- PTAB · Nov 14, 2017 · IPR2015-01802 · APJ Matthew R Clements · IPR · Rehearing
Granted rehearing and held claims 2, 4, and 6 unpatentable as obvious over Rabinovich because the wireless-network limitation encompasses a connection through a wireless hub.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“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. With this in mind, we address the arguments presented by Petitioner.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Ex. 1002, 3:41–49. Thus, the ’680 patent itself does not limit the recited “wireless network” to an ad hoc network. Moreover, we are not persuaded by Patent Owner’s contention that our construction of “computer unit” requires limiting the recited “wireless network” to an ad hoc network. Specifically, dependent claims 2 and 4 each recite “wherein the at least one computer unit and the at least two data storage units are connected over a wireless network.” Dependent claim 6 recites a similar limitation. We construed “computing unit” to encompass any computing device. Dec. 6. We did not, as Patent Owner contends, “construe[] both the ‘computer unit’ and ‘data storage units’ as hosts” (PO Br. 3). Although our construction encompasses Rabinovich’s hosts, it does not require the recited “computer unit” and “data storage units” to be hosts. Moreover, even assuming that both units are Rabinovich’s “hosts,” dependent claims 2, 4, and 6 require only that they be “connected over a wireless network,” not “between” or “directly connected to each other,” as Patent Owner contends (PO Br. 3). Thus, we are not persuaded by Patent Owner’s contention that two hosts “connected over a wireless network” necessarily requires a wireless connection “between” two hosts. Id. Based on our review of the ’680 patent, we construe “connected over a wireless network” as broad enough to encompass a connection through a wireless hub.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Ex. 1002, 3:41–49. Thus, the ’680 patent itself does not limit the recited “wireless network” to an ad hoc network. Moreover, we are not persuaded by Patent Owner’s contention that our construction of “computer unit” requires limiting the recited “wireless network” to an ad hoc network. Specifically, dependent claims 2 and 4 each recite “wherein the at least one computer unit and the at least two data storage units are connected over a wireless network.” Dependent claim 6 recites a similar limitation. We construed “computing unit” to encompass any computing device. Dec. 6. We did not, as Patent Owner contends, “construe[] both the ‘computer unit’ and ‘data storage units’ as hosts” (PO Br. 3). Although our construction encompasses Rabinovich’s hosts, it does not require the recited “computer unit” and “data storage units” to be hosts. Moreover, even assuming that both units are Rabinovich’s “hosts,” dependent claims 2, 4, and 6 require only that they be “connected over a wireless network,” not “between” or “directly connected to each other,” as Patent Owner contends (PO Br. 3). Thus, we are not persuaded by Patent Owner’s contention that two hosts “connected over a wireless network” necessarily requires a wireless connection “between” two hosts. Id. Based on our review of the ’680 patent, we construe “connected over a wireless network” as broad enough to encompass a connection through a wireless hub. Because we determine that the “wireless network” recited in dependent claims 2, 4, and 6 need not be an ad hoc network, Patent Owner’s argument that Rabinovich’s replication method would have been unsuitable for use over an ad hoc network does not persuasively rebut Petitioner’s showing. Having considered the arguments and evidence of both parties, we are persuaded that Petitioner has shown by a preponderance of the evidence that dependent claims 2, 4, and 6 are unpatentable under 35 U.S.C. § 103(a) as obvious over Rabinovich.” slip op. at 7
- ExcludeNot reached
“We decline to assess the merits of Petitioner’s Motion to Exclude. Even without excluding the identified evidence, we have concluded that Petitioner has demonstrated, by a preponderance of the evidence, that claims 2, 4, and 6 are unpatentable. Accordingly, Petitioner’s Motion to Exclude is dismissed as moot.” slip op. at 8
Claim construction§ 103 obviousnessPatents in suitUS 7,904,680 - Neil Ziegmann / N.P.Z., Inc. v. Carlis G. StephensRehearing grantedPTAB · Sep 6, 2017 · IPR2015-01860 · APJ Michael W Kim · IPR · Rehearing
