• Gilead Sciences, Inc. v. Regents Of The University Of MinnesotaRehearing denied
  PTAB · Dec 21, 2020 · IPR2017-01753 · APJ Zhenyu Yang · IPR · Rehearing

  The Board denied Gilead’s rehearing request, leaving institution denied because Petitioner did not show the Board abused its discretion or misapprehended the obviousness record.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). It is not an abuse of discretion to have made an analysis or conclusion with which a party disagrees. Instead, an abuse of discretion occurs 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. Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004).” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “before us did not support Petitioner’s alleged reasons to modify the references (Dec. 16–22), nor establish a reasonable expectation of success of doing so (id. at 22–23). In reaching this conclusion, we did not rely solely on references presented by Patent Owner. Instead, we mainly relied on the express teachings of the art cited by Petitioner, including Marquez I and Marquez II. Id. at 17–20. Our plain reading of the prior art persuades us that Petitioner has not demonstrated a reasonable likelihood of prevailing in its patentability challenge. See Rovalma, S.A. v. Bohler-Edelstahl GmbH & Co. KG, 856 F.3d 1019, 1027 (Fed. Cir. 2017) (noting that the Board is not precluded “from relying on arguments made by a party and doing its job, as adjudicator, of drawing its own inferences and conclusions from those arguments, even when the result is use of the party’s submissions against it”).” slip op. at 5

  • BurdenDecided for patent owner

    “Under Rule 42.108(c), The Board’s decision will take into account a patent owner preliminary response where such a response is filed, including any testimonial evidence, but a genuine issue of material fact created by such testimonial evidence will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review. Thus, under the Rule, it is only genuine issues of material fact created by testimonial evidence provided by a patent owner with its preliminary response that we view “in the light most favorable to the petitioner.” 37 C.F.R. § 42.108(c) (2017).2 Because Patent Owner did not provide testimonial evidence in this proceeding, there is no “genuine issue of material fact created by such testimonial evidence.” Accepting Petitioner’s argument that we must always resolve any genuine dispute of material fact in the light most favorable to the petitioner would compel institution in every case where a petitioner presents unrebutted expert testimony. But a patent owner has no obligation to rebut the petitioner’s contentions or to submit an expert declaration rebutting the petitioner’s expert testimony. See 37 C.F.R. §§ 42.107(a) (“The patent owner may file a preliminary response to the petition.” (emphasis added)); 42.108(c) (“The Board’s decision will take into account a patent owner preliminary response where such a response is filed, including any testimonial evidence.” (emphasis added)). And the Board is not required to accept every statement made by a petitioner’s expert as established fact simply because the patent owner does not submit contradictory expert testimony. Fanduel, Inc. v. Interactive Games LLC, 966 F.3d 1334, 1344 (Fed. Cir. 2020). Instead, “it is the Board’s duty to independently assess the strength of a petitioner’s argument and evidence.” Id., see also id. (“[I]n every case, it remains the Board’s essential function to make factual findings based on its view of the record.”).” slip op. at 3

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable

    “In the Decision denying institution, we concluded that the evidence before us did not support Petitioner’s alleged reasons to modify the references (Dec. 16–22), nor establish a reasonable expectation of success of doing so (id. at 22–23). In reaching this conclusion, we did not rely solely on references presented by Patent Owner. Instead, we mainly relied on the express teachings of the art cited by Petitioner, including Marquez I and Marquez II. Id. at 17–20. Our plain reading of the prior art persuades us that Petitioner has not demonstrated a reasonable likelihood of prevailing in its patentability challenge. See Rovalma, S.A. v. Bohler-Edelstahl GmbH & Co. KG, 856 F.3d 1019, 1027 (Fed. Cir. 2017) (noting that the Board is not precluded “from relying on arguments made by a party and doing its job, as adjudicator, of drawing its own inferences and conclusions from those arguments, even when the result is use of the party’s submissions against it”).” slip op. at 5

