- 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 - PTAB · Nov 16, 2018 · IPR2017-02046 · APJ Kevin C Trock · IPR · Rehearing
The Board denied the petitioner’s rehearing request, leaving in place the denial of institution for claims 1–24 because it found no abuse of discretion in its analysis of “network access.”
RulingsRehearing decision- RehearingRehearing, deniedDenied
“What Petitioner describes, however, is not an “abuse of discretion,” but rather our determination based on the evidence and the ordinary and customary meaning of the term “network access.” As we explained in our Decision Denying Institution of Inter Partes Review, consistent with the “broadest reasonable construction” standard, “we assign claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention, in the context of the entire patent disclosure.” Inst. Dec. 6 (citing In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007)).” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“[i]ndependent Claims 1, 15, and 24 separately recite, and therefore, distinguish between, “a request from the user to access a content provider web site” and “network access.” These claims also require that the historic information retrieved for the user include “times and locations of network access and number of previous network accesses by the network access device. Id. (citing Ex. 1001, cols 12–14 (emphasis added)). Thus, in light of this record, we are unpersuaded that we erred. Instead, our decision was based on a reasoned analysis of the evidence and applied the ordinary and customary meaning of the term “network access,” as would be understood by one of ordinary skill in the art at the time of the invention, in the context of the entire patent disclosure. Therefore, Petitioner has failed to establish persuasively, that our decision not to institute an inter partes proceeding was based on an erroneous interpretation of law, not supported by substantial evidence, or an unreasonable judgment weighing relevant factors.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“but rather our determination based on the evidence and the ordinary and customary meaning of the term “network access.” As we explained in our Decision Denying Institution of Inter Partes Review, consistent with the “broadest reasonable construction” standard, “we assign claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention, in the context of the entire patent disclosure.” Inst. Dec. 6 (citing In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007)).” slip op. at 4
Claim constructionPatents in suitUS 7,657,594 - 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 - Dali Wireless Inc. v. Commscope Technologies LLCRehearing deniedPTAB · Jan 9, 2018 · IPR2017-01324 · APJ Terrence W Mcmillin · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution for claims 1–5 and 7–17 because the petition did not show the references taught the sample-rate limitation or provide adequate motivation to combine.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Petitioner’s new claim construction argument was not made in the Petition. See Pet. 10 (“Claim Construction”). In the Request for Rehearing, Petitioner does not cite to the Petition or make any showing that this argument was made explicitly or implicitly in the Petition. Req. Reh’g 4–6. As an initial matter, we could not have overlooked or misapprehended a claim construction that Petitioner did not argue in the Petition. Moreover, Petitioner’s only support for its newly proposed construction is the wording of the claims themselves and a claim differentiation argument based on dependent claim 6 which recites that the “sample rate is proportional to the bandwidth.” Id. Petitioner fails to persuade us that its proposed construction is supported adequately by the wording of the claims, the Specification, and the file history. We also conclude that Petitioner’s “somehow related to” construction of “based on” is unreasonable and overly broad. Based on this record, we decline to adopt Petitioner’s proposed construction. Thus, Petitioner fails to show that it argued this construction in the Petition or that its construction is demonstrably correct in view of the claim language, the Specification, the file history, or other evidence. Further, as stated in the Decision Denying Institution, we do not believe the express construction of “sample rate based on the bandwidth” is necessary for this Decision. See DDI 6. As shown below, Petitioner has failed to establish the applied art teaches or suggests basing the sample rate, directly on the bandwidth or that the sample rate is somehow related to the bandwidth.