The Board granted rehearing in part, reaffirmed denial of IPR under § 325(d), and granted the request for an expanded panel.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“[dissatisfied] party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d). Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Moreover, as the moving party, the burden of persuasion falls on Petitioner. 37 C.F.R. § 42.20(c). 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 arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“arguments” is self-evident, so we focus on the next part, “substantially the same prior art or arguments.” 35 U.S.C. § 325(d) (emphasis added). We conclude that a set of prior art or arguments may be considered “substantially the same” if they are “cumulative to or substantially overlap with issues previously considered by the Office with respect to the patent.” 157 CONG. REC. S1375 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl). In order for a party to bring this issue to the Office’s attention, the focus of the “substantially” analysis should be on the differences (or lack thereof) between the prior art and arguments presented in the petition, and those “previously . . . presented to the Office.” A party making assertions relevant to Section 325(d) should identify such differences (or lack thereof), whether substantive or procedural, and explain the relevance of those differences (or lack thereof).” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Taker Magazine (Ex. 1027) and the Declaration of Neil Ziegmann (Ex. 1024) that purportedly show that the Examiner’s determination was erroneous. We note that Mr. Ziegmann’s testimony is discounted, in that he is an interested party in this proceeding. Cf. Finnigan Corp. v. ITC, 180 F.3d 1354, 1369 (Fed. Cir. 1999) (“[T]he level of interest of the testifying witness is an important consideration when such testimony is offered to corroborate another witness’s testimony.”). Moreover, even when accorded some weight, we are unpersuaded that the Fur Taker advertisement and Mr. Ziegmann’s testimony come close to showing that the Examiner’s determination concerning nexus was erroneous. In particular, the vast majority of the evidence concerning secondary considerations in the prosecution history has not been challenged by Petitioner, and, thus, for the reasons set forth above, is treated as undisputed fact. To hold otherwise would allow Petitioner to make an end-run around Section 325(d) by merely submitting any piece of new evidence, no matter how minor or inconsequential.” slip op. at 27
Discretionary denialPatents in suitUS 8,881,447 - Global Tel*link Corporation v. Securus Technologies, Inc.Rehearing grantedPTAB · Jul 12, 2017 · IPR2015-01222 · APJ Kevin F Turner · IPR · Rehearing
The Board granted rehearing insofar as it addressed the request, but denied it otherwise, leaving claims 12 and 16–20 not shown unpatentable over Strubbe and Rae.
RulingsRehearing decision- RehearingRehearing, deniedGranted in part
“Ex. 1003 ¶ 335. Petitioner argues that Dr. Forys’ testimony is uncontroverted (Reh’g Req. 3), and we agree. Nowhere in the Decision do we dispute his testimony, only noting that it “is not supported by any cited evidence.” Dec. 33. We accept his testimony that charging a fee was a standard practice and was widely used. The issue raised in the Final Written Decision, however, resulting in our finding that Petitioner had not shown that claims 12 and 16–20 were unpatentable, was whether that testimony was ever tied to the disclosures of Strubbe or Rae or Petitioner’s proffered combination thereof. We remain persuaded that Petitioner failed to apply Dr. Forys’s general knowledge to the specific combination of Strubbe and Rae. Dec. 34. Petitioner argues that we misapprehended the Petition’s analysis (Reh’g Req. 2–3), but the full analysis is provided above. The analysis discusses what would have been standard practices and what would have been widely used, but such teachings are not taken in concert with the applied prior art references. As such, we are not persuaded that we misapprehended Petitioner’s analysis.” slip op. at 4
NonePatents in suitUS 8,750,486 - Global Tel*link Corporation v. Securus Technologies, Inc.Rehearing grantedPTAB · Jul 12, 2017 · IPR2015-01226 · APJ Kevin F Turner · IPR · Rehearing
The Board denied rehearing in all other respects, leaving in place the denial of the motion to amend proposed claims 29–50 as not shown patentable over the prior art.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“II. ANALYSIS The party challenging a decision in a request for rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). 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.” Id.