  § 103 obviousness
  Patents in suitUS 8,815,830
• U.S. Venture, Inc. v. Sunoco Partners Marketing & Terminals L.P.Rehearing denied
  PTAB · 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 denial
  Patents in suitUS 9,207,686
• Victoria’S Secret Stores LLC v. Andra Group, LPRehearing denied
  PTAB · Dec 11, 2020 · IPR2020-00853 · APJ Eric C Jeschke · IPR · Rehearing

  The Board denied rehearing, leaving institution denied because the Petition did not show a reasonable likelihood of prevailing on any asserted ground for claims 1, 2, 5–8, and 11.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “decision should be modified. See 37 C.F.R. § 42.71(d) (2019). A request on 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 briefing. Id. When reconsidering a decision on institution, we review for an abuse of discretion. See 37 C.F.R. § 42.71(c).” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “an inter partes review of claims 1, 2, 5–8, and 11 (the “challenged claims”) of U.S. Patent No. 8,078,498 B2 (Ex. 1001, “the ’498 patent”). Paper 1 (“Pet.”). Andra Group, LP filed a Patent Owner’s Preliminary Response. Paper 10. We denied institution, determining that the Petition did not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims in any of the three asserted grounds of unpatentability. See Paper 12 (“Decision on Institution” or “Dec.”). Petitioner timely filed a Request on Rehearing, requesting “partial reconsideration” as to one of the three asserted grounds, in which Petitioner asserted that the challenged claims would have been obvious based on VS Webpages (Ex. 1031). Paper 13 (“Request on Rehearing” or “Req. Reh’g.”), at 1; see also Pet. 40, 51–67 (discussing this ground). For the reasons below, Petitioner’s Request on Rehearing is denied.” slip op. at 2

  • Obviousness (§103) › Analogous artNon analogous artNot reached

    “The fact that the Decision on Institution did not discuss whether VS Webpages is analogous art to the ’498 patent does not show that we “misapprehended or overlooked” an argument or evidence. See 37 C.F.R. § 42.71(d). An assessment of whether relied-upon art is analogous is a threshold inquiry in an obviousness analysis. See Johns Manville Corp. v. Knauf Insulation, Inc., IPR2018-00827, Paper 9 at 10–11 (PTAB Oct. 16, 2018) (Decision Denying Institution) (informative) (“Analogous art is merely a threshold inquiry as to whether a reference can be considered in an obviousness analysis. Demonstrating that a reference is analogous art or relevant to the field of endeavor of the challenged patent is not sufficient to establish that one of ordinary skill would have had reason to combine its teachings with other prior art in the manner set forth in the claim.”). Here, we did not address analogousness because we determined that other issues were dispositive as to the asserted ground at issue. Specifically, as discussed below, Petitioner had not shown a reasonable likelihood in prevailing with its position that human beings fall within the scope of the term “article” (or “articles”) in the challenged claims. See Dec. 13–18.” slip op. at 3

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “presented in the Petition. In the Decision on Institution, we expressly stated that, even in the context of Petitioner’s alternative position—involving modifying certain images displayed by VS Webpages—“Petitioner continues to rely on human beings as the ‘article[s].’” Dec. 15 n.9 (citing Pet. 58–59 (discussing the alternative reliance on Vertex as to clause D), 60 (discussing clause E)). The aspects of the Petition cited in Petitioner’s Request on Rehearing continue to support this statement.” slip op. at 5

  § 103 obviousnesscites Graham
  Patents in suitUS 8,078,498
• Unified Patents, LLC v. Velos Media, LLCRehearing denied
  PTAB · Dec 9, 2020 · IPR2019-00710 · APJ Jason W Melvin · IPR · Rehearing

  The Board denied rehearing, leaving claims 1, 2, 11, 12, and 22 not shown unpatentable over Chen or Chen and Bao under §103.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “The Decision, however, did not overlook and rather accepted that the DC block group flag was “not necessary (and often redundant).” Dec. 12–13 (quoting Pet. 53). Notwithstanding that proposition, we declined to extend it to compel omitting the DC block group flag and withholding the DC block from the (0,0) inference. Id. at 13. Petitioner faults the Decision’s conclusion because the (0,0) inference cannot be applied if the DC block does not have a group flag (the inference depends on the group flag’s value). See Req. Reh’g 7–8. The Request fails to persuade us that we misapprehended or overlooked Petitioner’s argument. Asserting that the DC block group flag was “unnecessary (and often redundant)” does not compel a conclusion that the DC block group flag would be omitted from the bitstream. The Decision determined that the Petition does not sufficiently justify such a conclusion and we do not agree with the Request’s post hoc view equating “not necessary” with “would be omitted.” See Req. Reh’g 8–9.” slip op. at 3

