- Apple Inc. v. Immersion CorporationRehearing deniedPTAB · Apr 27, 2017 · IPR2016-01777 · APJ Minn Chung · IPR · Rehearing
The Board denied Apple’s rehearing request, leaving in place the denial of institution because the Petition did not analyze the determining a press limitation as an integral whole.
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 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
“construe the “determining a press limitation” or interpreted the limitation to require the first two conditions recited in the limitation be maintained for the duration of a first interval. See Dec. 7–8. Rather, we found that, as illustrated in Figure 3 of the ’507 patent, “the meaning of the ‘first interval has elapsed’ condition as an integral part of the ‘determining a press limitation’ may be very different from its meaning in isolation.” Id. at 14–15 (emphasis added). We determined, based on the plain language of the claim limitation and the disclosure in the Specification, that the “determining a press limitation” recites a single concept of determining a press when all three conditions recited in the limitation are satisfied. Id. at 11–12. We found, therefore, a proper obviousness analysis must address the “determining a press limitation” as an integral whole, including the meaning of the “first interval has elapsed” condition as a part of the “determining a press limitation,” and show how a reference or a combination of references teaches or renders the limitation as a whole obvious. Id. at 12, 14–15 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)). We found that the Petition did not present such an analysis. Id. at 12, 15.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“an analysis. Instead, Petitioner argues that, because the claims use the openended transitional phrase “comprising,” the broadest reasonable interpretation of the “determining a press limitation” “requires only that there be at least one scenario in which the satisfaction of [the three recited conditions] . . . results in a determination of a press.” Req. Reh’g 8–10. Petitioner, however, does not identify where in the Petition this argument was presented. Petitioner’s argument appears to be a new argument presented for the first time in its Request for Rehearing to address the deficiencies in the Petition that were identified in our Decision. It was Petitioner’s affirmative duty to explain how the challenged claims should be construed and how, as so construed, they are unpatentable. See 37 C.F.R. § 42.104(b)(3)–(4). Hence, had Petitioner intended to argue, based on the open-ended transitional phrase “comprising” used in the claims, an interpretation of the “determining a press limitation” that differs from the meaning indicated by the plain language of the claim limitation or the disclosure in the Specification, such an analysis should have been made explicit in the Petition. A rehearing request 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. Simply put, we could not have misapprehended or overlooked arguments or evidence that were not presented or developed in the Petition.” slip op. at 4
- ExcludeNot reached
“In support of its claim construction argument, Petitioner submits an Administrative Law Judge’s order on claim construction from the related U.S. International Trade Commission proceeding, which was not evidence of record at the time of our Decision. Req. Reh’g 7 (citing Ex. 1010, 59). In general, new evidence is not allowed in a Request for Rehearing, absent showing of good cause. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Petitioner does not explain why there is good cause to admit Exhibit 1010 with its Request for Rehearing. Nonetheless, even when we consider Exhibit 1010, it would not change the outcome of the Petitioner’s Request for Rehearing because we could not have misapprehended or overlooked evidence that was not presented or developed in the Petition.” slip op. at 5
§ 103 obviousnesscites KSRPatents in suitUS 8,749,507 - Samsung Electronics Co., Ltd. v. Daniel L. FlammRehearing deniedPTAB · Apr 14, 2017 · IPR2016-01510 · APJ Michael R Zecher · IPR · Rehearing
The Board denied Samsung’s rehearing request, leaving in place the denial of institution for claims 13–26, 64, and 65 because the cited combination did not account for selecting a substrate holder’s thermal mass.
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 addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). With this in mind, we address the arguments presented by Samsung in turn.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“deficiency we identify above. That is, even if we were to accept that Samsung’s declarant, Dr. Shanfield, demonstrates that Incropera’s equation 5.6 may be used to select thermal mass, he does not explain how such a selection implicates selecting the thermal mass of a substrate holder. To support its assertion that the combined teachings of Okada I and Samsung account for selecting the thermal mass of a substrate holder, we recognize that Samsung, once again, directs us to the testimony of Dr. Shanfield. Ex. 1002 ¶ 66. This cited testimony for Dr. Shanfield merely demonstrates that certain elements required by independent claim 13 were known independently in the prior art by explaining that, upon identifying certain parameters (i.e., Okada I’s temperature A, temperature B, and time period between two and ten seconds), the identified parameters may be used in Incropera’s equation 5.6 in order to achieve the end result of selecting the thermal mass of Okada I’s electrode 25. See id. The U.S. Supreme Court, however, has cautioned that an invention “composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Here, we remain unpersuaded that combining each of the elements taught by Okada I and Incropera in the manner proposed by Samsung and Dr. Shanfield accounts for the specific requirement of independent claim 13 at issue in this proceeding, which begins with selecting the thermal mass of a substrate holder in order to ensure that the substrate holder changes a specific temperature over a discrete period of time. See Dec. 19–20. In other words, although Samsung directs us to disclosures in both Okada I and Incropera regarding the concept of thermal mass, there is insufficient teaching or suggestion in the current record of using the thermal mass of a substrate holder as a variable to control the rate of temperature change over a discrete period of time.” slip op. at 5
None - Google Inc. v. Klaustech, Inc.Rehearing deniedPTAB · Apr 6, 2017 · CBM2016-00096 · APJ Michael R Zecher · CBM · Rehearing
The Board denied Google’s rehearing request and left in place the denial of CBM review for claims 20, 21, 23-26, 28, and 29 because they were not shown to be financial in nature.