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“reviewer all audio of the call, including background audio,” and “enables reconstruction of the call, including background noise,” respectively. Patent Owner construes these limitations from the perspective of the prior art, taking into account “the significant technical differences between systems” (id. at 7), so that some of the background audio would not encompass all audio of the call. We construe those limitations from the perspective that they do not recite “all background noise,” and a system that records all audio above a certain threshold would record all background noise above that threshold, even if other background audio, at levels below the threshold, would not be captured. Such a system would 4 capture all of the audio, above a threshold, including background audio, and would be commensurate with the specified limitations of claims 29 and 43. More generally, and consistent with the broadest reasonable construction standard, claim terms are presumed to have their ordinary and customary meaning as understood by one of ordinary skill in the art in the context of the entire patent disclosure at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We do not accept the intent of the patent drafter, unless it is clear that the drafter intends for a meaning of a terms or terms to be different from their ordinary meanings by defining the term in the specification with reasonable clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the instant case, Patent Owner has indicated that no specific construction is required beyond applying the plain meaning of the terms when read in light of the patent specification. Reh’g Req. 8 (citing Paper 28, 15). Also in the instant case, Patent Owner may have intended to distinguish over systems that intentionally avoiding recording sounds, or are different than how typical prior art systems functioned, but we must examine the claim terms adopted, and construe them according to the broadest reasonable construction consistent with the specification. “All audio of the call” is consistent with all of the audio of a call captured, i.e., above a threshold level, even if portions of the audio below that threshold are not captured.” slip op. at 4
Claim constructionPatents in suitUS 8,135,115 - David’S Bridal, Inc. v. Jenny Yoo Collection, Inc.Rehearing grantedPTAB · Jun 15, 2017 · PGR2016-00041 · APJ Jennifer S Bisk · PGR · Rehearing
Rehearing was granted to consider David’s Bridal’s acquiescence argument but otherwise denied; institution of review of the patent’s sole claim remained denied.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“DISCUSSION The applicable standard for granting a request for rehearing is abuse of discretion. The requirements are set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a single 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. Petitioner argues that the Board: (1) “misapprehended and overlooked” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“SUMMARY Petitioner, David’s Bridal, Inc., requests rehearing of the Board’s decision (Paper 11) (“Institution Decision”), entered February 22, 2017, denying institution of inter partes review of the sole claim of U.S. Patent D744,723 (Ex. 1002) (“the ’723 patent”). Paper 12 (“Reh’g Req.”). For the reasons that follow, Petitioner’s request is granted to the extent that we address Petitioner’s “acquiescence argument,” but denied in all other respects.” slip op. at 2
None - Hamamatsu Corporation v. Sionyx, LLCRehearing grantedPTAB · May 26, 2017 · IPR2016-01910 · APJ Monica S Ullagaddi · IPR · Rehearing
Rehearing was granted for claims 9, 24, and 25 because Petitioner did not show their process limitations lacked patentable weight; it was denied for claims 1, 4, 5, 7, 8, and 13.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“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) (citations omitted). The burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): (d) Rehearing. . . . 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.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“The relevant inquiry is not whether the Specification has support for an “enhanced response,” but whether the Specification supports construing the claim term “interact with” to mean an “enhanced response and/or filtering.” Even assuming, without deciding, for the purposes of this decision, that diffusing, redirecting, and absorbing electromagnetic radiation results in an increased quantum efficiency that could be considered to provide an enhanced response to electromagnetic radiation, Patent Owner fails to demonstrate persuasively that one of ordinary skill in the art would understand from the description in the ’591 patent Specification that the claim term “interacting with” is defined as “providing an enhanced response and/or filtering.” Furthermore, we are unable to discern a portion of the Specification of the ’591 patent that discloses such an equivalency. Not only does the ’591 patent not define “interact with,” the Abstract of the ’591 patent discloses that “[i]n one aspect, the textured region is operable to facilitate generation of an electrical signal from the detection of infrared electromagnetic radiation” and “[i]n another aspect, interacting with electromagnetic radiation further includes increasing the semiconductor substrate’s effective absorption wavelength as compared to a semiconductor substrate lacking a textured region.” Ex. 1001, Abstract (emphasis added). This passage suggests that, at least in one aspect, “interact[ing] with” electromagnetic radiation includes merely generating electrons from photons, which is not an “enhanced response” and/or “filtering,” as required by Patent Owner’s proffered claim construction.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableMixed
