- PTAB · Apr 30, 2018 · IPR2017-01904 · APJ James B Arpin · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution because Petitioner did not show that Mammano was a printed publication or that the Board misapprehended or overlooked evidence.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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. (Emphasis added.) See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). 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.” 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. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” Inst. Dec. 8 (quoting 35 U.S.C. § 311(b) (emphasis added)); see 37 C.F.R. § 42.104(b)(2). Petitioner had the burden to establish in its Petition a reasonable likelihood of success, including, among other things, making a threshold showing that Mammano is a “printed publication” within the meaning of 35 U.S.C. §§ 102(b) and 311(b). Inst. Dec. 9 (citing 35 U.S.C. § 314(a)); see 37 C.F.R. § 42.108(c); Apple, Inc. v. DSS Tech. Mgmt., Inc.,” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“As we explained in the Institution Decision, “‘[p]ublic accessibility’ is the touchstone in determining whether a reference is a ‘printed publication.’” Inst. Dec. 10 (citing In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)); see, e.g., L-3 Commc’n. Holdings, Inc. v. Power Survey, LLC, Case IPR2014- 00832, slip op. at 11–12 (PTAB Nov. 14, 2014) (Paper 9) (applied reference not shown to be publicly accessible); C&D Zodiac, Inc. v. B/E Aerospace, Inc., Case IPR2014-00727, slip op. at 20–22 (PTAB Oct. 29, 2014) (Paper 15) (applied reference shown to be publicly accessible). Consequently, “[a] reference will be considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”’ Inst. Dec. 10–11 (emphasis added) (citing Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008))). The status of a reference as a printed publication is a legal conclusion “based on underlying factual determinations.” Blue Calypso, 815 F.3d at 1348 (citing In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009)).” slip op. at 4
- Strike new argumentNew argument disregardedDecided for patent owner
“we should find that Mammano is a printed publication consistent with the requirements of In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Reh’g Req. 10; see id. at 7–10. We decline to draw now the conclusions argued for the first time in this Request for Rehearing. A request for rehearing is not an opportunity for the requestor to present new arguments or evidence. It goes without saying that we could not have overlooked or misapprehended arguments that Petitioner did not make, and it is not an abuse of discretion not to consider such arguments. Thus, Petitioner’s submission of new arguments and evidence in its Request for Rehearing is both improper and unpersuasive.” slip op. at 7
§ 102 anticipation - PTAB · Apr 30, 2018 · IPR2017-01975 · APJ James B Arpin · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution because Petitioner did not show the UC1828 datasheet was publicly accessible as a printed publication.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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. (Emphasis added.) See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). 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.” 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. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” Inst. Dec. 8 (quoting 35 U.S.C. § 311(b) (emphasis added)); see 37 C.F.R. § 42.104(b)(2). Petitioner has the burden to establish in its Petition a reasonable likelihood of success, including, among other things, making a threshold showing that the UC1828 datasheet is a “printed publication” within the meaning of 35 U.S.C. §§ 102(b) and 311(b). Inst. Dec. 9 (citing 35 U.S.C. § 314(a)); see 37 C.F.R. § 42.108(c); Apple, Inc. v. DSS Tech. Mgmt., Inc., Case IPR2015-00369, slip op. at 4–5, 9–11 (PTAB Aug. 12, 2015) (Paper 14)). As we explained in the Institution Decision, “‘[p]ublic accessibility’ is the touchstone in determining whether a reference is a ‘printed publication.’” Inst. Dec. 10 (citing In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)); see, e.g., L-3 Commc’n. Holdings, Inc. v. Power Survey, LLC, Case IPR2014- 00832, slip op. at 11–12 (PTAB Nov. 14, 2014) (Paper 9) (applied reference not shown to be publicly accessible); C&D Zodiac, Inc. v. B/E Aerospace, Inc., Case IPR2014-00727, slip op. at 20–22 (PTAB Oct. 29, 2014) (Paper 15) (applied reference shown to be publicly accessible). Consequently, “[a] reference will be considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”’ Inst. Dec. 10 (emphasis added) (citing Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008))). The status of a reference as a printed publication is a legal conclusion “based on underlying factual determinations.” Blue Calypso, 815 F.3d at 1348 (citing In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009)).” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“As we explained in the Institution Decision, “‘[p]ublic accessibility’ is the touchstone in determining whether a reference is a ‘printed publication.’” Inst. Dec. 10 (citing In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)); see, e.g., L-3 Commc’n. Holdings, Inc. v. Power Survey, LLC, Case IPR2014- 00832, slip op. at 11–12 (PTAB Nov. 14, 2014) (Paper 9) (applied reference not shown to be publicly accessible); C&D Zodiac, Inc. v. B/E Aerospace, Inc., Case IPR2014-00727, slip op. at 20–22 (PTAB Oct. 29, 2014) (Paper 15) (applied reference shown to be publicly accessible). Consequently, “[a] reference will be considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”’ Inst. Dec. 10 (emphasis added) (citing Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008))). The status of a reference as a printed publication is a legal conclusion “based on underlying factual determinations.” Blue Calypso, 815 F.3d at 1348 (citing In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009)).” slip op. at 4
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner did not request the opportunity to submit additional evidence of public accessibility during the Preliminary Proceeding. Id. at 14 n.5; see 37 C.F.R. § 42.2 (“Preliminary Proceeding”). Nevertheless, Petitioner now asks that we take official notice of evidence contained in several issued patents and an abandoned patent application that were not made of record during the Preliminary Proceeding to support arguments presented for the first time in its Request for Rehearing. Reh’g Req. 4 n.1; see 37 C.F.R. § 42.62(c) (“Judicial notice”). We decline to take official notice of any new evidence during consideration of this Request for Rehearing. A request for rehearing is not an opportunity for the requestor to present new arguments or evidence, and it goes without saying that we could not have misapprehended or overlooked new evidence that was not of record during the Preliminary Proceeding or new arguments that were not previously presented regarding that new evidence.” slip op. at 5
§ 102 anticipation - PTAB · Apr 30, 2018 · IPR2017-01944 · APJ James B Arpin · IPR · Rehearing
The Board denied Power Integrations’ rehearing request, leaving in place the denial of institution because Mammano was not shown to be a printed publication.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“(Emphasis added.) See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). 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.” 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. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” Inst. Dec. 9 (quoting 35 U.S.C. § 311(b) (emphasis added)); see 37 C.F.R. § 42.104(b)(2). Petitioner had the burden to establish in its Petition a reasonable likelihood of success, including, among other things, making a threshold showing that Mammano is a “printed publication” within the meaning of 35 U.S.C. §§ 102(b) and 311(b). Inst. Dec. 9–10 (citing 35 U.S.C. § 314(a)); see 37 C.F.R. § 42.108(c); Apple, Inc. v. DSS Tech. Mgmt., Inc., Case IPR2015-00369, slip op. at 4–5, 9–11 (PTAB Aug. 12, 2015) (Paper 14)).” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” Inst. Dec. 9 (quoting 35 U.S.C. § 311(b) (emphasis added)); see 37 C.F.R. § 42.104(b)(2). Petitioner had the burden to establish in its Petition a reasonable likelihood of success, including, among other things, making a threshold showing that Mammano is a “printed publication” within the meaning of 35 U.S.C. §§ 102(b) and 311(b). Inst. Dec. 9–10 (citing 35 U.S.C. § 314(a)); see 37 C.F.R. § 42.108(c); Apple, Inc. v. DSS Tech. Mgmt., Inc., Case IPR2015-00369, slip op. at 4–5, 9–11 (PTAB Aug. 12, 2015) (Paper 14)).” slip op. at 3
- Strike new argumentNew argument disregardedDenied
“Reh’g Req. 4–5 (emphasis added). Regardless whether it “would be reasonable to conclude” that certain facts exist, Petitioner did not make these arguments in its Petition, and it was not error to fail earlier to draw these conclusions, and we decline to draw these conclusions now.” slip op. at 6
§ 102 anticipation - Emerson Electric Co. v. Sipco, LLCAll claims unpatentablePTAB · Mar 21, 2018 · IPR2016-01895 · APJ Bryan F Moore · IPR · Final written decision
