- PTAB · Apr 30, 2018 · IPR2017-01975 · APJ James B Arpin · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution because Petitioner did not show the UC1828 datasheet was publicly accessible as a printed publication.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply. (Emphasis added.) See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” Inst. Dec. 8 (quoting 35 U.S.C. § 311(b) (emphasis added)); see 37 C.F.R. § 42.104(b)(2). Petitioner has the burden to establish in its Petition a reasonable likelihood of success, including, among other things, making a threshold showing that the UC1828 datasheet is a “printed publication” within the meaning of 35 U.S.C. §§ 102(b) and 311(b). Inst. Dec. 9 (citing 35 U.S.C. § 314(a)); see 37 C.F.R. § 42.108(c); Apple, Inc. v. DSS Tech. Mgmt., Inc., Case IPR2015-00369, slip op. at 4–5, 9–11 (PTAB Aug. 12, 2015) (Paper 14)). As we explained in the Institution Decision, “‘[p]ublic accessibility’ is the touchstone in determining whether a reference is a ‘printed publication.’” Inst. Dec. 10 (citing In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)); see, e.g., L-3 Commc’n. Holdings, Inc. v. Power Survey, LLC, Case IPR2014- 00832, slip op. at 11–12 (PTAB Nov. 14, 2014) (Paper 9) (applied reference not shown to be publicly accessible); C&D Zodiac, Inc. v. B/E Aerospace, Inc., Case IPR2014-00727, slip op. at 20–22 (PTAB Oct. 29, 2014) (Paper 15) (applied reference shown to be publicly accessible). Consequently, “[a] reference will be considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”’ Inst. Dec. 10 (emphasis added) (citing Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008))). The status of a reference as a printed publication is a legal conclusion “based on underlying factual determinations.” Blue Calypso, 815 F.3d at 1348 (citing In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009)).” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“As we explained in the Institution Decision, “‘[p]ublic accessibility’ is the touchstone in determining whether a reference is a ‘printed publication.’” Inst. Dec. 10 (citing In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)); see, e.g., L-3 Commc’n. Holdings, Inc. v. Power Survey, LLC, Case IPR2014- 00832, slip op. at 11–12 (PTAB Nov. 14, 2014) (Paper 9) (applied reference not shown to be publicly accessible); C&D Zodiac, Inc. v. B/E Aerospace, Inc., Case IPR2014-00727, slip op. at 20–22 (PTAB Oct. 29, 2014) (Paper 15) (applied reference shown to be publicly accessible). Consequently, “[a] reference will be considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”’ Inst. Dec. 10 (emphasis added) (citing Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008))). The status of a reference as a printed publication is a legal conclusion “based on underlying factual determinations.” Blue Calypso, 815 F.3d at 1348 (citing In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009)).” slip op. at 4
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner did not request the opportunity to submit additional evidence of public accessibility during the Preliminary Proceeding. Id. at 14 n.5; see 37 C.F.R. § 42.2 (“Preliminary Proceeding”). Nevertheless, Petitioner now asks that we take official notice of evidence contained in several issued patents and an abandoned patent application that were not made of record during the Preliminary Proceeding to support arguments presented for the first time in its Request for Rehearing. Reh’g Req. 4 n.1; see 37 C.F.R. § 42.62(c) (“Judicial notice”). We decline to take official notice of any new evidence during consideration of this Request for Rehearing. A request for rehearing is not an opportunity for the requestor to present new arguments or evidence, and it goes without saying that we could not have misapprehended or overlooked new evidence that was not of record during the Preliminary Proceeding or new arguments that were not previously presented regarding that new evidence.” slip op. at 5
§ 102 anticipation - PTAB · Apr 30, 2018 · IPR2017-01944 · APJ James B Arpin · IPR · Rehearing
The Board denied Power Integrations’ rehearing request, leaving in place the denial of institution because Mammano was not shown to be a printed publication.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“(Emphasis added.) See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” Inst. Dec. 9 (quoting 35 U.S.C. § 311(b) (emphasis added)); see 37 C.F.R. § 42.104(b)(2). Petitioner had the burden to establish in its Petition a reasonable likelihood of success, including, among other things, making a threshold showing that Mammano is a “printed publication” within the meaning of 35 U.S.C. §§ 102(b) and 311(b). Inst. Dec. 9–10 (citing 35 U.S.C. § 314(a)); see 37 C.F.R. § 42.108(c); Apple, Inc. v. DSS Tech. Mgmt., Inc., Case IPR2015-00369, slip op. at 4–5, 9–11 (PTAB Aug. 12, 2015) (Paper 14)).” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” Inst. Dec. 9 (quoting 35 U.S.C. § 311(b) (emphasis added)); see 37 C.F.R. § 42.104(b)(2). Petitioner had the burden to establish in its Petition a reasonable likelihood of success, including, among other things, making a threshold showing that Mammano is a “printed publication” within the meaning of 35 U.S.C. §§ 102(b) and 311(b). Inst. Dec. 9–10 (citing 35 U.S.C. § 314(a)); see 37 C.F.R. § 42.108(c); Apple, Inc. v. DSS Tech. Mgmt., Inc., Case IPR2015-00369, slip op. at 4–5, 9–11 (PTAB Aug. 12, 2015) (Paper 14)).” slip op. at 3
