- Sandisk Corporation v. Netlist, Inc.Rehearing deniedPTAB · Dec 12, 2016 · IPR2015-01021 · APJ Peter P Chen · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests in IPR2015-01020 and IPR2015-01021, finding no overlooked or misapprehended evidence or arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“106 of the first Jagannathan declaration, filed concurrently with the Petition, he testified, “[t]hus, when a chip-select output from the bank control unit is used to enable a particular DDR SDRAM device, it is also used to enable the bit switch.” Final Dec. 23 (citing Ex. 1002 ¶ 106) (emphasis added). This described Petitioner’s evidence on the chip select signal, namely, that Dr. Jagannathan did not testify that the chip select signal “is also the bit switch enable signal,” but rather, that the chip select signal “is used to” generate the enable signals to the bit switch. In Petitioner’s post-hearing brief (Paper 30), Petitioner cited to pages 35 and 36 of the Petition, and to Dr. Jagannathan’s deposition testimony: Q. So what I’m trying to understand is, in that paragraph, it seems that you’re saying it’s the same signal that’s being used. A. No, I don’t -- I disagree with that. What I am trying to say here is the chip select signal -- those signals that I talked about earlier in the sentence, they’re effectively being used to generate the enable signals. Paper 30 (citing Ex. 2002, 218:6–17). Petitioner asserted in its post-hearing brief, “[w]hen taken as a whole, in context, Dr. Jagannathan’s testimony supports the rationale in the Petition.” Paper 30, 4. As set forth in the Final Written Decision, we agree. Nothing argued by Patent Owner persuades us that in the Final Written Decision we misapprehended or overlooked the nature of Dr. Jagannathan’s testimony in his first declaration.” slip op. at 3
NonePatents in suitUS 8,081,536 - Xactware Solutions, Inc. v. Eagle View Technologies, Inc.Rehearing deniedPTAB · Sep 30, 2016 · IPR2016-00587 · APJ Stacey G White · IPR · Rehearing
The Board denied rehearing, leaving institution denied for claims 11, 13, 14, 16–20, 22, and 23 because Petitioner did not sufficiently explain how Verma’s teachings rendered the pitch determination marker obvious.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“III. STANDARD OF REVIEW When rehearing a decision, the Board reviews the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Petitioner’s arguments with these principles in mind.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“incorporate Verma’s handles and operations. Req. Reh’g 13–14. This argument, however, misstates our analysis. In the Decision, we stated that it was “not sufficient for Petitioner to point out different teachings that were available in the prior art; instead, Petitioner must sufficiently articulate a rationale for the combination.” Dec. 11 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). The interaction or integration of these various teachings does not require that the disparate elements of Verma be integrated physically. We, instead, were looking for a discussion of how one of ordinary skill in the art would view these teachings and what one of ordinary skill would learn from the combination. Petitioner has not supplied us with a sufficient explanation as to how one of ordinary skill would combine the knowledge gleaned from these passages and, as such, we were not persuaded that Petitioner had put forth a sufficient showing.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“incorporate Verma’s handles and operations. Req. Reh’g 13–14. This argument, however, misstates our analysis. In the Decision, we stated that it was “not sufficient for Petitioner to point out different teachings that were available in the prior art; instead, Petitioner must sufficiently articulate a rationale for the combination.” Dec. 11 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). The interaction or integration of these various teachings does not require that the disparate elements of Verma be integrated physically. We, instead, were looking for a discussion of how one of ordinary skill in the art would view these teachings and what one of ordinary skill would learn from the combination. Petitioner has not supplied us with a sufficient explanation as to how one of ordinary skill would combine the knowledge gleaned from these passages and, as such, we were not persuaded that Petitioner had put forth a sufficient showing.” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“the model can adjusted by the user to correct roof slopes (pitches).” Pet. 13 (citing Ex. 1008 ¶ 49). Paragraph 49 of Schuch’s declaration, however, discusses Verma’s planar rotation in conjunction with Verma’s handles. Ex. 1008 ¶ 49 (citing Ex. 1005 ¶¶ 37, 62). There is no mention of Verma’s operations in that portion of Schuch’s declaration. Verma’s operations are mentioned in paragraph 50 of Schuch’s declaration, however, this paragraph is not cited in the Petition. See Ex. 1008 ¶ 50. In paragraph 50, Schuch quotes the passage regarding operations, but does not explain the operations or their relationship to the other passages cited from Verma. Then, in paragraph 51, Schuch concludes without explanation that a person of ordinary skill would understand that Verma’s handles would be used to drag the grab the edges or corners between planes in order to modify the slope of the roof to fit the LIDAR image. Id. ¶ 51. We remain unpersuaded by the Schuch declaration. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (nothing requires a fact finder to credit the inadequately explained testimony of an expert). It does not provide sufficient explanation as to how and why these teachings are integrated and, as such, we do not find the Schuch declaration to be sufficient to tie together these teachings.” slip op. at 7
§ 103 obviousnesscites KSRPatents in suitUS 9,129,376 - Xactware Solutions, Inc. v. Eagle View Technologies, Inc.Rehearing deniedPTAB · Sep 21, 2016 · IPR2016-00582 · APJ Bryan F Moore · IPR · Rehearing
The Board denied Xactware’s rehearing request, leaving institution denied for claims 1–5, 7–13, 15–23, 25–31, 33–40, 42, 46–52, and 54–56 because Hsieh’s public accessibility was not sufficiently shown.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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 [we] misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“that Hsieh was indexed prior to the critical date. Req. Reh’g 2–5. Petitioner points to indicia on the first few pages of Hsieh showing dates and bar codes, provides an explanation of the import of those indicia, and argues that we should have found a reasonable inference of public accessibility before the critical date. We considered the indicia along with Petitioner’s failure to explain the import of the indicia and found the evidence presented by Petitioner lacking. Dec. 5–6 (citing In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009)). A request for rehearing is not an opportunity merely to disagree with the Panel’s assessment of the arguments or weighing of the evidence. It is not an abuse of discretion to have performed an analysis or reached a” slip op. at 2
§ 102 anticipationPatents in suitUS 8,078,436 - First Data Corporation v. Coqui Technologies, LLCRehearing deniedPTAB · May 20, 2016 · IPR2015-01668 · APJ Jennifer S Bisk · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution on claims 7, 9, 12–15, 18, and 23 over Stoutenburg and Karas.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We see nothing in the request that illuminates the issues specifically addressed in our Decision, namely, the difficulty we had understanding what deficiencies of Stoutenburg Petitioner was proposing would be supplemented by Karas and, assuming a combination of teachings, the details of such combination. Dec. 12–16. Petitioner does not point to anything in the Petition that we overlooked or misapprehended that explains what deficiency in Stoutenburg would lead a person of ordinary skill to look to Karas to supplement its teaching. From the generous use of emphasis in Petitioner’s request, we speculate that Petitioner is now arguing that Karas is being relied on for teaching “using the gift certificates” as recited in the preamble of claim 1 and that, perhaps, Stoutenburg itself, does not disclose this element. See Reh’g Req. 5 (quoting the Petition, but emphasizing “Karas also teaches gifting certificates”).1 To the extent that this is Petitioner’s argument, we are not persuaded that we misunderstood or overlooked this argument in the Petition, but instead find our inability, even at this juncture, to determine Petitioner’s position on this issue, exemplifies the problems we encountered with the Petition. Moreover, even if we were persuaded by this argument, it does not explain how Karas’s function of gifting certificates is to be combined with Stoutenburg’s system. Simply stating that the systems are “highly compatible” does not suffice. Id. at 6 (quoting Paper 2 (“Pet.”), 25). Similarly, Petitioner asserts that we “overlooked or misapprehended the Petition’s discussion of the motivation offered in Stoutenburg for combining the stored value card embodiments of Stoutenburg, with a ‘value transfer system [that] effectuates payment for a purchased stored value card’ as disclosed in Karas.” Id. at 7–8 (quoting Pet. 25). Although Petitioner has repeated this section of its argument from the Petition adding emphasis on “payment” and “the value system effectuates payment,” (Id. at 7–8) we still do not understand from Petitioner’s argument, why a person of ordinary skill would have been motivated to look to Karas based on Stoutenburg’s general statement that its examples are merely illustrative. We are, thus, not persuaded that denying institution on this basis was an abuse of our discretion.