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 addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). With this in mind, we address the arguments presented by Google in turn.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“allowing “advertising control to be maintained.” Ex. 1001, 3:40–43. In other words, the existing data in the record identifying which ads have already been displayed and timed out is used for the purpose of altering the ads and ad content available for the next display. See id. at 3:12–23. Independent claims 20 and 25 are illustrative of this use as they recite using the record for “retaining . . . the timer timeout of the ad content,” and “transmitting . . . new ad content . . . in response to receipt of the timer timeout report.” Id. at Reexamination Certificate, 2:43–49, 3:40–45.” slip op. at 7
- Expert testimonyPetitioner expert discountedDecided for patent owner
“its position, quoting for the first time a sentence from Mr. Schulz’s testimony repeating Google’s position that “the only reason ‘records’ are generated and retained in [independent] claims 20 and 25 (and their dependent claims) is for processing payments for ad placements,” and characterizing Mr. Schulz’s testimony as “unrebutted.” Req. Reh’g 5 (emphasis omitted) (quoting Ex. ¶ 31). This newly-quoted testimony is flawed for the same reasons we discussed in our Decision. That is, Mr. Schulz relies on permissive and optional language as a basis for his opinion. See Ex. 1003 ¶ 31 (quoting Ex. 1001, Abstract (“websites can be compensated for ad display and advertisers billed for the ad display” (emphasis added)); id. at 4:32–37 (“record may be used to compensate” (emphasis added))). These optional compensation and billing aspects, however, are nowhere recited in the challenged claims. See Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1340 (Fed. Cir. 2016) (“[AIA] § 18(d)(1) directs us to examine the claims when deciding whether a patent is a CBM patent.”); see also Secure Axcess, LLC v. PNC Bank Nat’l Ass’n, 848 F.3d 1370, 1378–79 (Fed. Cir. 2017) (“[T]he written description alone cannot substitute for what may be missing in the patent ‘claims,’ and therefore does not in isolation determine CBM status.”).” slip op. at 6
NonePatents in suitUS 6,128,651 - Prime Focus Creative Services Canada Inc. v. Legend3d, Inc.Rehearing deniedPTAB · Mar 24, 2017 · IPR2016-01491 · APJ Kamran Jivani · IPR · Rehearing
The Board denied Patent Owner’s rehearing request and upheld institution of review for claims 1–3, 5, and 16–19 based on its finding that no argument was overlooked or misapprehended.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision . . .” who “must specifically identify 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.” 37 C.F.R. § 42.71(d). When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“uses the term ‘reshaping’ for automated adjustment of masks and ‘adjust’ for manual manipulation of masks.” Prelim. Resp. 31. Therefore, Patent Owner urged us to construe these terms to be mutually exclusive, such that under Patent Owner’s construction the claim term “reshape” would mean “automatically adjust” and the claim term “adjust” would mean “manually adjust.” Id. at 4–8, 29–32. In our Decision on Institution, we declined to adopt Patent Owner’s constructions of the terms “reshape” and “adjust.” Dec. on Inst. 9. We found, “[c]ontrary to Patent Owner’s argument, the Specification describes ‘the reshaping of the mask, that can be performed automatically and/or manually.’” Id. citing (Ex. 1001, 16:40–41 (emphasis added)). We further observed, inter alia, “Patent Owner does not address this disclosure.” Id. (citing Prelim. Resp. 4–8, 29–32). slip op. at 3
Claim constructionPatents in suitUS 9,286,941 - Alarm.Com Inc. v. Vivint, Inc.Rehearing deniedPTAB · Jul 28, 2016 · IPR2016-00161 · APJ Charles J Boudreau · IPR · Rehearing
The Board denied rehearing and maintained its decision not to institute review of claims 11–13, 15, 16, 19–21, 23, and 24 because the asserted art did not teach the claimed device identification codes.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“we review the decision for an abuse of discretion. 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 a decision should be modified lies with the party challenging the decision, and “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked.” 37 C.F.R. § 42.71(d). A request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. Moreover, it is not an abuse of discretion to have performed an analysis or reached a conclusion, with which Petitioner disagrees; mere disagreement with our analysis or conclusion is not a proper basis for rehearing.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“unpatentable, Petitioner cited Shetty’s disclosure that “the user may be notified by an electronic mail message or report 114 or by a[] pager report via a pager 116 or by a facsimile report 122” (Ex. 1103, 2:46–48), and Levac’s disclosures that “the message template with the variable value may be submitted to message server 14 through user interface 20 and message file generator 23 as a .msa file,” which “can then be stored in variable database 29 to await receipt of variable data”; and that “[p]referably, the .msa file created by message file generator 23 may incorporate . . . the following information: 1. OWNER: identifies the user who created the file . . . . 