- Mercedes-Benz USA, LLC v. Carucel Investments, L.P.Rehearing deniedPTAB · Mar 3, 2021 · IPR2019-01404 · APJ Daniel J Galligan · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1, 4–11, and 14–23 unpatentable based on its construction of “mobile device” and findings on combining CDMA and TDMA.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. A rehearing request is not an opportunity for the requesting party to reargue its case or merely to express disagreement with the Final Written Decision. Nor is it an opportunity for the moving party to present new arguments that were not in its original submissions.” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We disagree that we misapprehended or overlooked any matters in addressing Patent Owner’s proposed construction for “mobile device.” Rather, we provided a comprehensive analysis of the term “mobile device.” anything that was overlooked or misapprehended in this analysis, as required by 37 C.F.R. § 42.71(d). Instead, Patent Owner merely expresses its disagreement with our conclusions and proceeds to reargue points and evidence already considered and rejected in the Final Written Decision. This approach is not proper in a rehearing request. Furthermore, Patent Owner’s own arguments show the error in its proposed construction. For example, Patent Owner argues that the recited “mobile device” “must register with and be able to directly communicate with the cellular network.” PO Resp. 13; Req. Reh’g 1 n.1. Yet, Patent Owner acknowledges that “the claims of the ’023 Patent require the apparatus/movable base station to communicate directly with the cellular network (and not the ‘mobile device’).” Req. Reh’g 3 (emphasis added). As we pointed out in the Final Decision, the only claimed communication involving the mobile device is between the claimed “apparatus” (the mobile base station) and the mobile device, and Patent Owner acknowledges that this communication need not be cellular. Final Dec. 14 (citing PO Sur-reply 9). Thus, Patent Owner’s arguments undermine its proposed construction.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundOther
“[t]he Board erred in finding that that ‘CDMA and TDMA are not incompatible’ by improperly disregarding substantial evidence set forth by Patent Owner and its expert—that undermines any expectation of success and would have discouraged a [person of ordinary skill in the art] from attempting Petitioner’s combinations.” Req. Reh’g 14 (citing Final Dec. 79). Patent Owner does not attempt to identify any specific errors in citing pages from Patent Owner’s written submissions and testimony from its declarant. Req. Reh’g 14 n.31. We disagree that we misapprehended or overlooked any matters in this regard. Rather, we considered Patent Owner’s submissions and disagreed with them, finding instead that the record demonstrated that CDMA and TDMA can be combined, and we relied on, among other evidence, a prior art reference that expressly discloses a combination of CDMA and TDMA. Final Dec. 56–57 (citing Ex. 1033), 79. We further found that a person of ordinary skill in the art would have had reason to make the proposed combinations and would have had a reasonable expectation of success in doing so. Final Dec. 57–58, 79–81. slip op. at 6
Claim construction§ 103 obviousnessPatents in suitUS 7,979,023 - PTAB · Feb 3, 2021 · IPR2020-01024 · APJ Jeffrey S Smith · IPR · Rehearing
The Board denied the Patent Owner’s rehearing request, leaving institution in place after finding no overlooked or misapprehended matter concerning claim construction or the prior-art obviousness showing.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). 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). The burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): (d) Rehearing. . . . 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. For the reason discussed below, Patent Owner’s Request for” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“preambles of claims 1, 5, and 22 are not like the preamble in the claim in Bio-Rad. Here, unlike Bio-Rad, the preamble recitation of “for use” in the preamble term “for use in a public transportation facility” expresses an intended use. See Opp. 8. Further, in Bio-Rad, the preamble recited a “method for conducting a reaction in plugs in a microfluidic system,” where the terms “a reaction” and “a microfluidic system” were recited in the body of the claim, and were intertwined with other preamble terms such as “conducting.” Bio-Rad, 967 F.3d at 1371. Here, the body of each independent claim does not recite “public transportation facility.” See Opp. 7. Further, the claim term “high voltage power source” is not intertwined with the claim term “for use in a public transportation facility,” because