- Google LLC v. Metarail, Inc.Rehearing deniedPTAB · Aug 25, 2025 · IPR2024-01271 · APJ Frances L Ippolito · IPR · Rehearing
The Board denied Google’s rehearing request, leaving institution denied for claims 1–21 because the petition did not show a reasonable likelihood that Belanger-Halevy taught limitation [1B].
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, a reply or sur-reply.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id. We address Petitioner’s rehearing arguments below.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“variable data database’ as required by claim 1.” Dec. 22. We discussed and quoted extensively from Petitioner’s expert declaration of Dr. Fox and Patent Owner’s expert declaration of Dr. Malek. Id. at 22–26 (citing Ex. 1003 ¶ 94; Ex. 2001 ¶¶ 68, 70). In reviewing the parties’ submissions, we found that: Halevy’s disclosures are consistent with Patent Owner’s arguments and Dr. Malek’s testimony that Halevy does not teach mapping fields to one another or mapping of fields to one another through SO-properties. For example, as described, in Figure 6 and Halevy as a whole, Halevy does not teach or suggest mapping or linking different keywords to one another, rather the keywords are mapped to SO-properties.” slip op. at 5
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Dr. Fox states that “Halevy’s disclosure of a form database in which corresponding fields from different forms on different websites map to the same SO-properties based on the SO-class identified for the form would have been recognized by a POSA as what the ’342 patent refers to as a universal variable map.” Ex. 1003 ¶ 98 (citing Ex. 1001, 17:48– 52). Based on this conclusory opinion, Dr. Fox reasons that Halevy’s form database is a “universal variable map” that must also link computer-readable field identifiers from multiple different websites to each other in the form database, because field identifiers are mapped to the same SO-properties associated with an SO-class.” Id. (emphasis omitted). We observe first that Dr. Fox’s conclusion is not supported by the cited portions of the ’342 patent. In column 17, lines 48–52, the ’342 patent explains that fields or variables may be part of forms, and variations of the data fields or variables “may include a source form, a destination form, a single source to many destination form, many sources to one destination form, cascading forms (e.g., a first form links to a second form which links to a third form, etc.) and so on.” Ex. 1001, 17:48–52. While this portion of the ’342 patent indicates that forms may include variations on fields or variables, it does not describe linking or mapping variables to one another. Ex. 2001 ¶ 75 (“[T]hat portion of the specification does not have anything to do with the definition of a “universal variable map.” Rather, it merely discusses different types of variables and fields that might appear in different types of forms.”). Dec. 28–29. We again referred to the disclosure of the ’342 patent to address evidence in the Petition relied upon by Dr. Fox to support Petitioner’s position. Id. We credited Dr. Malek’s testimony over Dr. Fox’s testimony because Dr. Malek underlined the distinctions between the asserted Belanger-Halevy prior art combination and limitation [1B]. Dec. 28–31. In short, any confusion applying the prior art Belanger-Halevy references to the claim limitation is rooted in the Petition. The Board denied the Petition because the Petition did not demonstrate a reasonable likelihood of showing that Belanger-Halevy discloses or teaches limitation [1B] of the ’342 patent.” slip op. at 5
NonePatents in suitUS 10,262,342 - Google LLC v. Metarail, Inc.Rehearing deniedPTAB · Aug 25, 2025 · IPR2024-01270 · APJ Frances L Ippolito · IPR · Rehearing
The Board denied Google’s rehearing request, leaving in place the denial of institution because the Petition did not show a reasonable likelihood that Belanger-Halevy teaches limitation [1C] of claims 1–26.