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We interpret claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b). In applying a broadest reasonable construction, claim terms generally are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Petitioner’s new claim construction argument was not made in the Petition. See Pet. 10 (“Claim Construction”). In the Request for Rehearing, Petitioner does not cite to the Petition or make any showing that this argument was made explicitly or implicitly in the Petition. Req. Reh’g 4–6. As an initial matter, we could not have overlooked or misapprehended a claim construction that Petitioner did not argue in the Petition. Moreover, Petitioner’s only support for its newly proposed construction is the wording of the claims themselves and a claim differentiation argument based on dependent claim 6 which recites that the “sample rate is proportional to the bandwidth.” Id. Petitioner fails to persuade us that its proposed construction is supported adequately by the wording of the claims, the Specification, and the file history. We also conclude that Petitioner’s “somehow related to” construction of “based on” is unreasonable and overly broad. Based on this record, we decline to adopt Petitioner’s proposed construction. Thus, Petitioner fails to show that it argued this construction in the Petition or that its construction is demonstrably correct in view of the claim language, the Specification, the file history, or other evidence. Further, as stated in the Decision Denying Institution, we do not believe the express construction of “sample rate based on the bandwidth” is necessary for this Decision. See DDI 6. As shown below, Petitioner has failed to establish the applied art teaches or suggests basing the sample rate, directly on the bandwidth or that the sample rate is somehow related to the bandwidth.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“With regard to the combination of Bellers and Farhan, in the Petition, Petitioner cited paragraphs 117–120 of the Bims Declaration (Ex. 1002) as providing support for combining the teachings of these references. Pet. 11. As discussed in the Decision Denying Institution, however, the cited paragraphs relate to different subject matter. DDI 14. In the Request for Rehearing, Petitioner now relies upon paragraphs 104–107 of the Bims Declaration. Req. Reh’g 14. Petitioner did not rely upon these paragraphs in the Petition, and Petitioner provides no explanation for this change of argument and evidence in its Request for Rehearing. Id. With regard to the combination of the teachings of Ichiyoshi and Farhan, in the Petition, Petitioner cited paragraph 254 of the Bims Declaration. Pet. 12. As discussed in the Decision Denying Institution, the cited paragraph relates to different subject matter. DDI 15. In the Request for Rehearing, Petitioner now relies upon paragraphs 255–258 of the Bims Declaration. Req. Reh’g 9. Petitioner did not rely upon these paragraphs in the Petition, and Petitioner provides no explanation for this change of argument and evidence in its Request for Rehearing. Id. As noted above, we could not overlook or misapprehend arguments that Petitioner did not make or evidence upon which it did not rely. Thus, contrary to Petitioner’s assertion, we did not overlook argument or evidence presented in the Petition relating to motivation to combine. Moreover, we have reconsidered Petitioner’s reasons to combine for the combinations of (1) Bellers and Farhan; and (2) Ichiyoshi and Farhan provided in the Petition (Pet. 11–12) in light of the additional citations provided in the Request for Rehearing and find, as we did in the Decision Denying Institution (Dec. 13–15) that Petitioner has failed to show a reasonable likelihood of establishing a reason to combine the relevant teachings of these references. As we indicated in the Decision Denying Institution (id.), the reasons to combine in the Petition for all of the asserted combinations of references were brief and conclusory. With regard to the combination of Bellers and Farhan, the Petition states, “[i]t was commonly understood that flexible ADCs could have a sampling rate adapted to the associated bandwidth of their analog input signal.” Pet. 11 (emphasis added). With regard to the combination of Ichiyoshi and Farhan, the Petition states, “POSITAS would have been motivated to combine Ichiyoshi’s sampling system with Farhan’s broadband communications system based on POSITA’s commonly understood knowledge that optimizing RF signal sampling rates can further improve bandwidth efficiency.” Pet. 12 (emphasis added). Neither the Petition nor the Bims Declaration provide adequate support for the assertions as to what was “commonly understood” by persons of skill in the art. The only support given in the Bims Declaration for these assertions are quotations from the art cited in the Petition (see Ex. 1002, ¶¶ 104, 255), which fall far short of establishing what was “commonly understood” as of the date of filing the” slip op. at 10
- BurdenNot shown unpatentable