the “high voltage power source” is structurally complete by itself. Here, as in Catalina, “deletion of the disputed phrase [“for use in a public transportation facility”] from the preamble of Claim 1 does not affect the structural definition or operation of the [claimed apparatus] itself.” Catalina, 289 F.3d at 810; accord Opp. 8. In particular, the location or supply of the high voltage power source does not affect the structural definition or operation of the claimed “first power input adapted to be connected to the first standard high voltage power source,” nor any other limitation recited in the body of the claim of the LED light fixture itself. Also here, as in Catalina, “the specification, in its entirety, does not make the location of the [high voltage power source] an additional structure for the claimed [high voltage power source].” Id.; see Decision at 9–11; accord Opp. 3–4. Patent Owner does not show that the Decision overlooked or misapprehended Catalina or Bio-Rad. We deny rehearing on this basis.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Patent Owner’s contentions are inconsistent with the claims and the Specification. The claims do not separately recite “a high voltage power source” and “a voltage of 450 to 1000 Volts.” Rather, claim 1 recites “a high voltage power source having a voltage of 450 to 1000 Volts.” The Specification discloses that the high voltage power “source 34 can be 450- 1000V direct current.” Ex. 1002, 5:39–40. In reciting “a high voltage power source having a voltage of 450 to 1000 Volts,” claim 1 expressly limits the “high voltage power source” to the disclosed embodiment of a “source [that] can be 450-1000V direct current,” and excludes other embodiments of power sources having a voltage outside of this range. Further, the Specification discloses that the “source,” not the third rail, “can be 450-1000V,” without describing a specific structure that provides the voltage. Ex. 1002, 5:39–40. Contrary to Patent Owner’s contention, the Specification itself describes the high voltage power source in terms of what source can be. Id. Thus, the Decision’s construction of this term is consistent with its usage in the context of the Specification. See Phillips, 415 F.3d at 1315 (Fed. Cir. 2005) (“The words of patent claims have the meaning and scope with which they are used in the specification and the prosecution history. The best indicator of claim meaning is its usage in context.”) (internal citations omitted). Patent Owner does not show that we overlooked or misapprehended the meaning of the claimed “high voltage power source having a voltage of 450-1000 Volts” as used in context of the Specification. We deny rehearing on this basis.” slip op. at 8
Claim constructioncites PhillipsPatents in suitUS 10,190,760 - Fresenius Kabi USA, LLC / Fresenius Kabi Swissbiosim GmbH v. Coherus Biosciences, Inc.Rehearing deniedPTAB · Jan 27, 2021 · PGR2019-00064 · APJ Christopher G Paulraj · PGR · Rehearing
The Board denied Petitioner’s rehearing requests, leaving in place denial of institution based on the merits of the written-description and enablement challenges.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION A party requesting rehearing has the burden to show a decision should be modified by specifically identifying all matters the party believes were misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Petitioner’s arguments are unpersuasive because our construction of “stable” does not exclude the preferred embodiments. As Petitioner acknowledges, “[t]he Board did not construe ‘stable’ to be limited to formulations that are as stable as Humira or lose 20% of activity upon storage.” Id. at 3. Although our construction encompasses the “most” preferred embodiment (e.g., those that do not lose more than 5% of their activity during two years of long-term storage), it also encompasses other embodiments that are considered less preferred but nonetheless within the scope of what is defined to be “stable” in the specification, i.e., compositions that do “not lose more than 20%, or more preferably 15%, or even more preferably 10%” of activity. Ex. 1001, 9:28–33. Furthermore, consistent with the specification, our construction of “stable” encompasses embodiments in which stability is determined by comparison to the commercial formulation of adalimumab known in the prior art, i.e., Humira. Decision 8–9. We find no basis to construe “stable” to be limited to the only most preferred embodiment by requiring a loss of no more than 5% activity. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (stating “a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment”).” slip op. at 3
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not shown unpatentable
