• Guest-Tek Interactive Entertainment Ltd. v. Nomadix, Inc.Institution denied
  PTAB · Apr 16, 2019 · IPR2018-01660 · APJ Monica S Ullagaddi · IPR · Institution

  The Board denied institution of IPR on claims 1 and 10, exercising § 314(a) discretion because the General Plastic factors favored denying the follow-on petition.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied

    “challenged claims 1 and 10 of the ’899 patent in the ’392IPR. Prelim. Resp. 10. With respect to factor 2, Patent Owner asserts that Petitioner knew of the two references asserted in its sole ground for challenge in the present proceeding (see Pet. 4–5, 17) at the time of filing the ’392IPR in December of 2017. Prelim. Resp. 11. Patent Owner argues that, at the time of filing the earlier ’392IPR and ’376IPR, “not only was Petitioner aware of both Slemmer and Cohen, it had already developed the obviousness argument based on those references that it relies on in this petition.” Id. According to Patent Owner, in the ’392IPR, Petitioner challenged the ’899 patent based on a combination of Slemmer and Vu (U.S. Patent No. 5,623,601) as evidenced by “many other prior art references that also teach [the handshake limitations missing from Slemmer],” including “U.S. Patent No. 6,389,462 to Cohen.” Prelim. Resp. 11–12 (alteration in original) (citing Ex. 2001, 5, 16, 23). Having reviewed Patent Owner’s arguments and the cited evidence, we agree that Petitioner knew about the prior art now asserted when it first challenged claims 1 and 10, and we are persuaded that factors 1 and 2 weigh in favor of exercising discretion to deny institution of the present proceeding.” slip op. at 7

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

    “institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary 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.” For the reasons that follow, we do not institute an inter partes review of any of the challenged claims of the ’899 patent.” slip op. at 2

  Discretionary denial
  Patents in suitUS 8,725,899
• Guest-Tek Interactive Entertainment Ltd. v. Nomadix, Inc.Institution denied
  PTAB · Apr 16, 2019 · IPR2018-01668 · APJ Monica S Ullagaddi · IPR · Institution

  The Board denied institution on claims 1 and 24, finding the General Plastic factors favored discretionary denial of the follow-on petition.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied

    “Patent Owner, in the ’376IPR, Petitioner challenged the ’266 patent based on a combination of Slemmer and Vu (U.S. Patent No. 5,623,601) as evidenced by “many other prior art references that also teach [the handshake limitations missing from Slemmer],” including “U.S. Patent No. 6,389,462 to Cohen.” Id. at 11–12 (citing Ex. 2001, 5, 20, 28). Having reviewed Patent Owner’s arguments and the cited evidence, we agree that Petitioner knew about the prior art now asserted when it first challenged claims 1 and 24, and we are persuaded that factors 1 and 2 weigh in favor of exercising our discretion to deny institution of the present proceeding on the basis of 35 U.S.C. § 314(a).” slip op. at 7

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

    “institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary 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.” For the reasons that follow, we do not institute an inter partes review of any of the challenged claims of the ’266 patent.” slip op. at 2

  Discretionary denial
  Patents in suitUS 8,266,266
• Vestas-American Wind Technology, Inc. / Vestas Wind Systems A/S v. General Electric Co.Rehearing denied
  PTAB · Apr 11, 2019 · IPR2018-01563 · APJ Michael W Kim · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving institution on all challenged claims and grounds unchanged because the petitions differed in their use of EON and the § 325(d) analysis remained unchanged.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “outset, we acknowledge that we did misapprehend or overlook some aspects identified by Patent Owner. Ultimately, however, Patent Owner’s assertions are unpersuasive, because while they certainly highlight the similarities between the two proceedings, they do not address adequately the differences. It is those differences that did, and once again, carry the day, even when we reweigh our previous determination in light of our acknowledged errors.” slip op. at 3

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “on EON is for substantively the same claim limitation, i.e., the recited “uninterruptible power supply.” Compare Pet. 46–48; -01029 Pet. 28–29. The issue, however, are the portions of these petitions that precede those identified by Patent Owner. In the cited portion of -01029 Petition, the only other reference identified is Cousineau. -01029 Pet. 28–29. Neither petition relies on Cousineau for the “uninterruptible power supply.” Accordingly, in the -01029 Petition, we could come to no conclusion other than Petitioner was relying on EON alone for the “uninterruptible power supply.” And it was on that basis that we agreed with Patent Owner that the Office had already considered, and rejected, that position during reexamination. Req. 12.” slip op. at 4

