• Commscope Technologies LLC v. Dali Wireless Inc.Rehearing denied
  PTAB · Jul 7, 2021 · IPR2020-01466 · APJ Melissa A Haapala · IPR · Rehearing

  The Board denied rehearing and left in place the denial of institution on claims 1–12 because petitioner showed no overlooked matter or abuse of discretion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “On rehearing, the burden of showing that the Decision should be modified lies with Petitioner, the party challenging the Decision. See 37 C.F.R. § 42.71(d). “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, a reply, or a sur-reply.” Id. “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).” slip op. at 2

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

    “establish Hettstedt discloses the “reconfiguring each remote radio unit.” See Dec. 15. We disagree that we overlooked any arguments presented in the Petition with respect to this limitation. In its analysis of the “reconfiguring each remote radio unit” limitation in the Petition, Petitioner relied on Hettstedt’s disclosure that the CMU controls the frequency allocation of each carrier to the remote radio heads “by changing the MAC address of a specific carrier packet to correspond no longer to a first remote radio head, but instead be addressed to a different radio head in a high traffic area.” See Pet. 22 (citing Ex. 1005, 5:10–11; 3:8–16; 4:35–39). Our Decision expressly addressed Petitioner’s arguments and evidence: After reviewing Petitioner’s analysis and supporting evidence, and Patent Owner’s response, we determine Petitioner fails to establish Hettstedt discloses “reconfiguring each remote radio unit” as we construe the claim (changing the configuration of each remote radio unit). Petitioner relies on Hettstedt’s disclosure that the CMU controls allocation of each carrier by changing the MAC addresses of carrier packets to disclose the recited “reconfiguring.” See Pet. 22. However, while changing the MAC addresses of carrier packets may result in an increase or decrease of the number of carriers assigned to a radio head by the CMU when routing traffic, it does not reconfigure (change) the configuration of the remote radio head itself. As we noted in our analysis of the claim construction of this term, the plain language of the claim requires that the remote radio head itself be reconfigured. Petitioner’s analysis does not address how Hettstedt discloses reconfiguring the remote radio unit itself.” slip op. at 3

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

    “We are unpersuaded that we misconstrued the phrase “reconfiguring each remote radio unit by.” Petitioner’s proposed claim construction in the Rehearing Request does not give patentable weight to the claimed “reconfiguring each remote radio unit.” Although we agree with Petitioner that claim 1 requires limitations [b] and [c] (i.e., “determining a load percentage” and “increasing or decreasing the number of carriers”), we disagree with Petitioner that the term “by” before limitations [b] and [c] would require what comes before “by” to have no patentable weight. Rather, as stated in our Decision: we adopt the district court’s construction and construe “reconfiguring each remote radio unit” to be “changing the configuration of each remote unit.” We additionally note that the claim term requires that it is the remote radio unit itself that is changed because the “remote radio unit” is the direct object of the verb “reconfiguring.” This is consistent with the specification of the ’338 patent, which describes reconfiguring the RRUs themselves. Dec. 9–10 (citing Ex. 1001, 4:1–13, 7:16–31, 8:8–21, 8:48–55, 11:28–39).” slip op. at 7