“2. Bellers (Ex. 1006)3 Petitioner argues Bellers teaches “selecting the sample rate based on bandwidth.” Req. Reh’g 9–13. As noted by Petitioner (id. at 10–11), Bellers states: “[r]eceiver 101 includes a sampling mechanism 104 which samples the analog video input signal at a frequency modulated by or dependent upon the spatial frequency of the sampled content” (Ex. 1006, 3:11–14) and “[t]he present invention employs a sampling rate which is modulated based upon the spatial frequencies of the content being sampled. Higher sampling rates, and larger sample densities, are employed for content having high spatial frequencies while lower sampling rates are employed for content having low spatial frequencies” (id. at 4:14–19 (emphasis added)). Bellers expressly defines spatial frequencies, as follows: “[t]he spatial frequency or frequencies of an image are the rates of pixel change per unit distance, usually expressed in cycles per degree or radian.” Id. at 1:11–13. Thus, Bellers teaches modulating the sampling rate based on the rates of pixel change per unit distance. Petitioner has not shown that Bellers teaches or suggests a “sample rate selected based on the bandwidth.” Petitioner has not directed our attention, either in the Petition or the Request for Rehearing, 3 U.S. Patent No. 8,446,530 B2. to teachings or suggestions in Bellers of selecting the sample rate based on the bandwidth. 3. Ichiyoshi (Ex. 1009)4 In both the Petition (Pet. 83, 86, 90, 95–96) and the Request for Rehearing (Req. Reh’g 7–8), Petitioner argues the following passages in Ichiyoshi teach or suggest selecting the sample rate based on bandwidth. The sampling frequency fs is normally set to fs = NΔf where Δf represents a channel frequency interval. The sampling frequency fs is generated independently in the transmission device 81 and the reception device 82. Ex. 1009, 6:3–6. . . . signal combining circuit 91 includes a sampling timing generator 1 for generating a signal of the sampling frequency fs, and N A/D converter 3 for sampling N independent information signals with the sampling frequency fs . . . Id. at 6:9–13. These passages, however, do not relate to selecting the sample rate based on bandwidth. Petitioner provides no adequate explanation or other support in the Petition (Pet. 83) or the Request for Rehearing (Req. Reh’g 7– 8) for concluding these passages in Ichiyoshi teach or suggest selecting the sample rate based on bandwidth. Indeed, in the Petition, the Petitioner quoted these two passages, but failed to provide any explanation or to cite any further support for finding Ichiyoshi taught or suggested selecting the sample rate based on bandwidth. See Pet. 83. B. Reason to Combine” slip op. at 8
Claim construction§ 103 obviousnessPatents in suitUS 7,848,747 - Samsung Electronics Co., Ltd. v. Ibex PT Holding Co., Ltd.Rehearing deniedPTAB · Jul 24, 2017 · IPR2017-00102 · APJ Lynne E Pettigrew · IPR · Rehearing
The Board denied Samsung’s rehearing request, leaving in place the denial of institution for claims 1–5 based on its construction of “merge mode motion information decoding unit.”
RulingsRehearing decision- RehearingRehearing, deniedDenied
“For these reasons, Petitioner has not demonstrated error in our construction of “merge mode motion information decoding unit” and therefore has not shown the Decision should be modified.” slip op. at 5
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownDecided for patent owner
“claimed merge mode motion information decoding unit, Petitioner contends that only block 238 is necessary to perform the recited “decoding motion information” function. Req. 3–4. As explained in the Decision, however, motion information generating unit 238 selects a merge predictor from a list generated by merge candidate list generation unit 236 and then determines motion information of the selected merge predictor as motion information of a current block. Dec. 11 (citing Ex. 1001, 12:56–61). We are not persuaded by Petitioner’s attempt to equate the “determining” function performed by motion information generating unit 238 with the “decod[ing]” function recited in the claim, particularly when the ’855 patent refers to the entirety of Figure 5 (i.e., blocks 231–238) as a “merge mode motion information decoding unit.” See Req. 5.” slip op. at 4
Claim constructionPatents in suitUS 8,654,855 - Samsung Electronics Co., Ltd. v. Ibex PT Holding Co., Ltd.Rehearing deniedPTAB · Jul 24, 2017 · IPR2017-00101 · APJ Lynne E Pettigrew · IPR · Rehearing
The Board denied Samsung’s rehearing request, leaving in place the denial of institution for claims 1–5 based on its § 112(f) construction.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id.” slip op. at 2
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board own§112(f) appliesDecided for patent owner
“claimed merge mode motion information decoding unit, Petitioner contends that only block 238 is necessary to perform the recited “decoding motion information” function. Req. 3–4. As explained in the Decision, however, motion information generating unit 238 selects a merge predictor from a list generated by merge candidate list generation unit 236 and then determines motion information of the selected merge predictor as motion information of a current block. Dec. 11 (citing Ex. 1001, 12:56–61). We are not persuaded by Petitioner’s attempt to equate the “determining” function performed by motion information generating unit 238 with the “decod[ing]” function recited in the claim, particularly when the ’855 patent refers to the entirety of Figure 5 (i.e., blocks 231–238) as a “merge mode motion information decoding unit.” See Req. 5.” slip op. at 4
Claim constructionPatents in suitUS 8,654,855 - 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 - PTAB · Jan 31, 2017 · IPR2016-01261 · APJ Barbara A Parvis · IPR · Rehearing
The Board denied Focal IP’s rehearing request, finding no abuse of discretion or overlooked arguments concerning the prior-art combination or construction of “tandem switch.”