Claims 1–3, 6, 8–11, 13–21, and 25 are unpatentable as obvious over Johnson, Mason/EIA-709.1/Shuey/C12.18, and anticipated by Johnson.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Ex. 2002 ¶ 76. Patent Owner asserts using its lower level of skill in the art “would diminish the motivation of a POSITA would have for combining references identified in the instituted grounds.” Id. at ¶ 82. We disagree that an understanding of how to design and build a wireless, multi-hop communications systems is a leap in knowledge that would create a motivation to combine that would not be there under Patent Owner’s articulation of the level of skill. See Ex. 1027 ¶¶ 9–11. Thus, we do not discern a difference between the two proposed levels of skill that affects the analysis in this IPR. However, for clarity we adopt Petitioner’s articulation of the level of skill, which is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Here, the intrinsic evidence does not support limiting the challenged claims to sending “original” messages. Thus, sending sensed data acquired from another device is within the ambit of the challenged claims. In fact, dependent claims 2, 11, 15, 17, 21 specifically recite a sensor and/or actuator which suggests that the independent claims can be broader and may not require a remote device “including” a sensor and/or actuator. Additionally, the court in the related Amazon litigation did not construe “remote devices” to require actuators. Id. at 16, 74. For the reasons above, the broadest reasonable construction of the remote device terms does not require a sensor and/or actuator. Based on the 4 Sipco, LLC v. Amazon.com, Inc., No. 2-08-cv-00359 (E.D. Tex.) (“the related Amazon litigation”). 8 record before us, it is unnecessary to expressly construe the remote device terms further.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Based on Petitioner’s citations to specific prior art disclosures and supporting evidence, we are persuaded that Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the legal conclusion that it also would have been obvious to modify the teachings of Mason, with EIA-709.1’s teachings, to include an address that varies in size. Pet. 50. For example, Petitioner contends: A [person of ordinary skill in the art] would have been motivated to use the scalable destination address of EIA-709.1 in Mason’s system. The ‘492 patent uses scalable addresses in order to accommodate systems of different sizes and complexity. Ex. 1001 at 9:59-61. The scalable addresses of EIA-709.1 would also accommodate systems of different sizes and complexity in a more flexible manner. Mason expresses a desire to implement a large scale AMR system. Mason at 1:46-48, 5:25-57. Mason also recognizes the importance of uniquely identifying a large number of destination meters. Mason at 10:43-56. Using the scalable addresses of EIA-709.1 in Mason’s system would allow a [person of ordinary skill in the art] to effectively identify message destinations in networks with increasing sizes and complexity. Kinney, ¶¶116-117. Moreover, Mason explicitly discloses that the LonTalk protocol can be used with its system. Mason at 17:4-9. The LonTalk protocol ultimately was adopted as EIA-709.1. Exs. 1022, 1023, 1024. Indeed, the LonTalk protocol specification includes the same scalable addresses disclosed in EIA-709.1. Ex. 1020 at 14-16. A [person of ordinary skill in the art] would thus be motivated to combine Mason and EIA-709.1, with a reasonable expectation of success in doing so. Kinney, ¶118.” slip op. at 44
- Expert testimonyPetitioner expert creditedDecided for petitioner
“configured to detect a condition and output a signal to the controller,” as recited in claim 15. In that regard, Petitioner contends each meter 12 of Mason includes a metering board for performing the metering function. Pet. 44; Ex. 1006, 5:59–63. Each meter also includes a set of analog transducers. Id.; Ex. 1006, 5:59–64. Thus, according to Petitioner a person of ordinary skill in the art “would appreciate that a sensor is a type of transducer, and that Mason’s transducers are sensors. Mason’s metering board and/or analog transducers correspond to the claimed ‘sensor.’” We agree and credit Petitioner’s declarant’s supporting testimony. Pet. 44; Ex. 1002 ¶ 101. Petitioner also asserts the metering board and/or analog transducers are operable to detect a condition related to, for example, electricity, gas, or water, and output meter information corresponding to the condition to the meter’s controller. Pet. 44; Ex. 1006, 5:32–41, 9:56–65, 15:37–47, 49–53; Ex. 1002 ¶ 101. c. Claims 17 Petitioner persuades us that Mason teaches “at least one actuator configured to implement an action corresponding to the command code,” as recited in claim 17. In that regard, Petitioner contends Mason discloses that each meter 12 includes a disconnect switch drive circuit. Pet. 45; Ex. 1006, 5:59–64. Thus, according to Petitioner a person of ordinary skill in the art 48 “would appreciate that a disconnect drive circuit implements an action, such as a disconnect function, in response to receiving a command to do so using the C12.18 protocol. This operation corresponds to the claimed actuator configured to implement an action corresponding to the command code.” Pet. 45; Ex. 1002 ¶ 101. We agree and credit Petitioner’s declarant’s supporting testimony. Ex. 1002 ¶ 101.” slip op. at 48
Patent outcomesUS 7,697,492 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,697,492 - Freebit As v. Bose CorporationRehearing deniedPTAB · Jan 23, 2018 · IPR2017-01309 · APJ Bryan F Moore · IPR · Rehearing