  • Strike new argumentNew argument disregardedDecided for patent owner

    “In its rehearing request, Petitioner now newly argues that we overlooked Hettstedt’s disclosure that remote radio heads are channel-selective in the uplink (i.e., column 5, lines 6–8 of Hettstedt). But Petitioner’s new analysis and explanation that Hettstedt’s teaches “reconfiguring each remote radio unit head” because its radio units are channel selective in the uplink was not presented in the Petition, and we could not have overlooked arguments or evidence not before us.2 See 37 C.F.R. 42.71(d). A petition must include “a detailed explanation of the significance of the evidence.” 37 C.F.R. § 42.22(a)(2). We are not persuaded of any error in our Decision that Petitioner failed to demonstrate a reasonable likelihood of prevailing in establishing that claim 1 is anticipated by Hettstedt. See Dec. 13–15. 2 We acknowledge Petitioner’s reliance on Hettstedt’s column 5, lines 6–8 on page 21 of the Petition; however, the Petition relied on this portion of Hettstedt for Element F of claim 1 (“configuring each remote radio unit to receive or transmit a respective subset of the plurality of carriers, each respective subset of the plurality of carriers including a number of carriers”), not for Element G of claim 1 (“reconfiguring each remote radio unit by . . .”). See Pet. 21. Petitioner’s Rehearing Request also points to reliance on Hettstedt’s column 5, lines 6–8 on page 10 of the Petition and in paragraphs of Dr. Acampora’s testimony (see Req. Reh’g 6–8 (citing Pet. 10; Ex. 1003 ¶¶ 46–54)), however (i) page 10 of the Petition and paragraphs 46–52 of Dr. Acampora’s testimony are not addressing the “reconfiguring each remote radio unit” limitation, and (ii) while paragraphs 53–54 of Dr. Acampora’s testimony addresses the “reconfiguring each remote radio unit” these paragraphs do not reference Hettstedt’s column 5, lines 6–8. See Pet. 10; Ex. 1003 ¶¶ 46–54.” slip op. at 4

  Claim construction
  Patents in suitUS 8,682,338
• Apple Inc. v. Uniloc 2017 LLCRehearing denied
  PTAB · Nov 18, 2019 · IPR2018-00884 · APJ Sean P O’Hanlon · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request and left intact the unpatentability of claims 1–17 and 23–25 under § 103.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. LEGAL STANDARD 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 burden of showing a decision should be modified on a request for rehearing lies with the party challenging the decision. Id.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner

    “suggested by the Examiner to express more clearly the applicants’ intention to convey that the network entity is not the intended end recipient device. Final Dec. 11–12. As we explained, our interpretation that “a network entity intercepting a signaling message associated with a call between a sender device of the message and an intended recipient device of the message” means that the network entity receives the message and the network entity is not the intended end recipient device is supported by the prosecution history: [T]his interpretation is consistent with the prosecution history of the application resulting in the ’552 patent, which reveals that the patent examiner suggested using the word intercepting in the claims to further clarify the applicants’ intention to convey that “the independent claims involve a network entity receiving and filtering messages that are sent between two end users.” Ex. 1002, 364–65 (first emphasis added); see also id. at 367–68 (distinguishing an intermediate entity intercepting a communication between two end user devices, as claimed, from a prior art reference in which the intended end recipient device (a service verification apparatus) receives and makes determinations regarding the signaling message). Id. Thus, rather than ignoring the amendment “as if it had never happened” (Req. Reh’g 3), we explained our interpretation that the Examiner suggested using “intercepting” to more clearly convey that the recited network entity is not one of the intended end user devices between which the signaling message is sent. Although Patent Owner argues that the Decision “d[oes] not appear to apply the presumption that the applicant’s decision to narrow claim 1 by amendment gave rise to a general disclaimer of the territory between the original claim and the amended claim” (Req. Reh’g 4 (citing Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 740, (2002)), Patent Owner does not identify the alleged “disclaimer of the territory,” and thus fails to specifically identify how we allegedly erred. See 37 C.F.R. § 42.71(d). Nor are we apprised that we misapprehended or overlooked any matter by Patent Owner’s assertions regarding the applicants’ comments about the amendment. See Req. Reh’g 4. Patent Owner characterizes the comments as “distinguish[ing] ‘intercepting’ in this context from the disclosure in a cited reference2 directed to merely receiving a message at a network entity.” Id. This characterization is incomplete, as the reference describes a “service request [that] is sent from the service-used apparatus directly to the service-provider apparatus, not to some other apparatus.” Ex. 1002, 368 (emphasis added). As we explained in the Decision, the applicants “distinguish[ed] an intermediate entity intercepting a communication between two end user devices, as claimed, from a prior art reference in which the intended end recipient device (a service verification apparatus) receives and makes determinations regarding the signaling message.” Final Dec. 12 (citing Ex. 1002, 367–68).” slip op. at 4

