- PTAB · Dec 8, 2020 · IPR2020-00339 · APJ Kristi L R Sawert · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, finding no abuse of discretion in instituting review of the challenged claims based on its preliminary construction of “conversational flow.”
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters it believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“the sequence of packets that are exchanged in any direction as a result of an activity (for instance, the running of an application on a server as requested by a client), where some conversational flows involve more than one connection, and some even involve more than one exchange of packets between a client and a server.” slip op. at 3
Claim constructionPatents in suitUS 6,954,789 - Satco Products, Inc. v. Seoul Semiconductor Co., Ltd.Rehearing deniedPTAB · Nov 9, 2020 · IPR2020-00151 · APJ Jeffrey W Abraham · IPR · Rehearing
The Board denied Satco’s rehearing request, leaving in place the denial of institution on claims 1–7 because the petition did not adequately show Wang disclosed the different-shape limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Petition or rely only on Figure 8. Rather, after considering Petitioner’s citation to and cursory discussion of Figures 8, 9, and 11 in the Petition, we determined Petitioner’s evidence suffered from deficiencies that prevented Petitioner from satisfying its burden of proof in the Petition. Notably, in its Rehearing Request, Petitioner does not direct us to any actual comparison of the shapes of top and bottom portions of Wang’s separation region that we overlooked in the Petition. Instead, Petitioner presents new images and new arguments that these images represent the shape of the top and bottom portions of Wang’s separation regions, as derived from Figures 8, 9, and 11. Req. Reh’g 8–11. A request for rehearing, however, is not an opportunity to present new arguments or evidence. See 37 C.F.R. § 42.71(d).” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In our Decision, we determined that Petitioner failed to demonstrate adequately that Wang discloses the different shape limitation. Dec. 17–19. In particular, we noted that the images from Wang Petitioner relied upon offered insufficient information to determine whether the separation region between first and second top leads has a different shape than the separation region between the first and second bottom leads. Dec. 17–19. For example, we stated that Petitioner never presented views comparing the top and bottom portions of the separation region to demonstrate adequately that the top and bottom portions have different shapes. Dec. 19.” slip op. at 3
- BurdenDecided for patent owner
“Petition or rely only on Figure 8. Rather, after considering Petitioner’s citation to and cursory discussion of Figures 8, 9, and 11 in the Petition, we determined Petitioner’s evidence suffered from deficiencies that prevented Petitioner from satisfying its burden of proof in the Petition. Notably, in its Rehearing Request, Petitioner does not direct us to any actual comparison of the shapes of top and bottom portions of Wang’s separation region that we overlooked in the Petition. Instead, Petitioner presents new images and new arguments that these images represent the shape of the top and bottom portions of Wang’s separation regions, as derived from Figures 8, 9, and 11. Req. Reh’g 8–11. A request for rehearing, however, is not an opportunity to present new arguments or evidence. See 37 C.F.R. § 42.71(d).” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Wang’s figures to the claim language itself in our Decision. In doing so, we determined that Wang’s figures provided insufficient information to determine whether Wang discloses the “different shape” limitation. Dec. 17–19. Our discussion of the figures in the ’919 patent merely highlighted the deficiencies in Petitioner’s reliance on the figures in Wang by providing an example of information that could be used to determine whether the top and bottom portions of the separation regions have different shapes. At no point did we import any specific features from the Specification into the “different shape” limitation or “require shapes similar to the ‘exemplary embodiment’ of FIG. 5A of the ’919 patent.” Req. Reh’g 4. Rather, we merely compared the type of information presented in the ’919 patent with the type of information presented in Wang to reinforce our determination that Petitioner failed to direct us to evidence in Wang that would allow a person of ordinary skill in the art to determine that Wang discloses a separation region that has a different shape between the top leads and the bottom leads. In view of the foregoing, we are not persuaded that we committed any legal errors, or that we narrowed the plain meaning of “different shape.”” slip op. at 7
Claim constructionPatents in suitUS 9,978,919 - Amazon.Com, Inc. v. Rensselaer Polytechnic InstituteRehearing deniedPTAB · Oct 30, 2020 · IPR2019-01069 · APJ Trevor M Jefferson · IPR · Rehearing
