- 3shape A/S / 3shape Inc. v. Align Technology, Inc.Rehearing deniedPTAB · 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 denialPatents in suitUS 9,615,901 - 3shape A/S / 3shape Inc. v. Align Technology, Inc.Rehearing deniedPTAB · 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 denialPatents in suitUS 8,638,448 - Panasonic Avionics Corp. v. Linksmart Wireless Technology, LLCRehearing deniedPTAB · 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 deniedPTAB · 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 denialPatents in suitUS 8,638,447 - 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 - Delphi Technologies, LLC v. Microchip Technology Inc.Rehearing deniedPTAB · Dec 11, 2018 · IPR2017-00864 · APJ Daniel N Fishman · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1, 3–5, 7–9, 11–15, and 18–21 unpatentable because their scope did not require the buffer to store the specified information.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“party challenging the decision,” and, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the record. 37 C.F.R. § 42.71(d). III. DISCUSSION Patent Owner’s Request does not identify any arguments that we “misapprehended or overlooked” let alone “specifically identify” all such matters. Thus, Patent Owner’s Request fails to comply with our rules. Despite this failure of Patent Owner’s Request, we address the substance of Patent Owner’s argument as follows.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“misapprehended any argument. Furthermore, we are unpersuaded that our Decision was in error regarding independent claims 1, 3, 7, 18, and 23 because these claims have a different scope than claims 17, 22, and 24. As Patent Owner correctly noted, our construction of “dedicated USB connection” is “a USB connection that may include some shared physical communication path and includes a buffer for maintaining dedicated address, configuration and response information for the connection.” Dec. 33. Thus, a dedicated USB connection must include a buffer that is capable of storing/maintaining “dedicated address, configuration and response information” regardless of whether such data is actually stored/maintained therein.” slip op. at 3
Claim constructionPatents in suitUS 7,523,243 - PTAB · Oct 17, 2018 · IPR2018-00651 · APJ Meredith C Petravick · IPR · Rehearing
The Board denied rehearing and denied institution because Petitioner did not show a reasonable likelihood of prevailing on challenged claims 23–25, 33, 35, 36, 39, 40, 42, and 44.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A. Standard of Review When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). 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.” 37 C.F.R. § 42.71(d). “The burden of showing a decision should be modified lies with the party challenging the decision.” Id.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Statute, however, provides that: [t]he Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition. 35 U.S.C. § 314(a) (emphasis added). Here, we have determined that the information presented in the Petition fails to show a reasonable likelihood that Petitioner would prevail with respect to at least one of challenged claims 23–25, 33, 35, 36, 39, 40, 42, and 44. Pursuant to § 314(a), we may not institute an inter partes review in this proceeding.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“in light of the disclosure at column 6, lines 32–37 of the ’296 Patent, but still determine that Petitioner’s proposed construction is unreasonably broad. Petitioner’s reliance on the disclosure at column 6, lines 32–37 is misplaced. When reviewed in a wider context, the ’296 Patent’s disclosure is consistent with our construction adopted in the Decision. Starting at column 5, line 58, the ’296 Patent describes a process or procedure “[f]or a given position of breast 102, such as a positon that is the same or similar to the CC position for a conventional mammogram.” The process or procedure includes moving the x-ray source, relative to the immobilized breast, to different angular positons, including conventional mammogram imaging positions and tomosyntheseis imaging positions. See Ex. 1003, 5:58–21. The ’296 Patent then states: Thus, two types of images can be produced in accordance with the currently preferred embodiment while breast 102 is immobilized in the same position. One type is the same or is at least similar to a conventional mammogram, which can be read and interpreted in the manner familiar to health professionals. The other type is tomosynthetic images reconstructed from the image data and displayed either separately or as an adjunct to the display of the image that is the same or similar to a conventional mammogram. The process described above for one position of breast 102 can be repeated for another position. For example one process can be for a breast position in a manner that is the same or similar to positioning the breast for a conventional CC view, the breast can then be released, the support 204 and C-arm 200 rotated to other angular positions and the breast repositioned in a manner that is the same and similar to the position for an MLO view, and the procedure repeated. Ex. 1001, 6:21–37 (emphases added). Consistent with our statement in the Decision that “[t]he ’296 patent does not describe decompressing the breast between imaging positions” (Dec. 9), but describes decompressing the breast between processes or procedures, in other words between exams. Id. at 6:32–37. As can be seen from the discussion above, the ’296 Patent discloses moving the source to conventional mammogram imaging positions and tomosynthesis imaging positions while the breast remains immobilized during one process, procedure, or exam. Id. at 5:58–6:37.” slip op. at 5
Claim constructionPatents in suitUS 7,831,296 - RPX Corporation v. Spycurity LLCRehearing deniedPTAB · Oct 10, 2018 · IPR2018-00304 · APJ Aaron W Moore · IPR · Rehearing
The Board denied RPX’s rehearing request, finding no abuse of discretion in denying institution because the Petition lacked a reasoned basis to substitute Dial-Up for Crawford’s call-back connection.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters that were misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id. 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 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); The Arnold Partnership 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
