- PTAB · Feb 26, 2019 · IPR2017-01539 · APJ Kristen L Droesch · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1, 2, 14, and 15 unpatentable because Patent Owner did not show that the Board misapprehended or overlooked previously presented arguments or evidence.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Decision is set forth in 37 C.F.R. § 42.71(d), which provides that a request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” The party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 2
NonePatents in suitUS 7,683,509 - PTAB · Feb 4, 2019 · IPR2017-01495 · APJ Amanda F Wieker · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no misapprehended or overlooked matter in its construction of “pump” or its obviousness ruling for claims 24–27.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. THE REQUEST FOR REHEARING In pertinent part, 37 C.F.R. § 42.71(d) states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence not presented previously.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“In our Final Written Decision, we noted that neither party proposed an express construction of “pump” during the course of trial. Dec. 60. Thus, we treated the term in accordance with its plain and ordinary meaning as “a device that raises, transfers, or compresses fluids . . . esp. by suction or pressure or both.” Id. (citing Ex. 3001). Understanding a “pump” to be a device that transfers fluid is consistent with the term’s usage in the specification, and is consistent with the parties’ arguments during trial. See Ex. 1001, 2:19–20 (describing “pumps used for movement of corrosive agents”); 19:46–67 (describing “a water pump wherein the motor is used to heat water flowing through the pump”); 20:44–45 (explaining that “fluid transported by the pump can circulate through apertures formed in the encapsulant”); Pet. 55 (describing Gould as grinding material and pumping it through an impeller chamber and out of a conduit); PO Resp. 56 (arguing that a pump “would push fluid through the device”); Pet. Reply 26 (arguing that “impeller 30 of Gould imparts a motion to the fluid to pump it through the fluid pathway”); Tr. 60 (Petitioner’s counsel arguing that impeller 30 “is used to impel the fluid and waste through the pump,” and “acts as a centrifugal pump and drives fluid out and down from the system”).” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for patent owner
“In light of these teachings, we concluded that a person of ordinary skill in the art would have found it obvious to make Zimmerman’s monolithic body from injection-molded thermoplastic, as taught by Neal, to achieve heat conductivity and sealing—goals that Zimmerman also expressly sought to achieve—as well as the other benefits taught by Neal. Dec. 22–25; see, e.g., id. at 24 (“Neal explains that using injection-molded thermoplastic as an encapsulating material allows for appropriate thermal conductivity, as well as hermetic sealing. These are the same properties sought to be realized by Zimmerman’s epoxy resin sheath.” (citing Ex. 1104, 6:26–46, 9:5–20, 18:4–10)). Moreover, as we recognized in our Decision, Stephan and Neal “explicitly teach that their housing and monolithic body, respectively, may be made from either a thermoset[, as taught by Zimmerman,] or an injection-molded thermoplastic material.” Id. at 23 (emphasis added). Thus, we concluded that the use of injection-molded thermoplastic, as taught by Stephan and Neal, was a mere predictable substitution for the thermoset taught by Zimmerman. Id. at 25 (citing Ex. 1132 ¶¶ 78–79).” slip op. at 7
Claim construction§ 103 obviousnessPatents in suitUS 7,928,348 - PTAB · Feb 4, 2019 · IPR2017-01538 · APJ Amanda F Wieker · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving intact the finding that claims 24–27 were unpatentable as obvious over Konishi and the Umeda, Raible, and Neal ground.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. THE REQUEST FOR REHEARING In pertinent part, 37 C.F.R. § 42.71(d) states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence not presented previously.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“of this term most closely aligns with Dr. Trumper’s testimony that a “plumbing fitting” is “something that connects plumbing,” wherein such fittings have been used for hundreds of years to functionally connect pump components. Dec. 14 (citing Ex. 2007, 25:25–26:2, 62:5–72:24 (examples); Ex. 1002 ¶¶ 106–107). Thus, in the absence of any limiting language in the ’348 patent specification, we determined that the broadest reasonable construction of this term is “a connector that couples conduits together in a fluid-tight manner.” Id.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Konishi discloses various types of thermoplastics that may be ‘used to seal the stator core, etc.’ [i.e., the claimed monolithic body]. Konishi also discloses that injection molding is an exemplary method of sealing the stator core. Thus, we determine that a POSITA, aware of Konishi’s teachings that injection-molding and thermoplastic materials may be used to seal the stator core, would have found such use obvious. Dec. 27 (citing Ex. 1003 ¶¶ 16, 30–31, 37–38). Consistent with Konishi’s express disclosures, we also explained that Dr. Trumper testified that such” slip op. at 7