- Strike new argumentNew argument disregardedDenied
“Reh’g Req. 4–5 (emphasis added). Regardless whether it “would be reasonable to conclude” that certain facts exist, Petitioner did not make these arguments in its Petition, and it was not error to fail earlier to draw these conclusions, and we decline to draw these conclusions now.” slip op. at 6
§ 102 anticipation - Apple Inc. v. Papst Licensing GmbH & Co. KGNo claims unpatentablePTAB · Apr 13, 2018 · IPR2016-01863 · APJ Miriam L Quinn · IPR · Final written decision
The Board held claims 1, 4, 6-8, 10, 11, 14, 20, 21, 23, 30, 34, and 35 not shown unpatentable under the asserted § 103 grounds for failure to establish a sufficient reason to combine …
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We find the Zadok testimony in this regard persuasive as it presents more than just the educational level of a person of ordinary skill in the art. Petitioner’s proposal is more helpful as it identifies the familiar objects of the technology used by a person of ordinary skill at the time of the invention: operating systems (e.g., MS-DOS, Windows, Unix) and their associated file systems (e.g., a FAT file system), device drivers for computer components and peripherals (e.g., mass storage device drivers), and communication interfaces (e.g., SCSI and PCMCIA interfaces). Ex. 1003 ¶ 28. We, therefore, determine that Petitioner’s level of ordinary skill in the art is appropriate.” slip op. at 11
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“required to enable the transfer of files from the ION node to the workstation. In this case, we have testimony from Petitioner’s expert opining that the emulation of the ION node as a disk would lead a person of ordinary skill in the art to understand Pucci as accomplishing the file transfer using “existing SCSI hard disk drivers.” Ex. 1003 ¶ 133. On the other hand, we have testimony of Mr. Gafford that explains Pucci’s workstation program as being involved in the request of the A-to-D converted data by “implement[ing] specific functions by enabling the reading or writing of specific block addresses within the ION drive.” Ex. 2006 ¶ 65. That is, Dr. Zadok’s view of Pucci is that once the ION system is set up to emulate a hard disk, no other software is required to transfer data. In contrast, Mr. Gafford’s testimony does not negate Pucci’s use of the SCSI protocol, but ascribes to the workstation application control over the data read, such that the software is required to enable the transfer data. In this regard, we credit the testimony of Mr. Gafford over the testimony of Dr. Zadok, as it is more consistent with the disclosure of Pucci. Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (stating that it is “within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate”); see also, In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”). As we stated above with regard to the file system limitation, Pucci’s principle of operation” slip op. at 41
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“In view of Patent Owner’s arguments and evidence, we are not persuaded that a person of ordinary skill in the art would have had reason to combine the teachings of Pucci and Kepley, as asserted by Petitioner, to achieve the challenged claims. Our determination is based on two findings: a) First, we determine that Pucci does not teach or suggest a reason for the use of a file system for storing digitized voice messages at the ION node; and b) Second, we determine that achieving computer-to-computer file transfer, as taught by Kepley, and the “traditional” nature of the substitution proffered by Petitioner, are not sufficient motivations to modify Pucci, in light of the changes to Pucci that would impermissibly alter Pucci’s principle of operation.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for patent owner