“position with sufficient evidence that demonstrates that the processes recited in claims 9, 24, and 25 do not impart structural and functional differences to the product. Moreover, Petitioner does not point to citations in the ’591 patent, testimonial evidence, or any other record evidence to support its position that the structure or functionality of the textured region resulting from the chemical etching or lasing processes recited in claims 9, 24, and 25 would be the same as the structure or functionality of a roughened surface produced by a mechanical polishing process as disclosed in Nakashiba. Rather, Petitioner provides only conclusory statements regarding its position. Given that Petitioner has not demonstrated sufficiently that the limitations recited in claims 9, 24, and 25 are not entitled to patentable weight, and in light of Petitioner’s concession that “Nakashiba does not disclose that the roughened surface S1 is formed by either lasing (in particular using short duration laser pulses) or chemical etching, as recited in claims 9, 24, and 25 of the ‘591 Patent,” we determine Petitioner has not met its burden of demonstrating a reasonable likelihood of prevailing with respect to showing that claims 9, 24, and 25 are anticipated under 35 U.S.C. § 102 by Nakashiba.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstitution denied meritsMixed
“Upon review of the record, we determine Petitioner did not support its position with sufficient evidence that demonstrates that the processes recited in claims 9, 24, and 25 do not impart structural and functional differences to the product. Moreover, Petitioner does not point to citations in the ’591 patent, testimonial evidence, or any other record evidence to support its position that the structure or functionality of the textured region resulting from the chemical etching or lasing processes recited in claims 9, 24, and 25 would be the same as the structure or functionality of a roughened surface produced by a mechanical polishing process as disclosed in Nakashiba. Rather, Petitioner provides only conclusory statements regarding its position. Given that Petitioner has not demonstrated sufficiently that the limitations recited in claims 9, 24, and 25 are not entitled to patentable weight, and in light of Petitioner’s concession that “Nakashiba does not disclose that the roughened surface S1 is formed by either lasing (in particular using short duration laser pulses) or chemical etching, as recited in claims 9, 24, and 25 of the ‘591 Patent,” we determine Petitioner has not met its burden of demonstrating a reasonable likelihood of prevailing with respect to showing that claims 9, 24, and 25 are anticipated under 35 U.S.C. § 102 by Nakashiba.” slip op. at 6
Claim construction§ 102 anticipationPatents in suitUS 8,680,591 - Palo Alto Networks, Inc. v. Finjan, Inc.Rehearing grantedPTAB · May 19, 2017 · IPR2016-00151 · APJ Miriam L Quinn · IPR · Rehearing
The Board clarified the construction of “a call to a first function” but left unchanged its determination that claims 1–8, 10, and 11 were not shown unpatentable over Ross.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“proceeding. Paper 51 (“Final Dec.”). On April 14, 2017, Palo Alto Networks, Inc. (“Petitioner”) filed a Request for Rehearing. Paper 52 (Req. Reh’g.). Petitioner’s Request urges the Board to review the construction of “a call to a first function” for consistency with the construction given to the same term in our Final Written Decision in IPR2015-01979.2 We agree with Petitioner that the construction of “a call to a first function” must be consistent with our determination in IPR2015-01979. Accordingly, we hereby modify our Final Written Decision in this proceeding to reflect that the construction for the term “a call to a first function” means “a statement or instruction in the content, the execution of which causes the function to provide a service.” That construction remains, however, consistent with our analysis and determinations made in our Final Written Decision, and therefore requires no modification of our conclusions. For example, at page 8 of that Decision we stated that “we determine that the ‘call’ is a statement or instruction in the content, the execution of which causes the function to provide a service.” Final Dec. 8. Accordingly, the last sentence of the first paragraph in page 9 of the Final Written Decision is modified to repeat what we stated earlier in page 8 of the Decision: “we determine that a ‘call to a first function’ means a statement or instruction in the content, the execution of which causes the function to provide a service.”” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Petitioner advocates. The word “call” is recited in claim 1 as a noun, and is the statement or instruction included in the content that causes the first function to provide a service. Final Dec. 7; Ex. 1001, 17:34−36. The word “invoking” appears elsewhere in the claim in connection with the transmission of the call’s input, which occurs “when the first function is invoked.” Ex. 1001, 17:39−40. The claim language is straightforward: the received content includes a call to a first function, and when that same first function is invoked, the function’s input is transmitted to the security computer. In summary, Petitioner’s request urges us to view the claim construction as allowing the call included in the received content to request the services of a function different from the function in the call statement or instruction. To illustrate, if the content states “call function X” but instead, during runtime, function Y is invoked, Petitioner asserts that this scenario would be a “call” to function Y, and therefore meet the claim. As stated above, however, the claim language does not support this reading. The call to the first function must be included in the content, and it is the same first function that is invoked later in the claim. Our claim construction does not change the plain reading of the claim language. Therefore, the execution of the statement or instruction included in the content must cause the function identified in the statement or instruction to provide a service. To illustrate, if the content states “call function X,” during runtime, function X must be invoked. Ross,3 as we discuss in our Final Written Decision, does not do this. See Final Dec. 17−19 (concluding that Ross invokes indirectly the hook function without any need to include a call to that hook function).” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“construction as allowing the call included in the received content to request the services of a function different from the function in the call statement or instruction. To illustrate, if the content states “call function X” but instead, during runtime, function Y is invoked, Petitioner asserts that this scenario would be a “call” to function Y, and therefore meet the claim. As stated above, however, the claim language does not support this reading. The call to the first function must be included in the content, and it is the same first function that is invoked later in the claim. Our claim construction does not change the plain reading of the claim language. Therefore, the execution of the statement or instruction included in the content must cause the function identified in the statement or instruction to provide a service. To illustrate, if the content states “call function X,” during runtime, function X must be invoked. Ross,3 as we discuss in our Final Written Decision, does not do this. See Final Dec. 17−19 (concluding that Ross invokes indirectly the hook function without any need to include a call to that hook function).” slip op. at 4
Claim construction§ 103 obviousnessPatents in suitUS 8,141,154 - PTAB · Mar 29, 2017 · IPR2016-01492 · APJ Mitchell G Weatherly · IPR · Rehearing
The Board granted rehearing in part to explain institution on Eizenhöfer and Miller anticipation grounds for claims 13–15 and require claim-interpretation briefing; it denied rehearing on § 325(d).
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“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 Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party challenging the decision has the burden of showing a decision should be modified, and the request for rehearing must specifically” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“terminal demand” in a single sentence supported by citations to portions of the Specification and testimony from Dr. Lomp. Id. at 15–16 (citing Ex. 1001, 7:8–11, 18:50–54, 19:1–4, Figure 15A; Ex. 2001 ¶¶ 7, 16, 19–21). Based on our review of the cited portions of the Specification, it is not apparent how those sections support WPI’s proffered meaning of “subscriber terminal demand.” None of the cited portions explicitly defines “subscriber terminal demand” or uses the term, and WPI does not explain why those cited portions are relevant to the inquiry. The cited testimony from Dr. Lomp reflects his opinion but is not supported by any citations to other evidence, including the Specification itself. To the extent that WPI’s argument regarding the meaning of “subscriber terminal demand” relies upon Dr. Lomp’s testimony, we currently find that argument unpersuasive because it is unsupported by other evidence. TCT has not expressly argued the meaning of “subscriber terminal demand” but instead implies a meaning by identifying specific portions of Eizenhöfer that allegedly teach this limitation. Pet. 31–32 (citing Ex. 1004, 3:7–10, Abstract). Absent briefing with citations to relevant evidence, we decline to offer our own express interpretation of “subscriber terminal demand.” Rather, we determine that TCT’s implied interpretation and its argument based on that interpretation demonstrates a reasonable likelihood of establishing that Eizenhöfer describes the recited limitation. Because resolution of the dispute may require an express interpretation of “subscriber terminal demand,” we also direct the parties to address explicitly the meaning of this phrase at trial and cite relevant evidence from among at least other claims, the Specification, and the prosecution history.