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable

    “The Request argues the Petition establishes “it would have been obvious not to include (i.e., omit) a group flag in the bitstream for the DC block” as “one of three ways to reduce the size of coded video.” Req. Reh’g 6 (emphasis omitted) (citing Pet. 54). As an independent basis for modifying Chen, the Petition identifies three potential solutions for reducing coded-video size—“not encoding the significant-coefficient-group flag for the block containing the last significant coefficient, the DC block, and the block whose right neighboring block and lower neighboring block both have non-zero significant-coefficient-group flags.” Pet. 54–55. As support, the Petition cites the challenged patent. Id. at 54 (citing Ex. 1001, 12:6–54). Although the Petition also cites declaration testimony (id. at 55 (citing Ex. 1002 ¶ 94)), that testimony offers no support beyond that in the Petition. Thus, other than through the challenged patent itself, the Petition does not support the factual underpinning required for an obvious-to-try conclusion. That hindsight approach does not establish a persuasive position.” slip op. at 4

  § 103 obviousness
  Patents in suitUS 8,964,849
• Smartmatic USA Corp. v. Election Systems & Software, LLCRehearing denied
  PTAB · Nov 30, 2020 · IPR2019-00531 · APJ Sheldon M Mcgee · IPR · Rehearing

  The Board denied Smartmatic’s rehearing request, leaving intact the determination that original claim 16 and substitute claims 21–29 were not shown unpatentable over Johnson and Cummings.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “ANALYSIS A party dissatisfied with a decision may file a single 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. 37 C.F.R. § 42.71(d). Specifically, “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). Petitioner’s First Argument” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “As an initial matter, we disagree that we misapprehended Petitioner’s proffered basis for modifying the teachings of Johnson. Req. 1–2, 4–9. Our Decision makes clear that we understood the challenge as it was presented by Petitioner. For example, we expressly stated that “Petitioner asserts that a person of ordinary skill in the art would have been motivated to modify the teachings of Johnson with those of Cummings at the time of the invention to provide options for either depositing the paper ballot or returning it to the voter,” and quoted Petitioner’s proffered rationale for doing so––i.e., because “a voter may wish to receive his or her printed ballot if it were incorrectly marked in order to gain assurance that the ballot will not be mistakenly counted during a recount or audit of the paper ballots.” Dec. 18. We also characterized Petitioner’s obviousness challenge as being “over the combined teachings of Johnson and Cummings” and noted how the Petition “set[s] forth the [asserted] obviousness rationale and expectation of successfully modifying the teachings of Johnson with those of Cummings.” Id. at 14–15; see also id. at 17–18 (summarizing Cummings’ teachings); id. at 19–20 (identifying “Petitioner’s proffered modification” as “adding Cummings’ ‘ballot return’ feature to Johnson’s device”). Ultimately, we determined Petitioner failed to show that “the skilled artisan would have been motivated to make the proffered modification to the teachings of Johnson,” and “[i]n particular,” had not shown such artisan “would have modified Johnson to provide a voter with options for either depositing a physical ballot to a ballot box or returning the ballot to the voter.” Id. at 25. Notably, the language in our Decision (id.) tracks, almost verbatim, Petitioner’s proffered motivation for modifying Johnson’s teachings with those of Cummings to arrive at the subject matter of claim 16 (Pet. 57). Petitioner’s emphasis of our use of the phrase “considering Johnson’s teachings as a whole” (Req. 4) reflects a misunderstanding of the context in which this statement was used. Dec. 25. Specifically, this statement was part of an introductory paragraph summarizing the deficiencies in Petitioner’s case, and does not indicate that we focused solely on the teachings of Johnson in assessing the strength of Petitioner’s challenge. Indeed, as the Decision goes on to explain, a detailed analysis of Johnson’s teachings was necessary to determine how the skilled artisan would have viewed Johnson’s silence on the specifics of processing its segregated paper ballots “that have not been approved by the voter.” Ex. 1002, 6:56–60; see Dec. 26 (“According to Petitioner, ‘Johnson does not teach never providing the voter with a ballot.’ Reply 15. Petitioner thus appears to argue that Johnson’s lack of physical access to the printed ballot does not apply to every step in Johnson’s voting process.”). To discern how the skilled artisan would have viewed Johnson’s teachings, we stressed that we are required to consider Johnson’s teachings as a whole, which we did. Dec. 26 (noting that even though Johnson may be silent on specific teachings regarding how to handle disapproved paper ballots, that fact “does not negate our obligation to consider the teachings of the Johnson reference as a whole.” (citing In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991)); id. at 25–27 (finding “Johnson repeatedly stresses the voter’s inaccessibility to the physical ballot” and that Johnson “when considered as a whole––does not suggest that a voter should be given physical possession of the inaccurate or disapproved ballots after it is segregated”). Only after we undertook this factual inquiry into the full scope and content of Johnson’s teachings were we then able to conclude, as a matter of law, that the claims would not have been obvious over the combined disclosures of Johnson and Cummings. Dec. 34, 41–42; In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009 (“The teachings of a prior art reference are underlying factual questions in the obviousness inquiry.”).” slip op. at 3