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“addressed in our Decision, namely, the difficulty we had understanding what deficiencies of Stoutenburg Petitioner was proposing would be supplemented by Karas and, assuming a combination of teachings, the details of such combination. Dec. 12–16. Petitioner does not point to anything in the Petition that we overlooked or misapprehended that explains what deficiency in Stoutenburg would lead a person of ordinary skill to look to Karas to supplement its teaching. From the generous use of emphasis in Petitioner’s request, we speculate that Petitioner is now arguing that Karas is being relied on for teaching “using the gift certificates” as recited in the preamble of claim 1 and that, perhaps, Stoutenburg itself, does not disclose this element. See Reh’g Req. 5 (quoting the Petition, but emphasizing “Karas also teaches gifting certificates”).1 To the extent that this is Petitioner’s argument, we are not persuaded that we misunderstood or overlooked this argument in the Petition, but instead find our inability, even at this juncture, to determine Petitioner’s position on this issue, exemplifies the problems we encountered with the Petition. Moreover, even if we were persuaded by this argument, it does not explain how Karas’s function of gifting certificates is to be combined with Stoutenburg’s system. Simply stating that the systems are “highly compatible” does not suffice. Id. at 6 (quoting Paper 2 (“Pet.”), 25). Similarly, Petitioner asserts that we “overlooked or misapprehended the Petition’s discussion of the motivation offered in Stoutenburg for combining the stored value card embodiments of Stoutenburg, with a ‘value transfer system [that] effectuates payment for a purchased stored value card’ as disclosed in Karas.” Id. at 7–8 (quoting Pet. 25). Although Petitioner has repeated this section of its argument from the Petition adding emphasis on “payment” and “the value system effectuates payment,” (Id. at 7–8) we still do not understand from Petitioner’s argument, why a person of ordinary skill would have been motivated to look to Karas based on Stoutenburg’s general statement that its examples are merely illustrative. We are, thus, not persuaded that denying institution on this basis was an abuse of our discretion.” slip op. at 3
§ 103 obviousnessPatents in suitUS 7,580,864 - First Data Corporation v. Coqui Technologies, LLCRehearing deniedPTAB · May 20, 2016 · IPR2015-01667 · APJ Jennifer S Bisk · IPR · Rehearing
The Board denied First Data’s rehearing request, leaving institution denied for claims 1 and 5 under § 103(a) over Stoutenburg and Karas because the petition did not explain the proposed combination.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We see nothing in the request that illuminates the issues specifically addressed in our Decision, namely, the difficulty we had understanding what deficiencies of Stoutenburg Petitioner was proposing would be supplemented by Karas and, assuming a combination of teachings, the details of such combination. Dec. 9–13. Petitioner does not point to anything in the Petition that we overlooked or misapprehended that explains what deficiency in Stoutenburg would lead a person of ordinary skill to look to Karas to supplement its teaching. From the generous use of emphasis in Petitioner’s request, we speculate that Petitioner is now arguing that Karas is being relied on for teaching “using the gift certificates” as recited in the preamble of claim 1 and that, perhaps, Stoutenburg itself, does not disclose this element. See Reh’g Req. 5 (quoting the Petition, but emphasizing “Stoutenburg to teach ‘gifting’ funds” and “Karas also teaches gifting certificates”).1 To the extent that this is Petitioner’s argument, we are not persuaded that we misunderstood or overlooked this argument in the Petition, but instead find our inability, even at this juncture, to determine Petitioner’s position on this issue, exemplifies the problems we encountered with the Petition. Moreover, even if we were persuaded by this argument, it does not explain how Karas’s function of gifting certificates is to be combined with Stoutenburg’s system. Simply stating that the systems are “highly compatible” does not suffice. Id. at 5 (quoting Paper 2 (“Pet.”), 27). Similarly, Petitioner asserts that we “overlooked or misapprehended the Petition’s discussion of the motivation offered in Stoutenburg for combining the stored value card embodiment of Stoutenburg, with a ‘value transfer system [that] effectuates payment for a purchased stored value card’ as disclosed in Karas.” Id. at 7 (quoting Pet. 27). Although Petitioner has repeated this section of its argument from the Petition adding emphasis on “payment” and “the value system effectuates payment,” (Id. at 7–8) we still do not understand from Petitioner’s argument, why a person of ordinary skill would have been motivated to look to Karas based on Stoutenburg’s general statement that its examples are merely illustrative. We are, thus, not persuaded that denying institution on this basis was an abuse of our discretion.