“These arguments are also unpersuasive. As stated in the Decision: [W]e find that the specification provides a detailed disclosure of the testing used to assess stability (using Humira as the control), and identifies specific ingredients to be included and excluded from the claimed composition, and further identifies the pH that is necessary to achieve the claimed stability. Although there may be certain concentrations of adalimumab or certain types of buffers and sugars that may render the compositions more difficult to stabilize, Petitioner does not explain sufficiently why a POSA would not have known how to adjust or select those ingredients in order to achieve the claimed stable aqueous pharmaceutical composition. Decision 17. As further stated in the Decision: Moreover, even if a POSA would have needed to test whether a particular composition was stable, “[t]he fact that some experimentation is necessary does not preclude enablement; what is required is that the amount of experimentation ‘must not be unduly extensive.” PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1564 (Fed. Cir. 1996) (citing Atlas Powder Co. v. E.I. DuPont De Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984)). Indeed, even “a considerable amount of experimentation is permissible, if it is merely routine, or if the specification in question provides a reasonable amount of guidance with respect to the direction in which the experimentation should proceed to enable the determination of how to practice a desired embodiment of the invention claimed.” Id. (citing Ex parte Jackson, 217 USPQ 804, 807 (BPAI 1982)). Id. at 17–18. Petitioner’s arguments do not persuade us that we committed legal or factual error in making the foregoing determinations. Accordingly, we are not persuaded that we abused our discretion in determining that Petitioner did not satisfy its burden with respect to the lack of enablement ground for claims 1–12.” slip op. at 5
- Disclosure Requirements (§112) › Written description (Ariad)Not shown unpatentable
“the specification identifies with sufficient clarity each of the ingredients that must be included as part of the claimed composition (i.e., adalimumab, a buffer, polysorbate 80, and a sugar) and further provides a reason to exclude the ingredients that must not be included in theclaimed composition (i.e., mannitol, a citrate/phosphate buffer combination, and sodium chloride). Id. at 13–14. The Decision also explained how one of ordinary skill in the art would recognize that the inventors possessed the claimed invention: Patent Owner identifies teachings in the specification indicating the structural features required for achieving a stable adalimumab composition, which include: 1) avoiding the citrate/phosphate buffer combination in favor of another more stable buffer (such as an acetate buffer); 2) including polysorbate 80 as a stabilizer; 3) removing sodium chloride (NaCl) from the formulation; 4) using a sugar or polyol as the tonicity modifier in place of mannitol/NaCl; and 5) maintaining a pH of at least 5 (with an optimal pH near 5.2). Id. at 60 (citing Ex. 1001, 5:42–44, 21:40–47, 37:25–38:4, 38:1–7, 61:24–25). Patent Owner further asserts, and we agree, that the specification “provides working examples that demonstrate comparable or superior stability to the commercial Humira® formulation” and that Petitioner fails to demonstrate why a POSA would doubt that the formulations that demonstrated improved stability relative to Humira would be stable. Id. at 60–61. Id. at 14. Petitioner’s arguments do not persuade us that we committed legal or factual error in making the foregoing determinations. Accordingly, we are not persuaded that we abused our discretion in determining that Petitioner did not satisfy its burden with respect to the lack of written description ground for claims 1–12.” slip op. at 7
Claim construction§ 112 disclosurePatents in suitUS 10,155,039 - PTAB · Dec 21, 2020 · IPR2020-00337 · APJ Charles J Boudreau · IPR · Rehearing
Denied Patent Owner’s request to reverse institution of review of claims 1–3, 7, 16, and 18; Patent Owner did not show an erroneous construction or abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We maintain, at this stage of the proceeding, that the construction of conversational flow should not include “(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.” As we explained in the Institution Decision, phrases beginning with “for instance,” “where some,” and “some” are “merely exemplary and non-limiting.” Inst. Dec. 29. Patent Owner does not persuade us, on this record, that omission of these phrases from our definition of “conversational flow” is, as a matter of claim construction, erroneous. See Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 811 (Fed. Cir. 2002) (holding that exemplary language “introduces an example of a broader genus rather than limiting the genus to the exemplary species”).” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“We nevertheless preliminarily construed “conversational flow” as a “sequence of packets that are exchanged in any direction as a result of an activity.” Inst. Dec. 29. We explained that we saw no “reason to include the additional phrases of the prior Board and district court constructions”— namely, the phrases “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.” Id. (emphases added). We maintain, at this stage of the proceeding, that the construction of conversational flow should not include “(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.” As we explained in the Institution Decision, phrases beginning with “for instance,” “where some,” and “some” are “merely exemplary and non-limiting.” Inst. Dec. 29. Patent Owner does not persuade us, on this record, that omission of these phrases from our definition of “conversational flow” is, as a matter of claim construction, erroneous. See Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 811 (Fed. Cir. 2002) (holding that exemplary language “introduces an example of a broader genus rather than limiting the genus to the exemplary species”).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION On this record, Patent Owner neither persuades us that we overlooked or misapprehended any matter, nor sufficiently shows that instituting an inter partes review of claims 1–3, 7, 16, and 18 of the ’646 patent was an abuse of discretion. V. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Request for Rehearing is denied.” slip op. at 6
Claim constructionPatents in suitUS 6,771,646 - U.S. Venture, Inc. v. Sunoco Partners Marketing & Terminals L.P.Rehearing deniedPTAB · Dec 17, 2020 · IPR2020-00728 · APJ Brent M Dougal · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution for claims 16–17 based on the Fintiv factors and its § 314(a) discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). 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). The burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): 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 to present new arguments or evidence or merely to disagree with the panel’s assessment of the arguments or weighing of the evidence.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“the evidence laid out an approximate time frame for when the trial would likely be held. Dec. 9 (citing Ex. 2003); see also id. at 8–9 (citing PO Resp. 35; Ex. 1026) (Discussing the Court’s Procedures and timeline for trial after the docket call). Thus, we determined that this factor favored denying institution under our analysis of the factors under Fintiv. Id. at 9.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner acknowledges that the proposed combination of the references relies on “us[ing] the cumulative totals of the flow rates of the unblended components in the Hoffman compensation process” (id.), however Patent Owner identifies that Hoffman appears to teach away from using the flow rates of the unblended components in its calculations because of the uncertainty in the flow rate of the blended line. Prelim. Resp. 19, 21– 22. Contrary to Petitioner’s position, it is not Patent Owner’s burden to show why “a person of ordinary skill in the art would be discouraged from measuring flow rates upstream for use in the Hoffman compensation process” (Reh. Req. 9), but rather, Petitioner bears the burden to show why a person of ordinary skill in the art would measure flow rates upstream for use in the Hoffman compensation process in view of the all of the teachings of the references (35 U.S.C. § 314(a) (Institution only authorized if “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”)). Petitioner’s arguments do not show that we misapprehended or” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageNot reached
“argument concerning the construction of the term “in-line blending.” Id. at 13.” slip op. at 6
