- Riot Games, Inc. v. Paltalk Holdings, Inc.Rehearing deniedPTAB · Jun 29, 2018 · IPR2018-00129 · APJ Thu A Dang · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no abuse of discretion in instituting review of claims 1–10, 16–18, and 31–47 based on the RFCs’ public accessibility.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS When rehearing a decision on petition, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing an abuse of discretion, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“and slides) disseminated to members of even a somewhat closed group without restriction as to further dissemination may tend to indicate public accessibility of the documents, in light of other factors, even in the absence of indexing for search purposes. See Medtronic, Inc. v. Barry, No. 2017- 1169, 2018 WL 2769092, at **8–9 (Fed. Cir. June 11, 2018) (“Further, even if the Board were correct in its assumption that Medtronic only gave the Video and Slides to the SDSG members, it did not address whether the disclosures would remain confidential.”)4 On this preliminary record, Petitioner’s evidence shows sufficiently that mailing list members would have been apprised of a new RFC’s contents, at least via the Internet Society’s newsletter’s summary, if not via the mailing list (coupled with prior knowledge of the documents via group circulation thereof), with unrestricted access to the newly published RFC documents, and without any further restriction as to dissemination. See Ex. 1026 ¶¶ 18–24. In other words, prior to official publication of RFC documents, “[t]he Area Director . . . circulates the document to the wider IETF community, for comment, and” slip op. at 7
§ 102 anticipationPatents in suitUS 5,822,523 - Riot Games, Inc. v. Paltalk Holdings, Inc.Rehearing deniedPTAB · Jun 29, 2018 · IPR2018-00130 · APJ Thu A Dang · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no abuse of discretion in instituting inter partes review of claims 1, 11–15, and 19–30 based on the RFCs’ public accessibility.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Based on the foregoing discussion, Patent Owner fails to show an overlooked or misapprehended material matter amounting to an abuse of discretion in determining Petitioner shows sufficiently that RFC 1692, RFC 1459, and RFC 791 qualify as prior art printed publications. III. CONCLUSION Patent Owner has not carried its burden of demonstrating that we misapprehended or overlooked any material matters in the Decision, and has not shown an abuse of discretion in the Decision to institute an inter partes review of the challenged claims of the ’523 patent. IV. ORDER In consideration of the foregoing, it is hereby ORDERED that Patent Owner’s Request for Rehearing is denied.” slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Crocker’s testimony that the RFCs were available generally prior to the critical date, wherein a skilled artisan could have determined how to access particular RFCs based on mailing lists and newsletters discussing the RFCs. See Dec. 30–32. In particular, Mr. Crocker’s testimony included the (numbered accordingly), the “situation” regarding RFCs and the IETF, as summarized by the court employing, in part, evidence including a 1997 SEC (Securities Exchange Commission”) filing, would not have changed materially prior to the critical date (February, 1996) involved here. following: 1) “an official summary of published RFCs appeared in each issue of the Internet Society’s newsletter” which “was well-known to members of the Internet technical community as a source for an official summary of published RFCs” (id. at 31 (citing Ex. 1026 ¶ 24)); 2) a well-known mailing list announced RFCs to which anyone could subscribe since the late 1980s (id. (citing Ex. 1026 ¶ 21)); and 3) an RFC Editor publication “summarize[d] the status of all Internet protocol and service specifications” wherein “[t]hese RFCs are made publicly available pursuant to the standard RFC publication process” (id. (citing Ex. 1026 ¶ 23)). Mr. Crocker further testifies as follows: “Since the early 1990s, the RFC Editor repository has been freely accessible to the general public with no login, password, or membership requirement, and was similarly available to the Internet technical community since the 1970s.” Id. (citing Ex. 1026 ¶ 26).” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“of our Decision (Paper 11, “Dec.”) to institute inter partes review of claims 1, 11–15, and 19–30 of (the “challenged claims”) of U.S. Patent No. 5,822,523 and 5,822,523 C1 (Ex. 1001, the “’523 patent”). In the Decision, we instituted a trial on the following grounds asserted by Petitioner: 1) claims 1, 15, and 19–27 of the ’523 patent for obviousness over Aldred and RFC 1692; and 2) claims 11–15, 23, and 27–30 of the ’523 patent for obviousness over Aldred, RFC 1692, and Ulrich. Dec. 49. For the reasons stated below, Patent Owner’s Request for Rehearing is denied.” slip op. at 2