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We see nothing in the request that illuminates the issues specifically addressed in our Decision, namely, the difficulty we had understanding what deficiencies of Stoutenburg Petitioner was proposing would be supplemented by Karas and, assuming a combination of teachings, the details of such combination. Dec. 9–13. Petitioner does not point to anything in the Petition that we overlooked or misapprehended that explains what deficiency in Stoutenburg would lead a person of ordinary skill to look to Karas to supplement its teaching. From the generous use of emphasis in Petitioner’s request, we speculate that Petitioner is now arguing that Karas is being relied on for teaching “using the gift certificates” as recited in the preamble of claim 1 and that, perhaps, Stoutenburg itself, does not disclose this element. See Reh’g Req. 5 (quoting the Petition, but emphasizing “Stoutenburg to teach ‘gifting’ funds” and “Karas also teaches gifting certificates”).1 To the extent that this is Petitioner’s argument, we are not persuaded that we misunderstood or overlooked this argument in the Petition, but instead find our inability, even at this juncture, to determine Petitioner’s position on this issue, exemplifies the problems we encountered with the Petition. Moreover, even if we were persuaded by this argument, it does not explain how Karas’s function of gifting certificates is to be combined with Stoutenburg’s system. Simply stating that the systems are “highly compatible” does not suffice. Id. at 5 (quoting Paper 2 (“Pet.”), 27). Similarly, Petitioner asserts that we “overlooked or misapprehended the Petition’s discussion of the motivation offered in Stoutenburg for combining the stored value card embodiment of Stoutenburg, with a ‘value transfer system [that] effectuates payment for a purchased stored value card’ as disclosed in Karas.” Id. at 7 (quoting Pet. 27). Although Petitioner has repeated this section of its argument from the Petition adding emphasis on “payment” and “the value system effectuates payment,” (Id. at 7–8) we still do not understand from Petitioner’s argument, why a person of ordinary skill would have been motivated to look to Karas based on Stoutenburg’s general statement that its examples are merely illustrative. We are, thus, not persuaded that denying institution on this basis was an abuse of our discretion.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We see nothing in the request that illuminates the issues specifically addressed in our Decision, namely, the difficulty we had understanding what deficiencies of Stoutenburg Petitioner was proposing would be supplemented by Karas and, assuming a combination of teachings, the details of such combination. Dec. 9–13. Petitioner does not point to anything in the Petition that we overlooked or misapprehended that explains what deficiency in Stoutenburg would lead a person of ordinary skill to look to Karas to supplement its teaching. From the generous use of emphasis in Petitioner’s request, we speculate that Petitioner is now arguing that Karas is being relied on for teaching “using the gift certificates” as recited in the preamble of claim 1 and that, perhaps, Stoutenburg itself, does not disclose this element. See Reh’g Req. 5 (quoting the Petition, but emphasizing “Stoutenburg to teach ‘gifting’ funds” and “Karas also teaches gifting certificates”).1 To the extent that this is Petitioner’s argument, we are not persuaded that we misunderstood or overlooked this argument in the Petition, but instead find our inability, even at this juncture, to determine Petitioner’s position on this issue, exemplifies the problems we encountered with the Petition. Moreover, even if we were persuaded by this argument, it does not explain how Karas’s function of gifting certificates is to be combined with Stoutenburg’s system. Simply stating that the systems are “highly compatible” does not suffice. Id. at 5 (quoting Paper 2 (“Pet.”), 27). Similarly, Petitioner asserts that we “overlooked or misapprehended the Petition’s discussion of the motivation offered in Stoutenburg for combining the stored value card embodiment of Stoutenburg, with a ‘value transfer system [that] effectuates payment for a purchased stored value card’ as disclosed in Karas.” Id. at 7 (quoting Pet. 27). Although Petitioner has repeated this section of its argument from the Petition adding emphasis on “payment” and “the value system effectuates payment,” (Id. at 7–8) we still do not understand from Petitioner’s argument, why a person of ordinary skill would have been motivated to look to Karas based on Stoutenburg’s general statement that its examples are merely illustrative. We are, thus, not persuaded that denying institution on this basis was an abuse of our discretion.” slip op. at 3