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 9,207,686 - Satco Products, Inc. v. Seoul Semiconductor Co., LtdRehearing deniedPTAB · Dec 8, 2020 · IPR2020-00248 · APJ Jeffrey W Abraham · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution because Petitioner did not show that Sanga disclosed the claimed spacer-layer bandgap requirement.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“support of its assertion that Sanga’s n-side multilayer has a bandgap lower than a GaN layer. Reh’g Req. 10–12. For example, Petitioner attempts to rely on an annotated figure from Exhibit 2005, an exhibit submitted by Patent Owner with its Preliminary Response. Reh’g Req. 10–12. Although we did refer to Exhibit 2005 in our Decision (Dec. 13–14), Petitioner did not rely on Exhibit 2005 in its Petition, and the annotated figure Petitioner presents in the Rehearing Request, along with the corresponding arguments, are entirely new. A request for rehearing is not an opportunity to present new arguments or evidence. See 37 C.F.R. § 42.71(d). Even if we were to consider Petitioner’s newly annotated figure and the accompanying discussion in the Rehearing Request, we note that it is composed entirely of attorney argument. Reh’g Req. 10–12. There is no testimony from Petitioner’s declarant regarding the figure, the annotations, or conclusions drawn therefrom. We further note that none of the alleged superlattice structures shown on Figure 26 of Ex. 2005 match the composition of Sanga’s GaN/In0.03Ga0.97N n-side multilayer 10 in Example 1 that Petitioner relies upon. As such, on the present record, we are not persuaded by Petitioner’s ultimate conclusion that “regardless of the precise bandgap of the multilayer structure, even very low indium content in part of a superlattice structure causes the bandgap of the overall structure to be lower than the ~3.5eV bandgap of a GaN layer.” Reh’g Req. 12.” slip op. at 9
- BurdenDecided for patent owner
“We further note that for purposes of the bandgap requirement of the spacer layer limitation, Petitioner relies on the specific barrier layer, spacer layer, and quantum well layer described for Example 1. Pet. 35–36 (comparing the bandgap of the In0.03Ga0.97N layer of Example 1 with the GaN barrier layer of Example 1 and the In0.3Ga0.7N quantum well layer of Example 1). Example 1 does not expressly include an n-side multilayer structure with an InxGa1-xN/InyGa1-yN configuration, wherein each layer contains indium and x<y≤ 0.1. Therefore, Petitioner’s analysis of the bandgap requirement for claim 9, which expressly relies on Sanga Example 1, requires replacing the actual spacer layer in Example 1 with a different layer, while keeping the barrier layer and quantum well layer the same for purposes of bandgap comparison. Petitioner, however, has not provided adequate justification for doing so. Petitioner’s citation to Sanga’s general disclosure of “a multilayer having a periodic structure repeating InxGa1-xN/InyGa1-yN (0≦x<y<1)” in support of its InGaN/InGaN stack argument is unhelpful. Reh’g Req. 3. We acknowledge that this statement discloses the use of stacked InGaN layers of varying indium composition in general. But Petitioner does not direct us to bandgap values for this generic periodic structure, and to arrive at the bandgap requirement of the spacer layer limitation of claim 9, Petitioner refers back to Example 1, and its analysis of the bandgap values of the specific barrier layer, spacer layer, and quantum well layer disclosed therein. As such, we are not persuaded this general disclosure of Sanga cures the deficiencies discussed above.” slip op. at 6
- Strike new argumentNew argument disregardedDecided for patent owner
“In its Rehearing Request, Petitioner presents new arguments in support of its assertion that Sanga’s n-side multilayer has a bandgap lower than a GaN layer. Reh’g Req. 10–12. For example, Petitioner attempts to rely on an annotated figure from Exhibit 2005, an exhibit submitted by Patent Owner with its Preliminary Response. Reh’g Req. 10–12. Although we did refer to Exhibit 2005 in our Decision (Dec. 13–14), Petitioner did not rely on Exhibit 2005 in its Petition, and the annotated figure Petitioner presents in the Rehearing Request, along with the corresponding arguments, are entirely new. A request for rehearing is not an opportunity to present new arguments or evidence. See 37 C.F.R. § 42.71(d). Even if we were to consider Petitioner’s newly annotated figure and the accompanying discussion in the Rehearing Request, we note that it is composed entirely of attorney argument. Reh’g Req. 10–12. There is no testimony from Petitioner’s declarant regarding the figure, the annotations, or conclusions drawn therefrom. We further note that none of the alleged superlattice structures shown on Figure 26 of Ex. 2005 match the composition of Sanga’s GaN/In0.03Ga0.97N n-side multilayer 10 in Example 1 that Petitioner relies upon. As such, on the present record, we are not persuaded by Petitioner’s ultimate conclusion that “regardless of the precise bandgap of the multilayer structure, even very low indium content in part of a superlattice structure causes the bandgap of the overall structure to be lower than the ~3.5eV bandgap of a GaN layer.” Reh’g Req. 12.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“bandgap requirement to the spacer layer as a whole, but Patent Owner argued that this requirement should be construed such that it requires all the layers comprising the spacer layer to meet the bandgap requirement. Reh’g Req. 6. Petitioner, however, never identifies any particular matter that we misapprehended or overlooked in connection with this argument. Furthermore, Petitioner did not propose a construction of the bandgap requirement in the Petition (Pet. 7–20), and Patent Owner argued that Petitioner’s arguments fail regardless of how the bandgap limitation is construed (Prelim. Resp. 36). In this regard, we note that in our Decision we determined that we did not need to construe the bandgap requirement. Dec. 6.” slip op. at 7