The Board denied Amazon’s rehearing request, leaving institution denied for claims 9–21 because the Petition did not show a reasonable likelihood of prevailing on its obviousness grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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) (emphasis added). When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision. Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (internal citations omitted).” slip op. at 3
- Prior constructionPrior construction adoptedDecided for patent owner
“system, e.g. how the system interprets words or phrases.” Apple IPR 6. Thus, the Apple IPR Board adopted Patent Owner’s argument that as applied to the prior art, the term “case” in “case information” requires “uses of the system contemplated by the invention, not uses of any other natural language processing system.” Apple IPR 6. The Board rejected that such prior use was found in rules regarding how the system interprets current word or phrase input. Id. We find that the Apple IPR discussed a user’s selection among possible choices, but also addressed that the “case” required use of the system of the ’798 invention. Id. at 5–6. Thus, we do not agree we misapprehended the meaning of the claim language. Req. Reh’g 2.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“to establish a reasonable likelihood of prevailing, in showing that claims 9– 21 would have been obvious over Livowsky;1 claims 10–12 and 14–16 would have been obvious over Livowsky and Shwartz;2 claims 9–21 would have been obvious over Shwartz and Livowsky; claims 9–21 would have been obvious over Shwartz and Weber;3 and claims 9–21 would have been obvious over Meng4 and Zhang.5 Dec. 17–18, 21–22, 23–24. For the reasons below, the Request for Rehearing is denied.” slip op. at 2
Claim constructionPatents in suitUS 7,177,798 - Amazon.Com, Inc. v. Rensselaer Polytechnic InstituteRehearing deniedPTAB · Oct 30, 2020 · IPR2019-01068 · APJ Trevor M Jefferson · IPR · Rehearing
The Board denied Amazon’s rehearing request, leaving in place the denial of institution on claims 1–8 because Petitioner did not show the Board misapprehended the construction or prior-art evidence.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“overlooked, and the place where each matter was previously addressed” in a paper of record. 37 C.F.R. § 42.71(d) (2019) (emphasis added). When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision. Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (internal citations omitted).” slip op. at 3
- Prior constructionPrior construction adoptedDecided for patent owner
“interpretation of the claim construction in the Apple IPR. See Req. Reh’g 3. The Apple IPR cites the embodiment from the ’798 patent specification (Ex. 1001, 5:36–38, 16:52–17:5). Apple IPR 5–6. The Board in the Apple IPR expressly clarified that in the case information construction “‘instances of use’ of the system [did not] mean indications cover instances of use of the system, e.g. how the system interprets words or phrases.” Apple IPR 6. Thus, the Apple IPR Board adopted Patent Owner’s argument that as applied to the prior art, the term “case” in “case information” requires “uses of the system contemplated by the invention, not uses of any other natural language processing system.” Apple IPR 6. The Board rejected that such prior use was found in rules regarding how the system interprets current word or phrase input. Id. We find that the Apple IPR discussed a user’s selection among possible choices, but also addressed that the “case” required use of the system of the ’798 invention. Id. at 5–6. Thus, we do not agree we misapprehended the meaning of the claim language. Req. Reh’g 2.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“information” to exclude clarifications from users. Id. at 5–6, 7–11. Petitioner argues that our Institution Decision adopts Patent Owner’s narrow construction and finds that “clarifying prompts” in grounds including Weber are not “case information.” Id. at 7–8. Our Institution Decision found that Petitioner did not persuasively and sufficiently assert how the prior art disclosed the “case information.” Dec 19–20. Our determination was based on the sufficiency of Petitioner’s evidence and argument in the regarding whether Weber’s prompting the user for information, which was contested by Patent Owner, teaches or suggests “information about prior instances of use of the natural language processing method.” Dec. 19–20 (emphasis added). Petitioner’s arguments does not identify any evidence we overlooked or misapprehended. Req. Reh’g 7–8. Instead, Petitioner characterizes our Institution Decision as broadly excluding user prompts. Our determination was based on the full claim construction, which is supported by the Apple IPR’s emphasis of “prior instances of use of the natural language processing method.” Apple IPR 5–6; Dec. 19–20.” slip op. at 5
Claim constructionPatents in suitUS 7,177,798 - Everstar Merchandise Co., Ltd. v. Willis Electric Co., Ltd.Rehearing deniedPTAB · Oct 22, 2020 · IPR2019-01484 · APJ Jeffrey W Abraham · IPR · Rehearing
The Board denied Everstar’s rehearing request, leaving in place the denial of institution on claims 1–30 because it had not shown an abuse of discretion.