§ 103 obviousnessPatents in suitUS 7,580,864 - Sandisk Corporation v. Netlist, Inc.Rehearing deniedPTAB · Apr 27, 2016 · IPR2014-00970 · APJ Linda M Gaudette · IPR · Rehearing
Denied SanDisk’s rehearing request; the Board maintained its findings that claims 2, 5, and 6 were not shown obvious over Huang and claims 17–19 and 35 were not shown anticipated by Averbuj.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW The party requesting rehearing has the burden of showing 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 a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d).” slip op. at 3
- BurdenNot shown unpatentable
“20–21 (“Averbuj discloses that in BIST mode, the multiplexer 46 shown in Fig. 6 selectively inputs signals BIST_ADDR/CTRL (i.e., address and control signals from the control module) to the address and control port of the corresponding memory device 12.” (emphasis added)). In other words, the Petition is devoid of any discussion of BIST_EN in connection with the limitations of claims 17–19 and 35. See Pet. 19–21. Likewise, the Reply fails to contain any discussion of how the claim limitations are met by Averbuj’s use of the BIST_EN signal. See Reply 17. 37 C.F.R. § 42.22(a)(2) requires each petition to include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” Our discussion in the Final Decision of the patentability challenge as to claims 17–19 and 35 based on anticipation by Averbuj addresses Petitioner’s arguments in the Petition and Reply, which are limited to a contention that Averbuj’s multiplexer 46 is required to meet the “configured to selectively input” and “selectively inputs” limitations recited in claims 17–19 and 35. See Final Dec. 44–46 (citing Pet. 19–21; Reply 17). In arguing that we should have considered Dr. Alpert’s testimony that Averbuj’s sequencer, by generating a BIST_EN signal, is “configured to selectively input”/“selectively inputs” address and control signals to the memory modules, Petitioner attempts to improperly incorporate arguments into its Petition and Reply by reference to Dr. Alpert’s declaration testimony. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). In any event, we find the declaration testimony relied on by Petitioner in support of this Request (see Req. Reh’g 13) supports our determination that Petitioner failed to show, by a preponderance of the evidence, that Averbuj anticipates claims 17–19 and 35. Dr. Alpert testified that if the “configuration [to selectively input to the address and control ports] is determined to require the structure that performs the selection itself, then the disclosed control module also includes multiplexer 46 of memory interface 41.” Ex. 1007 ¶ 78 (emphasis added); see also id. ¶ 81 (identifying multiplexer 46 as the “DRAM controller which performs the selective inputting” as recited in claim 18). Petitioner did not explain (see Pet. 19–21; Reply 17) how Averbuj describes multiplexer 46 as being part of sequencer 8 (the alleged control module). See Final Dec. 45–46 (explaining that Petitioner has not addressed Patent Owner’s argument that the device that selectively inputs address and control signals to memory modules 12 is multiplexer 46 of memory interface 41 (the alleged data handler), not sequencer 8 (the alleged control module)). In sum, for the above reasons, we are not persuaded of error in our determination that Petitioner did not meet its burden to establish unpatentability of claims 17–19 and 35 under 35 U.S.C. § 102(b) based on Averbuj.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Huang and Tsern, Petitioner relied on the declaration testimony of its expert, Dr. Donald Alpert (Ex. 1007). See, e.g., id. at 44 (citing Ex. 1007 ¶ 222 in support of its challenge as to claim 2). In concluding Petitioner had not demonstrated a reasonable likelihood it would prevail in showing that claims 2, 5, and 6 would have been obvious over Huang in view of Tsern, we said the following: Dr. Alpert’s opinion that a person of ordinary skill in the art would have been motivated to combine Huang and Tsern . . . is either unsupported or relies on disclosure in the ’434 patent Detailed Description. See, e.g., Ex. 1007 ¶¶ 193, 199, and 206. . . . [T]here is no evidence on this record that the cited portions of the ’434 patent are a description of prior art. Moreover, Dr. Alpert’s statements lack sufficient articulated reasoning with rational underpinning as to why an ordinary artisan at the time of the invention would have had a reason to combine the prior art elements in the manner required by the challenged claims.