“Why the Petition Failed The Decision found that Petitioner’s combination failed due to the “absence of articulated, rational reasoning to support the substitution of the Dial-Up method of connection for the ‘call back’ described in Crawford.” Decision 14. In other words, the Decision found that Petitioner failed to provide a sufficient rationale for substituting the Dial-Up connection for the conventional, point-to-point modem connection described in the Crawford embodiment that used the ring pattern to cause the user system to call the backup system. That problem remains, as the Request for Rehearing does not address the issue. The combination thus fails before one reaches the question of where in the combination a connection to the Internet might be found. This alone is a sufficient reason to deny the Request for Rehearing.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Why the Petition Failed The Decision found that Petitioner’s combination failed due to the “absence of articulated, rational reasoning to support the substitution of the Dial-Up method of connection for the ‘call back’ described in Crawford.” Decision 14. In other words, the Decision found that Petitioner failed to provide a sufficient rationale for substituting the Dial-Up connection for the conventional, point-to-point modem connection described in the Crawford embodiment that used the ring pattern to cause the user system to call the backup system. That problem remains, as the Request for Rehearing does not address the issue. The combination thus fails before one reaches the question of where in the combination a connection to the Internet might be found. This alone is a sufficient reason to deny the Request for Rehearing.” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claim Construction Petitioner’s argument that we construed the claims to “require[e] that the connection between the host system and the Internet itself be made via the Internet” (Req. Reh’g 2) is incorrect. Petitioner appears to confuse the fact that we found the claims satisfied by such an arrangement in the combination to mean that we required the claims to have that arrangement. Our Decision understood the Petition’s combination to contemplate Dial-Up IP being used to connect to the Internet and then to the backup service over the Internet (e.g., via relay.cs.net). See Decision 12. That understanding was drawn from the Petition, which states, for example, “Crawford, in view of Dial-Up IP, teaches creating a connection between the customer computer . . . and the Internet (through an ISP server) using a communication device . . . connected to the host system.” Petition 34 (emphasis added). Critically, however, the arrangement considered in the Decision included a “connection between the host system and the Internet,” as claimed, specifically an Internet link between the user and the backup system. Because we found the Internet connection claim language would be satisfied in the version of the combination we considered, Petitioner has no reasoned basis for complaining about the constructions.” slip op. at 4
Claim construction§ 103 obviousnessPatents in suitUS 5,809,118 - Nikon Corporation v. ASML Netherlands B.V., Carl Zeiss AGRehearing deniedPTAB · 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 obviousnessPatents in suitUS 7,209,167 - Wombat Security Technologies v. Phishme, Inc.Rehearing deniedPTAB · Jul 20, 2017 · PGR2017-00009 · APJ Jennifer S Bisk · PGR · Rehearing
The Board denied Wombat’s rehearing request, leaving institution of PGR denied because the petition did not show the patent was eligible for PGR.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“DISCUSSION The applicable standard for granting a request for rehearing is abuse of discretion. 37 C.F.R. § 42.71(c). The requirements of a request for rehearing are set forth in 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.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“sufficiently shown that the ’038 patent was eligible for post-grant review. Inst. Dec. 8–13. Specifically, we found deficient Petitioner’s contention that the challenged claims were not entitled to the benefit of the filing date of Application No. 13/785,252 (“the ’252 application”) to which the ’038 patent claims priority as a continuation-in-part. Inst. Dec. 8–13. This finding was based on the following deficiencies of the Petition: (1) the Petition did not discuss the relevant disclosure of the application to which the ’038 patent claims priority—Application No. 13/785,282 (“the ’252 application”)—as originally filed, citing instead to the ’940 patent, which issued from the ’252 application; (2) the Petition did not address the Examiner’s statements in the Notice of Allowability that “[t]he present application is being examined under the pre-AIA first to invent provisions”; and (3) Petitioner did not satisfy its burden to show that a person of ordinary skill in the art would not have understood the inventor to have possession of “providing feedback to the individual confirming that the identified email was a simulated phishing attack” (“the feedback limitation”). Id. For the third deficiency, we found the feedback limitation supported by at least paragraphs 5 and 18 of the ’252 application, which discuss training individuals who receive simulated phishing attacks such that users are better able to recognize and thwart a real phishing attack. Id. at 11–12.” slip op. at 2
- BurdenDecided for patent owner
“being recited expressly in the ’252 application it “satisf[ied] its burden to establish that it was more likely than not that the ’038 patent was not entitled to the filing date of the [’252 application].” Reh’g Req. 3. In Blue Calypso, LLC v. Groupon, Inc., however, the Federal Circuit explicitly found that identifying a limitation as not being recited expressly in the specification at issue was not enough to support a finding of lack of written description. 815 F.3d 1331, 1345 (Fed. Cir. 2016). The Federal Circuit explained that it was “troubled by the fact that the Board did not cite any evidence other than the fact that the terms were not present in the specification to support its finding,” concluding this placed “undue weight on the absence of the [exact] terms appearing in the specification.” Id. at 1345–46. Petitioner’s burden, therefore, is not established simply by pointing out that the ’252 application does not explicitly state the feedback limitation.” slip op. at 4
- Disclosure Requirements (§112) › Written description (Ariad)Not reached
“being recited expressly in the ’252 application it “satisf[ied] its burden to establish that it was more likely than not that the ’038 patent was not entitled to the filing date of the [’252 application].” Reh’g Req. 3. In Blue Calypso, LLC v. Groupon, Inc., however, the Federal Circuit explicitly found that identifying a limitation as not being recited expressly in the specification at issue was not enough to support a finding of lack of written description. 815 F.3d 1331, 1345 (Fed. Cir. 2016). The Federal Circuit explained that it was “troubled by the fact that the Board did not cite any evidence other than the fact that the terms were not present in the specification to support its finding,” concluding this placed “undue weight on the absence of the [exact] terms appearing in the specification.” Id. at 1345–46. Petitioner’s burden, therefore, is not established simply by pointing out that the ’252 application does not explicitly state the feedback limitation.” slip op. at 4
§ 112 disclosurePatents in suitUS 9,398,038
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.