10. DESTPARAMS: supplies a list of destination parameters, such as recipient site location, required for transmitting the message to the destination” (Ex. 1105, 4:48–52, 5:49–53, 11:8–13). Pet. 38–39. In our Decision on Institution, we agreed with Patent Owner’s argument in its Preliminary Response that the evidence cited by Petitioner does not teach or suggest storing “communication device identification codes of all of said user-defined communication remote devices,” explaining that we could find in Petitioner’s cited evidence no suggestion that either Shetty’s “user profile database” or Levac’s “variable database” store anything that could be termed “communication device identification codes” under any reasonable interpretation of that term. Dec. on Inst. 40. In particular, we found that Shetty describes storing user profiles containing definitions of “how to send a notification to [an] associated user,” but that those definitions would, at most, identify addresses such as for e-mail messages or reports or telephone numbers such as for pager reports or facsimile reports,5 not the recited “communication device identification codes.” Id. at 40–41. We also explained that we agreed with Patent Owner that neither identification of the user who created a file, as in the “OWNER” field of Levac’s variable database, nor supplying parameters such as recipient site location, as in Levac’s “DESTPARAMS” field, teaches or suggests “communication device identification codes.” Id. at 41.” slip op. at 4
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“that a user may be notified by “an electronic mail message or report 114 or by a[] pager report via a pager 116 of by a facsimile report 122,” and Levac discloses storage of identification of the user who created a file and “recipient site location,” we disagree with Petitioner’s premise that Shetty’s and Levac’s disclosures are “identical to the preferred embodiment of the ’654 Patent” for the “communication device identification codes” limitation of claims 11 and 19.” slip op. at 6
§ 103 obviousnessPatents in suitUS 6,462,654 - I-Blason LLC v. Aevoe Corp.Rehearing deniedPTAB · Jul 25, 2016 · IPR2016-00231 · APJ Sheila F Mcshane · IPR · Rehearing
The Board denied rehearing and maintained its decision not to institute review of claims 1, 2, 5, 7, and 11–14 because Petitioner did not show the interference-pattern limitation or iVisor’s public availability.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We, therefore, are not persuaded that we misapprehended or overlooked any matter in making our determination that I-Blason did not establish a reasonable likelihood of prevailing on its challenges as to claims 1, 2, 5, 7, and 11–14 of the ’942 patent. III. CONCLUSION For the foregoing reasons, I-Blason has not shown that we abused our discretion when determining not to institute an inter partes review as to claims 1, 2, 5, 7, and 11–14 of the ’942 patent. IV. ORDER For the foregoing reasons, I-Blason’s Request for Rehearing is denied.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“produce visible interference patterns because Murphy forms a single air gap (rather than multiple bubbles).” Req. Reh’g 3–4. This issue was not argued in this manner in the Petition or Ross Declaration. Moreover, even if we were to consider this variation, we still would not be persuaded. The Decision indicated that there was a failure by Dr. Ross to “explain adequately why the interference patterns would not occur in Murphy.” Dec. 12. Even with the variation on the argument raised in this Request, we still find adequate explanation lacking. I-Blason states in a conclusory manner that “[t]o hold that there is a possibility that Murphy produces interference patterns without screen protector contact would contradict a [person of ordinary skill in the art’s] understanding of how interference patterns such as Newton Rings are created,” citing to the background section of the Ross Declaration concerning bubble-free screen protectors. Req. Reh’g 4 (citing Ex. 1018 ¶¶ 19, 20). These references do little to aid in an understanding of how an air gap configuration would not necessarily produce interference patterns.” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“publication (Ex. 1005) is a printed publication within the meaning of 35 U.S.C. § 102. Req. Reh’g 7–8. I-Blason cites a Board decision that found that a web page with a note of “last modified on February 2, 1999” was a printed publication as of that date. Id. at 7 (citing American Megatrends, Inc. v. Kinglite Holdings, Inc., Case IPR2015-01079, slip op. 11 (PTAB October 29, 2015) (Paper 17)). As we explained in the Decision (see Dec. 14), the evaluation as to whether a document is a printed publication is considered on a case-by-case basis. See In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Here, the iVisor document appears to be a type of web page that could be subject to frequent changes and updates. Moreover, other than unsubstantiated testimony from I-Blason’s counsel of record concerning a 2015 version of the document (Ex. 1019 ¶ 3), I-Blason provides no evidence to demonstrate that the version of iVisor filed in this proceeding was made publicly available in 2009. Upon reconsideration, we maintain our initial determination that I-Blason has failed to make a threshold showing that iVisor is a printed publication.” slip op. at 5