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “Patent Owner’s declarant is entitled to little weight: Dr. Easttom’s declaration testimony interpreting “receiving” fails to consider the full disclosure and prosecution history of the ’552 patent, as explained above, and, thus is not entitled to substantial weight. See, e.g. Ex. 2001 ¶¶ 8–9; see also PO Resp. 6 (citing same). Additionally, Patent Owner hindered or prevented Petitioner from cross-examining Dr. Easttom, further undermining the weight given to Dr. Easttom’s testimony. See, e.g., Pet. Reply 2–6; Exs. 1011–24. Final Dec. 12 n.9.” slip op. at 7

  • Strike new argumentNew argument disregardedDecided for petitioner

    “[t]he intercepting of call control server 112 at least includes seizing a message, which is not sent directly . . . from a client 104 to the server 112, 2 US 2003/0177363 (“Yokota”). and obstructing the message from progress while authentication processes are performed.” Req. Reh’g 5 (citing Paper 14, 4–5 (PO Sur-Reply)). Although Patent Owner cites to its Sur-Reply, we see no argument there regarding “seizing” and “obstruction.” As this was not an argument on which Patent Owner previously relied, it was not an argument that we could have misapprehended or overlooked. slip op. at 5

  Claim construction
  Patents in suitUS 8,539,552
• Amazon.Com, Inc. v. M2m Solutions LLCRehearing denied
  PTAB · Jun 6, 2019 · IPR2017-01893 · APJ David C Mckone · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, maintaining its claim construction and its finding that Kloba and Multer render claims 1–30 obvious.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. ANALYSIS The burden of showing that the FWD should be modified is on Patent Owner, the party challenging the FWD. See 37 C.F.R. § 42.71(d). In addition, “[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 a motion, an opposition, or a reply.” Id.” slip op. at 3

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

    “As explained above, the Final Written Decision concluded that the ordinary meaning of the claim language is broad enough to encompass the sending of communications, based upon the results of processing consumer usage information, containing management instructions. FWD 25. Patent Owner does not explain persuasively why that conclusion was incorrect. We maintain that conclusion here. In claim 1, for example, it is reasonable to read the phrase “based upon the results of having processed at least some of the received consumer usage information” as modifying either “configured to send communications” or “management instructions that cause the stored data content files of one or more assets to be automatically modified.” Id. at 24. Patent Owner does not explain persuasively why such language could only modify management instructions.” slip op. at 9

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

    “In any case, we addressed these limitations under the construction we adopted in the Final Written Decision, which is close to Patent Owner’s new construction, and found them taught by Kloba. FWD 51–55. Specifically, we found that Kloba’s figures 1I1 and 1X, and the corresponding description, showed that all instructions and objects, including the deltas (differences between objects currently in a client’s database and objects offered by content providers), are transmitted from the server to the client in one transmission during a synchronization, and that this transmission is based, in part, upon the results of processing the information collected through the interfaces of Figures 12 and 17. Id. at 52–54 (citing Ex. 1015, 8:7–19, 19:47, 19:51–25, 20:50–56; Pet. 33–34; Reply 8–9). We rejected Patent Owner’s argument that deltas were communicated separately from other synchronization information. Id.” slip op. at 15

  Claim construction§ 103 obviousness
  Patents in suitUS 8,577,359
• Amazon.Com, Inc. v. M2m Solutions LLCRehearing denied
  PTAB · Jun 6, 2019 · IPR2017-01892 · APJ David C Mckone · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, finding no error in its claim construction and concluding that Kloba and Multer render claims 1–30 obvious.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. ANALYSIS The burden of showing that the FWD should be modified is on Patent Owner, the party challenging the FWD. See 37 C.F.R. § 42.71(d). In addition, “[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 a motion, an opposition, or a reply.” Id.” slip op. at 3

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “In any case, we agree with Petitioner that the language of the claims is clear. As we stated in the Final Written Decision, according to the plain language of claims 1 and 20, it is the communication of management instructions, not the management instructions themselves, that is based upon the results of processing at least some of the received consumer usage information. FWD 17–18. We maintain that conclusion here. The natural reading of the claim language (claim 1, for example) is that “managing” is “based upon the results of having processed at least some of the received consumer usage information” and that the managing is, in turn, accomplished “by sending communications containing management instructions that cause the stored data content files of one or more assets to be automatically modified.” It is the managing, and thus the sending of communications containing management instructions, that is based on the results of having processed consumer usage information, not the management instructions themselves. To the extent Patent Owner still argues that the management instructions themselves must be based on the results of having processed consumer usage information in order to accomplish the recited management, that is not recited in the claims. Rather, the only limitation placed on the “management instructions” by the plain language of the claims is that they “cause the stored data content files of one or more assets to be automatically modified.”” slip op. at 8