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) (2019). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). When rehearing a decision on a petition, the decision will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“As Petitioner points out, the ’097 patent characterizes reinforcing strands 102a–c as “extend[ing] axially through the center portion of wire 10[0].” Ex. 1001, 14:59–60. Our construction of “disposed at a central portion,” which requires strands to be positioned in the wire so as to occupy at least the center of the wire, is consistent with both the description of strands 102a–c as extending through the center portion of the wire in the ’097 patent specification and the depiction of strands 102a–c in the center of wire 100 in Figure 5. Petitioner appears to argue that because reinforcing strands 102a–c occupy a space that is larger than “simply the central axis of the wire,” any strands disposed inside the wire (i.e., within the outer insulating layer of the wire) are also “disposed at a central portion of the wire.” Req. Reh’g 5. Nothing in Figure 5 or the ’097 patent’s description of Figure 5, however, supports a construction of “disposed at a central portion” that means simply “disposed inside the wire.” To the contrary, Petitioner’s argument is undermined by the fact that the ’097 patent expressly refers to the reinforcing strands 102a–c as extending through the central portion, but does not use the same language to characterize the position of conducting strands 104.” slip op. at 5
- Expert testimonyDecided for patent owner
“We are not persuaded by Petitioner’s argument that a genuine dispute of material fact exists with regard to the parties’ proposed construction of “disposed at a central portion.” Petitioner acknowledges that its declarant, Dr. Fantone, testified that none of the claim terms required a specific construction and that the claim terms “would be understood by one of ordinary skill in the art.” Req. Reh’g 13–14 (citing Ex. 1009 ¶ 22). As Petitioner points out, Dr. Brown, Patent Owner’s declarant, did not offer any “statement of disagreement with Petitioner’s position that the terms should be afforded their ordinary and customary meaning.” Req. Reh’g 14. As a result, there is no “conflicting” testimony from the declarants on this point. Nor is there any conflicting testimony from the declarants regarding the ordinary and customary meaning of “disposed at a central portion.” Although Dr. Fantone testified generally that a person of ordinary skill in the art would understand what “disposed at a central portion” means, Dr. Fantone never explained what that understanding would be. Thus, there is no dispute of material fact on this record regarding the plain and ordinary meaning of the claim term.” slip op. at 9
Claim constructionPatents in suitUS 9,671,097 - Quest USA Corp. v. Popsockets LLCRehearing deniedPTAB · Oct 5, 2020 · IPR2018-00497 · APJ Christa P Zado · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving in place its final decision that claims 9–11, 16, and 17 are unpatentable as anticipated by Grinfas.