“Petitioner also argues that the ’746 patent works the same way as Pucci in this regard, and, therefore, buffering in real time could be handled as a file even though there is no file at the acquisition time. Reply, 8; Tr. 7 Claim 1 of the ’746 patent, for instance, requires that the “digitized analog data is stored in a file system of the data storage memory as at least one file of digitized analog data,” and Petitioner has identified the “digitized analog data” as the data from the A-to-D converters. Pet. 2728 (emphasis omitted). 24:1221. This argument risks analyzing Pucci in hindsight, with the knowledge of what is disclosed in the ’746 patent. It would be improper, absent any other evidence, for us to rely on the ’746 patent disclosure regarding real-time input to ascertain whether Pucci suggests handling its raw data in the same way. See Nike, Inc. v. adidas AG, 812 F.3d 1326, 1344 n.5 (Fed. Cir. 2016) (“We are troubled by the Board’s citation to the ’011 patent’s written description and the corresponding appearance of using the ’011 patent to find claim 49 unpatentable.”). Instead, as stated above, we rely on what Pucci teaches to a person of ordinary skill in the art at the time of the invention, without the benefit of the ’746 patent disclosure. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984) (“It is difficult but necessary that the decisionmaker forget what he or she has been taught . . . about the claimed invention and cast the mind back to the time the invention was made (often as here many years), to occupy the mind of one skilled in the art.”).” slip op. at 25
Patent outcomesUS 8,504,746 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,504,746 - Eset, LLC / Eset Spol S.R.O. v. Finjan, Inc.Rehearing deniedPTAB · Feb 15, 2018 · IPR2017-01969 · APJ Patrick M Boucher · IPR · Rehearing
The Board denied ESET’s rehearing request, leaving in place denial of its petition and joinder motion because the added grounds, evidence, and arguments weighed against joinder.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“To the extent that ESET has identified matter that we misapprehended or overlooked, we have reconsidered our Decision. In doing so, we exercise our discretion in accordance with the mandate that our regulations “be construed to secure the just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R. § 1(b). For the reasons expressed above, consideration of the full scope of relevant factors continues to weigh against granting ESET’s Petition or Joinder Motion. III. ORDER In consideration of the foregoing, it is hereby: ORDERED that ESET’s Rehearing Request is denied.” slip op. at 9
- Other 314aInstitution denied discretionary otherInstitution denied
“discretionary. See General Plastic Industrial Co., Ltd. v. Canon Kaushiki Kaisha, Case IPR2016-01347, slip op. at 15 (PTAB Sept. 6, 2017) (Paper 19) (precedential) (citing 35 U.S.C. § 314(a); 37 C.F.R. § 42.108(a)). And the decision whether to join a petitioner to an instituted proceeding, even when the petitioner files a petition that “warrants institution of an inter partes review,” is also discretionary. 35 U.S.C. § 315(c) (“. . . the Director, in his or her discretion, may join as a party . . .”) (emphasis added). Although the circumstances presented here differ from the underlying facts of the Board’s precedential General Plastic decision—in this case, different petitioners are involved in filing multiple petitions challenging the same patent—the policy considerations guiding the application of our discretion are similar. In particular, General Plastic explains that we take into account “undue inequities and prejudices to Patent Owner,” and that we recognize that “shifts” in arguments and the use of “[m]ultiple, staggered petitions challenging the same patent and same claims raise the potential for abuse.” General Plastic at 17. Exercising our discretion in a manner that takes insufficient account of those impacts “is unfair to patent owners and is an inefficient use of the inter partes review process.” Id. at 17–18. In the instant case, we are cognizant of those impacts, particularly because ESET’s Petition presents arguments that differ materially from those presented in the original Blue Coat petition upon which the 1444 proceeding was instituted, and because ESET’s Rehearing Request introduces additional shifts in those arguments. In addition, we are mindful of the equities resulting from the procedural history, in which Patent Owner repeatedly finds itself defending its patent, in the same proceeding, against new petitioners who rise up to replace those with whom it has settled.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“discretionary. See General Plastic Industrial Co., Ltd. v. Canon Kaushiki Kaisha, Case IPR2016-01347, slip op. at 15 (PTAB Sept. 6, 2017) (Paper 19) (precedential) (citing 35 U.S.C. § 314(a); 37 C.F.R. § 42.108(a)). And the decision whether to join a petitioner to an instituted proceeding, even when the petitioner files a petition that “warrants institution of an inter partes review,” is also discretionary. 35 U.S.C. § 315(c) (“. . . the Director, in his or her discretion, may join as a party . . .”) (emphasis added). Although the circumstances presented here differ from the underlying facts of the Board’s precedential General Plastic decision—in this case, different petitioners are involved in filing multiple petitions challenging the same patent—the policy considerations guiding the application of our discretion are similar. In particular, General Plastic explains that we take into account “undue inequities and prejudices to Patent Owner,” and that we recognize that “shifts” in arguments and the use of “[m]ultiple, staggered petitions challenging the same patent and same claims raise the potential for abuse.” General Plastic at 17. Exercising our discretion in a manner that takes insufficient account of those impacts “is unfair to patent owners and is an inefficient use of the inter partes review process.” Id. at 17–18. In the instant case, we are cognizant of those impacts, particularly” slip op. at 5