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

    “Ex. 1015, 20:11–21. We found that this teaches communicating management instructions “based upon the results of processing at least some of the received consumer usage information,” as recited in claim 1. FWD 53 (“The server communicates its single set of instructions to the client as a result of processing all of the information it receives in the single-up transmission from the client. This includes deltas, requests for new channels, and changes to preferences.”); see also Ex. 1015, 8:7–19. This finding applies equally under Patent Owner’s new proposed construction, namely, “the server’s determination to communicate the claimed management instruction(s) in particular as part of a transmission sent to at least one consumer device asset is what needs to be ‘based upon the results of processing at least some of the received consumer usage information.’” PO CC Br. 4 (emphasis omitted). Specifically, the decision to communicate synchronization information (including deltas and new channels) from the server to the client is based, in part, on the server’s synchronization of the client’s channel information (including deltas and new channels) with the providers of the channels, which involves processing the requests for new channels and changes to preferences. Ex. 1015, 8:7–19, 20:1–21. Thus, Kloba and Multer (US 6,671,757 B1, Ex. 1016) render claims 1 and 20 obvious even under Patent Owner’s new proposed construction.” slip op. at 16

  Claim construction§ 103 obviousness
  Patents in suitUS 8,577,358
• Amazon.Com, Inc. v. M2m Solutions LLCRehearing denied
  PTAB · Jun 6, 2019 · IPR2017-01891 · APJ David C Mckone · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, maintaining that claims 1–30 are unpatentable as obvious over Kloba and Multer under the adopted claim construction.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. ANALYSIS The burden of showing that the FWD should be modified is on Patent Owner, the party challenging the FWD. See 37 C.F.R. § 42.71(d). In addition, “[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 a motion, an opposition, or a reply.” Id.” slip op. at 3

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “In any case, we agree with Petitioner that the language of the claims is clear. As we stated in the Final Written Decision, according to the plain language of claims 1 and 20, it is the communication of management instructions, not the management instructions themselves, that is based upon the results of processing at least some of the received consumer usage information. FWD 17–18. We maintain that conclusion here. The natural reading of the claim language is that “based upon the results of processing at least some of the received consumer usage information” modifies “communicate.”” slip op. at 7

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

    “In any case, we addressed these limitations under the construction we adopted in the Final Written Decision, which is close to Patent Owner’s new construction, and found them taught by Kloba. FWD 43–48. Specifically, we found that Kloba’s figures 1I1 and 1X, and the corresponding description, showed that all instructions and objects, including the deltas (differences between objects currently in a client’s database and objects offered by content providers), are transmitted from the server to the client in one transmission during a synchronization, and that this transmission is based, in part, upon the results of processing the information collected through the interfaces of Figures 12 and 17. Id. at 44–46 (citing Ex. 1015, 8:7–19, 19:47, 19:51–25, 20:50–56; Pet. 32–33; Reply 6–7). We rejected Patent Owner’s argument that deltas were communicated separately from other synchronization information. Id.” slip op. at 14

  Claim construction§ 103 obviousness
  Patents in suitUS 8,504,007
• Cisco Systems Inc. v. Uniloc USA, Inc., And Uniloc Luxembourg, S.A.Rehearing denied
  PTAB · Aug 3, 2018 · IPR2017-00198 · APJ Jeffrey S Smith · IPR · Rehearing

  The Board denied rehearing, finding no misapprehension or overlooked evidence supporting its determination that claims 1, 2, 5–10, 8–11, 12, and 18–23 were unpatentable.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “process disclosed by Haims. Req. Reh’g 3.1 Patent Owner’s challenge does not meet the standard set forth for a Request for Rehearing, which requires a party to “identify . . . the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). As Patent Owner did not address this issue in a motion, an opposition, or a reply, the Board could not have misapprehended Patent Owner’s argument.” slip op. at 3