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, a reply or sur-reply.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id. We address Petitioner’s rehearing arguments below.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“[m]issing, however, from Halevy’s disclosure is any teaching or suggestion that a ‘plurality of computer-readable field identifiers’ are mapped ‘to one another’ as required by claim 1.” Dec. 22. We discussed and quoted extensively from Petitioner’s expert declaration of Dr. Fox and Patent Owner’s expert declaration of Dr. Malek. Id. at 22–26 (citing Ex. 1003 ¶ 104; Ex. 2001 ¶¶ 69, 71). In reviewing the parties’ submissions, we found that: Halevy’s disclosures are consistent with Patent Owner’s arguments and Dr. Malek’s testimony that Halevy does not teach mapping fields to one another or mapping of fields to one another through SO-properties. For example, as described, in Figure 6 and Halevy as a whole, Halevy does not teach or suggest mapping or linking different keywords to one another, rather the keywords are mapped to SO-properties. slip op. at 5
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Dr. Fox states that “Halevy’s disclosure of a form database in which corresponding fields from different forms on different websites map to the same SO-properties would have been recognized by a POSA as what the ’378 patent refers to as a universal variable map.” Ex. 1003 ¶ 108 (citing Ex. 1001, 17:42–46). Based on this conclusory opinion, Dr. Fox reasons that Halevy’s form database is a “universal variable map” that must also link computer-readable field identifiers (including parameter names) from multiple different websites to each other in the form database, because the field identifiers are mapped to the same SO-properties associated with an SO-class. Id. We observe first that Dr. Fox’s conclusion is not supported by the cited portions of the ’378 patent. In column 17, lines 42–46, the ’378 patent explains that fields or variables may be part of forms and variations of these data fields or variables “may include a source form, a destination form, a single source to many destination form, many sources to one destination form, cascading forms (e.g., a first form links to a second form which links to a third form, etc.) and so on.” Ex. 1001, 17:42–46. While this portion of the ’378 patent indicates that forms may include variations on fields or variables, it does not describe any linking or mapping of variables to one another. Ex. 2001 ¶ 76 (“[T]hat portion of the specification does not have anything to do with the definition of a “universal variable map.” Rather, it merely discusses different types of variables and fields that might appear in different types of forms.”). Dec. 28–29. We again referred to the disclosure of the ’378 patent to address evidence in the Petition relied upon by Dr. Fox to support Petitioner’s position. Id. We credited Dr. Malek’s testimony over Dr. Fox’s testimony because Dr. Malek underlined the distinctions between the asserted Belanger-Halevy prior art combination and limitation [1C]. Dec. 28–31. In short, any confusion applying the prior art Belanger-Halevy references to the claim limitation is rooted in the Petition. The Board denied the Petition because the Petition did not demonstrate a reasonable likelihood of showing that Belanger-Halevy discloses or teaches limitation [1C] of the ’378 patent.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Finally, with regard to the Reply and Sur-Reply submitted by the parties (Req. 9), we note that our Decision on Institution reviewed the parties’ discussion of claim construction, but ultimately determined that “[b]ased on our review of the preliminary record, we do not need to construe any terms expressly to reach our decision.” Dec. 11. Thus, we disagree with Petitioner that we misconstrued the mapping limitation where we did not find it necessary to construe any claim term for the purposes of our institution decision because we determined the Petition deficient for failing to meet our threshold requirements as discussed above and in detail in the Decision on Institution. See Req. 1–11.” slip op. at 7
Claim constructionPatents in suitUS 9,633,378 - Lutron Electronics Co., Inc. v. Geigtech East Bay LLCRehearing deniedPTAB · Oct 1, 2020 · PGR2020-00012 · APJ Frances L Ippolito · PGR · Rehearing