  • Other 314aDenied

    “In the present case, GE respectfully suggests that an expanded panel is appropriate to secure and maintain uniformity of the Board’s decisions where the same panel has taken inconsistent positions with respect to the same reference (EON), used in the same manner, to challenge the same patent (the ’985 patent), in cases IPR2018-01029 and IPR2018-01563, involving the same parties. The panel came to its conclusion in the DI -01029 following a reasoned and complete Becton, Dickinson analysis, then reaffirmed that conclusion in the -01029 Rehearing Decision, recognizing the reliance on the same art and the same or substantially the same argument that was presented previously to the office. The consistent conclusion of exercising the Board’s discretion under 35 U.S.C. § 325(d) to deny institution of an inter partes review is also appropriate here. Req. 14–15. The Chief Judge has considered Patent Owner’s request for an expanded panel, but has determined that an expanded panel is not warranted.” slip op. at 8

  Discretionary denial
  Patents in suitUS 6,921,985
• Google LLC v. Alex Is The Best, LLCRehearing denied
  PTAB · Mar 18, 2019 · IPR2017-02058 · APJ Minn Chung · IPR · Rehearing

  The Board denied Google’s rehearing request and left in place the denial of institution for claims 1–3, 10–14, and 21 because the Petition did not sufficiently show the cited references taught the claimed limitations.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the party challenging the decision,” and the challenging party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in a paper of record. 37 C.F.R. § 42.71(d). Because Petitioner seeks rehearing of our Decision denying institution of trial based on the Petition, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When 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., 840 F.2d 1565, 1567 (Fed. Cir. 1988).” slip op. at 2

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

    “certain teachings in Inoue about the claimed “WSARC.” Req. Reh’g 3. In the Decision, we found that, although the Petition appears to map Inoue’s file server to the claimed “WSARC” by mentioning “WSARC (Inoue’s file server)” (Dec. 16–17 (citing Pet. 17)), aside from that single mention, the Petition does not discuss the term “WSARC” or “website archive and review center” in relation to Inoue, and does not explain adequately why Inoue’s file server teaches or suggests the “WSARC” recited in the claims (id. at 17, 19 (citing Pet. 15–18)). Thus, based on the record presented, we determined that simply stating “a WSARC (Inoue’s file server)” in the Petition without any elaboration does not satisfy Petitioner’s burden required for institution of a review in this case (id. at 19–20 (citations omitted)).” slip op. at 3

  • Strike new argumentNew argument disregardedDecided for patent owner

    “At best, Petitioner’s arguments in its Request for Rehearing attempt to remedy the deficiencies in the Petition our Decision identified, by supplementing the arguments in the Petition. A request for rehearing is not a supplemental petition. Nor is it an opportunity to present new arguments or evidence that could have been presented and developed in the first instance in the Petition. As explained in the Decision (Dec. 19–20), it was Petitioner’s burden “from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (emphases added) (citing 35 U.S.C. § 312(a)(3)); see Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“[T]he expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute.” (emphases added)). The record shows that, rather than overlooking any teachings of Inoue or any “background” discussion by Dr. Madisetti, the Decision simply considered the arguments and explanations of the evidence Petitioner presented in the four corners of the Petition, and properly determined that the Petition did not meet this burden required on Petitioner. Dec. 19–20.” slip op. at 7

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

    “certain teachings in Inoue about the claimed “WSARC.” Req. Reh’g 3. In the Decision, we found that, although the Petition appears to map Inoue’s file server to the claimed “WSARC” by mentioning “WSARC (Inoue’s file server)” (Dec. 16–17 (citing Pet. 17)), aside from that single mention, the Petition does not discuss the term “WSARC” or “website archive and review center” in relation to Inoue, and does not explain adequately why Inoue’s file server teaches or suggests the “WSARC” recited in the claims (id. at 17, 19 (citing Pet. 15–18)). Thus, based on the record presented, we determined that simply stating “a WSARC (Inoue’s file server)” in the Petition without any elaboration does not satisfy Petitioner’s burden required for institution of a review in this case (id. at 19–20 (citations omitted)).” slip op. at 3

  § 103 obviousness
  Patents in suitUS 8,581,991
• Apple Inc. v. Qualcomm IncorporatedRehearing denied
  PTAB · Mar 14, 2019 · IPR2018-01280 · APJ Scott B Howard · IPR · Rehearing

  The Board denied Apple’s rehearing request, leaving in place the denial of institution because it had not overlooked or misapprehended material facts about Brown or the prosecution history.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “a panel will review the decision for an abuse of discretion.” The party requesting rehearing has the burden of showing that the decision from which rehearing is sought 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 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “Dec. 8–9 (emphasis added). Similarly, when weighting the Becton factors, we explicitly found that although the Examiner originally rejected the claims based on Brown, “[f]ollowing an amendment to the claims adding the prompting step along with arguments by the applicant explaining why Brown did not teach that new limitation, the Examiner shifted to new references and no longer relied on Brown.” Id. at 14 (citing Ex. 1002, 142– 149, 156–168, 178–181). In other words, twice we explicitly acknowledged what Petitioner now argues we overlooked.” slip op. at 5