Claim constructionPatents in suitUS 9,716,210 - PTAB · Dec 8, 2020 · IPR2020-00486 · APJ Kristi L R Sawert · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, leaving institution in place for claims 1, 2, 13–17, 19, 20, 31, 33, 34, 42, 44, 48, and 49.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that a 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
“We nevertheless preliminary construed “conversational flow” as a “sequence of packets that are exchanged in any direction as a result of an activity.” Id. at 30. We explained that we saw no “reason to include the additional phrases of the prior Board and district court constructions”— namely, the phrases “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.” Id. at 30 (emphases added). We maintain, at this stage of the proceeding, that the construction of conversational flow should not include “(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.” As we explained in the Institution Decision, phrases beginning with “for instance,” “where some,” and “some” are “merely exemplary and non-limiting.” Id. Patent Owner does not persuade us, on this record, that omission of these phrases from our definition of “conversational flow” is, as a matter of claim construction, erroneous. See Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 811 (Fed. Cir. 2002) (holding that exemplary language “introduces an example of a broader genus rather than limiting the genus to the exemplary species”).” slip op. at 3
Claim constructionPatents in suitUS 6,954,789 - 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 - Supercell OY v. Gree, Inc.Rehearing deniedPTAB · Nov 18, 2020 · PGR2020-00041 · APJ Lynne H Browne · PGR · Rehearing
The Board denied Supercell’s rehearing request, upholding denial of institution based on the Fintiv factors and the risk of duplicated efforts and inconsistent results.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“this factor or that we misapprehended the trial date. At the time of our Decision, trial was scheduled in the parallel proceeding for December 7, 2020, approximately nine months before our final written decision would have been due, if we were to institute trial. Dec. 10–11. As such, this gap in timing created a cognizable risk of inconsistent results and duplication of efforts, which weighed toward denying institution. Id. at 7, 11. Additionally, the Decision notes that some uncertainty exists regarding trial dates, as Petitioner again argues in its Request. Id. at 11; Req. Reh’g 4. However, the Decision goes on to determine that even if trial in the parallel proceeding was delayed by two months, consistent with Petitioner’s prior requested delay, the proximity of the trial date to our final written decision would still favor denying institution. Dec. 12 (citing Ex. 2002, 2). As such, Petitioner has not shown that the Board misapprehended the trial date.” slip op. at 5
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“contentions. In our Decision, we relied in part upon Dr. Claypool’s testimony from related litigation between the parties in determining that Petitioner failed to meet its burden of demonstrating that Mastermind was” slip op. at 8
- BurdenDecided for patent owner
“Petitioner was provided an opportunity to respond to this evidence to address any “time-based distinctions in Dr. Claypool’s testimony,” however, Petitioner declined to address this testimony in its Preliminary Reply, despite having the opportunity to do so. Prelim. Reply 5–7. We decline to consider now, on rehearing, arguments that Petitioner failed to make in its pre-institution papers. It is Petitioner’s burden to demonstrate that Mastermind was publicly accessible. As we stated in our Decision, this prior testimony casts serious doubt on Petitioner’s ability to satisfy that burden. Dec. 25. We also decline to consider new testimonial evidence submitted on rehearing on this issue, as Petitioner does not show good cause for admitting this new evidence. See Huawei Device Co. v. Optics Cellular Tech., LLC, IPR2018-00816, Paper 19 (PTAB Jan. 8, 2019) (precedential) (showing of “good cause” required prior to filing a rehearing request or in the request itself for new exhibits to be admitted). We could not have misapprehended or overlooked evidence and arguments that were not made before our Decision.” slip op. at 9