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “(Ex. 1023) and US 2005/0035199 (Ex. 1038), which purportedly “corroborates Dr. Bederson’s testimony as to why a [skilled artisan] would have been motivated to make the proposed modification of Johnson,” we disagree. Req. 6–7. The Decision addresses Chung specifically (Dec. 27–28 (citing Ex. 1023)) and furthermore explains why we ascribed little weight to Dr. Bederson’s testimonial evidence regarding how election audits are carried out (id. at 32–33). Regarding Chung, in the Decision we noted a key difference in how ballots were handled in Chung’s voting system vis-à-vis Johnson’s system–– i.e., “where the paper ballot remains inaccessible to the voter [Johnson], and Chung’s system where the paper ballot is given to a voter in the first instance.” Id. at 27–28. This difference is not to be understated because Petitioner tried to establish similarities between Johnson and Chung to support its argument that Johnson’s disclosure is “consistent with other voting machines that, for some period of time prevent the voter from accessing the ballot, only to later return the ballot to the voter.” Reply 11. Our Decision reflects the reasons we rejected that argument after considering Johnson’s disclosure as a whole. See Dec. 25–31. Specifically, based on the differences between the Johnson and Chung systems, we found Petitioner’s reliance on Chung to lack sufficient probative value. Id. at 27– 28; Ex. 1023, Fig. 4, ¶¶ 86, 99. And while our Decision does not specifically mention US 2005/0035199 (Ex. 1038), we note that Petitioner cited this exhibit in support of Dr. Bederson’s testimonial evidence regarding how election audits are carried out. Reply 24; Ex. 1024 ¶ 47 (citing Ex. 1038 ¶ 35, and opining “there is no reason all of Johnson’s ballots must be collected to conduct an audit of an election.”). Our Decision makes clear, however, that we ascribed little weight to Dr. Bederson’s opinion on such matters and explained our rationale for doing so. Dec. 32–33 (citing Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003)); id. at 45 (according this disputed evidence “minimal weight”).” slip op. at 5

  § 103 obviousness
  Patents in suitUS 8,096,471
• Neenah, Inc. / Avery Products Corporation v. Jodi A. Schwendimann, F/K/A Jodi A. Dalvey, And Nucoat, Inc.Rehearing denied
  PTAB · Nov 6, 2020 · IPR2020-00636 · APJ Michelle N Ankenbrand · IPR · Rehearing