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we 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); 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
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Owner’s arguments in connection with Petitioner’s reasons for combining the asserted prior art references. Id. at 1–5. In its Request for Rehearing, Patent Owner repeats the same arguments as those in the Preliminary Response (Paper 11, “Prelim. Resp.”), which are based on Patent Owner’s alleged deficiencies regarding Chang’s teachings of a “call processing system.” Compare Req. Reh’g 2–5 with Prelim. Resp. 58–63. As we indicated in our Decision on Institution, we have considered all of Patent Owner’s arguments presented in the Preliminary Response regarding the Petitioner’s proposed combination of Archer and Chang, and determined that Petitioner had made a sufficient showing. Dec. 19–21. A request for rehearing is not an opportunity to express disagreement with a decision on previously made arguments. During trial, Patent Owner has an opportunity to resubmit in its Response arguments previously made in its Preliminary Response, along with any new arguments, explanations, and supporting evidence. As noted in the Scheduling Order, any arguments for patentability not raised in the Response will be deemed waived. Paper 20, 3.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageNot reached
“Although Patent Owner acknowledges that we considered the intrinsic record, specifically the prosecution history, Patent Owner asserts we misapprehended or overlooked Patent Owner’s contentions pertaining to an affirmative disclaimer in the Specification. Id. at 6–7. Patent Owner’s contentions, however, are new because in the Preliminary Response, the contentions pertaining to the disclaimer disclosed in the Specification were raised with respect to only the terms “switching facility” and “coupled to.” Prelim. Resp. 34–43. Furthermore, in its Request for Rehearing, Patent Owner attempts to import a negative limitation into the claims (Req. Reh’g 6), without taking into account “access tandem” and “hybrid switch” specifically identified in that prosecution history as being examples of the term “tandem switch” (Ex. 2005, 82). A request for rehearing is not an opportunity to submit new arguments. See 37 C.F.R. § 42.71(d). We could not have misapprehended or overlooked arguments that were not made previously in Patent Owner’s Preliminary Response.” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“on an item of extrinsic evidence. . . to modify the meaning of this term, as used in the intrinsic record.” Req. Reh’g 7. However, our Decision is based on the intrinsic record, including the Specification’s disclosure of “conventional PSTN tandem switch 16,” and “well-known, PSTN tandem switches.” Dec. 10 (citing Ex. 1001, 4:43–45). We, further, determined no express construction of the term “tandem switch” was needed because the 4 asserted prior art expressly discloses “tandem” switches. See, e.g., id. at 9– 12. slip op. at 4
Claim construction§ 103 obviousnessPatents in suitUS 8,457,113 - Ymax Corporation v. Focal IP, LLCRehearing deniedPTAB · Jan 31, 2017 · IPR2016-01260 · APJ Barbara A Parvis · IPR · Rehearing
The Board denied Focal IP’s rehearing request, finding no abuse of discretion in the institution decision’s claim constructions and no overlooked or misapprehended arguments.