- Expert testimonyPetitioner expert discountedDecided for patent owner
“produce visible interference patterns because Murphy forms a single air gap (rather than multiple bubbles).” Req. Reh’g 3–4. This issue was not argued in this manner in the Petition or Ross Declaration. Moreover, even if we were to consider this variation, we still would not be persuaded. The Decision indicated that there was a failure by Dr. Ross to “explain adequately why the interference patterns would not occur in Murphy.” Dec. 12. Even with the variation on the argument raised in this Request, we still find adequate explanation lacking. I-Blason states in a conclusory manner that “[t]o hold that there is a possibility that Murphy produces interference patterns without screen protector contact would contradict a [person of ordinary skill in the art’s] understanding of how interference patterns such as Newton Rings are created,” citing to the background section of the Ross Declaration concerning bubble-free screen protectors. Req. Reh’g 4 (citing Ex. 1018 ¶¶ 19, 20). These references do little to aid in an understanding of how an air gap configuration would not necessarily produce interference patterns.” slip op. at 3
§ 102 anticipationPatents in suitUS 8,044,942 - Apple Inc. v. Contentguard Holdings, Inc.Rehearing deniedPTAB · Jun 21, 2016 · IPR2015-00454 · APJ Patrick R Scanlon · IPR · Rehearing
The Board denied Apple’s rehearing request and left in place its denial of institution on claim 18 over Rosen and Hartrick, finding procedural defects and an inadequate obviousness showing.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When rehearing a decision on a petition, 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 a decision should be modified, and “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked, and the place where each matter was previously addressed in” the petition. 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“failure to comply with 35 U.S.C. § 312(a)(3), 37 C.F.R. § 42.22(a)(2), and 37 C.F.R. § 42.104(b)(4)–(5). Dec. 4–5. In particular, we determined that: (1) “[t]he entire Petition is riddled with vague, nested string citations to broad swaths of the references, the [Declaration of Alan Sherman (‘Sherman Declaration’)], and internal cross-references to whole sections of the Petition” (id. at 5); (2) the Petition utilizes a convoluted structure resulting in an “unpatentability analysis [that] is at least two or three levels removed from the actual disclosure of the references” (id. at 6–7); and (3) the Petition relies on an improper incorporation by reference of the Sherman Declaration4 (id. at 7– 8). In addition to these procedural defects, we also determined “that the Petition’s obviousness analysis does not provide sufficient information to enable us to perform a proper Graham analysis, is driven by improper hindsight, and lacks sufficient articulated reasons with rational underpinnings to support the modifications it proposes.” Id. at 9; see also id. at 9–15 (discussing deficiencies of the obviousness analysis).” slip op. at 3
- BurdenDecided for patent owner
“To succeed on its Rehearing Request, Petitioner must show where we misapprehended or overlooked arguments in making the aforementioned determinations and that we abused our discretion in reaching each of these determinations. As we explain below, Petitioner has not done so.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“As we explained in our Decision, even Petitioner’s attempt to classify the changes as limited to four modifications is unconvincing. Dec. 12–14. Having considered Petitioner’s arguments on rehearing, we reaffirm our conclusion in the Decision that the Petition does not explain sufficiently “why a person of ordinary skill would simultaneously make all of the many particular proposed changes [(i.e., ‘modifications’)] and implementation choices to combine Rosen and Hartrick,” for the reasons explained in the Decision. Id. at 13.” slip op. at 7
§ 103 obviousnessPatents in suitUS 7,269,576 - General Plastic Industrial Co., Ltd. v. Canon Kabushiki KaishaRehearing deniedPTAB · May 19, 2016 · IPR2015-01966 · APJ Sheila F Mcshane · IPR · Rehearing