  The Board denied rehearing of its decision denying institution, finding the petition failed to show a reasonable likelihood of prevailing on the challenged obviousness grounds.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “institute a petition, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the decision should be modified, 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 the Petition. 37 C.F.R. § 42.71(d).” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “argument in the Petition. Rather, as we highlighted in the Decision, Petitioner’s entire reason to combine argument was: Not only are Oez-PCT and Oez-US authored by the same inventor, but also both are specifically directed to image transfer sheets with white layers for improving the quality of image transfer onto dark fabrics. Accordingly, a [person of ordinary skill in the art] would have been motivated to combine the teachings of Oez-PCT and Oez-US, such as to use the transfer sheet application process taught by Oez-US. Dec. 21 (quoting Pet. 48–49 (section titled “Introduction [to Oez-PCT] and Motivation to Combine”)). The Petition did not contain any other reason to combine discussion for this particular ground. Petitioner’s Rehearing Request, however, directs us to additional portions of the Petition that Petitioner now contends we should have considered as supporting its argument for reason to combine. Req. 6–7. Here, Petitioner’s post hoc attempt to cobble together a reason to combine discussion does not persuade us that that we overlooked or misapprehended any rationale to combine set forth in the Petition.” slip op. at 3

  • BurdenNot shown unpatentable

    “independent claim 1: (1) limitation [A2] “a titanium oxide or other white or luminescent pigment,” and (2) limitation [A6] “the titanium oxide or other white or luminescent pigment present in a concentration and configurations sufficient to provide an opaque background for indicia received by the ink receptive portion.” Pet. 12 (Petitioner’s numbering of claim 1’s elements from [Pre] through [A6]), 29–32 (Petitioner’s arguments as to how Oez-US and another reference teach limitations 1[A2] and 1[A6], in which Petitioner discusses the requirement that the polymer melts and mixes with another layer or layers during application). For the ground based on Kronzer and Oez-US, Petitioner argued that “Kronzer in view of Oez-US teaches 1[A2]” and that “Kronzer in view of Oez-US teaches 1[A6].” Id. at 62, 64. For its substantive argument, however, Petitioner referred back to the section of the Petition in which Petitioner argued that Oez-US discloses the “white layer.” See id. (referring to Pet. § VII.A.2.d, which describes Oez-US and another reference as disclosing the melt and mix requirement of the white layer). Thus, it was not clear from the Petition which reference Petitioner was relying on to teach the “white layer” that melts and mixes with another layer. Even if we agree with Petitioner that we misapprehended or overlooked that the Petition relies on Kronzer as teaching the layers and Oez-US as teaching only the white pigment, the Petition does not discuss how the combined teachings of Kronzer and Oez-US disclose a white layer that melts and mixes with another layer or layers. As we explained in the Decision, although Petitioner asserted that Kronzer teaches the melting temperatures of various polymers used in its layers and discloses examples of applying heat transfer sheets to fabrics with an iron set at about 163°– 177° C, that general statement failed “to explain sufficiently how a white layer of the asserted Kronzer and Oez-US combination would melt with another layer.” Dec. 23–24. Further to that point, we note that the Petition in this case does not contain an analysis in the Kronzer and Oez-US ground that discusses the melt and mix requirement, unlike the Petitions in the related cases Petitioner cites in its Rehearing Request. Compare Pet. 59–70, specifically 62, 64, with e.g., IPR2020-00634, Paper 2 at 71–72 (Petitioner explaining how “Kronzer and Oez-US further teach the ‘melt and mix’ requirement”). Petitioner appears to acknowledge as much in the Rehearing Request, arguing that its Kronzer and Oez-US ground in this case demonstrates that layers in contact with one another will melt and mix, but citing only to the portions of the Petition addressing how Oez-US and another reference allegedly disclose the “melt and mix” requirement. Reh’g Req. 15 (citing Pet. 31 and § VII.A.2.d; Ex. 1020 ¶¶ 112–115, 38–60). We could not have overlooked or misapprehended an argument about Kronzer and Oez-US disclosing the melt and mix requirement because Petitioner did not make such an argument in the Petition. Accordingly, Petitioner does not persuade us that we abused our discretion in denying to institute an inter partes review.” slip op. at 6

  § 103 obviousnesscites KSR
  Patents in suitUS 7,771,554
• Supercell OY v. Gree, Inc.Rehearing denied
  PTAB · Nov 2, 2020 · PGR2020-00034 · APJ Amanda F Wieker · PGR · Rehearing

  The Board denied Supercell’s rehearing request, leaving in place the denial of institution based on the Fintiv factors and the parallel district court proceeding.