§ 102 anticipationPatents in suitUS 5,822,523 - Prime Focus Creative Services Canada Inc. v. Legend3d, Inc.Rehearing deniedPTAB · Feb 17, 2017 · IPR2016-01243 · APJ Kamran Jivani · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution of review of claims 1–20 in place based on a reasonable-likelihood finding concerning priority.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision . . .” who “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“written description assertion on behalf of the Petitioner” and (f) that “[t]he PTAB supplied an argument for lack of inherency when the Petitioner did not” are unfounded. Reh’g Req. 6, 13. As set forth in our Decision, central to the dispute between Petitioner and Patent Owner is whether the ’081 and ’670 patents may serve as prior art in an obviousness analysis of the Challenged Claims. Decision 7. This question turns on whether the ’793 patent is entitled to priority on the basis of the disclosure in the ’081 and ’670 patents. Id. Under the relevant statutes and controlling case law, the issue of whether a claim receives the benefit of an earlier application’s filing date requires us to consider whether the limitations of that claim are expressly, implicitly, or inherently supported in the earlier-filed disclosure as understood by a person of ordinary skill in the art at the time of filing. Id. Thus, the parties’ contentions—not this Board—placed at issue the question of whether the written descriptions of the ’081 and ’670 patents adequately support the Challenged Claims.” slip op. at 6
- Skill levelSkill level board ownOther
“Finally, Patent Owner’s assertion that our “Decision is based on Petitioner’s definition of POSITA” in support of its argument (g) is deficient on its face. Reh’g Req. 13. Patent Owner offers no citation to our Decision in support of this contention because no such citation is possible; our Decision did not adopt Petitioner’s definition of the level of ordinary skill. See generally Decision. Moreover, Patent Owner’s argument ignores Patent Owner’s assertion that: A person of ordinary skill in the art at the time of the alleged invention would generally have had at least a Bachelor’s degree education or equivalent and seven or more years of relevant work experience in the area of image analysis or image enhancement; alternatively, if an academic, a person of ordinary skill in the art at the time of the alleged invention would have had a PhD in a field related to computer image analysis or image enhancement and several years of relevant research. Pet. 18–19. We note Patent Owner’s Preliminary Response fails to address this detailed assertion. Prelim. Resp. 27–28. Instead, Patent Owner chose to offer in its Preliminary Response a significantly less detailed, circular assertion “that a Person of Ordinary Skill in the Art (POSITA) is anyone capable of setting a ‘depth parameter’ to affect depth.” Id.” slip op. at 7
§ 112 disclosurePatents in suitUS 7,907,793 - Gopro, Inc. v. Contour IP Holding LLCRehearing deniedPTAB · Feb 16, 2017 · IPR2015-01080 · APJ Justin T Arbes · IPR · Rehearing
The Board denied GoPro’s rehearing request, leaving intact its determination that claims 1, 2, and 11–30 were not shown unpatentable because the GoPro Catalog was not proven publicly accessible.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“the Reply and at the oral hearing. Mere disagreement with a decision is not a proper basis for rehearing when a party’s arguments were considered and addressed in the decision. As we stated in the Final Decision, although some cases, such as In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989), refer simply to “the public interested in the art,” the majority of cases define the standard as accessibility to persons interested and ordinarily skilled in the art. Dec. 19–21. We remain persuaded that the appropriate standard is that set forth in Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016): “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’” (citation omitted).2” slip op. at 4
- BurdenDecided for patent owner
“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
§ 102 anticipationPatents in suitUS 8,890,954 - Gopro, Inc. v. Contour IP Holding LLCRehearing deniedPTAB · Feb 16, 2017 · IPR2015-01078 · APJ Justin T Arbes · IPR · Rehearing
The Board denied GoPro’s rehearing request, leaving its determination that claims 1–20 were not shown unpatentable because the GoPro Catalog was not proven to be a publicly accessible prior art printed publication.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Analysis The party requesting rehearing bears the burden of showing that a 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
- BurdenNot shown unpatentable