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“reasons. First, WPI has failed, as required under Rule 42.71(c), to identify an abuse of discretion stemming from our allegedly “unreasonable” failure to exercise discretion under § 325(d) and deny institution of challenges based on Miller. Second, WPI merely reiterates an argument already considered and rejected, and thus fails to meet its obligation under Rule 42.71(d) to “identify all matters . . . misapprehended or overlooked.” We disagree that WPI offered a “clear comparison” of the entirety of the claims that were allegedly previously considered by the Office during reexamination of the ’326 patent to the claims at issue in this proceeding. Describing claims in the ’326 patent as “closely related” or reciting “similar features” without providing the actual text of those claims fails to provide an adequate basis for comparing those claims to the claims at issue in this proceeding. The paraphrased comparison of claims in the ’326 patent to the claims here is similarly lacking in clarity. Third, even if we were to determine that WPI sufficiently compared the “orthogonal code generator” recited in claims of the ’326 patent to the one recited in the claims at issue, such a comparison fails to demonstrate enough similarity in the claims overall to justify a discretionary denial of TCT’s challenge based on Miller.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached
“TCT has not expressly argued the meaning of “subscriber terminal demand” but instead implies a meaning by identifying specific portions of Eizenhöfer that allegedly teach this limitation. Pet. 31–32 (citing Ex. 1004, 3:7–10, Abstract). Absent briefing with citations to relevant evidence, we decline to offer our own express interpretation of “subscriber terminal demand.” Rather, we determine that TCT’s implied interpretation and its argument based on that interpretation demonstrates a reasonable likelihood of establishing that Eizenhöfer describes the recited limitation. Because resolution of the dispute may require an express interpretation of “subscriber terminal demand,” we also direct the parties to address explicitly the meaning of this phrase at trial and cite relevant evidence from among at least other claims, the Specification, and the prosecution history.” slip op. at 5
Claim construction§ 102 anticipationDiscretionary denialPatents in suitUS 6,381,211 - PTAB · Mar 24, 2017 · IPR2016-01223 · APJ Jennifer S Bisk · IPR · Rehearing
The Board reconsidered its analysis but denied institution because Petitioner did not show McNeill disclosed or rendered obvious the claimed analog signal acquisition channel.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision[,]” which 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 motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). We grant Petitioner’s request insofar as we have reconsidered our analysis of whether Petitioner has shown that the prior art discloses the claimed “analog acquisition channel,” but we decline to modify our previous decision. slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“inherency. First, Petitioner’s expert states that “[i]t is implicit and inherent for a scanner to have an analog signal acquisition channel for receiving a signal from analog source.” Reh’g Req. 4 (quoting Ex. 1306 ¶ 98). This sentence is exactly, word for word, the same as the sentence in the Petition it is relied upon to support. Pet. 35. Repetition of this legal conclusion in a declaration signed by a technical expert adds nothing to Petitioner’s attorney argument. It is not persuasive evidence. Second, both the Petition and the expert state that “[a] typical scanner at the priority date of the ’746 patent had a CCD and analog to digital circuitry to produce a digital representation of an image.” Pet. 35; Ex. 1306 ¶ 98. This statement does not adequately support a finding that the scanner discussed in McNeill necessarily discloses an analog signal acquisition channel. “Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). This evidence goes only to a typical scanner, not all scanners. Petitioner has not directed us to any other evidence supporting a finding of inherency. And as noted in our Institution Decision (Inst. Dec. 11), the Petition does not address why a person of ordinary skill in the art would find the addition of an analog signal acquisition channel obvious based on McNeill’s disclosure. The closest Petitioner gets to addressing this issue is in a statement that says “[a]dding an analog sensor to the ‘exemplary system’ of McNeill is inherent, but if it is not, a POSITA would find it obvious to do so.” Pet. 35. This vague and conclusory statement, part of a section of the brief which does not even reference the term “analog signal acquisition channel,” is insufficient to show that Petitioner is reasonably likely to prevail in showing that a limitation of the claim, not expressly disclosed in the reference, would have been obvious.