The Board denied Lutron’s rehearing request and maintained denial of institution because Colson did not show the claimed passage through the bracket.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“party challenging the decision,” and the challenging party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in a paper of record. 37 C.F.R. § 42.71(d) (2019). Because Petitioner seeks rehearing of our Decision denying the Petition, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“limitations regarding a “passage” and “opening,” our discussion focuses on claim 1, but our analysis applies equally to all of the challenged claims. Claim 1 is directed to a bracket configured to be coupled to a support surface and configured to support a roller window shade assembly. Ex. 1001, 10:20–23. The recited bracket includes “a side configured to bear against the support surface such that the bracket extends away from the support surface and is adjacent an end of the roller window shade assembly.” Id. at 10:24–27. Claim 1 also requires “a passage extending through the bracket from the side to an area of the bracket adjacent the roller window shade assembly[.]”” slip op. at 6
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Pet. 44. However, we observe that Colson makes no mention of a passage that wires 130 must pass through. Instead, Colson teaches that there are “openings” in the bracket and frame. Id. ¶ 31. And, Colson explicitly states that the openings are not shown in Figure 1. Thus, Colson, at most, teaches that wires pass through the bracket and frame, but does not specify where the openings are in Figure 1 or, otherwise, define the path of the passage. This is important because claim 1 requires a specific passage that extends “through the bracket from the side to an area of the bracket adjacent the roller window shade assembly.” Petitioner would have us assume that Colson’s two-dimensional Figure 1 read with paragraph 31 must disclose wires passing through a specific path through the bracket, as recited in the claims. However, we decline to make Petitioner’s proposed assumption because it is not supported by Colson or other evidence.” slip op. at 7
NonePatents in suitUS 10,294,717 - American National Manufacturing Inc v. Sleep Number Corporation F/K/A Select Comfort CorporationRehearing deniedPTAB · Sep 24, 2020 · IPR2019-00500 · APJ Scott A Daniels · IPR · Rehearing
The Board denied ANM’s rehearing request, but amended the Final Written Decision to clarify that the declarants testified the products “read on” the claims.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. THE REQUEST FOR REHEARING In pertinent part, 37 C.F.R. § 42.71(d) states: 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. Moreover, “[w]hen 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
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusOther
“copying and nexus is consistent with ANM’s position that neither Dr. Abraham nor Dr. Edwards states an opinion as to infringement. Dr. Edwards’s testimony explains his analysis of several versions of ANM’s source code and comparison with the claims of the ’154 patent, concluding that “at least Version 1.8, Version 1.97, and Version 2.0 of ANM’s source code read on the software-related limitations of claims 1–19 of the ‘154 Patent and claims 1–18 of the ‘747 Patent.” Ex. 2029 ¶ 41. Dr. Abraham performed a physical review of various ANM air controllers, and determined “that ANM’s products sold with Gen 3 Arco and Gen 3 Koge air controllers read on the claimed mechanical related elements of (i.e. structural components of) the ‘154 and ‘747 Patents.” Ex. 2027 ¶ 29. Thus, Dr. Abraham and Dr. Edwards testimony is more accurately that ANM’s software and air controllers “read on” on the claims of the ’154 patent.” slip op. at 3
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“Substitute Claims Proposed in the Amendment 23–41 Substitute Claims: Motion to Amend Granted 23–25, 30–31, 38–41 Substitute Claims: Motion to Amend Denied 27, 28, 32–37 Substitute Claims: Not Reached 26, 29” slip op. at 6
§ 103 obviousnessPatents in suitUS 9,737,154 - American National Manufacturing Inc v. Sleep Number Corporation F/K/A Select Comfort CorporationRehearing deniedPTAB · Sep 24, 2020 · IPR2019-00497 · APJ Scott A Daniels · IPR · Rehearing
Denied ANM’s rehearing request, but amended the Final Written Decision to clarify that the declarants testified that products read on the claims, not that they infringed.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. THE REQUEST FOR REHEARING In pertinent part, 37 C.F.R. § 42.71(d) states: 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. Moreover, “[w]hen 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
- Expert testimonyPatent owner expert creditedDecided for petitioner
“copying and nexus is consistent with ANM’s position that neither Dr. Abraham nor Dr. Edwards states an opinion as to infringement. Dr. Edwards’s testimony explains his analysis of several versions of ANM’s source code and comparison with the claims of the ’747 patent, concluding that “at least Version 1.8, Version 1.97, and Version 2.0 of ANM’s source code read on the software-related limitations of claims 1–19 of the ‘154 Patent and claims 1–18 of the ‘747 Patent.” Ex. 2029 ¶ 41. Dr. Abraham performed a physical review of various ANM air controllers, and determined “that ANM’s products sold with Gen 3 Arco and Gen 3 Koge air controllers read on the claimed mechanical related elements of (i.e. structural components of) the ‘154 and ‘747 Patents.” Ex. 2027 ¶ 29. Thus, Dr. Abraham and Dr. Edwards testimony is more accurately that ANM’s software and air controllers “read on” on the claims of the ’747 patent.” slip op. at 3