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, an opposition, or a reply.” For the reasons discussed below, we deny the Rehearing Request.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We decline to reconsider our construction. In the Final Decision, we declined to use the phrase “pleated folds” in our construction—a phrase that is not used anywhere in the ’031 patent—and instead adopted the terminology actually used in the patent, i.e., hinges, flexural hinges, and flexural membranes. Final Dec. 21–22. We cited portions of the ’031 patent that use the term “accordion,” noting the patent consistently describes an “accordion” as having “flexural hinges or flexural membranes that include hinges that facilitate extending/expanding and collapsing the accordion.” Id. at 20 (citing Ex. 1001, 5:50–53, 5:56–67, 6:7–16). As discussed in the Final Decision, Patent Owner provided insufficient basis to “replace the term actually used in the Specification [to describe accordions] . . . with a term that is not used in the Specification.” Id. at 20–21. Consistent with the use of the term “accordion” in the ’031 patent, we interpreted “accordion” as “a structure that has hinges, such as flexural hinges or flexural membranes, that fold so as to facilitate extending/expanding and collapsing of the accordion.” Id. at 19. We are not persuaded we erred in adopting a construction that uses the phrase “flexural hinges or flexural membranes” rather than one that uses the phrase “pleated folds.” See id. at 19–24 (explaining that the intrinsic evidence supports our adopted construction of “accordion”).” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency foundDecided for petitioner
“inherently discloses the recited use in the claim limitation “a securing element for attaching the socket to the back of the portable media player or portable media player case.” Req. Reh’g 4 (citing Final Dec. 59–60). Patent Owner suggests that we arrived at this conclusion based on our understanding that “Patent Owner did not dispute that this element is inherently disclosed.” Id. (citing Final Dec. 59–60).1 Contrary to Patent Owner’s suggestion, our finding that Grinfas provides inherent disclosure was not based on whether Patent Owner disputed this issue. Rather, it was based on the evidence and arguments provided by Petitioner. Final Dec. 60– 64. For example, we credited the testimony of Petitioner’s expert, Dr. Glenn E. Vallee, Ph.D., that the securing structures in Grinfas were inherently capable of attaching to the back of a telephone because it was supported by 1 We note that the cited portion of our Final Decision addressed whether certain elements in Grinfas (e.g., adhesive pad 46, fastenable straps 54, and attachment portion 92) are “securing elements”—i.e., whether they are securing or fastening—but it did not address whether Grinfas inherently discloses how such elements are used—i.e., whether they are inherently capable of fastening to the back of a portable media player. That issue is addressed at pages 62–68 of our Final Decision. the record. Final Dec. 63–64 (citing Ex. 1004 ¶ 67; Ex. 1005, 8:3–9, Figs. 4A–B). The Rehearing Request does not acknowledge or address the explanation provided in the Final Decision, much less identify what we might have misapprehended or overlooked in finding Dr. Vallee’s testimony to be credible and supported by the record. Req. Reh’g 4. For the foregoing reasons, Patent Owner has not shown that we misapprehended or overlooked any matter in finding Grinfas discloses a securing element inherently capable of being attached to the back of a portable media player.” slip op. at 9
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“We did not provide an express construction of the term “accordion” in the Decision Instituting Inter Partes Review, finding that no terms required express construction at that time. Paper 8, 8 (“Inst. Dec.” or “Institution Decision”). However, we rejected Patent Owner’s preliminary proposal that an “accordion” must be a “structure with pleated folds so as to collapse like the bellows of a musical accordion,” explaining the ’031 patent describes accordions as having flexural hinges that allow the walls of the accordion to fold up generally in parallel to each other, rather than stacking on top of one another. Inst. Dec. 22–26. Citing numerous disclosures in the ’031 patent describing an “accordion” as a structure having flexural hinges, we preliminarily determined “the term ‘accordion’ includes structures that have flexural hinges.’” Id. at 24 (citing Ex. 1001, 1:45–48, 5:50–53, 6:7–31, Fig. 3A, Fig. 3B, Fig. 5). Accordingly, we determined on the preliminary record that the term “accordion” did not preclude the structure in Grinfas, which has flexural hinges that flex and fold. Id. at 24–25. Therefore, our