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” Our discussion in the Final Decision of the patentability challenge as to claims 17–19 and 35 based on anticipation by Averbuj addresses Petitioner’s arguments in the Petition and Reply, which are limited to a contention that Averbuj’s multiplexer 46 is required to meet the “configured to selectively input” and “selectively inputs” limitations recited in claims 17–19 and 35. See Final Dec. 44–46 (citing Pet. 19–21; Reply 17). In arguing that we should have considered Dr. Alpert’s testimony that Averbuj’s sequencer, by generating a BIST_EN signal, is “configured to selectively input”/“selectively inputs” address and control signals to the memory modules, Petitioner attempts to improperly incorporate arguments into its Petition and Reply by reference to Dr. Alpert’s declaration testimony. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). In any event, we find the declaration testimony relied on by Petitioner in support of this Request (see Req. Reh’g 13) supports our determination that Petitioner failed to show, by a preponderance of the evidence, that Averbuj anticipates claims 17–19 and 35. Dr. Alpert testified that if the “configuration [to selectively input to the address and control ports] is determined to require the structure that performs the selection itself, then the disclosed control module also includes multiplexer 46 of memory interface 41.” Ex. 1007 ¶ 78 (emphasis added); see also id. ¶ 81 (identifying multiplexer 46 as the “DRAM controller which performs the selective inputting” as recited in claim 18). Petitioner did not explain (see Pet. 19–21; Reply 17) how Averbuj describes multiplexer 46 as being part of sequencer 8 (the alleged control module). See Final Dec. 45–46 (explaining that Petitioner has not addressed Patent Owner’s argument that the device that selectively inputs address and control signals to memory modules 12 is multiplexer 46 of memory interface 41 (the alleged data handler), not sequencer 8 (the alleged control module)). In sum, for the above reasons, we are not persuaded of error in our determination that Petitioner did not meet its burden to establish unpatentability of claims 17–19 and 35 under 35 U.S.C. § 102(b) based on Averbuj.” slip op. at 11
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,001,434 - PTAB · Apr 19, 2016 · IPR2015-01872 · APJ David C Mckone · IPR · Rehearing
The Board denied Ericsson’s rehearing request, leaving claims 5, 10, and 15 uninstituted because it found no abuse of discretion in the merits determination.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). The burden of showing that the Decision should be modified is on Petitioner, the party challenging the Decision. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
- BurdenDecided for patent owner
“different groups of users could be served before others. Req. 5. According to Petitioner, a skilled artisan would have incorporated these values into the “class” fields of Lu’s data packets such that Lu’s system could make distinctions based on subscribers’ subscription requirements and identify the priorities of certain users. Id. at 5–6. This argument was not presented in the Petition. 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. See 37 C.F.R. § 42.71(d). Because Petitioner did not make this argument in the Petition, we could not have misapprehended or overlooked it. In any case, as Patent Owner explained in the Preliminary Response (at 42–43), Lu already provides a mechanism (the class field) for making distinctions based on subscribers’ subscription requirements. Ex. 1002, 5:21–32, 5:57–67; Dec. 27. Petitioner does not explain why a skilled artisan would have had reason to incorporate what appears to be a redundant feature. Thus, Petitioner’s argument is unpersuasive.” slip op. at 4
- Strike new argumentNew argument disregardedDecided for patent owner
“In the Request, Petitioner identifies the fairness metric values described in paragraph 76 of Pankaj (not cited in the Petition) and explains that these fairness metric values could be used in Lu’s packets so that different groups of users could be served before others. Req. 5. According to Petitioner, a skilled artisan would have incorporated these values into the “class” fields of Lu’s data packets such that Lu’s system could make distinctions based on subscribers’ subscription requirements and identify the priorities of certain users. Id. at 5–6. This argument was not presented in the Petition. 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. See 37 C.F.R. § 42.71(d). Because Petitioner did not make this argument in the Petition, we could not have misapprehended or overlooked it.” slip op. at 3