§ 102 anticipationDiscretionary denialPatents in suitUS 10,307,677 - Supercell OY v. Gree, Inc.Rehearing deniedPTAB · Nov 18, 2020 · PGR2020-00039 · APJ Lynne H Browne · PGR · Rehearing
The Board denied Supercell’s rehearing request, leaving in place denial of institution of PGR challenging claims 1–24 based on the Fintiv factors and parallel litigation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of 2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. 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). Additionally, 37 C.F.R. § 42.71(d) further provides that “[t]he burden of showing a decision should be modified lies with the party challenging the decision,” i.e., Petitioner, and “[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.”” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“the parties jointly requested a trial delay in the prior proceeding, from December 7, 2020, to March 1, 2021, which the district court granted. Ex. 1024, 1. Even considering these post-Decision developments, this three month delay results in a trial date in the parallel proceeding set six months before our final written decision would be due. Similar to the potential delay discussed in our Decision, a jury trial set to begin six months before a final written decision also weighs in favor of denying institution. Dec. 12; see Prelim. Resp. 11 (identifying three prior PTAB proceedings in which institution was denied where trial was scheduled to occur six months before a final written decision, including the precedential NHK Spring decision). We decline to speculate, absent case-specific evidence, as to any future additional delay of the parallel proceeding’s trial date that may— or may not—be requested by the parties, and that may—or may not— be granted by the district court. See Ex. 1024, 1, 4 (indicating that the trial date “cannot be changed without showing good cause,” which “is not shown merely by indicating that the parties agree that the deadline should be changed”) (emphasis omitted). On the current record, a cognizable risk of inconsistent results exists, due to the scheduled date of trial and the statutory due date of a final written decision.3” slip op. at 6
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedOther
“contentions. In our Decision, we relied in part upon Dr. Claypool’s testimony from related litigation between the parties in determining that Petitioner failed to meet its burden of demonstrating that Mastermind was publicly accessible. Dec. 24–25. Specifically, we relied upon Dr. Claypool’s prior testimony that, 4 “Mastermind’s In-Game Builder Idea (with LOADS of pictures!)” (“Mastermind”), available at https://web.archive.org/web/20130915081112/http:/forum.supercell.net:80/s howthread.php/149687-Mastermind-s-In-Game-Builder-Idea-(with-LOADSof-pictures!) (in two parts) (Ex. 1015, “Olesiuk Decl.”). it is my opinion that a diligent, skilled researcher engaged in a reasonable search for prior art would not have found Mastermind as a prior art reference even with the benefit of [Patent Owner’s] infringement contentions before the filing of the Petition for Post-Grant Review. A diligent, skilled researcher would not spend time sifting through the suggestions provided on Internet message boards, as they would normally not include useful or sufficiently detailed suggestions. Ex. 2009 ¶ 164 (emphasis added); Dec. 25.” slip op. at 8
- Other 314aDecided for patent owner
“different posture of PGR proceedings as compared to IPR proceedings, when exercising discretion to deny institution. As summarized above, the Decision discusses that common statutory language exists in § 314(a)— directed toward IPR proceedings—and in § 324(a)—directed to post-grant review proceedings. See supra § I.A; Dec. 5–8. The Decision also discusses the common policy justifications implicated when determining whether to institute either an IPR proceeding or a PGR proceeding. Dec. 6–7. The Decision then goes on to recognize and discuss certain differences between PGR proceedings and IPR proceedings. Id. at 7–8. Despite these differences, we determined that the Board’s binding precedent set forth in NHK Spring and Fintiv applies to this PGR proceeding. Id. In doing so, we additionally evaluated certain differences between PGR proceedings and IPR proceedings, when considering the Fintiv Order factors. See, e.g., id. at 12, 15–16, 18–20. Petitioner has not demonstrated that we abused our discretion in doing so.” slip op. at 11
§ 102 anticipationDiscretionary denialPatents in suitUS 10,307,676
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.