  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. 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 6, 11–12. Additionally, the Decision notes that some uncertainty exists regarding trial dates, as Petitioner again argues in its Request. Id. at 11; Req. Reh’g 3–4. 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

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “Thus, unlike the Request, the Petition did not contend that a skilled artisan would have found it obvious that “[Cho’s communication] may comprise one player specifying, to the server, information identifying another player to be involved in the game.” Compare id. at 46–47, with Req. Reh’g 6–7 (emphasis added). To the contrary, the Petition simply stated that a skilled artisan would understand that Cho taught transmissions through a server, but did not state that it would have been obvious, in light of Cho’s teachings, for this transmission to include first information. As discussed in our Decision, the Petition’s reliance on GSB to supply the transmission of “first information” fails because Petitioner has not explained persuasively why it would have been obvious to transmit GSB’s first information when Cho already establishes a communication between players and because Petitioner fails to explain “how the additional transmission of identifying information would simplify communications or allow easier connection, over the communication that Cho already establishes.” Dec. 24.” slip op. at 9

  • 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. 5–7. The Decision also discusses the common policy justifications implicated when determining whether to institute either an IPR proceeding or a PGR proceeding. Id. at 7. The Decision then goes on to recognize and discuss certain differences between PGR proceedings and IPR proceedings. Id. Despite these differences, we determined that the Board’s binding precedential case law 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, 15–17, 20–21. Petitioner has not demonstrated that we abused our discretion in doing so.” slip op. at 11

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 10,300,385
• Favored Tech Corporation v. P2i LtdRehearing denied
  PTAB · Oct 21, 2020 · IPR2020-00478 · APJ Jeffrey W Abraham · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving in place institution of review on claims 1–17 based on the Petition’s challenges.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). When rehearing a decision on a petition, the decision will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Petitioner also provides a reason why a person of ordinary skill in the art would have used [Baalmann’s] outer-wall configuration with a 1 m3 chamber such that the plasma zone covers the full chamber volume: “because doing so would have maximized the effective chamber capacity at any given chamber size by allowing the reactive plasma to reach all substrate surfaces, even for large substrates or large batches of smaller substrates extending near the outer limits of the chamber.” Pet. 35; Ex. 1002 ¶ 125. Dec. 20–21. Patent Owner does not address this portion of the Decision or our citation to page 35 of the Petition in the section of its Rehearing Request asserting we incorrectly found the Petition asserts a ground of obviousness based on Baalmann alone. Req. Reh’g 7–11.5 These portions of the record, which address Petitioner’s evidence demonstrating a person of ordinary skill in the art would have had reason to use a particular reactor configuration and plasma zone size, undermine Patent Owner’s assertion that “Petitioner’s obviousness theory fails to provide any reasoning why a POSA would combine Baalmann’s separate and distinct teachings to arrive at the claimed” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “teaching away argument in the Decision, we will do so here. With regard to Patent Owner’s contention that “Baalmann teaches away from the claimed method because . . . Baalmann discloses applying a power of 2kW in its only example using a reactor large enough to potentially satisfy claim 1’s plasma zone volume requirement, which would result in a plasma power density well outside the claimed range” (Req. Reh’g 14), we note that a reference teaches away from a claimed invention if it “criticize[s], discredit[s], or otherwise discourage[s]” modifying the reference to arrive at the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Patent Owner does not direct us to any such evidence in Baalmann, and we will not “read into a reference a teaching away . . . where no such language exists.” DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006). Additionally, although the one example of a 1 m3 reactor in Baalmann involved using a power density that did not fall within the claimed range, for purposes of an obviousness analysis, we cannot ignore the broader disclosure of Baalmann regarding the use of power densities in the range of between 0.5 kW/m3 and 5kW/m3, which does overlap the claimed range. See In re Wesslau, 353 F.2d 238, 241 (CCPA 1965) (“It is impermissible within the framework of section 103 to pick and choose from any one reference only so much of it as will support a given position, to the exclusion of other parts necessary to the full appreciation of what such reference fairly suggests to one of ordinary skill in the art.”).” slip op. at 10