NonePatents in suitUS 7,385,994 - PTAB · Apr 14, 2016 · IPR2015-01479 · APJ Charles J Boudreau · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution because Petitioner did not show a reasonable likelihood that GTE rendered claims 1–8 and 16 obvious.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“comprising illumination units. Ex. 1016, 1:5–20. Although, as Petitioner points out (Pet. 41; Req. Reh’g 5–6), Philips cites GTE as “describ[ing] an illumination unit” and discusses certain advantages of the “high frequency supply” described by GTE (Ex. 1016, 1:60–2:4), we find that the cited disclosure in Philips amounts to insufficient evidence that a person of ordinary skill in the art would have understood GTE to describe an illumination unit that would be suitable for use as a backlight for an LCD device. As we explained in our Decision Denying Institution, GTE explicitly states that its lamp tubes are mounted side-by-side and parallel in a circular arrangement around a central axis, and we cannot discern how lamp tubes mounted in such an arrangement could be employed as an LCD backlight. Dec. 17–18. Philips’ discussion of GTE does not provide any guidance in that regard, and Petitioner’s contentions to the contrary in the Request for Rehearing are not persuasive. Req. Reh’g 9–11. We disagree, in particular, with Petitioner’s assertion that “as a matter of common sense, the circular arrangements disclosed in GTE would provide illumination around the entire circumference of the arrangement much like a single lamp tube would provide illumination around its entire circumference.” Id. at 10. Regardless whether Petitioner envisions GTE’s circular apparatus being mounted with its central axis parallel with, or perpendicular to, the plane of the LCD, Petitioner has not presented sufficient evidence to show how such an apparatus could, for example, provide the sort of “highly uniform light over the entire back surface of the liquid crystal panel” that Petitioner’s declarant Dr. Silzars states to be an objective of an LCD backlight unit. Ex. 1002 ¶ 24. In any event, it is not an abuse of discretion to have performed an analysis or reached a conclusion with which Petitioner disagrees, and mere disagreement with our analysis or conclusion is not a proper basis for rehearing.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsNot shown unpatentable
“comprising illumination units. Ex. 1016, 1:5–20. Although, as Petitioner points out (Pet. 41; Req. Reh’g 5–6), Philips cites GTE as “describ[ing] an illumination unit” and discusses certain advantages of the “high frequency supply” described by GTE (Ex. 1016, 1:60–2:4), we find that the cited disclosure in Philips amounts to insufficient evidence that a person of ordinary skill in the art would have understood GTE to describe an illumination unit that would be suitable for use as a backlight for an LCD device. As we explained in our Decision Denying Institution, GTE explicitly states that its lamp tubes are mounted side-by-side and parallel in a circular arrangement around a central axis, and we cannot discern how lamp tubes mounted in such an arrangement could be employed as an LCD backlight. Dec. 17–18. Philips’ discussion of GTE does not provide any guidance in that regard, and Petitioner’s contentions to the contrary in the Request for Rehearing are not persuasive. Req. Reh’g 9–11. We disagree, in particular, with Petitioner’s assertion that “as a matter of common sense, the circular arrangements disclosed in GTE would provide illumination around the entire circumference of the arrangement much like a single lamp tube would provide illumination around its entire circumference.” Id. at 10. Regardless whether Petitioner envisions GTE’s circular apparatus being mounted with its central axis parallel with, or perpendicular to, the plane of the LCD, Petitioner has not presented sufficient evidence to show how such an apparatus could, for example, provide the sort of “highly uniform light over the entire back surface of the liquid crystal panel” that Petitioner’s declarant Dr. Silzars states to be an objective of an LCD backlight unit. Ex. 1002 ¶ 24. In any event, it is not an abuse of discretion to have performed an analysis or reached a conclusion with which Petitioner disagrees, and mere disagreement with our analysis or conclusion is not a proper basis for rehearing.” slip op. at 4
NonePatents in suitUS 6,417,833 - Arista Networks, Inc. v. Cisco Systems, Inc.Rehearing deniedPTAB · Mar 29, 2016 · IPR2015-01710 · APJ Bryan F Moore · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution under § 325(d), finding the request did not show that it overlooked or misapprehended any matter.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS 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 [we] misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“35 U.S.C. § 325(d). Petitioner does not address the Decision’s discussion of the anticipation ground presented in the ’974 Petition. The Decision found that the anticipation ground presented the same arguments regarding Habraken as were presented regarding Habraken in the ’974 Petition. Dec. 9–10.” slip op. at 3