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 we 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); 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
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Moreover, Patent Owner admits that Applicants introduced “switching facility”—a term that was not used in the original Specification—into the claims by Amendment to indicate that “switching facility” has broader scope than “tandem switch.” Id. at 38; Ex. 2005, 62, 82. Patent Owner, however, attempts to import from the prosecution history a negative limitation into the claims, i.e., that “switching facility” “is not itself an edge switch or edge device” (Prelim. Resp. 39–40) without taking into account “access tandem” and “hybrid switch” specifically identified in that prosecution history as being examples of the narrower term “tandem switch” (Ex. 2005, 82). As we indicated in our Decision on Institution, we have considered all of Patent Owner’s arguments presented in the Preliminary Response regarding the claim term “switching facility,” and determine that the broadest reasonable interpretation of the term is “any switch in the” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“term “tandem access controller,” although Patent Owner acknowledges that we considered a portion of the Specification in construing this term, Patent Owner asserts we analyzed this portion “in a vacuum” again pointing to its same arguments regarding the teachings of the invention and disclaimers disclosed in the Specification. Id. at 12. But Patent Owner’s contentions are new because in the Preliminary Response, the contentions pertaining to the teachings of the invention and disclaimers disclosed in the Specification were raised with respect to only the terms “switching facility” and “coupled to.” Prelim. Resp. 35–43. Additionally, Patent Owner mischaracterizes the Decision stating that we gave “‘tandem access controller’ the same unreasonably broad construction as the term ‘call processing system.’” Id. at 12. However, in our Decision, we determined no express construction of the 5 term “tandem access controller” was needed because the asserted prior art discloses the more limited example of a tandem access controller set forth in the Specification. See, e.g., Dec. 18.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successDecided for petitioner
“Patent Owner’s arguments regarding the failure of Petitioner to address the factors for obviousness of claims 2, 8, 11, and 15–19. Req. Reh’g 13–15. Patent Owner contends that “Petitioner does not even assert that Claims 11 or 16 should be rendered obvious by the purported Shtivelman-O’Neal combination.” Id. at 13. Patent Owner relies on what appears to be a typographical omission (Pet. 4) because, as we noted in our Decision (see, e.g., Dec. 28, 30–31), Petitioner presents contentions in this regard (see, e.g., Pet. 45, 56, 57, 63–68). Additionally, Patent Owner’s contentions are new, 6 as in its Preliminary Response, Patent Owner referred back to its anticipation contentions (Prelim. Resp. 60–61).” slip op. at 6
Claim construction§ 103 obviousnessPatents in suitUS 8,457,113 - Cisco Systems, Inc. v. Focal IP, LLCRehearing deniedPTAB · Jan 31, 2017 · IPR2016-01254 · APJ Barbara A Parvis · IPR · Rehearing
Denied Focal IP’s rehearing request; it did not show an abuse of discretion in construing terms for claims 38 and 65 at institution.
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 we 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); 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
- Strike new argumentNew argument disregardedDecided for petitioner
“misapprehended or overlooked its arguments in connection with the claim language regarding “switching facility.” Id. at 1–5. In its Preliminary Response (Paper 8, “Prelim. Resp.”), apart from the reproduction of a portion of claim 1, Patent Owner merely provides a single conclusory statement without any explanation—“[t]he independent Challenged Claims explicitly recite the functionality the ‘switching facility’ and ‘edge switch’ must have, and expressly distinguish that a ‘switching facility’ is not an ‘edge switch.’” Id. at 33–34. Patent Owner for the first time in its Request for Rehearing presents additional arguments regarding the claim language. Req. Reh’g 4–5. A request for rehearing is not an opportunity to submit new arguments. See 37 C.F.R. § 42.71(d). We could not have misapprehended or overlooked arguments that were not made previously in Patent Owner’s Preliminary Response.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Moreover, Patent Owner admits that Applicants introduced “switching facility”—a term that was not used in the original Specification—into the claims by Amendment to indicate that “switching facility” has broader scope than “tandem switch.” Id. at 36; Ex. 2005, 62, 82. Patent Owner, however, attempts to import from the prosecution history a negative limitation into the claims, i.e., that “switching facility” “is not itself an edge switch or edge device” (Prelim. Resp. 37–38) without taking into account “access tandem” and “hybrid switch” specifically identified in that prosecution history as being examples of the narrower term “tandem switch” (Ex. 2005, 82). As we indicated in our Decision on Institution, we have considered all of Patent Owner’s arguments presented in the Preliminary Response regarding the claim term “switching facility,” and determine that the broadest reasonable interpretation of the term is “any switch in the communication network,” consistent with Applicants’ remarks filed with that Amendment. Dec. 8–10; Ex. 2005, 82.” slip op. at 4
Claim constructionPatents in suitUS 8,457,113
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.