  • Strike new argumentNew argument disregardedOther

    “For the reasons explained above, we are not persuaded that we misapprehended or overlooked any material facts. Moreover, Petitioner never explicitly nor implicitly addressed the Becton factors in the Petition, and new arguments are not permitted in a request for rehearing absent exceptional circumstances, of which none have been identified here.” slip op. at 8

  Discretionary denial
  Patents in suitUS 7,844,037
• Miami International Holdings, Inc. / Miami International Securities Exchange, LLC et al. v. Nasdaq Ise, LLCRehearing granted
  PTAB · Feb 15, 2019 · CBM2018-00021 · APJ Kristi L R Sawert · CBM · Rehearing

  The Board granted rehearing on the ethics rules and granted Interrogatories 4 and 5 and Document Request 2, while denying rehearing on the remaining specified discovery requests.

  RulingsRehearing decision

  • RehearingRehearing, grantedRehearing, deniedGranted in part

    “II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters it believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision, we review the” slip op. at 2

  • Additional discoveryAdditional discovery, grantedGranted in part

    “Upon reconsideration, we agree with Patent Owner that the timing of Dr. Hendershott’s preparation and the editing of common paragraphs 18–36 is unclear on the current record. For example, Dr. Hendershott testified that he could not remember whether Fish suggested that he provide a history of Wall Street and the exchanges, which are embodied in paragraphs 18–36. See Ex. 1062, 53:14–19. Dr. Hendershott also testified that he received from Fish versions of his declaration containing edits, but did not remember whether any of those edits were substantive in nature. See id. at 51:19–25, 52:8–22. Dr. Hendershott also did not review the edits to his declarations and thus was arguably not prepared to testify as to the circumstances surrounding the creation and editing of the common paragraphs. See id. at 58:2–8. Thus, we grant Interrogatories 4 and 5 and Discovery Request 2, as relevant information only in the possession of Fish and Reed Smith (Bloomberg Factor 3). We deny Document Request 3, however, because we remain unpersuaded that it is relevant to showing that confidential information could have found its way from Fish to Reed Smith. Ord. 11. In particular, Document Request 3 relates to information flowing from Reed Smith to Dr. Hendershott, and is therefore not relevant to whether Fish used or revealed information to Reed Smith relating to its prosecution of the Nasdaq patents.” slip op. at 12

  None
  Patents in suitUS 6,618,707
• Delphi Technologies, LLC v. Microchip Technology Inc.Rehearing denied
  PTAB · Dec 11, 2018 · IPR2017-00864 · APJ Daniel N Fishman · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving claims 1, 3–5, 7–9, 11–15, and 18–21 unpatentable because their scope did not require the buffer to store the specified information.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “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). III. DISCUSSION Patent Owner’s Request does not identify any arguments that we “misapprehended or overlooked” let alone “specifically identify” all such matters. Thus, Patent Owner’s Request fails to comply with our rules. Despite this failure of Patent Owner’s Request, we address the substance of Patent Owner’s argument as follows.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “misapprehended any argument. Furthermore, we are unpersuaded that our Decision was in error regarding independent claims 1, 3, 7, 18, and 23 because these claims have a different scope than claims 17, 22, and 24. As Patent Owner correctly noted, our construction of “dedicated USB connection” is “a USB connection that may include some shared physical communication path and includes a buffer for maintaining dedicated address, configuration and response information for the connection.” Dec. 33. Thus, a dedicated USB connection must include a buffer that is capable of storing/maintaining “dedicated address, configuration and response information” regardless of whether such data is actually stored/maintained therein.” slip op. at 3

  Claim construction
  Patents in suitUS 7,523,243
• Delphi Technologies, LLC v. Microchip Technology Inc.Rehearing denied
  PTAB · Dec 11, 2018 · IPR2017-00861 · APJ Daniel N Fishman · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving claim 25 unpatentable because its ACR data limitation did not distinguish its scope and the Board had not misapprehended or overlooked the controller argument.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “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). III. DISCUSSION Patent Owner’s Request does not identify any arguments that we “misapprehended or overlooked” let alone “specifically identify” all such matters. Thus, Patent Owner’s Request fails to comply with our rules. Despite this failure of Patent Owner’s Request, we address the substance of Patent Owner’s arguments below.” slip op. at 2