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner

    “disclaimed the selection process disclosed by Haims, we find this contention unpersuasive. “[T]he PTO is under no obligation to accept a claim construction proffered as a prosecution history disclaimer, which generally only binds the patent owner.” Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 978 (Fed. Cir. 2014). Assuming arguendo that the doctrine of prosecution history disclaimer applies to this inter partes review, the purported disavowal of claim scope must be unambiguous, clear, and unmistakable to one of ordinary skill in the art. Elbex Video, Ltd. v. Sensormatic Elecs. Corp., 508 F.3d 1366, 1371 (Fed. Cir. 2007) (citations omitted). On the record before us, we conclude that the prosecution history does not evidence such an unambiguous, clear, and unmistakable disavowal. We read the cited portion of the prosecution history as presenting arguments to the Examiner to distinguish the claim from Haims based on the claim’s recited limitations. At most, applicant’s arguments during prosecution merely shed light on the claim limitations that applicant alleged Haims did not teach. We determine that one of ordinary skill in the art would not have understood applicant to have made a clear and unmistakable” slip op. at 3

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

    “Hamberg and Lamb. See Reh’g Req. 3–4. Therefore, Patent Owner’s allegation that Haims teaches the same selection process as Hamberg, even if true, improperly shifts focus from the combination of Hamberg and Lamb. Patent Owner alleges Petitioner does not provide proper reasoning to combine Hamberg and Lamb. Reh’g Req. 3–4 (arguing “Petitioner parsed” and “Petitioner argued”). These allegations fail to address what the FWD overlooks or misapprehends. In any event, the FWD addresses motivation and the combination. See, e.g., FWD 15–23.” slip op. at 4

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “Q. And you – do you agree or disagree that Max is participating in the chat session with the conference call requester? Mr. McDole: Objection, leading. A. I think it is – could kind of go either way. I certainly think that it could be considered participating in the sense that he’s receiving messages, not participating in the sense of sending. So I mean I think it is reasonable to say that it is participating, but – it is arguably the other way, too. It is not clear. Ex. 1017, 253 5–16. As an initial matter, Patent Owner, in the Request for Rehearing, does not identify where this purportedly ignored testimony was brought to our attention by Patent Owner. Nonetheless, Dr. DiEuliis, at best, testified that Max “could be considered participating,” but, in the same sentence, Dr. DiEuliis testified that Max is “not participating in the sense of sending.” Dr. DiEuliis continued, “I think it is reasonable to say that it is participating, but -- it is arguably the other way, too.” Although we did not cite to this testimony, such testimony is cumulative, because Dr. DiEuliis testified here, as in the cited testimony, that Max is not participating. Further, in our Decision, we evaluated the testimony of Dr. DiEuliis in light of Hamberg’s teaching that Max is listed as “absent” and noted as “sleep” to determine that Max is not participating. FWD 29.” slip op. at 5

  Claim construction§ 103 obviousness
  Patents in suitUS 7,853,000
• Amazon.Com, Inc. v. M2m Solutions LLCRehearing denied
  PTAB · Apr 13, 2018 · IPR2017-01895 · APJ Stacy B Margolies · IPR · Rehearing

  The Board denied M2M Solutions LLC’s rehearing request, leaving institution of review of claims 1–30 in place.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW 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. Upon a request for rehearing, the decision on a petition will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Decided for patent owner