“out in the Final Decision, and emphasize again, that Petitioner provided no underlying facts or evidence to substantiate this, other than Mr. Jones’s bare statement that Petitioner “continued to distribute and otherwise make available the GoPro Catalog to [Petitioner’s] actual and potential customers, dealers and retailers through its website, direct mail, and other means of distribution.” See Dec. 22 n.8; Ex. 1012 ¶ 11; Ex. 1022 ¶ 10. We are not persuaded that simply stating that a document was available “by mail” or “on a website,” without additional detail, is sufficient to demonstrate public accessibility of a reference. See Blue Calypso, 815 F.3d at 1349–50 (analyzing the underlying facts regarding a report posted on a website, including the lack of evidence that anyone “viewed or downloaded” the report or that “a query of a search engine” would have led to it). For example, Petitioner does not tell us the website to which it is referring from 2009, identify or provide a copy of the specific web page from which the GoPro Catalog allegedly could have been downloaded, or explain in any detail how someone could have obtained a hard copy via mail. Without supporting evidence from Petitioner, we are unable to determine how potential availability online or by mail impacts the analysis, and are left only with Petitioner’s evidence regarding the 2009 Tucker Rocky Dealer Show, as explained in the Final Decision. See Dec. 22–28 & n.8. It was Petitioner’s burden to prove unpatentability by a preponderance of the evidence, including proving that the GoPro Catalog qualifies as a prior art printed publication under 35 U.S.C. § 102(b). See Pet. 24; 35 U.S.C. § 316(e); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1375–80 (Fed. Cir. 2016); Blue Calypso, 815 F.3d at 1348–51 (affirming Board decision that the petitioner “failed to carry its burden of proving public accessibility” of an asserted reference); Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378–79 (Fed. Cir. 2015) (“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. ‘Failure to prove the matter as required by the applicable standard means that the party with the burden of persuasion loses on that point—thus, if the fact trier of the issue is left uncertain, the party with the burden loses.’” (citations omitted)). The limited evidence and argument provided by Petitioner during trial did not suffice to meet that burden, for the reasons explained in the Final Decision. See Dec. 19–28.” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“proof that Petitioner physically provided a copy of the GoPro Catalog to someone at the 2009 Tucker Rocky Dealer Show that was of ordinary skill in the art. Rather, as Patent Owner correctly points out, we found no evidence that persons of ordinary skill in the art would have been in attendance at—or even aware of—the 2009 Tucker Rocky Dealer Show, such that they could have obtained a copy there. See Dec. 25–28; Opp. 2, 8–13. This is a factor supporting Patent Owner’s position that the GoPro Catalog was not sufficiently accessible to persons interested and of ordinary skill in the art. See Dec. 25–28; Paper 30, 10–13. Again, Petitioner provided no evidence during trial that the 2009 Tucker Rocky Dealer Show was advertised to or open to the general public, such that the public would have known about the show and could have obtained a copy of the GoPro Catalog there, and Patent Owner presented some evidence to the contrary. Dec. 23–25 (citing Exs. 2001, 2002, 1012 ¶ 5). Further, as explained in the Final Decision, the 2009 Tucker Rocky Dealer Show primarily pertained to motorcycles and other action sports vehicles and was directed to sales and marketing personnel, but a person of ordinary skill in the art for purposes of the ’694 patent is someone with a technical background with digital video cameras. Id. at 18–19, 22–28 (citing Exs. 1012, 2001).” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Other
“inconsistent” with our Decision on Institution (Paper 8, “Dec. on Inst.”). Req. Reh’g 4, 7, 12–14. Petitioner is incorrect. At the institution stage, the standard for institution is “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition,” and we look for only a threshold showing that an asserted reference is prior art. See 35 U.S.C. § 314(a); Dec. on Inst. 13. At the final decision stage, however, a petitioner has the burden of providing unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e). There is no inconsistency between finding a reasonable likelihood of prevailing at the time of institution and less than a preponderance of the evidence in a final decision. Indeed, at institution, “the Board is considering the matter preliminarily without the benefit of a full record.” Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016). “The Board is free to change its view of the merits after further development of the record, and should do so if convinced its initial inclinations were wrong. To conclude otherwise would collapse these two very different analyses into one . . . .” Id. We stated in the Decision on Institution that our finding of a threshold showing by Petitioner was “[b]ased on the current record.” Dec. on Inst. 17 (“The fact that we institute an inter partes review on a not fully developed record is not dispositive of the ultimate legal conclusion as to whether the GoPro Catalog qualifies as prior art. That conclusion will be based on a preponderance of the fully developed record evidence.”). slip op. at 6