NonePatents in suitUS 8,769,747 - PTAB · Nov 20, 2019 · CBM2018-00006 · APJ Frances L Ippolito · CBM · Rehearing
The Board denied Patent Owner’s rehearing request, leaving intact its final written decision that claims 1–12 are unpatentable under § 101.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Under 37 C.F.R. § 42.71(d), “[t]he 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.”” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“on this particular issue is timely. Patent Owner has argued that “the institution should never have occurred” and that institution should have been denied outright. Id. However, our Decision on Institution (Paper 19, “Dec.”) was entered on June 22, 2018. Any request for rehearing of our determinations regarding the forum selection clause in that Decision should have been filed 14 days from the entry of that decision. 37 C.F.R. § 42.71(d)(1). As we noted in the FWD, after institution of the covered business method patent review (“CBM review”), the parties did not present any additional evidence or arguments regarding the forum selection clause issue. FWD 8 (“In the post-institution briefing, neither party has added arguments or evidence to the record regarding this issue.”). Indeed, the Patent Owner’s Response (Paper 28, “PO Resp.”) and Sur-Reply (Paper 39, “Sur.”) and Petitioner’s Reply (Paper 31, “Reply”) did not discuss forum selection. For completeness and clarity of the record, we reiterated our” slip op. at 3
- BurdenDecided for petitioner
“be instructive, contrary to Patent Owner’s assertion, that decision has not been designated precedential. Moreover, taking into consideration the discussion by the panel in Global Tel*Link, we are not persuaded that our determination misapprehended or overlooked any arguments or evidence in” slip op. at 9
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner
“the abstract idea. Nonetheless, we are not persuaded that this is clear error or deprived Patent Owner of the opportunity to defend its position. Indeed, Patent Owner does not explain why the “rules for playing a bonus wagering game” is substantively different from “allowing bonus wagers in a wagering game,” or, more importantly, the basis for Patent Owner’s contention that this is a “fundamental change.” See Reh’g Req. 11.” slip op. at 11
§ 101 eligibilityPatents in suitUS 7,451,987 - PTAB · Oct 10, 2019 · IPR2019-00538 · APJ Frances L Ippolito · IPR · Rehearing
The Board denied rehearing and maintained denial of institution because the evidence did not overcome the prior art’s disparagements for the asserted obviousness grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, the Board 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
“requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayNot shown unpatentable
“[a]lthough Farrington notes certain concerns with shaft-mounted systems, such as swing effects, aesthetics, and the attachment mechanism’s gripping capability, it was known in the art, and within the POSA’s ability, how to adequately address and alleviate those concerns. See EX1011, ¶5; EX1009, ¶¶95-96. For instance, Hackman teaches providing a shaft-mounted system that does not interfere with the golfer’s swing, see EX1012, 4:7- 30 (acknowledging need for golfer to “swing in a normal manner”), and the POSA would have been aware of readily-available accelerometers, gyroscopes, and other sensors, that were sufficiently light and compact so that any impact on a swing would be negligible. EX1009, ¶¶97-98. In addition, for aesthetics, the POSA would have been aware of the wide variety of choices known in the art and would have understood how to design the removable unit for a certain “look and feel”. Id., ¶99. As for grip concerns, Hackman demonstrates the numerous mechanical options available to the POSA that would allow IMU attachment to the club’s shaft without loosening or moving during a swing. See, e.g., EX1012, 10:10-18 (teaching frictional engagement that “is sufficient to hold the analyzer 10 in place during swinging”), FIGS. 1, 4, 7-10; EX1009, ¶¶100-01.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“evidence of disparagement. Pet. 71–73 (citing Ex. 1009 ¶¶ 203– 219). Neither Petitioner nor Dr. Paradiso explains persuasively, however, why a person of ordinary skill in the art would have been persuaded to ignore Kirby’s disparagement of the use of accelerometers for swing measurement. Id. Dec. 28 (emphasis added); see id. at 25 (noting that “Petitioner argues that a person of ordinary skill in the art would have had reason to use an accelerometer-based device like that taught by Kimber and optionally by Kirby, located adjacent to the grip of a golf club, as taught by Kirby, rather than adjacent to the head of the golf club, as taught by Kimber. Pet. 71–73.”) (emphasis added). Thus, as indicated in the Decision, the panel considered all of the arguments and evidence presented by Petitioner in the Petition. However, the panel determined that these arguments and evidence did not establish a reasonable likelihood that Petitioner would prevail in showing the unpatentability of the challenged claims.” slip op. at 9