- Strike new argumentNew argument disregardedDecided for patent owner
“Third, ESET introduces still further additional evidence with its Rehearing Request to support its argument that Necula is not prior art. Specifically, ESET provides a copy of a Markman Order entered in related litigation between Patent Owner and ESET, asserting that it “should inform this Board’s determination of an appropriate Phillips-type construction.” Req. Reh’g 2; Ex. 1028. It is axiomatic that we could not have misapprehended or overlooked the relevance of this evidence in our Decision when the evidence was not previously of record in the proceeding. “A request for rehearing is not an opportunity for a party to introduce new argument, bolster insufficient argument, or mend gaps in the evidence relied on in the Petition.” Ericsson Inc. v. Intellectual Ventures II LLC, Case IPR2015-01872, slip op. at 4 (PTAB Apr. 19, 2016) (Paper 15). Notably, the Markman Order that ESET only now brings to our attention was entered in the related litigation on November 14, 2017, but ESET took no steps to bring it to our attention during the several weeks that passed before our Decision was entered—even though ESET urges that it “should inform this Board’s determination.” Although the district court’s order is relevant, it comes too late as evidence in this proceeding for us to consider it.” slip op. at 8
Discretionary denialPatents in suitUS 8,079,086 - Intel Corporation v. Alacritech, Inc.Rehearing grantedPTAB · Jan 25, 2018 · IPR2017-01395 · APJ Daniel N Fishman · IPR · Rehearing
The Board partly granted Intel’s rehearing request to recognize the Stansbury Declaration as a compliant sworn affidavit, but otherwise denied rehearing and left institution denied.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“When considering a request for rehearing, we review the 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.” 37 C.F.R. § 42.71(d). A request for rehearing is not an opportunity to present new arguments. See id. An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“the information presented in the petition . . . and any response . . . 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.” 35 U.S.C. § 314(a). In the Decision, the Board determined that the record before it was insufficient to show that Stevens21 is a prior art printed publication under 35 U.S.C. §§ 102, 311(b) with respect to the ’948 patent. Stevens2 is one of the references relied upon in the sole asserted ground of unpatentability in the Petition. Accordingly, the Board concluded that Petitioner did not slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“Stevens2 was published no later than April 7, 1995 and is prior art under 102(b).” Pet. 45 n.9 (citing Ex. 1063 in support thereof (the “Stansbury Declaration”)). The Petition, per se, provides no other evidence or argument to establish a threshold showing that Stevens2 is a printed publication— publicly accessible by an interested person of ordinary skill in the art before the critical date. slip op. at 3
- Expert testimonyOther
“attested that Stevens2 was ‘standard reference book on TCP/IP’ that was ‘widely cited and relied upon,’ ‘well known resources to a [person of ordinary skill in the art]’ (Petition at 15 (citing Ex.1003 at ¶¶21-88, including ¶¶27, 60, and FN3), 45 (citing Ex.1003 at ¶1212), FN9).” Req. 12. Initially we observe the Petition cites these paragraphs of Dr. Horst’s Declaration as part of the “Background Of Technology” discussion rather than as support for public accessibility of Stevens2. See Pet. 15–24. Furthermore, incorporating by reference such a substantial portion of Dr. Horst’s Declaration (paragraphs 21–88) is improper under our rules. See 37 C.F.R. § 42.6(a)(3). Regardless, even if we consider Dr. Horst’s description of well-known background material (including Stevens2) as support for public accessibility of Stevens2, his testimony does not indicate” slip op. at 5
§ 102 anticipationPatents in suitUS 8,805,948 - Freebit As v. Bose CorporationRehearing deniedPTAB · Jan 23, 2018 · IPR2017-01309 · APJ Bryan F Moore · IPR · Rehearing