  • Strike new argumentNew argument disregardedDecided for petitioner

    “Req. Reh’g 14. Patent Owner cites to pages 54–56 of the Preliminary Response as the source for this argument and evidence. Although these pages do provide a discussion of the use of certain power densities in prior art references, this portion of the Preliminary Response primarily addresses Patent Owner’s arguments regarding whether a person of ordinary skill in the art “would have had a reasonable expectation of success when combining the disparate process of Coulson and Baalmann,” not what a person of ordinary skill in the art would have been “motivated” to do. Prelim. Resp. 56; see Par Pharmaceutical v. Twi Pharmaceuticals, Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014) (noting the proper analysis under § 103 requires “consideration of two factors: (1) whether the prior art would have suggested to those of ordinary skill in the art that they should make the claimed composition or device, or carry out the claimed process; and (2) whether the prior art would also have revealed that in so making or carrying out, those of ordinary skill would have a reasonable expectation of success”) (quoting Medichem, S.A. v. Rolabo S.L., 437 F.3d 1157, 1164 (Fed. Cir. 2006). As such, Patent Owner appears to present a new argument for the first time in the Rehearing Request. Not only is such an argument improper (see 37 C.F.R. § 42.71(d)), but the fact that it was raised for the first time in the rehearing means it is not something we could have overlooked. Even if Patent Owner had presented this “motivation” argument in the Preliminary Response, we remain unpersuaded of any error in our Decision. Patent Owner fails to explain sufficiently why a person of ordinary skill in the art would look to other prior art references for guidance regarding the use of a particular power density in large scale reactors in view of our determination that Baalmann itself discloses the use of a power density in the claimed range in a large scale reactor.” slip op. at 11

  § 103 obviousness
  Patents in suitUS 8,389,070
• Unified Patents, Inc v. Mv3 Partners LLCRehearing denied
  PTAB · Oct 2, 2020 · IPR2019-00474 · APJ Jean R Homere · IPR · Rehearing

  Rehearing denied; the Board maintained that claims 1–6, 8, 10–21, 23–38, 40, 42–53, and 55–61 were not shown unpatentable because Wang did not teach the separate determining limitation.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. With this in mind, we address the arguments presented by Petitioner.” slip op. at 3

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “of the “determining” limitation, not a construction of the language in that limitation. As noted in the Decision, the claim language plainly requires that the STB separately determine whether the user is permitted to provide to the external display device a specific media content received at the mobile device. Id. at 16–17. This is consistent with Petitioner’s view expressed at the hearing. See Tr. 20:6–16 (Petitioner acknowledging that the claim recites the “authenticating” step and “a separate determining step” where “the determining step happens after the authenticating step” (emphasis added)). Although Petitioner disputes that the Specification adequately supports the “determining” limitation, it is not an issue necessitating review by our mere recitation of the claim language. Further, we are not at liberty to ignore the “determining” limitation, despite its alleged lack of written description, in assessing it during a prior art challenge. As set forth in the Decision, we fully addressed the language of the claims as challenged in the Petition. We are not persuaded that in doing so we misapprehended or overlooked any argument raised by Petitioner. In particular, we noted that Petitioner provided sufficient evidence to show that Wang teaches integrating the authentication feature into the STB to authenticate mobile users to access content. Final Dec. 16–17. However, we found such teaching to fall short of satisfying the separate and distinct “determining” limitation, as required by the claim. Id. at 18. As explained in the Decision, Petitioner and its expert addressed the “authenticating” and “determining” limitations together, even though they are separate limitations of the claim. Id. (citing Pet. 39–41; Ex. 1003 ¶ 73). We were unpersuaded by Petitioner’s theory that the “determining” limitation “automatically” occurs by virtue of the authenticating step. Id. Furthermore, we noted the evidence of record was insufficient to show by a preponderance of the evidence that the proposed modification of Wang would have taught or suggested “any additional determination beyond authenticating the user.” Id. at 19.” slip op. at 6