§ 103 obviousnessPatents in suitUS 8,589,114 - PTAB · Oct 7, 2019 · IPR2019-00537 · APJ John R Kenny · IPR · Rehearing
The Board denied Petitioner’s rehearing request, leaving in place the denial of institution because the cited evidence did not overcome the references’ teachings against the proposed modifications.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A request for rehearing must identify specifically all matters the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundMotivation not foundDecided for patent owner
“As our Decision noted, however, the only support Dr. Paradiso cited for these propositions is a portion of Hackman and a portion of Exhibit 1017. Ex. 1008 ¶¶ 99–100; Dec. 17. In its Request for Rehearing, Petitioner identifies nothing from its evidence of the general knowledge of an ordinarily skilled artisan, background art, or reasonable expectation of success that provides any further support for these propositions. Req. Reh’g 4–7. Instead, Petitioner merely argues that an ordinarily skilled artisan would have recognized some benefits to using a shaft mounted system with a golf club and would have had a reasonable expectation of success for adding such a system to Farrington’s golf club. Id. None of that evidence, however, suffices to overcome Farrington’s disparagement. The mere fact that, for general purposes, externally mounted systems may have benefits or could be successfully added to Farrington’s golf club does not demonstrate that, as Dr. Paradiso testified, the weight, drag or other swing-related issues highlighted by Farrington associated with such a system would be readily overcome. Accordingly, we are not persuaded that we overlooked evidence that would overcome Farrington’s disparagement of using a swing analysis device mounted on the outside of its golf club. Background Art, and Reasonable Expectation of Success Petitioner argues that we overlooked evidence regarding the general knowledge of an ordinarily skilled artisan, background art, and reasonable expectation of success when we determined, for Ground 3 (based on Kirby and Kimber), that Petitioner made an insufficient showing to overcome Kirby’s disparagement of using accelerometers, gyroscopes and angular sensors for swing analysis and to overcome Kimber’s disparagement of placing a swing measurement device near the grip. Req. Reh’g 7–12. None of the evidence cited by Petitioner regarding the level of skill in the art, background art, or a reasonable expectation of success, however, would overcome Kirby’s and Kimber’s disparagements. Id. The mere fact that, for general purposes, accelerometers may have some benefits or that there would be a reasonable expectation that they could be successfully added to Kirby’s golf club does not mean that such a modification would avoid the speed and cost issues noted by Kirby or outweigh them. Similarly, the mere fact that for general purposes there may be some advantages to placing an accelerometer near a grip and reasonable expectation that one could be successfully added near a grip would not overcome Kimber’s disparagement of placing a swing measurement device near the grip or outweigh that concern. Accordingly, we are not persuaded that we overlooked evidence that would overcome Kirby’s disparagement of using accelerometers, gyroscopes and angular sensors for swing analysis and Kimber’s disparagement of placing a swing measurement device near the grip.” slip op. at 6
- BurdenNot reached
“Ground 3 (obviousness over Kirby and Kimber) that Kirby alone would have rendered claims 1, 6–7, 9–12, 14, 16, and 18–19 obvious. Reh’g Req. 2–3. Ground 4 (obviousness over Kirby, Kimber, and Nusbaum) that Kirby and Nusbaum by themselves would have rendered claim 13 obvious. Id. at 3. Petitioner, however, does not identify where in the Petition it contended that Kimber alone would have rendered claims 1, 6–7, 9–12, 14, 16, and 18–19 obvious or that Kirby and Nusbaum by themselves would have rendered claim 13 obvious. Id. at 2–3. To the contrary, according to the Petition, the basis for Ground 3 is “Obvious under §103(a) over the combination of U.S. Patent Application Publication 2007/0206837 (‘Kirby,’ EX1013) and Great Britain Patent Application Publication 2430890 (‘Kimber,’ EX1014).” Pet. 4. Similarly, the basis for Ground 4 is “Obvious under §103(a) over the combination of Kirby, Kimber, and Nusbaum.” Id. at 5. Accordingly, we are not persuaded that we overlooked any contention that Kirby alone or Kirby and Nusbaum by themselves would have rendered claims 1, 6–7, 9– 12, 13, 14, 16, and 18–19 obvious.” slip op. at 4
