- Wombat Security Technologies v. Phishme, Inc.Rehearing deniedPTAB · Jul 20, 2017 · PGR2017-00009 · APJ Jennifer S Bisk · PGR · Rehearing
The Board denied Wombat’s rehearing request, leaving institution of PGR denied because the petition did not show the patent was eligible for PGR.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“DISCUSSION The applicable standard for granting a request for rehearing is abuse of discretion. 37 C.F.R. § 42.71(c). The requirements of a request for rehearing are set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: 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 in a motion, an opposition, or a reply.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“sufficiently shown that the ’038 patent was eligible for post-grant review. Inst. Dec. 8–13. Specifically, we found deficient Petitioner’s contention that the challenged claims were not entitled to the benefit of the filing date of Application No. 13/785,252 (“the ’252 application”) to which the ’038 patent claims priority as a continuation-in-part. Inst. Dec. 8–13. This finding was based on the following deficiencies of the Petition: (1) the Petition did not discuss the relevant disclosure of the application to which the ’038 patent claims priority—Application No. 13/785,282 (“the ’252 application”)—as originally filed, citing instead to the ’940 patent, which issued from the ’252 application; (2) the Petition did not address the Examiner’s statements in the Notice of Allowability that “[t]he present application is being examined under the pre-AIA first to invent provisions”; and (3) Petitioner did not satisfy its burden to show that a person of ordinary skill in the art would not have understood the inventor to have possession of “providing feedback to the individual confirming that the identified email was a simulated phishing attack” (“the feedback limitation”). Id. For the third deficiency, we found the feedback limitation supported by at least paragraphs 5 and 18 of the ’252 application, which discuss training individuals who receive simulated phishing attacks such that users are better able to recognize and thwart a real phishing attack. Id. at 11–12.” slip op. at 2
- BurdenDecided for patent owner
“being recited expressly in the ’252 application it “satisf[ied] its burden to establish that it was more likely than not that the ’038 patent was not entitled to the filing date of the [’252 application].” Reh’g Req. 3. In Blue Calypso, LLC v. Groupon, Inc., however, the Federal Circuit explicitly found that identifying a limitation as not being recited expressly in the specification at issue was not enough to support a finding of lack of written description. 815 F.3d 1331, 1345 (Fed. Cir. 2016). The Federal Circuit explained that it was “troubled by the fact that the Board did not cite any evidence other than the fact that the terms were not present in the specification to support its finding,” concluding this placed “undue weight on the absence of the [exact] terms appearing in the specification.” Id. at 1345–46. Petitioner’s burden, therefore, is not established simply by pointing out that the ’252 application does not explicitly state the feedback limitation.” slip op. at 4
- Disclosure Requirements (§112) › Written description (Ariad)Not reached
“being recited expressly in the ’252 application it “satisf[ied] its burden to establish that it was more likely than not that the ’038 patent was not entitled to the filing date of the [’252 application].” Reh’g Req. 3. In Blue Calypso, LLC v. Groupon, Inc., however, the Federal Circuit explicitly found that identifying a limitation as not being recited expressly in the specification at issue was not enough to support a finding of lack of written description. 815 F.3d 1331, 1345 (Fed. Cir. 2016). The Federal Circuit explained that it was “troubled by the fact that the Board did not cite any evidence other than the fact that the terms were not present in the specification to support its finding,” concluding this placed “undue weight on the absence of the [exact] terms appearing in the specification.” Id. at 1345–46. Petitioner’s burden, therefore, is not established simply by pointing out that the ’252 application does not explicitly state the feedback limitation.” slip op. at 4
§ 112 disclosurePatents in suitUS 9,398,038 - United Services Automobile Association v. Nader Asghari-Kamrani And Kamran Asghari-KamraniRehearing deniedPTAB · Oct 13, 2016 · CBM2016-00064 · APJ Joni Y Chang · CBM · Rehearing