Claim construction§ 103 obviousnessPatents in suitUS 7,928,348 - Fedex Corporation v. Intellectual Ventures II LLCRehearing deniedPTAB · Jul 17, 2018 · IPR2017-02030 · APJ Barbara A Parvis · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, finding no overlooked or misapprehended basis to authorize a motion to terminate the reexamination.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id. With this in mind, we address the arguments presented by Patent Owner.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for patent owner
“First, IV requested that the Board exercise its discretion under 35 U.S.C. § 315(d) and 37 C.F.R. § 42.122(a) to terminate the reexamination request because it was abusive to IV and an unmistakable attempt to circumvent General Plastic. Second, IV requested that the Board exercise its discretion under 35 U.S.C. § 325(d) to terminate the reexamination request because that request presented the same references and substantially the same arguments that FedEx presented in Case IPR2017-00729 and Case IPR2017-02030. Id. For the reasons that follow, we are not persuaded by Patent Owner’s contentions that we misapprehended or overlooked its arguments in connection with its request for authorization to file a motion to terminate. Id. at 1–8.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for patent owner
“First, IV requested that the Board exercise its discretion under 35 U.S.C. § 315(d) and 37 C.F.R. § 42.122(a) to terminate the reexamination request because it was abusive to IV and an unmistakable attempt to circumvent General Plastic. Second, IV requested that the Board exercise its discretion under 35 U.S.C. § 325(d) to terminate the reexamination request because that request presented the same references and substantially the same arguments that FedEx presented in Case IPR2017-00729 and Case IPR2017-02030. Id. For the reasons that follow, we are not persuaded by Patent Owner’s contentions that we misapprehended or overlooked its arguments in connection with its request for authorization to file a motion to terminate. Id. at 1–8.” slip op. at 4
Discretionary denialPatents in suitUS 8,494,581 - Fedex Corporation v. Intellectual Ventures II LLCRehearing deniedPTAB · Jul 17, 2018 · IPR2017-00729 · APJ Barbara A Parvis · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, finding no misapprehension or oversight concerning its denial of authorization to move to terminate the reexamination.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id. With this in mind, we address the arguments presented by Patent Owner.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for patent owner
“First, IV requested that the Board exercise its discretion under 35 U.S.C. § 315(d) and 37 C.F.R. § 42.122(a) to terminate the reexamination request because it was abusive to IV and an unmistakable attempt to circumvent General Plastic. Second, IV requested that the Board exercise its discretion under 35 U.S.C. § 325(d) to terminate the reexamination request because that request presented the same references and substantially the same arguments that FedEx presented in Case IPR2017-00729 and Case IPR2017-02030.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for patent owner
“First, IV requested that the Board exercise its discretion under 35 U.S.C. § 315(d) and 37 C.F.R. § 42.122(a) to terminate the reexamination request because it was abusive to IV and an unmistakable attempt to circumvent General Plastic. Second, IV requested that the Board exercise its discretion under 35 U.S.C. § 325(d) to terminate the reexamination request because that request presented the same references and substantially the same arguments that FedEx presented in Case IPR2017-00729 and Case IPR2017-02030.” slip op. at 4
Discretionary denialPatents in suitUS 8,494,581 - BMW Of North America, LLC / BMW Manufacturing Co., LLC et al. v. Intellectual Ventures II LLCRehearing deniedPTAB · Mar 21, 2018 · IPR2017-01836 · APJ John A Hudalla · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no abuse of discretion in instituting the Nakahara and Trago anticipation grounds after considering § 325(d).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“may authorize the review to proceed on all or some of the challenged claims and on all or some of the grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). When rehearing a decision on institution, we review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See 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). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“But Patent Owner is wrong to suggest that our decision was based solely on the presence of a different Petitioner. For the Nakahara anticipation ground, we also stated that the Petition in this case “was filed before any substantive response from Patent Owner in IPR2017-01536.” Dec. 20. For the Trago anticipation ground, we likewise stated that “Petitioner here did not have the benefit of a substantive response from Patent Owner” in IPR2017-01498 and IPR2017-01536 “prior to filing the instant Petition.” Id. at 26. We also noted that that the Trago anticipation ground differed from the obviousness ground presented in IPR2017-01498 that is based on the combination of Kordik and Trago. Id. at 26–27. We additionally considered the burdens on Patent Owner and the Office attendant to instituting inter partes review in this case. See id. at 20. Thus, Patent Owner’s characterization of our decision as being based solely on different petitioning entities is not accurate. Our consideration of several factors in rendering our decision demonstrates that we understood the scope of our discretion and the need to base a decision on sound legal reasoning.” slip op. at 3
Discretionary denialPatents in suitUS 7,067,944 - Unified Patents Inc. v. Red Rock Analytics, LLCRehearing deniedPTAB · Feb 28, 2018 · IPR2017-01490 · APJ John D Hamann · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution because Petitioner did not show that the Board misapprehended “calibration cycle” or abused its discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW The applicable standard for a request for rehearing is set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: 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, an opposition, or a reply. When reconsidering a decision on institution, we review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See 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). III.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“calibration cycle.” E.g., Ex. 1001, 11:66–67 (emphasis added). We found that how the calibration cycle is referred to in this limitation (i.e., signal includes it) underscores that the calibration cycle is a feature of the calibration RF signal itself. Dec. 15–16. Rather than addressing this claim 1 U.S. Patent No. 6,940,916 B1 (issued Sept. 6, 2005) (Ex. 1003, “Warner”). 2 We do not address further Warner’s teachings because Petitioner’s arguments are predicated on our having misapprehended the meaning of “calibration cycle,” which we did not. In an inter partes review, the petitioner has the burden to show why the patent it challenges is unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015)(citation omitted).” slip op. at 4
- BurdenNot shown unpatentable
“signal includes a calibration cycle.” Ex. 1001, 11:56–12:5 (claim 1), 12:22– 54 (claim 7), 13:18–49 (claim 16), 13:63–14:30 (claim 22), 14:65–15:32 (claim 32), 15:46–62 (claim 38), 16:12–44 (claim 44), 17:8–37 (claim 53), 17:52–18:19 (claim 59), 18:52–19:18 (claim 69) (emphasis added). In denying the Petition, we found that Petitioner did not establish that the prior art disclosed or rendered obvious this limitation. Dec. 8–19. More specifically, we found that the calibration cycle relates to a feature of the calibration radio frequency (“RF”) signal (i.e., the signal includes), rather than simply requiring having a calibration process occur, as Petitioner submitted. Id. at 15–19. Our reasoning underlying this finding related to (A) the language of the limitation, (B) the language of dependent claims, and (C) the ’313 Patent’s Specification. Id.” slip op. at 3
Claim constructionPatents in suitUS 7,346,313 - PTAB · Dec 6, 2017 · IPR2017-01098 · APJ Sharon Fenick · IPR · Rehearing
The Board denied T-Mobile’s rehearing requests, leaving in place the denial of institution for the challenged claims because it found no abuse of discretion in its preliminary construction.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party requesting rehearing bears the burden of showing an abuse of discretion, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 3
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownDecided for patent owner
“We determined in our preliminary construction that the disclosed structure only supports the use of a single wireless network card. Dec. 12– 14. Although the district court cited column 31, lines 22–24 of the ’306 Patent in its analysis of the disclosed structure for the communication module limitation (Ex. 2001, 34), we determined that that portion of the ’306 Patent specification is not related to the identified function for the communication module limitation. Dec. 12–13.” slip op. at 4
- Skill levelOther