§ 103 obviousnessPatents in suitUS 8,831,905 - GN Hearing A/S v. Oticon A/SRehearing deniedPTAB · Apr 16, 2019 · IPR2017-01927 · APJ Terrence W Mcmillin · IPR · Rehearing
The Board denied Oticon’s rehearing request, leaving claims 2 and 7 unpatentable based on the Dodge and Saltykov showing.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Decision is set forth in 37 C.F.R. § 42.71(d), which provides that 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.” The party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“presented earlier in this proceeding—the Board improperly relied on a combination of the embodiments of Dodge. Request 2 (“The Board misapprehended the disclosure of various embodiments in Dodge and overlooked the complete lack of a motivation for the new combination of Dodge’s various embodiments.”), 4–5 (“The Board misapprehended the disclosure of Dodge and overlooked the lack of support in the record for a combination of multiple embodiments in Dodge’s figures.”), 6 (“There is no embodiment in Dodge that includes both a smooth, gradual curve on the first surface and an edge with a cross-sectional angle of less than ninety degrees.”), 12 (“The record is devoid of any support for an alleged combination of Dodge’s various embodiments.”). In its Request, Patent Owner fails to show that the Board misapprehended or overlooked these arguments earlier in the course of this proceeding. See generally Request. To the contrary and as noted above, Patent Owner failed to address the teachings of Figures 3 and 4 of Dodge and failed to address the combination of the teachings of the embodiments shown in those figures with the other teachings and embodiments in Dodge. Instead, Patent Owner ignored Figures 3 and 4 of Dodge in its Response to the Petition (see Paper 10, 29–34) and never contended it was improper to rely on Figures 3, 4, 5, and 6 of Dodge for teaching the elements of claims 2 and 7, as Petitioner did in its Reply (see Paper 14, 24–26) and the Board did in its Institution Decision (see Paper 7, 25–27). Patent Owner had notice that Figures 3 and 4 (and Figures 5 and 6) of Dodge were being relied upon and cited against claims 2 and 7 and, as also noted above, was given an opportunity file a Sur-Reply. In its Sur-Reply, Patent Owner acknowledged that Figures 3, 4, 5, and 6 of Dodge were being relied upon and cited against claims 2 and 7, but failed to provide any argument as to why Figures 3, 4, 5, and 6 of Dodge when considered together did not teach or suggest all the limitations relating to the claimed slit configuration. Paper 21, 23. At this stage of these proceedings, it is too late for Patent Owner to introduce and rely on new arguments.” slip op. at 6
§ 103 obviousnessPatents in suitUS 8,494,204 - Exocad GmbH / Exocad America, Inc. v. 3shape A/SRehearing deniedPTAB · Dec 27, 2018 · IPR2018-00785 · APJ Irvin E Branch · IPR · Rehearing
The Board denied the rehearing request and maintained its denial of institution, finding no abuse of discretion in applying § 325(d) to the Malfliet-based challenges.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” A request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). Further, “[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 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“trial, under 35 U.S.C. § 325(d), the Decision (Paper 8) relies on the premise that the Examiner already considered Applicants’ argument.” Req. 1, 5–7. This is inaccurate. In our Decision, we determined that “the Office already considered Malfliet extensively during the prosecution of the challenged claims.” Dec. 12. Importantly, we determined that “Petitioner has not articulated sufficient reasoning for us to question the Examiner’s previous consideration of Malfliet.”1 Id. We accordingly “decline[d] to consider grounds based upon Malfliet again.” Id. Our Decision, therefore, was not premised solely on whether the Examiner had already considered Applicants’ arguments, as Petitioner argues, but rather was based on Petitioner’s failure to explain sufficiently on the preliminary record why we 1 International Publication Number WO 2008/128700 A1 to Malfliet et al., published October 30, 2008 (Ex. 1006, “Malfliet”) should institute an inter partes review when, as Petitioner did not dispute, the Examiner had considered Malfliet during prosecution. Id. at 9–10 (citing Ex. 1004, 834–835). Indeed, in the Petition, Petitioner acknowledged that, “[d]uring prosecution, the Examiner rejected all claims based on Malfliet.” Pet. 3 (citing Ex. 1004 at 825–834).” slip op. at 3
Discretionary denialPatents in suitUS 9,336,336
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.