The Board denied rehearing, leaving in place institution on claims 1–3, 5–28, and 30–55 based on the showing that those claims were more likely than not obvious over Nicholson and Brown.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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 previously addressed in a motion, an opposition, or a reply. Id. When reconsidering 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 be determined 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. 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).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“2003/0046591 A1 (Ex. 1017), published on March 6, 2003, and WIPO International Publication No. WO 03/021837 A1 (Ex. 1028), published on March 13, 2003, more than one year before the actual filing date of the ’432 patent (September 15, 2008)—are also prior art under § 102(b), showing what was known in the art and the knowledge of a person of ordinary skill in the art at the time of the invention.4 See In re Van Langenhoven, 458 F.2d 132, 136–37 (CCPA 1972) (citing In re Hafner, 410 F.2d 1403 (CCPA 1969); In re Ruscetta, 255 F.2d 687, 690–91 (CCPA 1958)) (noting that, because the patentee could not claim the benefit of the filing date of any prior-filed application, the patentee’s own prior patent or publication that was published more than one year from the actual filing date of the application at issue was available as prior art under § 102(b)). Therefore, we disagree with Patent Owner that we committed a clear error in determining that claim 1 does not recite a technological feature that is novel and unobvious over the prior art, and that we committed a clear error in concluding that Petitioner had demonstrated that the claims at issue are more likely than not unpatentable as obvious over Nicholson and Brown. For the reasons stated above, Patent Owner has not established that we abused our discretion in determining that the ’432 patent is not excluded as a technological invention, and that it is more likely than not that claims 1–3, 4 Petitioner’s asserted ground of unpatentability, on which we instituted a trial, is based on the combination of Nicholson and Brown under § 103(a). See Paper 2, 27–63; Dec. 35. 13 5–28, and 30–55 of the ’432 patent are unpatentable under § 103(a) as obvious over Nicholson and Brown.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableDecided for petitioner
“was made. Req. Reh’g 13–14 (citing 35 U.S.C. § 103(a)). In the Decision (Dec. 18–19), we noted that in determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). We further noted in the Decision (Dec. 19) that the prior art of record in the instant proceeding reflects the appropriate level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (“the prior art itself reflects an appropriate level” of ordinary skill in the art). On this record, Nicholson, which was filed on July 14, 2006, and published on January 25, 2007, predates the actual filing date of the ’432 patent (September 15, 2008) by more than one year.2 Ex. 1034 at [22], [43]. And, Brown, which was filed on June 3, 1996, and issued on April 14, 1998, predates the actual filing date of the ’432 patent (September 15, 2008) by more than one year.3 Ex. 1035 at [22], [45]. Therefore, based on the current record, both Nicholson and Brown are prior art under § 102(b) as to the challenged claims. In addition, on this record, the publications of the first prior-filed application—U.S. Patent Application Publication No.” slip op. at 12
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“demonstrated based on the current record that the benefit claim to the third prior-filed application complies with the requirements of 35 U.S.C. § 120, among which is the requirement that the original disclosure of the third prior-filed application provides written description support for the challenged claims as required by 35 U.S.C. § 112, first paragraph. See Dec. 26–27. In re NTP, Inc., 654 F.3d 1268, 1276–77 (Fed. Cir. 2011); In re Chu, 66 F.3d 292, 297 (Fed. Cir. 1995). Once again, Patent Owner’s arguments ignore the requirements of 35 U.S.C. § 120. As we determined in our Decision, Patent Owner has not shown, at this juncture, that the original disclosure of the second prior-filed application or the original disclosure of the third prior-filed application provides sufficient written description support for each limitation of the challenged claims. Dec. 23–29. Without this showing, the challenged claims are not entitled to the benefit of the filing date of any prior-filed application. Id. Therefore, on this record, “at the time of the invention” is not August 29, 2001, the filing date of the first prior-filed application, as alleged by Patent Owner, but rather, September 15, 2008, the actual filing date of the application that issued as the ’432 patent.” slip op. at 11
Claim construction§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 8,266,432
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.