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“the claimed “analog signal acquisition channel,” such an element is inherently disclosed by McNeill’s scanner. Reh’g Req. 3–5. Because McNeill’s scanner produces analog signals and then transmits those signals to an analog-to-digital converter, Petitioner asserts the scanner must “necessarily” include a channel connecting the analog sensor. Id. at 5 (citing Ex. 1306 ¶ 98. However, Petitioner’s evidence does not adequately support a finding of inherency. Petitioner relies on expert testimony to support its assertion of inherency. First, Petitioner’s expert states that “[i]t is implicit and inherent for a scanner to have an analog signal acquisition channel for receiving a signal from analog source.” Reh’g Req. 4 (quoting Ex. 1306 ¶ 98). This sentence is exactly, word for word, the same as the sentence in the Petition it is relied upon to support. Pet. 35. Repetition of this legal conclusion in a declaration signed by a technical expert adds nothing to Petitioner’s attorney argument. It is not persuasive evidence. Second, both the Petition and the expert state that “[a] typical scanner at the priority date of the ’746 patent had a CCD and analog to digital circuitry to produce a digital representation of an image.” Pet. 35; Ex. 1306 ¶ 98. This statement does not adequately support a finding that the scanner discussed in McNeill necessarily discloses an analog signal acquisition channel. “Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). This evidence goes only to a typical scanner, not all scanners. Petitioner has not directed us to any other evidence supporting a finding of inherency.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“And as noted in our Institution Decision (Inst. Dec. 11), the Petition does not address why a person of ordinary skill in the art would find the addition of an analog signal acquisition channel obvious based on McNeill’s disclosure. The closest Petitioner gets to addressing this issue is in a statement that says “[a]dding an analog sensor to the ‘exemplary system’ of McNeill is inherent, but if it is not, a POSITA would find it obvious to do so.” Pet. 35. This vague and conclusory statement, part of a section of the brief which does not even reference the term “analog signal acquisition channel,” is insufficient to show that Petitioner is reasonably likely to prevail in showing that a limitation of the claim, not expressly disclosed in the reference, would have been obvious.” slip op. at 5
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,504,746 - Johnson Safety, Inc. v. Voxx International CorporationRehearing grantedPTAB · Mar 9, 2017 · IPR2016-01074 · APJ Bryan F Moore · IPR · Rehearing
Petitioner’s rehearing request was granted for clarification but otherwise denied; review remains denied for the challenged claims on the Lavelle-365/Jost/Chang and LCM500NP/Lavelle-365 grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“ANALYSIS When considering a request for rehearing, we review the Decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the Decision should be modified, and “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“defective prior oath that did not include language covering new matter in the continuation-in-part application is properly remedied by the filing of a supplemental oath in the particular set of circumstances presented here, in which the Patent Office accepted the defective, originally filed oath. In any event, we determine that the filing of a supplemental oath, under these circumstances, does not operate to invalidate the patent at issue or prevent Voxx from being considered the Patent Owner.3 Thus, we are not persuaded by this argument.” slip op. at 5
- BurdenDenied
“CONCLUSION The Request for Rehearing does not demonstrate that we misapprehended or overlooked any matters raised in the Petition declining to 3 This decision does not address the propriety of filing a supplemental oath in other situations such as during prosecution or in the event of a reissue. 4 We also note that Petitioner filed this request for inter partes review, and in doing so, specifically identified Voxx as the owner of the ’355 patent. See Paper 2, 3. institute review of claims 1, 2, 4, 10, 11, 12, 14, 18, 20, 26, 30, 32, 38, 39, and 42 over Lavelle-365, Jost, and Chang, and claims 14, 18, 20, and 42 over LCM500NP and Lavelle-365. 35 U.S.C. § 314(a).” slip op. at 5
NonePatents in suitUS 7,839,355
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.