 C.F.R. § 42.71(d). Petitioner had the burden to identify and explain the specific evidence that supports its arguments in the Petition. 35 U.S.C. § 314(a). Thus, the Petition needed to identify “[h]ow the construed claim is unpatentable,” and identify “specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(4)–(5) (emphasis added). Here, Petitioner’s Rehearing Request relies on evidence—Apogee Excerpt 2—and argument—that Apogee teaches providing a plate-ready file to a remote printer—that were not presented in the Petition. In the Petition, Petitioner consistently relied on Apogee to teach generation of a plate-ready file. Pet. 27‒28, 39, 40‒41, 48‒49, 53, 57. In doing so, it relied on Apogee Excerpt 1. Petitioner did not, however, in either its Petition or Reply, argue that Apogee teaches providing a plate-ready file to a remote printer. Instead, it relied on Jebens or Dorfman to teach this limitation. Id. at 41, 57. Moreover, Petitioner failed to refer us to Apogee Excerpt 2, even after Patent Owner expressly disputed that Apogee teaches generating a plate-ready file anywhere other than “at a printing company facility.” PO Resp. 32. Accordingly, we are not persuaded to grant Petitioner’s Rehearing Request on the basis of this newly cited evidence and new argument.” slip op. at 7

  § 103 obviousness
  Patents in suitUS 6,611,349
• Dexcowin Global, Inc. v. Aribex, Inc.Rehearing denied
  PTAB · Sep 13, 2016 · IPR2016-00440 · APJ Daniel J Galligan · IPR · Rehearing

  The Board denied rehearing and maintained its denial of institution because Petitioner did not show the Board misapprehended or overlooked matters establishing a reasonable likelihood of proving the challenged claims unpatentable.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “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.” The party requesting rehearing has the burden of showing that the decision from which rehearing is sought should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d). 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. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); and In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). 1 To the extent that Patent Owner questions whether Petitioner’s Request for Rehearing was timely filed, we exercise our discretion to accept the delay, if any, and, for efficiency, consider Petitioner’s Request for Rehearing on the merits pursuant to 37 C.F.R. § 42.5(c)(3).” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “ANALYSIS Petitioner asserted claims 6, 10, 45–48, 50–53, 55–59, and 62–64 would have been obvious based on (1) Yu in view of Kobayashi and Schulze-Ganzlin and (2) Kobayashi in view of Yu and Grodzins. See Pet. 17–29. In our Decision Denying Institution, we explained why the Petition did not establish a reasonable likelihood Petitioner would prevail on its unpatentability challenges. Dec. 16–23. On rehearing, Petitioner argues our “Decision rested on false, erroneous assumptions of fact and/or law, which apparently caused the Board to reach a legally erroneous conclusion.” Req. Reh’g 1. We disagree.” slip op. at 3

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner

    “Thus, Petitioner’s purported reason that a person of ordinary skill in the art would have modified the device of Yu to have a structurally unattached detecting means is that, in dental applications, it is known to have a structurally unattached detecting means. Absent some evidence that the device of Yu is used in dentistry, the record does not support Petitioner’s assertion that such a modification would have been made to the device of Yu by a person of ordinary skill in the art. See Dec. 17–18.” slip op. at 4

  • Strike new argumentNew argument disregardedDecided for patent owner

    “On rehearing, Petitioner argues that we “overlooked two other Supreme Court KSR holdings, which when considering the Yu reference, would have yielded a decision favorable to Petitioner.” Req. Reh’g 6 (citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007)). We disagree that we overlooked any argument that was presented in the Petition. To the extent Petitioner on rehearing presents new rationales for its obviousness contentions, a request for rehearing is not an opportunity to supplement the Petition or submit new arguments that were not made in the Petition after the Decision has noted the deficiencies in the Petitioner’s original analysis. See 37 C.F.R. § 42.71(d). Even considering Petitioner’s new arguments on rehearing, we remain” slip op. at 5

  § 103 obviousnesscites KSR
  Patents in suitUS 7,224,769

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.