Discretionary denialPatents in suitUS 7,224,668 - PTAB · Mar 4, 2016 · IPR2015-01417 · APJ Bryan F Moore · IPR · Rehearing
The Board denied rehearing, finding the petition did not show a reasonable likelihood of prevailing on the anticipation challenge to claim 4 because its mapping was inadequately explained.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS When considering a request for rehearing, we review the Decision Granting Institution for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the Decision Granting Institution should be modified, and “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsNot shown unpatentable
“with respect to the anticipation ground,] Takizawa discloses semiconductor material being disposed at the drain bus line/gate bus line overlap, in addition to other regions in the thin film transistor matrix device. Petition (“Pet.”) at 19–26; Ex. 1012 at ¶¶ 55, 61.” Reh’g Req. 4. We disagree because such evidence was not explained adequately in the Petition. The Petition states, without further explanation, that “Takizawa also teaches formation of semiconductor layers at the crossover location. Ex. 1012, ¶ 61.” Pet. 21–22. Nevertheless, the Petition contains no further explanation supporting that statement. Id. The Petition merely cites the Chiang declaration and does not explain sufficiently the significance of the cited testimony. See 37 C.F.R. § 42.22(a)(2). “Arguments must not be incorporated by reference from one document into another document.” 37 C.F.R. § 42.6(a)(3). Without a sufficient explanation why Takizawa would anticipate the limitation to operative semiconductor formed where said gate bus line overlaps said drain bus line in the Petition itself, the citations to the Chiang Declaration amount to incorporation by reference of arguments made in that declaration that circumvent the page limits that apply to petitions. 37 C.F.R. § 42.24(a). Thus, we did not overlook or misapprehend Petitioner’s arguments or evidence in the Petition. Thus, we are not persuaded by this argument.” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“with respect to the anticipation ground,] Takizawa discloses semiconductor material being disposed at the drain bus line/gate bus line overlap, in addition to other regions in the thin film transistor matrix device. Petition (“Pet.”) at 19–26; Ex. 1012 at ¶¶ 55, 61.” Reh’g Req. 4. We disagree because such evidence was not explained adequately in the Petition. The Petition states, without further explanation, that “Takizawa also teaches formation of semiconductor layers at the crossover location. Ex. 1012, ¶ 61.” Pet. 21–22. Nevertheless, the Petition contains no further explanation supporting that statement. Id. The Petition merely cites the Chiang declaration and does not explain sufficiently the significance of the cited testimony. See 37 C.F.R. § 42.22(a)(2). “Arguments must not be incorporated by reference from one document into another document.” 37 C.F.R. § 42.6(a)(3). Without a sufficient explanation why Takizawa would anticipate the limitation to operative semiconductor formed where said gate bus line overlaps said drain bus line in the Petition itself, the citations to the Chiang Declaration amount to incorporation by reference of arguments made in that declaration that circumvent the page limits that apply to petitions. 37 C.F.R. § 42.24(a). Thus, we did not overlook or misapprehend Petitioner’s arguments or evidence in the Petition. Thus, we are not persuaded by this argument.” slip op. at 3
- BurdenDecided for patent owner
“teaches formation of semiconductor layers at the crossover location. Ex. 1012, ¶ 61.” Pet. 21–22. Nevertheless, the Petition contains no further explanation supporting that statement. Id. The Petition merely cites the Chiang declaration and does not explain sufficiently the significance of the cited testimony. See 37 C.F.R. § 42.22(a)(2). “Arguments must not be incorporated by reference from one document into another document.” 37 C.F.R. § 42.6(a)(3). Without a sufficient explanation why Takizawa would anticipate the limitation to operative semiconductor formed where said gate bus line overlaps said drain bus line in the Petition itself, the citations to the Chiang Declaration amount to incorporation by reference of arguments made in that declaration that circumvent the page limits that apply to petitions. 37 C.F.R. § 42.24(a). Thus, we did not overlook or misapprehend Petitioner’s arguments or evidence in the Petition. Thus, we are not persuaded by this argument.” slip op. at 3
§ 102 anticipationPatents in suitUS 5,966,589
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.