§ 102 anticipationPatents in suitUS 8,896,694 - DISH Network L.L.C. v. Dragon Intellectual Property, LLCRehearing deniedPTAB · Oct 20, 2015 · IPR2015-00499 · APJ Stacey G White · IPR · Rehearing
The Board denied rehearing, leaving institution in place only for claims 1–4, 7–10, and 13–14 on Goldwasser-based grounds; Truog-based grounds and Ground 10 remain denied.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Petitioner’s arguments with these principles in mind.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“personal knowledge as to when and how the Truog thesis was made available to the public, and his testimony also is insufficient evidence of the library’s specific practices as to indexing and cataloging papers in the relevant time period between Truog’s purported publication in 1989 and the ’444 patent’s 1992 priority date.” Dec. 11. For reasons discussed below, we are not persuaded of error in this determination. Mr. Bender’s testimony does not provide sufficient evidence of either general library practice or the specific facts surrounding the purported publication of Mr. Truog’s thesis.” slip op. at 5
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“personal knowledge as to when and how the Truog thesis was made available to the public, and his testimony also is insufficient evidence of the library’s specific practices as to indexing and cataloging papers in the relevant time period between Truog’s purported publication in 1989 and the ’444 patent’s 1992 priority date.” Dec. 11. For reasons discussed below, we are not persuaded of error in this determination. Mr. Bender’s testimony does not provide sufficient evidence of either general library practice or the specific facts surrounding the purported publication of Mr. Truog’s thesis.” slip op. at 5
- Other 314aInstitution denied
“10 over the teachings of Goldwasser, Yifrach, and Ulmer (“Ground 10”). Req. Reh’g 12. We exercised our discretion and declined to institute on this ground. Dec. 19. Petitioner does not direct us to anything that was” slip op. at 8
§ 102 anticipationDiscretionary denialPatents in suitUS 5,930,444 - Epic Lift Systems, LLC v. Integrated Production Services, Inc.Rehearing deniedPTAB · Jul 28, 2015 · IPR2015-00430 · APJ James P Calve · IPR · Rehearing
The Board denied Epic’s request for rehearing, finding no abuse of discretion in declining to institute anticipation review of claims 1, 5-9, 13-15, and 22-24 over Wells.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Epic’s arguments do not persuade us that we overlooked any matter. Claims 1 and 9 recite that the housing, separator rod, and sleeve provide flow passages for formation contents or flow, “at least one of the flow passages being of variable cross-sectional size producing a pressure drop sufficient to hold the sleeve in the housing against gravity.” The Decision stated that “Epic does not explain adequately how bypass 36 produces a pressure drop across sleeve 38 sufficient to hold sleeve 38 in well head assembly 20 against gravity.” Decision 13, 14. The issue is not whether sleeve 38 is stuck or held in well head assembly 20 in certain conditions. The issue is whether sleeve 38 is held in the wellhead by a pressure drop produced by a flow passage of variable cross-sectional size, as claimed.” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Claims 1 and 9 recite that the housing, separator rod, and sleeve provide flow passages for formation contents or flow, “at least one of the flow passages being of variable cross-sectional size producing a pressure drop sufficient to hold the sleeve in the housing against gravity.” The Decision stated that “Epic does not explain adequately how bypass 36 produces a pressure drop across sleeve 38 sufficient to hold sleeve 38 in well head assembly 20 against gravity.” Decision 13, 14. The issue is not whether sleeve 38 is stuck or held in well head assembly 20 in certain conditions. The issue is whether sleeve 38 is held in the wellhead by a pressure drop produced by a flow passage of variable cross-sectional size, as claimed.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review of claims 1, 5–9, 13–15, and 22–24 of U.S. Patent No. 6,719,060 B1 (Ex. 1001, “the ’060 patent”). Paper 2 (“Pet.”). We instituted inter partes review of all claims under 35 U.S.C. § 103(a) for obviousness over Wells1 and Knox.2 Paper 9 (“Decision”), 26. Epic filed a request for rehearing of our decision not to institute inter partes review of claims 1, 5–9, 13–15, and 22–24 for anticipation by Wells. Paper 14 (“Req. Reh’g”), 1–2. In determining whether to institute an inter partes review of a patent, the Board may “deny some or all grounds for unpatentability for some or all of the challenged claims.” 37 C.F.R. § 42.108(b). When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing an abuse of discretion, 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.” 37 C.F.R. § 42.71(d).” slip op. at 2
§ 102 anticipationPatents in suitUS 6,719,060 - PTAB · Jul 23, 2015 · IPR2015-00158 · APJ Neil T Powell · IPR · Rehearing