    “either the parties’ claim construction disputes or a purported need to explicitly construe “consumer usage information” and “operational status information.” As Patent Owner acknowledges (id. at 13), in the Institution Decision, we stated that “Patent Owner also does not show persuasively on the current record why the phrase ‘consumer usage information’ is limited to information about the use of the particular consumer device asset that sends the information to the remote computer server platform.” Inst. Dec. 18. We also stated that “Petitioner shows sufficiently for institution purposes that Saylor discloses that use of a motion sensor is communicated from a control panel to the central security server.” Id. (citing Paper 2 (“Petition” or “Pet.”), 31–32; Ex. 1010, 5:22–38, 15:43–53). We thus addressed the scope of the claim term necessary for determining whether to institute. We determined that on the preliminary record Petitioner made a sufficient showing of unpatentability and that Patent Owner’s distinction over the prior art—based on a narrow reading of the phrase “consumer usage information”—was not persuasive on the preliminary record. Patent Owner proposed that the phrase means “information identifying the manner in which a consumer has used a consumer device asset.” Prelim. Resp. 14–15. Claims 1 and 20 of the ’358 patent, however, do not recite that the consumer usage information is information identifying the use of the claimed consumer device asset(s). Patent Owner did not show on the preliminary record how the ’358 patent limits the scope of the phrase such that a consumer’s (such as a homeowner’s) use of a motion sensor as disclosed in Saylor does not fall within the claim.” slip op. at 5

  Claim construction
  Patents in suitUS 8,577,358
• General Electric Co. v. University Of Virginia Patent FoundationRehearing denied
  PTAB · Sep 19, 2017 · IPR2016-00357 · APJ J John Lee · IPR · Rehearing

  The Board denied the Patent Owner’s rehearing request, leaving in place the final written decision holding all challenged claims unpatentable under § 102(b) and/or § 103(a).

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “DISCUSSION A party requesting rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters it contends were misapprehended or overlooked by the Board. Id.” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDecided for petitioner

    “The Final Written Decision acknowledged the disclosure in the ’182 Application of the objective of lengthening usable echo train durations while achieving desired image contrast characteristics. Final Dec. 22 (citing Ex. 1014, 4). We concluded this disclosure was similar to the disclosure of the key feature in Purdue Pharma. Id. (citing Purdue Pharma, 230 F.3d at 1327). UVAPF disputes that conclusion, arguing that the comparison with Purdue Pharma is not “meaningful,” because we purportedly overlooked the importance of lengthening the usable echo train duration while achieving comparable image contrast, and the relationship between this “primary objective” and the echo time ratio. Req. Reh’g 8–9. The Final Written Decision, however, specifically considered this “primary objective” described in the ’182 Application—including both the echo train duration and image contrast aspects. Final Dec. 22. We further concluded the alleged relationship between that key feature and the echo time ratio, which is not described in the ’182 Application, was insufficient to direct a skilled artisan to the recited echo time ratio limitations. Id. As we explained, the patent in Purdue Pharma similarly described a key feature and claimed a particular ratio related to that feature, but the court held the written description was inadequate because it failed to describe that ratio or ascribe any particular importance to that ratio. Id. at 20–22 (citing Purdue Pharma, 230 F.3d at 1326–28). The same is true of the claimed echo time ratio and the disclosure of the ’182 Application, which does not identify any such ratio much less describe its significance. Id. UVAPF has not identified any argument or evidence we have overlooked, nor has UVAPF shown our application of Purdue Pharma was erroneous.” slip op. at 5

  • Strike new argumentNew argument consideredDecided for petitioner

    “not have been considered because they were untimely. Req. Reh’g 9–11. GE did not cite the Purdue Pharma case until the Petitioner Reply. See Paper 27, 13–14. We disagree that GE’s arguments were untimely, however, because Purdue Pharma was cited to rebut arguments made by UVAPF in its Patent Owner Response. In the Patent Owner Response, UVAPF argued that a person of ordinary skill would have been able to derive the full range recited for the echo time ratio limitations based on an example provided in the ’182 Application. Paper 21, 55–58. GE argued in the Petitioner Reply that UVAPF’s position is precluded by Purdue Pharma, which held that whether a claimed ratio can be derived from the written description is immaterial if the disclosure does not describe the ratio or direct a person of ordinary skill to the ratio as a part of the invention. Paper 27, 13–14 (citing Purdue Pharma, 230 F.3d at 1328). Thus, Purdue Pharma was cited to respond directly to arguments made by UVAPF in its Patent Owner Response, and GE’s arguments based on Purdue Pharma were not untimely. In addition, UVAPF also contends GE untimely raised its arguments that the ’182 Application does not provide sufficient support for the “at least twice” aspect of the echo time ratio limitations. Req. Reh’g 11–13. To the contrary, GE argued in the Petition that the ’182 Application failed to adequately support the “at least twice” limitation. Pet. 11–12 (“[N]owhere does the ’182 application make a comparison of the [effective echo time] of a pulse sequence derived according to the disclosed method, much less delineate a range with a boundary of ‘at least twice’ that of any other echo time.”). Thus, GE’s arguments regarding the “at least twice” limitation were not untimely.” slip op. at 6