  § 103 obviousness
  Patents in suitUS 8,863,223
• Rimfrost As v. Aker Biomarine AsRehearing denied
  PTAB · Oct 1, 2020 · IPR2018-00295 · APJ John E Schneider · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request and left in place its finding that proposed substitute claims 49–56 were unpatentable over the cited combinations including Randolph.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. LEGAL STANDARD A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). The burden of showing a decision should be modified on a request for rehearing lies with the party challenging the decision. Id.” slip op. at 4

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “We next turn to the guidance the POP provided in Hunting Titan. First, the POP held that “the Board may, in certain rare circumstances, raise a ground of unpatentability that a petitioner did not advance, or insufficiently developed, against substitute claims proposed in a motion to amend.” Id. at 4. The rare circumstances exemplified in the decision include cases where the petitioner has ceased to participate in the proceeding; where the petitioner has not opposed the motion to amend; or “where certain evidence of unpatentability has not been raised by the petitioner, but is readily identifiable and persuasive such that the Board should take it up in the interest of supporting the integrity of the patent system, notwithstanding the adversarial nature of the proceedings.” Id. at 12–13. The POP also held that where the Board intends to raise a new ground of unpatentability in connection with a motion to amend, the patent owner must be given notice and an opportunity to address the proposed new grounds. Id. 15.” slip op. at 6

  • Strike new argumentNew argument consideredDecided for petitioner

    “We next turn to the guidance the POP provided in Hunting Titan. First, the POP held that “the Board may, in certain rare circumstances, raise a ground of unpatentability that a petitioner did not advance, or insufficiently developed, against substitute claims proposed in a motion to amend.” Id. at 4. The rare circumstances exemplified in the decision include cases where the petitioner has ceased to participate in the proceeding; where the petitioner has not opposed the motion to amend; or “where certain evidence of unpatentability has not been raised by the petitioner, but is readily identifiable and persuasive such that the Board should take it up in the interest of supporting the integrity of the patent system, notwithstanding the adversarial nature of the proceedings.” Id. at 12–13. The POP also held that where the Board intends to raise a new ground of unpatentability in connection with a motion to amend, the patent owner must be given notice and an opportunity to address the proposed new grounds. Id. 15.” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundTeaching away not foundDecided for petitioner

    “We are not persuaded that our Decision was in error. As Petitioner points out, Dr. Tallon testified about the motivation to combine the various references. Supp. Resp. 7–8. Specifically, Dr. Tallon testified that astaxanthin was a known “potent antioxidant,” and that a person of ordinary skill in the art would have been motivated to combine krill oil of the cited references because of the health benefits associated with, inter alia, see also MTA Opp. 24–25 (Petitioner’s argument as to motivation to combine). With respect to the amount of astaxanthin ester, we are not convinced that Randolph teaches away from the claimed range. While Randolph does teach that the amount of astaxanthin may be 1% or greater, in the same paragraph Randolph states that the amount of astaxanthin is typically from about 0.5 mg to 50 mg. Ex. 1011 ¶ 44. Thus, while Randolph may teach high amounts of astaxanthin, it also teaches lower amounts that yield astaxanthin ester amounts within the range recited in the proposed substitute claims. Similarly, other teachings in the art do not dissuade one skilled in the art from using lower amounts of astaxanthin ester. A reference does not teach away “if it merely expresses a general preference for an alternative invention but [does] not criticize, discredit or otherwise discourage investigation into the claimed invention.” Depuy Spine v. Medtronic Sofmaor, 567 F.3d 1314, 1327 (Fed. Cir. 2009). Patent Owner has not pointed to nor have we discerned any teaching in the art that would dissuade one skilled in the art from using a lower amount of astaxanthin ester. As discussed above, Randolph specifically teaches lower amounts of astaxanthin, which in turn teaches lower amounts of astaxanthin ester. Ex. 1011 ¶ 44; Ex. 1086 ¶¶ 199–202.” slip op. at 18

  § 103 obviousness
  Patents in suitUS 9,320,765

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.