The Board denied Freebit’s rehearing request and left in place the denial of institution on claims 1–3, 5, 6, 8–11, and 13 based on the deficient obviousness showing and Tan antedating.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply. (Emphasis added.) See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of 1 IPR2017-01307 Inst. Dec. 34 (“As we noted above, although Patent Owner mentions both March 26, 200[9] (Prelim. Resp. 8), and May 26, 2009 (id. at 1, 10), as the date of actual reduction to practice, it is clear from Mr. Annunziato’s testimony and supporting evidence, that actual reduction to practice occurred by May 26, 2009. Ex. 2001 ¶¶ 9, 11; see id., Ex. A, 2.”). 2 We note that Petitioner presented substantially identical arguments regarding Patent Owner’s antedating of Tan in its Request for Rehearing filed in IPR2017-01307 and IPR2017-01308. See, e.g., IPR2017-01308, Paper 11. Our reasons for denying rehearing here regarding the antedating of Tan are substantially the same as the reasons presented in IPR2017-01307 and IPR2017-01308. discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“testimony that there was a known, retention problem with in-ear earpieces as of the earliest priority date for challenged claims of the ’853 patent. See Inst. Dec. 14 (citing Ex. 1003 ¶ 149). Nor did we question that Howes discusses that problem and teaches a possible solution to that problem. See id. at 11–13. The failure in Petitioner’s argument and Petitioner’s declarant’s testimony was to draw the necessary link between the known problem and Howes’s possible solution and the teachings of Sapiejewski. In order to link this problem and its possible solution to the teachings of Sapiejewski, Petitioner relies on Dr. Staab’s testimony. Id. at 14. It is this testimony that we find unsupported and conclusory.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundTeaching away not found
“testimony that there was a known, retention problem with in-ear earpieces as of the earliest priority date for challenged claims of the ’853 patent. See Inst. Dec. 14 (citing Ex. 1003 ¶ 149). Nor did we question that Howes discusses that problem and teaches a possible solution to that problem. See id. at 11–13. The failure in Petitioner’s argument and Petitioner’s declarant’s testimony was to draw the necessary link between the known problem and Howes’s possible solution and the teachings of Sapiejewski. In order to link this problem and its possible solution to the teachings of Sapiejewski, Petitioner relies on Dr. Staab’s testimony. Id. at 14. It is this testimony that we find unsupported and conclusory.” slip op. at 6
- Strike new argumentNew argument disregardedDecided for patent owner
“Initially, we note that Petitioner did not raise these arguments anywhere in its Petition or its authorized Reply to Patent Owner’s Preliminary Response. Not only did Petitioner fail to raise the issue of “Peeler diligence,” but Petitioner’s Request for Rehearing does not include a single citation to its Petition or to its Reply on this point. Thus, Petitioner’s Request for Rehearing fails to identify the place where each matter that allegedly was overlooked or misapprehended was previously addressed in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). A request for rehearing is not an opportunity for the requestor to present new arguments or evidence. It goes without saying that we could not have overlooked or misapprehended arguments that Petitioner did not make, and it is not an abuse of discretion not to consider such arguments.” slip op. at 10
§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,036,853 - Freebit As v. Bose CorporationRehearing deniedPTAB · Jan 23, 2018 · IPR2017-01307 · APJ James B Arpin · IPR · Rehearing
The Board denied Freebit’s rehearing request, leaving institution denied for claims 1–4, 6–9, 13, and 17 because the obviousness challenge lacked a supported reason to combine and Tan was antedated.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply. (Emphasis added.) See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of 1 Inst. Dec. 34 (“As we noted above, although Patent Owner mentions both March 26, 200[9] (Prelim. Resp. 8), and May 26, 2009 (id. at 1, 10), as the date of actual reduction to practice, it is clear from Mr. Annunziato’s testimony and supporting evidence, that actual reduction to practice occurred by May 26, 2009. Ex. 2001 ¶¶ 9, 11; see id., Ex. A, 2.”). 2 We note that Petitioner presented substantially identical arguments regarding Patent Owner’s antedating of Tan in its Request for Rehearing filed in IPR2017-01308 and in IPR2017-01309. See, e.g., IPR2017-01308, Paper 11. Our reasons for denying rehearing here regarding the antedating of Tan are substantially the same as the reasons presented in IPR2017-01308 and IPR2017-01309. discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“testimony that there was a known, retention problem with in-ear earpieces as of the earliest priority date for challenged claims of the ’253 patent. See Inst. Dec. 41 (citing Ex. 1003 ¶ 149). Nor did we question that Howes discusses that problem and teaches a possible solution to that problem. See id. at 37–39. The failure in Petitioner’s argument and Petitioner’s declarant’s testimony was to draw the necessary link between the known problem and Howes’s possible solution and the teachings of Sapiejewski. In order to link this problem and its possible solution to the teachings of Sapiejewski, Petitioner relies on Dr. Staab’s testimony. Id. at 41. It is this testimony that we find unsupported and conclusory.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableDecided for patent owner