Decision on Institution gave Patent Owner notice and the opportunity to address our interpretation of an “accordion” as including structures that have flexural hinges. Id. at 24. During trial, although Patent Owner maintained its position that “accordion” should be construed as having “pleated folds,” PO Resp. 5, Patent Owner agreed with our preliminary determination that the term “accordion” may include structures with flexural hinges, id. at 19–20. However, Patent Owner argued that not all structures with flexural hinges are “accordions,” because there were well-known non-accordion structures that have flexural hinges. Id. at 20. In accordance with Patent Owner’s argument that not all structures having flexural hinges are “accordions,” in the Final Decision we clarified that the flexural hinges fold “so as to facilitate extending/expanding and collapsing of the accordion.” Final Dec. 20, 22–23. This clarification did not violate the APA or due process because it did not alter any requirements in the claims, which recite that the accordion is capable of extending (i.e., extending/expanding) and retracting (i.e., collapsing). See Ex. 1001, 7:65–8:3 (claim 9). Moreover, the outcome of the Final Decision would have been the same regardless of the clarification that not all structures with flexural hinges are an “accordion.” The clarifying language in our construction in the Final Decision clarifies that structures not present in Grinfas would not meet our construction of “accordion.” Accordingly, had we not included the clarification, the outcome of our Final Decision would have been the same.” slip op. at 11
Claim construction§ 102 anticipationPatents in suitUS 8,560,031 - Cooler Master Co., Ltd. v. Aavid Thermalloy LLCRehearing deniedPTAB · Sep 17, 2020 · IPR2019-00338 · APJ Ken B Barrett · IPR · Rehearing
The Board denied Cooler Master’s rehearing request, leaving intact the determination that claim 8 was not shown obvious over Morikawa and Takahashi because the petition did not establish the claimed top shoulder.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A party requesting rehearing bears the burden of showing that the decision should be modified. 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, or a reply.” Id.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“that “Petitioner has not demonstrated that Morikawa discloses the recited [top shoulder limitation].” Final Dec. 45. In other words, our determination was that Petitioner had not met its burden of proving that a limitation was taught by the prior art, and therefore had not met its burden of proving that the challenged claim is unpatentable.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“In the Final Decision, we stated: Petitioner’s implied construction is that the claimed “shoulder” is the top end of a column. This is inconsistent with the claim language which recites that the “hollow column . . . has a top shoulder disposed near a top end” thus indicating that the top shoulder is not merely the top end of the column but a structure “near” and discernable from the top end of the hollow column.” slip op. at 8
- Strike new argumentNew argument disregardedDecided for patent owner
“based on a misapprehension of the arguments associated with a figure . . . [from page 57] in the Petition,” and that “the Board incorrectly inferred Petitioner’s ‘implied construction’ for the term, ‘[a top] shoulder,’ in claim 8 of the ’680 patent as ‘the top end of a column.’” Req. Reh’g 1 (citing Final Dec. 45). Petitioner further argues that it “has always and consistently pointed to the corner portions located around the top outer rim of the hollow column as meeting the limitation of ‘a top shoulder,’ as shown [in the two figures from pages 56 and 57 of Petition and reproduced above].” Id. at 5–6.” slip op. at 8
Claim construction§ 103 obviousnessPatents in suitUS 7,100,680 - PTAB · Sep 16, 2020 · IPR2018-00755 · APJ Hyun J Jung · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1, 3, 5, 7, 10, and 25 unpatentable under each of three §103 combinations; claim 8 was not shown unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“the burden of showing a decision should be modified, and the 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 its papers. 37 C.F.R. § 42.71(d); see also Req. Reh’g 1 (quoting from the rule). Therefore, Patent Owner bears the burden of establishing that we misapprehended or overlooked the matters that it requests that we review.