The Board denied Freebit’s rehearing request and left in place the denial of institution on claims 1–3, 5, 6, 8–11, and 13 based on the deficient obviousness showing and Tan antedating.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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. (Emphasis added.) See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). 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 1 IPR2017-01307 Inst. Dec. 34 (“As we noted above, although Patent Owner mentions both March 26, 200[9] (Prelim. Resp. 8), and May 26, 2009 (id. at 1, 10), as the date of actual reduction to practice, it is clear from Mr. Annunziato’s testimony and supporting evidence, that actual reduction to practice occurred by May 26, 2009. Ex. 2001 ¶¶ 9, 11; see id., Ex. A, 2.”). 2 We note that Petitioner presented substantially identical arguments regarding Patent Owner’s antedating of Tan in its Request for Rehearing filed in IPR2017-01307 and IPR2017-01308. See, e.g., IPR2017-01308, Paper 11. Our reasons for denying rehearing here regarding the antedating of Tan are substantially the same as the reasons presented in IPR2017-01307 and IPR2017-01308. discretion.” 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. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“testimony that there was a known, retention problem with in-ear earpieces as of the earliest priority date for challenged claims of the ’853 patent. See Inst. Dec. 14 (citing Ex. 1003 ¶ 149). Nor did we question that Howes discusses that problem and teaches a possible solution to that problem. See id. at 11–13. The failure in Petitioner’s argument and Petitioner’s declarant’s testimony was to draw the necessary link between the known problem and Howes’s possible solution and the teachings of Sapiejewski. In order to link this problem and its possible solution to the teachings of Sapiejewski, Petitioner relies on Dr. Staab’s testimony. Id. at 14. It is this testimony that we find unsupported and conclusory.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundTeaching away not found
“testimony that there was a known, retention problem with in-ear earpieces as of the earliest priority date for challenged claims of the ’853 patent. See Inst. Dec. 14 (citing Ex. 1003 ¶ 149). Nor did we question that Howes discusses that problem and teaches a possible solution to that problem. See id. at 11–13. The failure in Petitioner’s argument and Petitioner’s declarant’s testimony was to draw the necessary link between the known problem and Howes’s possible solution and the teachings of Sapiejewski. In order to link this problem and its possible solution to the teachings of Sapiejewski, Petitioner relies on Dr. Staab’s testimony. Id. at 14. It is this testimony that we find unsupported and conclusory.” slip op. at 6
- Strike new argumentNew argument disregardedDecided for patent owner
“Initially, we note that Petitioner did not raise these arguments anywhere in its Petition or its authorized Reply to Patent Owner’s Preliminary Response. Not only did Petitioner fail to raise the issue of “Peeler diligence,” but Petitioner’s Request for Rehearing does not include a single citation to its Petition or to its Reply on this point. Thus, Petitioner’s Request for Rehearing fails to identify the place where each matter that allegedly was overlooked or misapprehended was previously addressed in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). A request for rehearing is not an opportunity for the requestor to present new arguments or evidence. It goes without saying that we could not have overlooked or misapprehended arguments that Petitioner did not make, and it is not an abuse of discretion not to consider such arguments.” slip op. at 10
§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,036,853 - Freebit As v. Bose CorporationRehearing deniedPTAB · Jan 23, 2018 · IPR2017-01307 · APJ James B Arpin · IPR · Rehearing
The Board denied Freebit’s rehearing request, leaving institution denied for claims 1–4, 6–9, 13, and 17 because the obviousness challenge lacked a supported reason to combine and Tan was antedated.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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. (Emphasis added.) See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). 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 1 Inst. Dec. 34 (“As we noted above, although Patent Owner mentions both March 26, 200[9] (Prelim. Resp. 8), and May 26, 2009 (id. at 1, 10), as the date of actual reduction to practice, it is clear from Mr. Annunziato’s testimony and supporting evidence, that actual reduction to practice occurred by May 26, 2009. Ex. 2001 ¶¶ 9, 11; see id., Ex. A, 2.”). 2 We note that Petitioner presented substantially identical arguments regarding Patent Owner’s antedating of Tan in its Request for Rehearing filed in IPR2017-01308 and in IPR2017-01309. See, e.g., IPR2017-01308, Paper 11. Our reasons for denying rehearing here regarding the antedating of Tan are substantially the same as the reasons presented in IPR2017-01308 and IPR2017-01309. discretion.” 