“neither Petitioner nor its declarant explains why a general need to secure an earpiece in an ear would lead to adding a positioning and retaining structure in the context of Sapiejewski’s teachings, when that function allegedly already is provided by the Sapiejewski device, besides seeking the benefits described in the ’253 patent – a reason tainted by hindsight. Inst. Dec. 45–46 (citations omitted). Consequently, we considered fully Petitioner’s arguments and Dr. Staab’s testimony, including any supporting evidence, in view of Sapiejewski’s disclosure. Based on this consideration, we agreed with Patent Owner that “Petitioner relies on a far too general reason to combine the references and engages in impermissible hindsight as to the particular combination of the teachings of Sapiejewski and Howes.” Id. at 45.” slip op. at 8
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“suppression or concealment may be overcome with evidence that the reason for the delay was to perfect the invention.” 843 F.2d 1364, 1367 (Fed. Cir. 1988); see Inst. Dec. 33. Nevertheless, the delay could not be excused (1) if “the delay is caused by working on refinements and improvements which are not reflected in the final patent application,” or (2) if “the activities which caused the delay go to commercialization of the invention.” Lutzker, 843 F.2d at 1367. In its Reply, Petitioner focused on the length of the delay between the actual reduction to practice and the filing of a patent application. Reply 3–4. Petitioner, however, made only cursory and conclusory reference to Patent Owner’s activities3 between the actual reduction to practice and the filing of a patent application. See Reply 4 (“Moreover, Mr. Annunziato’s testimony (¶ 6) that his team put in hundreds (if not thousands) of hours trying out and testing different designs for ear interfaces is not credible.”). Petitioner now argues that “all the alleged work carried out by [Patent Owner] to complete the [printed circuit board] is irrelevant to the suppression/concealment issue because it was not reflected in the final patent application, and rather, was relevant simply for commercialization.” Reh’g Req. 12. We continue to disagree.” slip op. at 10
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,311,253 - Freebit As v. Bose CorporationRehearing deniedPTAB · Jan 23, 2018 · IPR2017-01308 · APJ James B Arpin · IPR · Rehearing
The Board denied Freebit’s rehearing request, leaving in place the denial of institution on claims 1–11 because the arguments did not show the Board overlooked or misapprehended the record or abused its discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply. (Emphasis added.) See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 4
NonePatents in suitUS 8,254,621 - Dali Wireless Inc. v. Commscope Technologies LLCRehearing deniedPTAB · Jan 9, 2018 · IPR2017-01324 · APJ Terrence W Mcmillin · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution for claims 1–5 and 7–17 because the petition did not show the references taught the sample-rate limitation or provide adequate motivation to combine.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Petitioner’s new claim construction argument was not made in the Petition. See Pet. 10 (“Claim Construction”). In the Request for Rehearing, Petitioner does not cite to the Petition or make any showing that this argument was made explicitly or implicitly in the Petition. Req. Reh’g 4–6. As an initial matter, we could not have overlooked or misapprehended a claim construction that Petitioner did not argue in the Petition. Moreover, Petitioner’s only support for its newly proposed construction is the wording of the claims themselves and a claim differentiation argument based on dependent claim 6 which recites that the “sample rate is proportional to the bandwidth.” Id. Petitioner fails to persuade us that its proposed construction is supported adequately by the wording of the claims, the Specification, and the file history. We also conclude that Petitioner’s “somehow related to” construction of “based on” is unreasonable and overly broad. Based on this record, we decline to adopt Petitioner’s proposed construction. Thus, Petitioner fails to show that it argued this construction in the Petition or that its construction is demonstrably correct in view of the claim language, the Specification, the file history, or other evidence. Further, as stated in the Decision Denying Institution, we do not believe the express construction of “sample rate based on the bandwidth” is necessary for this Decision. See DDI 6. As shown below, Petitioner has failed to establish the applied art teaches or suggests basing the sample rate, directly on the bandwidth or that the sample rate is somehow related to the bandwidth.