  • BurdenDecided for patent owner

    “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). III. DISCUSSION Patent Owner’s Request does not identify any arguments that we “misapprehended or overlooked” let alone “specifically identify” all such matters. Thus, Patent Owner’s Request fails to comply with our rules. Despite this failure of Patent Owner’s Request, we address the substance of Patent Owner’s arguments below.” slip op. at 2

  None
  Patents in suitUS 7,627,708
• Coastal Industries, Inc. v. Shower Enclosures America, Inc.Some claims unpatentable
  PTAB · Nov 19, 2018 · IPR2017-00573 · APJ Michael W Kim · IPR · Final written decision

  Claims 1–3, 5, 7–9, 11–14, and 16–26 are unpatentable; claims 4, 6, 10, and 15 are not shown unpatentable. Substitute claims 33 and 34 are granted.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “invention. Pet. 26. Patent Owner sets forth many assertions related to the level of ordinary skill in the art at the time of the invention. PO Resp. 3–14, 20–30; PO Supp. Resp. 15–20. Petitioner responds to those assertions. Pet. Reply 2–4, 9–18; Pet. Supp. Reply 15–16. While we will address each of those assertions, as a substantive matter, Petitioner asserts that “PO does not dispute the definition of a PHOSITA, offer a contrary definition, explain how a different definition might affect the Board’s analysis, nor contest the Board’s specific interpretation of the prior art references to put the PHOSITA determination at issue.” Pet. Reply 16–18; Pet. Supp. Reply 15– 16. We agree with that assessment. Moreover, we note that the level of ordinary skill in the art is often reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Accordingly, as an initial matter, we address Petitioner’s unopposed substantive assertion with respect to the level of ordinary skill in the art at the time of the invention.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “1. “track members” Independent claims 1, 12, 19, and 22 each recite “track members.”” slip op. at 28

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

    “B. Patentability of Substitute Claims 33 and 34 Petitioner asserts that various claim limitations are disclosed in the” slip op. at 100

  • ExcludeMotion to exclude, deniedDenied

    “701, 702 and 37 C.F.R. § 42.65(a). Specifically, Patent Owner asserts that Mr. Poenariu’s testimony is entirely based on his finding as to the level of ordinary skill in the art, and because Mr. Poenariu did not articulate a sufficient factual basis for his conclusion as to the level of ordinary skill in the art, his entire testimony us unreliable and should be excluded. PO Mot. 5–6. Petitioner responds that Mr. Poenariu discloses more than a sufficient amount of underlying facts on which to base his testimony, and, thus, Patent Owner’s assertions go to weight and not admissibility. Pet. Opp. 6–9. We agree with Petitioner.” slip op. at 105

  Patent outcomesUS 7,174,944 mixed
  Claim constructioncites Phillips · KSR
  Patents in suitUS 7,174,944
• Motorola Mobility LLC v. Intellectual Ventures II LLCRehearing denied
  PTAB · Nov 16, 2018 · IPR2014-00504 · APJ Patrick R Scanlon · IPR · Rehearing

  The Board denied Patent Owner’s request for rehearing of the SAS Order, leaving review instituted on all challenged claims and all grounds in the Petition.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). In particular, “[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 3

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)New argument disregardedDenied

    “overlooked express statutory requirements that the Board was obligated to assess before considering the Petition for re-institution.” Reh. Req. 10 (citing 35 U.S.C. § 312(a)). Specifically, Patent Owner argues “the Petition fails to meet the particularity requirement [of 35 U.S.C. § 312(a)(3)] at least with respect to the multiple grounds identified on pages 47–59 of the Petition” because of the “vague formulation” (i.e., Veeck in view of Kellerer, Boehm, and/or Mitchell). Id. at 12. Patent Owner, however, does not identify where this “matter was previously addressed in a motion, an opposition, or a reply,” as required by 37 C.F.R. § 42.71(d). We could not have misapprehended or overlooked something that was not presented previously. A Request for Rehearing is not an opportunity to raise new arguments against a petition. To the extent Patent Owner believes the grounds newly instituted in the SAS Order lack sufficient particularity under 35 U.S.C. § 312(a)(3), it can make such arguments in its supplemental briefing.” slip op. at 10

  • Director reviewOther

    “The standard operating procedure exemplifies some of the reasons for which the Chief Judge may expand a panel. PTAB SOP 1, 15 (§ III.M). For example, the Chief Judge may expand a panel “where appropriate, to secure and maintain uniformity of the Board’s decisions, e.g., in related cases ordinarily involving different three judge panels.” Id. (§ III.M.1). In this case, the acting-Chief Judge has considered Patent Owner’s suggestion for an expanded panel, but has determined that an expanded panel is not warranted.” slip op. at 12

  None
  Patents in suitUS 7,382,771

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.