The Board denied rehearing and maintained its decision not to institute review of claims 1, 7–9, and 16 because neither challenge showed a reasonable likelihood of success.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION A party requesting rehearing has the burden to show a decision should be modified by specifically identifying all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). We address the General Plastic’s contentions outlined above, first with respect to the anticipation challenge and, then with respect to the obviousness challenge.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“construe[] [the claims at issue] to require that the recited sealing member must be of a one-piece or inseparable construction” or fail to apprehend that General Plastic was asserting that its anticipation challenge was based on a “part-time” analysis. See Req. Reh’g 2–3, 4–5. As explained in the Decision, we considered General Plastic’s assertion under the scenario where power transmitting member and fixed cover of the container are alleged “integrally combined”—that is, the “part-time” circumstances depicted in Figure 6 of Matsuoka—and found that the evidence was insufficient to support that view under the circumstances. See Dec. 15–18. Failure of General Plastic’s challenge does not equate to a requirement that the sealing member has to be of one-piece or inseparable construction, but instead reflects that, based on the evidence and argument presented and developed in the Petition, we did not find a reasonable likelihood that General Plastic would prevail on the anticipation challenge. As the Decision discusses, the Petition contains inconsistent mapping of the prior art onto the claim elements, and, contrary to General Plastic’s view of elements being “integrally combined,” Matsuoka instead discloses that the rotary power transmitting member is a part of copier, and not the toner container, and is detachable from the toner container.1 Id. at 17–18. This evidence is incongruent with a determination that General Plastic would have had a reasonable likelihood of prevailing on its anticipation challenge.” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“construe[] [the claims at issue] to require that the recited sealing member must be of a one-piece or inseparable construction” or fail to apprehend that General Plastic was asserting that its anticipation challenge was based on a “part-time” analysis. See Req. Reh’g 2–3, 4–5. As explained in the Decision, we considered General Plastic’s assertion under the scenario where power transmitting member and fixed cover of the container are alleged “integrally combined”—that is, the “part-time” circumstances depicted in Figure 6 of Matsuoka—and found that the evidence was insufficient to support that view under the circumstances. See Dec. 15–18. Failure of General Plastic’s challenge does not equate to a requirement that the sealing member has to be of one-piece or inseparable construction, but instead reflects that, based on the evidence and argument presented and developed in the Petition, we did not find a reasonable likelihood that General Plastic would prevail on the anticipation challenge. As the Decision discusses, the Petition contains inconsistent mapping of the prior art onto the claim elements, and, contrary to General Plastic’s view of elements being “integrally combined,” Matsuoka instead discloses that the rotary power transmitting member is a part of copier, and not the toner container, and is detachable from the toner container.1 Id. at 17–18. This evidence is incongruent with a determination that General Plastic would have had a reasonable likelihood of prevailing on its anticipation challenge.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“did not overlook or misapprehend that the engagement claw portion 443 of the rotary power transmitting member can be decoupled from rotary shaft portion 442 and gear 47. Req. Reh’g. 12–14. We also did not overlook or misapprehend Dr. Spingett’s statements concerning the removal of the engagement claw portion 443. Req. Reh’g. 14 (citing Ex. 1007 ¶ 72). The issue as to whether one of ordinary skill in the art would have envisioned the possibility of a disengagement problem between the rotary power transmitting member and fixed cover in the first place underlies the motivation, according to Dr. Springer, for testing the removal of the engagement claw portion. See Ex. 1007 ¶¶ 71, 72. Thus, we determined that the evidence on the possibility of disengagement problem between the rotary power transmitting member and fixed cover was insufficient to support why one of ordinary skill in the art would have modified Matsuoka in the manner alleged in the Petition. See Dec. 20. Even after considering General Plastics new twist on the same arguments in this Request of Rehearing, our view remains the same. We, therefore, are not persuaded that we misapprehended or overlooked any matter in making our determination that General Plastic did not establish a reasonable likelihood of prevailing on its obviousness challenge as to claims 1, 7–9, and 16 of the ’820 patent.” slip op. at 6
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,046,820 - 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 - 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.