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. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“testimony that there was a known, retention problem with in-ear earpieces as of the earliest priority date for challenged claims of the ’253 patent. See Inst. Dec. 41 (citing Ex. 1003 ¶ 149). Nor did we question that Howes discusses that problem and teaches a possible solution to that problem. See id. at 37–39. The failure in Petitioner’s argument and Petitioner’s declarant’s testimony was to draw the necessary link between the known problem and Howes’s possible solution and the teachings of Sapiejewski. In order to link this problem and its possible solution to the teachings of Sapiejewski, Petitioner relies on Dr. Staab’s testimony. Id. at 41. It is this testimony that we find unsupported and conclusory.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableDecided for patent owner
“neither Petitioner nor its declarant explains why a general need to secure an earpiece in an ear would lead to adding a positioning and retaining structure in the context of Sapiejewski’s teachings, when that function allegedly already is provided by the Sapiejewski device, besides seeking the benefits described in the ’253 patent – a reason tainted by hindsight. Inst. Dec. 45–46 (citations omitted). Consequently, we considered fully Petitioner’s arguments and Dr. Staab’s testimony, including any supporting evidence, in view of Sapiejewski’s disclosure. Based on this consideration, we agreed with Patent Owner that “Petitioner relies on a far too general reason to combine the references and engages in impermissible hindsight as to the particular combination of the teachings of Sapiejewski and Howes.” Id. at 45.” slip op. at 8
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“suppression or concealment may be overcome with evidence that the reason for the delay was to perfect the invention.” 843 F.2d 1364, 1367 (Fed. Cir. 1988); see Inst. Dec. 33. Nevertheless, the delay could not be excused (1) if “the delay is caused by working on refinements and improvements which are not reflected in the final patent application,” or (2) if “the activities which caused the delay go to commercialization of the invention.” Lutzker, 843 F.2d at 1367. In its Reply, Petitioner focused on the length of the delay between the actual reduction to practice and the filing of a patent application. Reply 3–4. Petitioner, however, made only cursory and conclusory reference to Patent Owner’s activities3 between the actual reduction to practice and the filing of a patent application. See Reply 4 (“Moreover, Mr. Annunziato’s testimony (¶ 6) that his team put in hundreds (if not thousands) of hours trying out and testing different designs for ear interfaces is not credible.”). Petitioner now argues that “all the alleged work carried out by [Patent Owner] to complete the [printed circuit board] is irrelevant to the suppression/concealment issue because it was not reflected in the final patent application, and rather, was relevant simply for commercialization.” Reh’g Req. 12. We continue to disagree.” slip op. at 10
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,311,253 - Xactware Solutions, Inc. v. Pictometry International Corp.No claims unpatentablePTAB · Aug 28, 2017 · IPR2016-00593 · APJ Garth D Baer · IPR · Final written decision
The Board held that claims 12–15, 21–23, 25–27, 33–38, 44, and 45 were not shown unpatentable because Pictometry was not established as a publicly accessible printed publication.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“Version 2.7 (“EFS 2.7 User Guide,” “Pictometry,” or “User Guide”) and, as the name suggests, is a user guide for the Pictometry software product. See Ex. 1004, xiii. Patent Owner argues that Petitioner does not demonstrate that Pictometry is prior art. PO Resp. 5–10. In our Final Written Decision in IPR2016-00594, we considered substantively the same arguments and evidence Patent Owner and Petitioner raise in this case. See IPR2016-00594 FWD 17–29; compare IPR2016-00594 Paper 31, 13–20 with PO Resp. 6– 13; and compare IPR2016-00594 Paper 33, 3–9 with Reply 4–11. In IPR2016-00594, we found Pictometry’s limited dissemination to some governmental entities subject to licensing restrictions was not sufficient to show public dissemination or public accessibility. IPR2016-00594 FWD 17–29. We adopt that same finding here. For the reasons explained in IPR2016-00594, we find that Petitioner has not established by a preponderance of the evidence that Pictometry was publicly accessible so as to render it a printed publication under 35 U.S.C. §§ 102(b) and 311(b).” slip op. at 6
- ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part