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“Also, the body of independent claims 1 and 25 recite structurally complete inventions, and do not rely on the word “token,” from the preamble, for any antecedent basis of terms in the body of the claim. The deletion of this preamble language would not affect the structure of the claimed inventions and confirms that the language of the preamble, which names the machine or manufacture claimed as a token, and states its intended use, is not limiting. See Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358-59 (Fed. Cir. 2010). Further, because the bodies of the claims, reciting an “integrated circuit chip” (claim 1) and “storage section” (claim 25), fully define the structure of the claimed tokens and do not rely on the “token” name of the invention to recite the limitations of their structural components, the term the meaning of the claims. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). Because the term “token” does not require construction, and is of no significance in determining the meaning of the claim language, we did not adopt Patent Owner’s additional limitation of a token being required to begin play of a game. B. Whether the Board misapprehended Lee and the showing that the Board” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableDecided for petitioner
“Final Written Decision, which finds that each of the combinations (Levy and Lee, Katoh and Lee, and Mawle and Lee) discloses the limitations of claims 1, 3, 5, 7, 10, and 25 (Final Dec. 19–33, 36–48, 50–62, 64–65), that one of ordinary skill in the art would have combined the references in the manner asserted by Petitioner and as claimed (id. at 34–35, 48–49, 62–65), and thus,” slip op. at 6
Claim construction§ 103 obviousnessPatents in suitUS 7,338,377 - Flex Logix Technologies, Inc. v. Venkat KondaRehearing deniedPTAB · Sep 16, 2020 · IPR2020-00261 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, leaving institution of review of claims 1–7, 11, 15–18, 20–22, 32, and 47 in place.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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). Patent Owner, as the party challenging the Decisions, has the burden of showing that the Decisions should be modified. Id. When rehearing a decision on a petition, the Board reviews the decision for an abuse of discretion. Id. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of the law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- Expert testimonyPetitioner expert creditedDecided for petitioner
“in our Decision on Institution. In the Decision, we directly addressed Patent Owner’s arguments that Dr. Baker is not qualified to testify in this proceeding because he is neither a person of ordinary skill in the art, nor an expert in the relevant art. See Dec. 7–8. In particular, we explained that there is no requirement “that the expert’s experience perfectly match the relevant field, or that the expert is a person of ordinary skill in the art.” Id. at 7. We also explained that Dr. Baker testifies as to his education and qualifications and provides his curriculum vitae. See Ex. 1002 ¶¶ 3–12; Ex. 1003. At this preliminary stage, we cannot say that Dr. Baker’s scientific, technical, and other specialized knowledge will not be helpful in understanding the evidence. See Fed. R. Evid. 702(a). On this record, we are not persuaded that Dr. Baker’s testimony should be disregarded. Id. at 8. Therefore, even if Dr. Baker were not a person of ordinary skill in the art as Patent Owner contends, it does not follow that he is unqualified to testify in these proceedings. Nothing was misapprehended or overlooked in considering Dr. Baker’s testimony.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(Ex. 2001). In the Preliminary Response, Patent Owner cited the Konda Declaration when discussing the experience and qualifications of the named inventor of the ’523 patent. Prelim. Resp. 8–9. The education level of the inventor, however, is just one of several factors that we may consider in determining the level of ordinary skill in the art. See Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (enumerating six factors that “may be considered in determining the level of ordinary skill in the art” (quoting Evt’l Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696 (Fed. Cir. 1983))). And, as Patent Owner noted in the Preliminary Response, “these factors are merely a guide to determining the level of ordinary skill in the art.” Prelim. Resp. 7–8 (citing Daiichi Sankyo, 501 F.3d at 1256). In any event, in the Decision we also considered Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art, noted the differences between them, and stated that “[o]ur determination regarding Petitioner’s challenge does not turn on the differences between Petitioner’s and Patent Owner’s definitions.” Dec. 7. Therefore, our evaluation of Petitioner’s challenges and Dr. Baker’s testimony in support thereof would have been the same under Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art. See id. (“[W]e note that our conclusions would be same under either definition.”).” slip op. at 7