The Board denied Sony’s rehearing request, leaving institution denied for all challenged claims because the petition failed to establish the asserted priority-date and Luick limitations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“persuaded that the probe filtering information disclosed in the ’347 application does relate to the probe filtering information in the challenged claims. Dec. 17. Specifically, we held that we were persuaded that the “probe filtering information” disclosed in the ’347 application constitutes “probe filtering information” under the broadest reasonable interpretation of that language in the challenged claims. Id. The Petition did not argue, as the request now suggests, that the challenged claims are not entitled to the filing date of the ’347 application because the ’347 application does not provide written description support for the full scope of the challenged claims. Accordingly, we are not persuaded that the request identifies a matter in the Petition that we overlooked or misapprehended.” slip op. at 5
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Table (“GCT”) constitutes “probe filtering information,” as recited in independent claims 1, 16, and 25. See Pet. 34–35. Our Decision denied the claim challenges based on Luick, holding that Petitioner had not addressed adequately the limitation in the independent claims that the “probe filtering information” is “representative of states associated with selected ones of the cache memories.” Dec. 32–33. Specifically, our Decision explained that the Petition did not persuade us that Luick or any of the other cited references teach this limitation. Id. at 33–34. Our Decision noted that we were persuaded that Luick’s GCT contains information about which nodes contain shared data blocks, but does not contain information about whether those nodes have the data blocks in memory 105 or cache 107. Id. at 33. Our Decision further explained that it was “not facially apparent that the information in Luick’s GCT is ‘representative of states associated with selected ones of the cache memories.’” Id. Additionally, our Decision noted, the Petition neither provided any explanation showing that Luick’s GCT contained information “representative of states associated with selected ones of the cache memories,” nor asserted that any of the other cited references teach this limitation. Id. at 33–34.” slip op. at 6
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“Petition’s argument that the definition of “probe filtering information” changed between the ’347 application and the ’161 application. See, e.g., Dec. 15–16. The Petition suggested that the effect of the alleged definition change is that the probe filtering information disclosed in the ’347 application bears no relationship to the claims of the ’121 patent. See Pet. 6 (“the definition of ‘probe filtering information’ changed between the [’347 application] and the ’121 Patent such that the definition in the [’347 application] is admittedly unrelated to the claims of the ’121 Patent”). In our Decision, we held that, contrary to the Petition’s argument, we were persuaded that the probe filtering information disclosed in the ’347 application does relate to the probe filtering information in the challenged claims. Dec. 17. Specifically, we held that we were persuaded that the “probe filtering information” disclosed in the ’347 application constitutes “probe filtering information” under the broadest reasonable interpretation of that language in the challenged claims. Id. The Petition did not argue, as the request now suggests, that the challenged claims are not entitled to the filing date of the ’347 application because the ’347 application does not provide written description support for the full scope of the challenged claims. Accordingly, we are not persuaded that the request identifies a matter in the Petition that we overlooked or misapprehended.” slip op. at 4
§ 103 obviousness§ 112 disclosurePatents in suitUS 7,296,121 - Apple Inc. / HTC Corporation et al. v. Memory Integrity, LLCRehearing deniedPTAB · Jul 21, 2015 · IPR2015-00159 · APJ Kerry Begley · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution for claim 12 because Petitioner did not show that Pong necessarily discloses completing a memory transaction after exactly one response.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“review the decision for an “abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing [the] decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). 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” the petition. Id.