- 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 - 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 - 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 - Cisco Systems, Inc. v. Focal IP, LLCRehearing deniedPTAB · Jan 31, 2017 · IPR2016-01257 · APJ Barbara A Parvis · IPR · Rehearing
Denied Patent Owner’s rehearing request; the Board found no abuse of discretion in construing the challenged claims for purposes of institution.
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
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“Specification as to the claim construction of the term “controller.” Req. Reh’g at 2–11. We are not persuaded that we misapprehended or overlooked those arguments.” slip op. at 3
Claim constructionPatents in suitUS 8,457,113 - PTAB · Jan 24, 2017 · IPR2016-01262 · APJ Sally C Medley · IPR · Rehearing
The Board denied Focal IP’s rehearing request, finding no abuse of discretion in its claim constructions for claims 18, 21, 23, 25, 26, 28-31, 37, 38, 41, 45, and 46.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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 petitioner constructionDecided 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,” but nevertheless attempts to import a negative limitation from the preferred embodiment into the claims. Id. at 37; Ex. 2005, 62, 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. 8–9; Ex. 2005, 82.” slip op. at 4
Claim constructionPatents in suitUS 7,764,777 - Ymax Corporation v. Focal IP, LLCRehearing deniedPTAB · Jan 24, 2017 · IPR2016-01258 · APJ Sally C Medley · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no abuse of discretion in construing terms for claims 18, 21, 23, 25, 26, 28–31, 37, 38, 41, and 45.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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,” but nevertheless attempts to import a negative limitation from the preferred embodiment into the claims. Id. at 36; Ex. 2005, 62, 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. 7–8; Ex. 2005, 82.” slip op. at 4
Claim constructionPatents in suitUS 7,764,777 - PTAB · Jan 24, 2017 · IPR2016-01263 · APJ Joni Y Chang · IPR · Rehearing
The Board denied Focal IP’s rehearing request, finding no abuse of discretion in its institution-stage construction of claim 1’s terms.
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 › Threshold & procedure › Whether a term needs construction (O2 Micro)Term 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,” but nevertheless attempts to import a negative limitation from the preferred embodiment into the claims. Id. at 36; Ex. 2005, 62, 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. 8–9; Ex. 2005, 82.” slip op. at 4
- Strike new argumentNew argument disregardedDecided for petitioner
“We are not persuaded by Patent Owner’s contentions that we misapprehended or overlooked its arguments in connection with the claim language regarding “switching facility.” Id. at 1–5. In its Preliminary Response (Paper 12, “Prelim. Resp.”), apart from the reproduction of a portion of claim 1, Patent Owner merely provides a single conclusory statement without any explanation—“[c]laim 1 explicitly recites the functionality the ‘switching facility’ and ‘edge switch’ must have, and expressly distinguish that a ‘switching facility’ is not an ‘edge switch.’” Id. at 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 constructionPatents in suitUS 8,155,298
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.