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We interpret claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b). In applying a broadest reasonable construction, claim terms generally are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Petitioner’s new claim construction argument was not made in the Petition. See Pet. 10 (“Claim Construction”). In the Request for Rehearing, Petitioner does not cite to the Petition or make any showing that this argument was made explicitly or implicitly in the Petition. Req. Reh’g 4–6. As an initial matter, we could not have overlooked or misapprehended a claim construction that Petitioner did not argue in the Petition. Moreover, Petitioner’s only support for its newly proposed construction is the wording of the claims themselves and a claim differentiation argument based on dependent claim 6 which recites that the “sample rate is proportional to the bandwidth.” Id. Petitioner fails to persuade us that its proposed construction is supported adequately by the wording of the claims, the Specification, and the file history. We also conclude that Petitioner’s “somehow related to” construction of “based on” is unreasonable and overly broad. Based on this record, we decline to adopt Petitioner’s proposed construction. Thus, Petitioner fails to show that it argued this construction in the Petition or that its construction is demonstrably correct in view of the claim language, the Specification, the file history, or other evidence. Further, as stated in the Decision Denying Institution, we do not believe the express construction of “sample rate based on the bandwidth” is necessary for this Decision. See DDI 6. As shown below, Petitioner has failed to establish the applied art teaches or suggests basing the sample rate, directly on the bandwidth or that the sample rate is somehow related to the bandwidth.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“With regard to the combination of Bellers and Farhan, in the Petition, Petitioner cited paragraphs 117–120 of the Bims Declaration (Ex. 1002) as providing support for combining the teachings of these references. Pet. 11. As discussed in the Decision Denying Institution, however, the cited paragraphs relate to different subject matter. DDI 14. In the Request for Rehearing, Petitioner now relies upon paragraphs 104–107 of the Bims Declaration. Req. Reh’g 14. Petitioner did not rely upon these paragraphs in the Petition, and Petitioner provides no explanation for this change of argument and evidence in its Request for Rehearing. Id. With regard to the combination of the teachings of Ichiyoshi and Farhan, in the Petition, Petitioner cited paragraph 254 of the Bims Declaration. Pet. 12. As discussed in the Decision Denying Institution, the cited paragraph relates to different subject matter. DDI 15. In the Request for Rehearing, Petitioner now relies upon paragraphs 255–258 of the Bims Declaration. Req. Reh’g 9. Petitioner did not rely upon these paragraphs in the Petition, and Petitioner provides no explanation for this change of argument and evidence in its Request for Rehearing. Id. As noted above, we could not overlook or misapprehend arguments that Petitioner did not make or evidence upon which it did not rely. Thus, contrary to Petitioner’s assertion, we did not overlook argument or evidence presented in the Petition relating to motivation to combine. Moreover, we have reconsidered Petitioner’s reasons to combine for the combinations of (1) Bellers and Farhan; and (2) Ichiyoshi and Farhan provided in the Petition (Pet. 11–12) in light of the additional citations provided in the Request for Rehearing and find, as we did in the Decision Denying Institution (Dec. 13–15) that Petitioner has failed to show a reasonable likelihood of establishing a reason to combine the relevant teachings of these references. As we indicated in the Decision Denying Institution (id.), the reasons to combine in the Petition for all of the asserted combinations of references were brief and conclusory. With regard to the combination of Bellers and Farhan, the Petition states, “[i]t was commonly understood that flexible ADCs could have a sampling rate adapted to the associated bandwidth of their analog input signal.” Pet. 11 (emphasis added). With regard to the combination of Ichiyoshi and Farhan, the Petition states, “POSITAS would have been motivated to combine Ichiyoshi’s sampling system with Farhan’s broadband communications system based on POSITA’s commonly understood knowledge that optimizing RF signal sampling rates can further improve bandwidth efficiency.” Pet. 12 (emphasis added). Neither the Petition nor the Bims Declaration provide adequate support for the assertions as to what was “commonly understood” by persons of skill in the art. The only support given in the Bims Declaration for these assertions are quotations from the art cited in the Petition (see Ex. 1002, ¶¶ 104, 255), which fall far short of establishing what was “commonly understood” as of the date of filing the” slip op. at 10
- BurdenNot shown unpatentable