  § 112 disclosure
• Amazon.Com, Inc. / Amazon Web Services, LLC v. Personalized Media Communications, LLCRehearing denied
  PTAB · Dec 9, 2016 · IPR2014-01530 · APJ Trenton A Ward · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving its final written decision on claim 6 unchanged.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. ANALYSIS 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 2

  • BurdenDecided for petitioner

    “Decision that “[t]o prevail in its challenges to the patentability of the claims, a petitioner must establish facts supporting its challenges by a preponderance of the evidence.” Dec. 12 (citing 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d)) (emphasis added).” slip op. at 6

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

    “189:4–9)), require that these data modules must be part of a larger computer program. Even considering the disclosures in the specification cited by Patent Owner, we are not persuaded that the examples cited require that all data modules must be a discrete unit of a larger computer program. For example, disclosure in the specification that a data module containing the “particular cost-of-a-trimmed-pork-belly-unit” might be executed by a linked computer program to deliver personalized advertisements does not require that it must be a discrete unit of a larger computer program in all circumstances. See Req. 6–7. Yet, as we determined in the Final Written Decision, the specification does disclose that each type of module, including program modules, object modules, and data modules, is executed by a computer to perform a specific function. See Dec. 9 (citing Ex. 1003, 186:10–17, 188:35–37, 188:59–61). Accordingly, we modified our initial construction of “module” in the Decision on Institution as “a discrete unit of digital data” (Paper 8, 8) to incorporate “being executed by a computer to perform a specific function” (see Dec. 9–10). Patent Owner fails to establish persuasively how the examples of data modules in the specification are not met by a construction of “module” as “a discrete unit of digital data that is executed and/or processed to perform a specific function.”” slip op. at 5

  Claim construction
  Patents in suitUS 7,864,956
• Amazon.Com, Inc. / Amazon Web Services, LLC v. Personalized Media Communications, LLCRehearing denied
  PTAB · Aug 31, 2016 · IPR2014-01527 · APJ Karl D Easthom · IPR · Rehearing

  The Board denied the Patent Owner’s rehearing request and left in place its finding that claim 13 is unpatentable over Reiter.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “The applicable standard for a rehearing request is set forth in 37 C.F.R. § 42.71(d), which provides the following: A party dissatisfied with a decision may file a 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, opposition, or a reply. For the reasons provided below, we deny Patent Owner’s request for” slip op. at 2

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

    “Claim 13 refers to two remote sources: “[c] transmitting at least a portion of said data from said first remote data source to said receiver station” and “[d] transmitting from a second remote source to said receiver station a signal which controls said receiver station.” See FWD 6. The claim construction at issue applies to the second remote source, which requires transmitting a signal, as opposed to the first remote data source, which requires transmitting data. See FWD 6, 38–39, 59–60. In the Final Written Decision, we adopted Petitioner’s contention that the term “remote” in the “second remote source” encompasses the “remote” controls disclosed in the prior art of record, based in part on a description of such remote controls (as a “remote keyboard”) in the background of the ’243 patent. See FWD 20–23.2 These ubiquitous remote control devices, described in the ’243 patent and prior art at the time, constitute evidence of one plain meaning of the term “remote.” See id. For example, as part of our analysis of the “second remote source” with respect to the prior art, we found that “the ’243 patent . . ., consistent with the normal meaning of a ‘remote’ control device, does not preclude Summers’s “‘hand-held remote control device of any suitable known form.’” See FWD 59 (quoting Ex. 1010, 6:35–36).” slip op. at 4