“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown.” Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (internal quotation omitted). Consistent with Okajima, the level of ordinary skill in this case is reflected not only by the information presented by the parties, but also by the prior art of record. Although both parties proposed definitions for the applicable level of ordinary skill in the art. (Pet. 12; Ex. 1003 ¶¶ 31–36; Prelim. Resp. 12), neither party specifically explained how any proposed level of ordinary skill in the art would impact the analysis presented. See Genzyme Therapeutic Products L.P. v. Biomarin Pharm. Inc., 825 F.3d 1360, 1371–72 (Fed. Cir. 2016). Having considered the arguments with slip op. at 8
Claim constructioncites PhillipsPatents in suitUS 8,559,369 - PTAB · Dec 6, 2017 · IPR2017-01099 · APJ Sharon Fenick · IPR · Rehearing
The Board denied T-Mobile’s rehearing requests, finding no abuse of discretion in its preliminary construction of the communication module limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“may “deny some or all grounds for unpatentability for some or all of the challenged claims.” 37 C.F.R. § 42.108(b). When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs if a decision is based 2 See IPR2017-01098, Papers 12, 14; IPR2017-01099, Papers 11 (“Institution Decision” or “Dec.”), 14 (“Req. Reh’g”). Unless otherwise specified, we refer to papers filed in IPR2017-01099 and, with respect to the specification of the patents, to U.S. Pat. No. 9,042,306 (Ex. 1002) (“the ’306 patent”). The written description of U.S. Pat. No. 8,559,369 (the “’369 patent”) is substantively identical. on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party requesting rehearing bears the burden of showing an abuse of discretion, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for patent owner
“We determined in our preliminary construction that the disclosed structure only supports the use of a single wireless network card. Dec. 12– 14. Although the district court cited column 31, lines 22–24 of the ’306 Patent in its analysis of the disclosed structure for the communication module limitation (Ex. 2001, 34), we determined that that portion of the ’306 Patent specification is not related to the identified function for the communication module limitation. Dec. 12–13.” slip op. at 4
- Skill levelOther
“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown.” Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (internal quotation omitted). Consistent with Okajima, the level of ordinary skill in this case is reflected not only by the information presented by the parties, but also by the prior art of record. Although both parties proposed definitions for the applicable level of ordinary skill in the art. (Pet. 12; Ex. 1003 ¶¶ 31–36; Prelim. Resp. 12), neither party specifically explained how any proposed level of ordinary skill in the art would impact the analysis presented. See Genzyme Therapeutic Products L.P. v. Biomarin Pharm. Inc., 825 F.3d 1360, 1371–72 (Fed. Cir. 2016). Having considered the arguments with 3 We dispute Petitioner’s characterization of what was “recognized” in our Institution Decision, which clearly notes that the functionality is disclosed in the ’306 Patent as being performed “using only a single wireless network card” and “using a single Wireless NIC.” Dec. 12, quoting ’306 Patent at 11:47-48, 24:28 (emphases in Dec.). respect to the level of ordinary skill, we do not find them persuasive that our preliminary construction was based on an erroneous conclusion of law, a factual finding was not supported by substantial evidence, or there was an unreasonable judgment in weighing relevant factors. slip op. at 8
Claim constructioncites PhillipsPatents in suitUS 9,042,306 - Samsung Electronics Co. Ltd. / Samsung Electronics America, Inc. et al. v. Rosetta-Wireless CorporationRehearing deniedPTAB · Oct 20, 2017 · IPR2016-00622 · APJ John A Hudalla · IPR · Rehearing
The Board denied Rosetta’s rehearing request, finding it had not shown the Board overlooked or misapprehended its § 318(a) and constitutional arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. See 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Not reached
“property right. Req. Reh’g 4–5. Thus, Rosetta contends “[i]nter partes review is an adjudicatory proceeding which, as in this case, may result in extinguishment of a patentee’s property rights by action of the Board and without the right to trial by jury.” Id. at 3. According to Rosetta, this violates the Seventh Amendment and Article III of the Constitution. Id. Rosetta cites to a pending case before the U.S. Supreme Court that has taken up this issue. Id. (citing Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 137 S. Ct. 2239 (2017)). Accordingly, Rosetta asks us to vacate our Final Written Decision. Id. at 6. Rosetta never made arguments during trial about the purported unconstitutionality of inter partes review. Nor does Rosetta’s request for rehearing attempt to identify such arguments in the trial record. As such, we could not have misapprehended or overlooked this issue.” slip op. at 4
NonePatents in suitUS 7,149,511
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.