“substantively the same as the arguments made in IPR2016-00594. In IPR2016-00594, we denied Patent Owner’s motion to exclude Exhibit 1004 (Pictometry), Exhibit 1011 (a Merriam-Webster Dictionary Definition “database” copied from a web page), Exhibit 2010 (Cohasset Town Report 2008), 2011 (LARIAC1 Pictometry Training), Exhibit 2012 (LAR-IAC2 Product Guide), Exhibit 2020 (“GIS: Pictometry: Oblique Imagery training), Exhibit 2021 (“Pictometry License Guidelines”), and Exhibit 2022 (“Pictometry – April 19, 2007”). IPR2016-00594 FWD 5–17. We granted Patent Owner’s motion to exclude Exhibit 2013 (article titled “Los Angeles County Extends its License Agreement with Pictometry for New Oblique Aerial Photos”), Exhibit 2014 (“Pictometry Administrative Training”), Exhibit 2015 (“Information about TXWILM Administrative Training”), Exhibit 2016 (“Pictometry Administrative Training”), Exhibit 2019 (“GIS Working Group Meeting Minutes”), Exhibit 2023 (“Welcome to Your End User Training”), Exhibit 2024 (“Electronic Field Study Getting Started Guide”), Exhibit 2025 (“Pictometry Announces Technical Advancements for GIS Professionals1”), and Exhibit 2026 (“Pictometry Announces Technical Advancements for GIS Professionals2”). Id. We adopt the same findings and conclusions here. For the reasons explained in IPR2016-00594, we deny the motion to exclude Exhibits 1004, 1011, 2010, 2011, 2020, 2021, and 2022, but grant the motion to exclude Exhibits 2013, 2014, 2015, 2016, 2019, 2023, 2024, 2025, and 2026. See id.” slip op. at 5
Patent outcomesUS 8,823,732 not shown unpatentable§ 102 anticipationPatents in suitUS 8,823,732 - Xactware Solutions, Inc. v. Pictometry International Corp.No claims unpatentablePTAB · Aug 24, 2017 · IPR2016-00594 · APJ Bryan F Moore · IPR · Final written decision
Petitioner did not prove claims 1–10 and 13–20 unpatentable because it failed to establish that Pictometry was a publicly accessible printed publication.
RulingsFinal written decision- ExcludeMixed
“Mot. Reply 3. Given the sequence of events, there is no prejudice to Petitioner, who introduced these documents and was served objections at an early stage. Patent Owner apparently cited to the documents in its Patent Owner Response to preserve the right to substantively respond to these documents rather than wait to see if they were presented in Petitioner’s Reply. Pursuant to our discretion under 37 C.F.R. § 42.5(c)(3), we do not dismiss Patent Owner’s Motion to Exclude due to allegedly untimely filed objections.” slip op. at 6
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“are also prohibited. Id. The MAPC Agreement states under “Confidentiality of Licensed Products” that the Licensed Products are commercially valuable, proprietary products owned by Pictometry and are treated by Pictometry as confidential and contain substantial trade secrets of Pictometry. Ex. 2009, 16, Article 8.4. The licensee agrees that it will not disclose, provide a copy of, or disseminate the Licensed Products and that its personnel will protect the Licensed Products from unauthorized use, disclosure, copying, and dissemination, and that access to the Licensed Products and each part thereof will be strictly limited. Id. We acknowledge that these represent significant limitations on the dissemination of the User Guide.” slip op. at 21
- BurdenDecided for patent owner
“involving the EFS software and provides no evidence that the EFS software and the EFS 2.7 User Guide were actually maintained confidential by the parties of the MAPC Agreement, or that the EFS software and the EFS 2.7 User Guide were inaccessible to those of ordinary skill in the art.” Reply 9. However, this improperly puts the burden to disprove public accessibility on Patent Owner. Although Patent Owner challenges whether Pictometry is a printed publication, the burden remains on Petitioner to demonstrate unpatentability. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in an inter partes review). Petitioner must demonstrate by a preponderance of the evidence that the challenged claims are unpatentable, and one aspect of such a showing is that the references relied upon are patents or printed publications. See 35 U.S.C. §§ 311(b) 316(e).” slip op. at 22
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“preponderance of the evidence that Pictometry was publicly accessible so as to render it a printed publication under 35 U.S.C. § 102(b). C. Anticipation of Claims by Pictometry Petitioner asserts that claims 1–10 and 13–20 are unpatentable under 35 U.S.C. § 102(b) as anticipated by Pictometry. Pet. 16. As noted above, we determine that Petitioner has not shown that Pictometry is a printed publication under 35 U.S.C. § 102(b). Thus, Petitioner has not established by a preponderance of the evidence that that claims 1–10 and 13–20 are unpatentable under 35 U.S.C. § 102(b) as anticipated by Pictometry.” slip op. at 29
Patent outcomesUS 8,542,880 not shown unpatentable§ 102 anticipationPatents in suitUS 8,542,880 - Xactware Solutions, Inc. v. Eagle View Technologies, Inc.Some claims unpatentablePTAB · Aug 14, 2017 · IPR2016-00591 · APJ Garth D Baer · IPR · Final written decision
Claims 1, 3, 6, 9, 12-14, 16, 19, 22, and 23 are unpatentable as anticipated by Avrahami; claims 10, 15, and 25 were not shown obvious.