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner

    “based on later-filed new matter describing a term of the claim)). Contrary to Patent Owner’s arguments, the Rehearing Request fails to distinguish PowerOasis. Reh’g Req. 15. Faced with Petitioner’s prima facie evidence that claim 13 is not entitled to priority to the earlier-filed ’490 patent (see Pet. 9–13 (citing Ex. 1005, 1043, 984–1044), see infra note 10), Patent Owner did not come forward and show with sufficient evidence or persuasive argument that the ’490 patent supports the disputed term with materially the same breadth that the ’243 patent supports it. See PO Resp. 13–149; PowerOasis, 522 F.3d at 1305–06 (holding that the “district court . . . correctly placed the burden on [patentee] PowerOasis to come forward with evidence to prove entitlement to claim priority [from a CIP application] to an earlier filing date”). Of course, notwithstanding “shifting burden[s]” of “going forward with evidence” regarding priority, and assuming Patent Owner came forward with “sufficient evidence” or “persuasive argument,” Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008) (“the phrase ‘going forward with evidence’ . . . mean[s] both producing additional evidence and presenting persuasive argument”), the burden of showing unpatentability, including a lack of priority, remains with 9 Patent Owner’s argument that “the Examiner [in the ’243 patent Reexamination, infra note 10] subsequently dropped all rejections of claim 13 [after finding a lack of priority to the ’490 patent] that relied on prior art references post-dating the 1981 priority date” does not mention that the Examiner ultimately deemed the issue moot because no intervening references were relied upon, as discussed below. See PO Resp. 13–14; FWD 32 (citing Ex. 1005, 139). 18 Petitioner. See id. at 1327–28 (discussing PowerOasis). Petitioner satisfies its burden of persuasion even if Patent Owner met its burden of going forward, because the weight of evidence shows that Patentee effectively broadened the scope of claim 13 relative the earlier-filed ’490 patent.” slip op. at 18

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for petitioner

    “basis for claiming the present subject matter.” Ex. 1004, 127 (emphasis added, quoting Applicant’s Supplemental Response and Amendment (Dec. 5, 1997)), see also id. at 76 (Supplemental Response cover sheet); FWD 30 (similar quotation). This disclaimer virtually duplicates an earlier response by Patentee making the same clear disclaimer. See Ex. 1004, 192 (corresponding to Applicant’s Amendment (July 8, 1997), id. at 143 (Amendment cover sheet)). Contrary to Patent Owner’s current characterization, this was not “a single mistake” (Reh’g Req. 9)––it was a concerted, well-reasoned argument that Patentee advanced on the two separately noted occasions during prosecution. See Ex. 1004, 127, 192. Patent Owner’s clear and repeated arguments stressing that Schneller does not apply, based on a lack of written description support, does not carry any evidentiary hallmarks of a mere “misstatement” or “obvious mistake,” contrary to the arguments now advanced by Patent Owner. See Reh’g Req. 3, 9. Advancing its disclaimer argument in a “detailed, consistent, and repeated” fashion in two separate Office Action responses (Ex. 1004, 127, 192) shows it was no mistake. See Springs Window Fashions LP, 323 F.3d 989, 995 (Fed. Cir. 2003) (“The statements distinguishing Pluber were detailed, consistent, and repeated. A reasonable competitor would have believed that the applicant’s disclaiming statements were not a mere mistake.”) (emphasis added). In other words, the Schneller doctrine, as Patentee persuasively twice argued during prosecution, required “a basis for claiming the present subject matter”––i.e., that doctrine requires written description support in the earlier 29 filed 1981 application (for the rejected claims) in order to support the double patenting rejection, and Patentee specifically stated it did not claim the priority benefit under 35 § U.S.C. 120. See supra note 14; Ex. 1004, 127, 192. In response to Applicant’s Supplemental Response (December 5, 1997) that included the disclaimer argument, the Examiner withdrew its Schneller based double patenting rejection. Ex. 1004, 63 (Final Office Action (Dec. 23, 1997), withdrawing the Schneller based rejection “[i]n view of further analysis and applicant’s arguments”); Ex. 1004, 212, 221 (Office Action (June 7, 1995) rejecting all of the original claims under Schneller, claims 3–33).” slip op. at 29

  Claim construction§ 102 anticipationcites Phillips · Markman
  Patents in suitUS 5,887,243

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.