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot reached
“Moreover, in the Decision, we directly addressed Patent Owner’s argument with respect to whether the ’394 provisional and ’605 PCT provided support for the claim limitation “said routing network comprising a plurality of stages y, in each sub-integrated circuit block, starting from the lowest stage of 1 to the highest stage of y, where y≧1” when y=1. Dec. 14. In particular, we found that Patent Owner’s arguments, as we understand them, are directed only to the disclosure of a network with only one stage (y=1). [Prelim. Resp.] at 15–39. Patent Owner does not address the other limitations of claim 1, and does not point to any disclosures in the priority applications that describe a sub-integrated circuit block with only one stage that also comprises pluralities of forward connecting links and backward connecting links as required by claim 1. Id. Thus, we did not overlook Patent Owner’s arguments, but rather evaluated the disclosures in the ’394 provisional and ’605 PCT and determined, on the record at this stage of the proceeding, that they do not provide sufficient written description support for the challenged claims. The parties will have the opportunity to further develop the record on these issues during trial, and the Board will evaluate the fully-developed record at the close of the evidence. D. Public Availability of the ’394 provisional” slip op. at 9
§ 102 anticipation§ 112 disclosurePatents in suitUS 8,269,523 - Flex Logix Technologies, Inc. v. Venkat KondaRehearing deniedPTAB · Sep 16, 2020 · IPR2020-00260 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied the Patent Owner’s rehearing requests, leaving institution in place for claims 1–7, 11, 15–18, 20–22, 32, and 47.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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). Patent Owner, as the party challenging the Decisions, has the burden of showing that the Decisions should be modified. Id. When rehearing a decision on a petition, the Board reviews the decision for an abuse of discretion. Id. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of the law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- Strike new argumentNew argument disregardedOther
“Consolidated Trial Practice Guide, 90. The Consolidated Trial Practice Guide goes on to state that “[a]bsent a showing of ‘good cause’ prior to filing the request for rehearing or in the request for rehearing itself, new evidence will not be admitted.” Id. (citing Huawei, Paper 19 at 4).” slip op. at 4
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Dr. Baker testifies as to his education and qualifications and provides his curriculum vitae. See Ex. 1002 ¶¶ 3–12; Ex. 1003. At this preliminary stage, we cannot say that Dr. Baker’s scientific, technical, and other specialized knowledge will not be helpful in understanding the evidence. See Fed. R. Evid. 702(a). On this record, we are not persuaded that Dr. Baker’s testimony should be disregarded. Id. at 8. Therefore, even if Dr. Baker were not a person of ordinary skill in the art as Patent Owner contends, it does not follow that he is unqualified to testify in these proceedings. Nothing was misapprehended or overlooked in considering Dr. Baker’s testimony.” slip op. at 6
- Skill levelOther
“(Ex. 2001). In the Preliminary Response, Patent Owner cited the Konda Declaration when discussing the experience and qualifications of the named inventor of the ’523 patent. Prelim. Resp. 8–9. The education level of the inventor, however, is just one of several factors that we may consider in determining the level of ordinary skill in the art. See Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (enumerating six factors that “may be considered in determining the level of ordinary skill in the art” (quoting Evt’l Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696 (Fed. Cir. 1983))). And, as Patent Owner noted in the Preliminary Response, “these factors are merely a guide to determining the level of ordinary skill in the art.” Prelim. Resp. 7–8 (citing Daiichi Sankyo, 501 F.3d at 1256). In any event, in the Decision we also considered Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art, noted the differences between them, and stated that “[o]ur determination regarding Petitioner’s challenge does not turn on the differences between Petitioner’s and Patent Owner’s definitions.” Dec. 7. Therefore, our evaluation of Petitioner’s challenges and Dr. Baker’s testimony in support thereof would have been the same under Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art. See id. (“[W]e note that our conclusions would be same under either definition.”).” slip op. at 7
§ 102 anticipation§ 112 disclosurePatents in suitUS 8,269,523
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.