RulingsFinal written decision- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner. Avrahami describes its algorithm as providing “for semi-automatic 3D spatial polygon extraction from a pair of colored aerial images with a known external model solution.” Ex. 1004, 43 (emphasis added). Avrahami touts that one of the advantages of its system is that “the operator can identify at a glance which buildings can be mapped by this method so as to combine it with traditional manual extraction or other semi-automatic method.” Id. at 48 (emphasis added). Further to this point, Figure 1 shows a side-by-side comparison of the images in the pair. See id. at Fig. 1 (displaying left and right polygons going through Avrahami’s iterative matching process). Further, we credit the testimony from Petitioner’s Expert, Mr. Schuch, that one skilled in the art would understand Avrahami’s images to be what “you see . . . on a computer screen” as “part of the production.” Ex. 2017, 69:20–21; see also id. at 71:2–4 (explaining that “[t]his is an actual production image”). Therefore, we find that Petitioner has proffered sufficient evidence that Avrahami discloses the disputed limitation.” slip op. at 10
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia with nexusDecided for patent owner
“We are persuaded by Patent Owner’s extensive evidence of nexus between its Render House and Twister products and the challenged claims. Patent Owner steps through each challenged claim on an element-by-element basis and directs us to images and specific passages from its Render House and Twister user guides that it argues embody the limitations of each challenged claim. PO. Resp. 50–58. Patent Owner also supports its assertion of nexus with testimony in the form of a Declaration from Dr. Chandrajit L. Bajaj that includes a claim chart detailing where each limitation of the challenged claim is found in its Twister and Render House products. Ex. 2010, 44–91.5 The Federal Circuit has held that “if the marketed product embodies the claimed features, and is coextensive with them, then a nexus is presumed and the burden shifts to the party asserting obviousness to present evidence to rebut the presumed nexus.” Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000). Patent Owner has put forth sufficient evidence to show that its Twister and Render House products embody the elements of the challenged claims and thus, we look to Petitioner to rebut this presumed nexus and acknowledge that the presumption “cannot be rebutted with mere argument; evidence must be put” slip op. at 17
- Obviousness (§103) › Objective indicia / secondary considerations › Commercial successObjective indicia with nexusDecided for patent owner
“with the purportedly unique characteristics of the claimed invention and that for which there is alleged commercial success.” Reply 23–24. Our reviewing court has held that for evidence of commercial success to be relevant, “the patentee must establish a nexus between the evidence of commercial success and the patented invention.” Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010). As noted above, however, Patent Owner has provided extensive evidence that the Twister and Render House products are coextensive with claims 10, 15, and 25 and that the reports sold were created using the Twister and Render House products. Thus, we are persuaded that nexus exists between the challenged claims and the commercially successful products at issue. Petitioner also asserts that “Patent Owner has failed to make any showing as to market share, thus rendering their sales figures irrelevant and not adequately defined.” Reply 24. Patent Owner provided unrebutted evidence that “approximately 96 percent of the top 25 insurance carriers rely on [Eagle View Technologies 3D aerial roof measurement reports] in their claims departments.” Ex. 2020, 1; see also Ex. 2029, 8 (Verisk Analytics presentation noting that 24 of top 25 insurance companies and 30,000 contractors are Eagle View customers). In addition, Patent Owner’s evidence shows that its products are used by “about one-fifth of the roofing contractor market, according to an estimate by market researcher IbisWorld.” Ex. 2024. Patent Owner’s financial reports show both that it sold a significant number of roofing reports and that its sales grew significantly between 2009 and 2015. See PO Resp. 60–61. We find that this information, taken together with statement from others in the industry (see Ex. 2029) gives us a view of Patent Owner’s place in the relevant market and persuades us that Patent Owner’s Twister and Render House products experienced significant commercial success and wide-spread use in the industry.” slip op. at 20