“2. Bellers (Ex. 1006)3 Petitioner argues Bellers teaches “selecting the sample rate based on bandwidth.” Req. Reh’g 9–13. As noted by Petitioner (id. at 10–11), Bellers states: “[r]eceiver 101 includes a sampling mechanism 104 which samples the analog video input signal at a frequency modulated by or dependent upon the spatial frequency of the sampled content” (Ex. 1006, 3:11–14) and “[t]he present invention employs a sampling rate which is modulated based upon the spatial frequencies of the content being sampled. Higher sampling rates, and larger sample densities, are employed for content having high spatial frequencies while lower sampling rates are employed for content having low spatial frequencies” (id. at 4:14–19 (emphasis added)). Bellers expressly defines spatial frequencies, as follows: “[t]he spatial frequency or frequencies of an image are the rates of pixel change per unit distance, usually expressed in cycles per degree or radian.” Id. at 1:11–13. Thus, Bellers teaches modulating the sampling rate based on the rates of pixel change per unit distance. Petitioner has not shown that Bellers teaches or suggests a “sample rate selected based on the bandwidth.” Petitioner has not directed our attention, either in the Petition or the Request for Rehearing, 3 U.S. Patent No. 8,446,530 B2. to teachings or suggestions in Bellers of selecting the sample rate based on the bandwidth. 3. Ichiyoshi (Ex. 1009)4 In both the Petition (Pet. 83, 86, 90, 95–96) and the Request for Rehearing (Req. Reh’g 7–8), Petitioner argues the following passages in Ichiyoshi teach or suggest selecting the sample rate based on bandwidth. The sampling frequency fs is normally set to fs = NΔf where Δf represents a channel frequency interval. The sampling frequency fs is generated independently in the transmission device 81 and the reception device 82. Ex. 1009, 6:3–6. . . . signal combining circuit 91 includes a sampling timing generator 1 for generating a signal of the sampling frequency fs, and N A/D converter 3 for sampling N independent information signals with the sampling frequency fs . . . Id. at 6:9–13. These passages, however, do not relate to selecting the sample rate based on bandwidth. Petitioner provides no adequate explanation or other support in the Petition (Pet. 83) or the Request for Rehearing (Req. Reh’g 7– 8) for concluding these passages in Ichiyoshi teach or suggest selecting the sample rate based on bandwidth. Indeed, in the Petition, the Petitioner quoted these two passages, but failed to provide any explanation or to cite any further support for finding Ichiyoshi taught or suggested selecting the sample rate based on bandwidth. See Pet. 83. B. Reason to Combine” slip op. at 8
Claim construction§ 103 obviousnessPatents in suitUS 7,848,747 - Apple Inc. v. Saint Lawrence Communications, LLCRehearing deniedPTAB · Dec 26, 2017 · IPR2017-01244 · APJ Daniel N Fishman · IPR · Rehearing
The Board denied Apple’s rehearing request, leaving in place the denial of institution because Petitioner did not show a reasonable likelihood of proving claims 1–21 and 29–42 unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“review the decision for an “abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision,” 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 record. 37 C.F.R. § 42.71(d). A request for rehearing is not an opportunity to present new arguments. See id. An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. 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)Institution denied meritsInstitution denied
“We discern no teaching or suggestion in this text of Salami that the preemphasized signal is used on a perceptual weighting filter. We find no support in the cited portions of Salami for Petitioner’s assertion that the preemphasized signal is first applied to LP analysis and then the same preemphasized signal is perceptually weighted (i.e., applied to a perceptually weighted filter). Petitioner’s argument in the Petition does not explain specifically how the cited text teaches the identified claim limitations and, thus, amounts to little more than an unsupported conclusory remark. Dr. Cohen merely repeats the same argument without providing any further explanation.” slip op. at 4
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We discern no teaching or suggestion in this text of Salami that the preemphasized signal is used on a perceptual weighting filter. We find no support in the cited portions of Salami for Petitioner’s assertion that the preemphasized signal is first applied to LP analysis and then the same preemphasized signal is perceptually weighted (i.e., applied to a perceptually weighted filter). Petitioner’s argument in the Petition does not explain specifically how the cited text teaches the identified claim limitations and, thus, amounts to little more than an unsupported conclusory remark. Dr. Cohen merely repeats the same argument without providing any further explanation.” slip op. at 4
NonePatents in suitUS 6,807,524
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.