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“sufficiently that Pong inherently discloses “after receiving a first number of responses to a first probe” “and the first number is one,” as recited in claim 12. See Decision – Institution of Inter Partes Review (Paper 12, “Dec.”), 23–24. Upon careful review and analysis of the claims and written description of the ’121 patent, we concluded that the Petition’s proposed interpretation of this limitation as encompassing processing nodes programmed to complete a memory transaction at any time after receiving one response—including after receiving two, three, four, etc. responses— was too broad to be reasonable. Id. at 10–13. Instead, we determined that “after receiving a first number of responses to a first probe” “wherein . . . the first number is one” means “after receiving one response—not at least one or more than one response, as Petitioner proposes.” Id. at 13. Under this claim construction, we were not persuaded by the Petition’s argument that Pong inherently discloses claim 12, which is “premised on the possibility that Pong’s processors may receive more than response to a request” before completing a memory transaction. Id. at 23–24. We further noted that “the Petition does not point to any evidence that Pong’s processors necessarily perform a memory transaction after receiving one response.” Id. at 24.” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“Even considering paragraph A-22 of Dr. Horst’s testimony, we remain unpersuaded that Pong inherently discloses claim 12. This testimony, opining that Pong’s processors “must necessarily be configured to complete a memory transaction as soon as it receives the first response,” Ex. 1014 ¶ A-22 (emphasis added), is contrary to the position Petitioner takes in the Petition, which acknowledges “the case where the requesting processor [in Pong] waits for the second response to complete the memory transaction,” Pet. 34 (emphasis added). Petitioner does not address, or explain, the apparent inconsistency between these diverging positions. Moreover, Dr. Horst’s testimony on this point is conclusory and is insufficient to show inherency. See Ex. 1014 ¶ A-22; Paper 11 (“Prelim Resp.”), 48–50. The mere fact that “Pong does not describe that the directory filter ever informs the requesting processor of the number of responses it should expect to receive” is insufficient to establish that the requesting processor “must necessarily be configured to complete a memory transaction as soon as it receives the first response.” Ex. 1014 ¶ A-22. The relevant testimony does not sufficiently exclude other possible means of programming processors in Pong—as required for inherency. See Akamai Techs., Inc. v. Cable & Wireless Internet Servs., Inc., 344 F.3d 1186, 1192 (Fed. Cir. 2003) (“A claim limitation is inherent in the prior art if it is necessarily present in the prior art, not merely probably or possibly present.”).” slip op. at 5
§ 102 anticipationPatents in suitUS 7,296,121 - LG Display Co., Ltd. v. Innovative Display Technologies LLCRehearing deniedPTAB · Mar 9, 2015 · IPR2014-01096 · APJ Thomas L Giannetti · IPR · Rehearing
The Board denied rehearing, leaving institution denied for claims 1, 4, and 29 over Kobayashi and claims 13 and 47 over Kobayashi and Pristash because the cited spots were not shown to be projections or …
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS The applicable standard for a request for rehearing is set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: 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.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“In the Decision, we determined that Petitioner did not demonstrate that the spot-shaped light reflecting layers in Kobayashi are “projections or depressions” as the claims require. Decision 14. In reaching this determination, we pointed out that these spot-shaped reflecting layers are described by Kobayashi as being produced by white paint or aluminum vapor deposition. Id.; Ex. 1008, col. 4, ll. 45–47 (“The array of spot-shaped reflection layers 22 is made, e.g., of a white paint, such as a titanium oxide or dioxide or aluminum oxide, or aluminum vapor deposition.”) We pointed out further that the neither the Petition nor the accompanying Escuti Declaration (Ex. 1004) explained how the spot-shaped reflecting layers in Kobayashi qualify as “projections or depressions.” Id. Petitioner’s rehearing request asserts that the Board overlooked or misapprehended evidence that these spot-shaped layers are projections or depressions. Req. Reh’g 3–7.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“1006; U.S. Patent No. 5,005,108) to show obviousness of claims 13 and 47. Pet. 48–53, 56–58. As in claim 1, both claims 13 and 47 include the limitation of “both the front and back sides [of the panel member] having a pattern of light extracting deformities that are projections or depressions on or in the sides.” As for claim 1, to meet this limitation Petitioner relied on Kobayashi’s spot-shaped light reflecting layers. Id. at 48–50, 57. As Petitioner recognizes, “[t]he issue here, thus, is the same as the issue discussed above—whether the deformities of Kobayashi are ‘projections or depressions.’” Req. Reh’g 8. Petitioner first argues that the Board denied institution on this ground “only” because Kobayashi fails to disclose different types of deformities on different sides of the panel member. Id. We are not persuaded by this” slip op. at 6
§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,537,370
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