- Obviousness (§103) › Objective indicia / secondary considerations › Skepticism / industry praiseDecided for patent owner
“iii. Industry Praise Praise from industry participants, especially competitors, is probative as to obviousness because such participants “are not likely to praise an obvious advance over the known art. Thus, if there is evidence of industry praise of the claimed invention in the record, it weighs in favor of the non-obviousness of the claimed invention.” Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1053 (Fed. Cir. 2016). Petitioner described Patent Owner’s products as “[u]sing aerial photography and patent-pending software [to] accurately calculate[] measurements for the roof’s ridges, rafters, valleys, slopes and more.” Ex. 2021, 1. Petitioner further noted that the “process saves contractors and roofers hours of time spent measuring and scoping a roof.” Id.” slip op. at 23
Patent outcomesUS 8,209,152 mixed§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,209,152 - Intel Corporation / Qualcomm Incorporated et al. v. DSS Technology Management, Inc.All claims unpatentablePTAB · Jun 1, 2017 · IPR2016-01312 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 7–9, 15, and 17 are unpatentable as anticipated by Sakamoto; claims 10–12 are unpatentable as obvious over Sakamoto and Cederbaum.
RulingsFinal written decision- BurdenOther
“Owner’s election not to file a Patent Owner Preliminary Response does not implicate any adverse inference. 37 C.F.R.§ 42.107(a); Office Patent Trial Practice Guide. 77 Fed Reg. 48756, 48,764 (Aug. 14, 2012). However, as to the Patent Owner Response after institution of trial, under our Scheduling Order “Patent Owner is cautioned that any arguments for patentability not raised in the response will be deemed waived.” Paper 11, 3; see In re Nuvasive, 842 F. 3d 1376, 1381 (Fed. Cir. 2016)(finding that NuVasive waived public accessibility arguments in its Preliminary Response by failing to challenge public accessibility during the trial phase, i.e. by not addressing public accessibility in its Trial Response and explicitly declining to make further arguments at oral hearing). In this case, Patent Owner “defers to the Board” to determine whether Petitioner has demonstrated the challenged claims are unpatentable by a preponderance of the evidence. PO Resp. 2. There is no argument or evidence, other than that presented in the Petition and the accompanying Exhibits, for us to consider. Nevertheless, “In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ . . . and that burden never shifts to the patentee.” Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (quoting 35 U.S.C. § 316(e)).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“meaning to the terms not construed. We applied the broadest reasonable interpretation to the following term that required construction. Noting a claim construction dispute in co-pending district court litigation, Petitioner proposed that we construe the “diffusion region formed in said substrate” to mean “conductive terminal region, such as a source or drain, that contains dopants implanted in the silicon substrate.” Pet. 24. As discussed in the Decision to Institute, we determined that the subject matter of the claims concerns a local interconnect between a gate and a diffusion region and that there was no need to further construe “the diffusion region formed in said substrate” for purposes of this decision. Dec. to Inst. 5–6. Based on the complete record now before us, we discern no reason to change the constructions.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“embodiments, which all delineate p-well region 2 and Sakamoto’s fifth embodiment in which p-well region 2 is not shown, based on the record in this proceeding, we are persuaded that the evidence supports Petitioner’s contention that the implanted p-well region is part of the silicon substrate.” slip op. at 11
- Expert testimonyPetitioner expert creditedOther
“Petitioner cites Sakamoto’s disclosure of softening and reflowing BoroPhosphoSilicate Glass (BPSG) film to form insulating layer 9, stating that BPSG is a type of silicon oxide. Id. at 44–45 (citing Bravman Decl. ¶ 91; Ex. 1115, at 185).5 We credit Dr. Bravman’s testimony and are persuaded that insulating layer 9 is formed of silicon oxide.” slip op. at 14
Patent outcomesUS 5,965,924 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 5,965,924
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.