- Amazon.Com, Inc. v. Rensselaer Polytechnic InstituteRehearing deniedPTAB · Oct 30, 2020 · IPR2019-01068 · APJ Trevor M Jefferson · IPR · Rehearing
The Board denied Amazon’s rehearing request, leaving in place the denial of institution on claims 1–8 because Petitioner did not show the Board misapprehended the construction or prior-art evidence.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“overlooked, and the place where each matter was previously addressed” in a paper of record. 37 C.F.R. § 42.71(d) (2019) (emphasis added). When rehearing a decision on petition, the Board will 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: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision. Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (internal citations omitted).” slip op. at 3
- Prior constructionPrior construction adoptedDecided for patent owner
“interpretation of the claim construction in the Apple IPR. See Req. Reh’g 3. The Apple IPR cites the embodiment from the ’798 patent specification (Ex. 1001, 5:36–38, 16:52–17:5). Apple IPR 5–6. The Board in the Apple IPR expressly clarified that in the case information construction “‘instances of use’ of the system [did not] mean indications cover instances of use of the system, e.g. how the system interprets words or phrases.” Apple IPR 6. Thus, the Apple IPR Board adopted Patent Owner’s argument that as applied to the prior art, the term “case” in “case information” requires “uses of the system contemplated by the invention, not uses of any other natural language processing system.” Apple IPR 6. The Board rejected that such prior use was found in rules regarding how the system interprets current word or phrase input. Id. We find that the Apple IPR discussed a user’s selection among possible choices, but also addressed that the “case” required use of the system of the ’798 invention. Id. at 5–6. Thus, we do not agree we misapprehended the meaning of the claim language. Req. Reh’g 2.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“information” to exclude clarifications from users. Id. at 5–6, 7–11. Petitioner argues that our Institution Decision adopts Patent Owner’s narrow construction and finds that “clarifying prompts” in grounds including Weber are not “case information.” Id. at 7–8. Our Institution Decision found that Petitioner did not persuasively and sufficiently assert how the prior art disclosed the “case information.” Dec 19–20. Our determination was based on the sufficiency of Petitioner’s evidence and argument in the regarding whether Weber’s prompting the user for information, which was contested by Patent Owner, teaches or suggests “information about prior instances of use of the natural language processing method.” Dec. 19–20 (emphasis added). Petitioner’s arguments does not identify any evidence we overlooked or misapprehended. Req. Reh’g 7–8. Instead, Petitioner characterizes our Institution Decision as broadly excluding user prompts. Our determination was based on the full claim construction, which is supported by the Apple IPR’s emphasis of “prior instances of use of the natural language processing method.” Apple IPR 5–6; Dec. 19–20.” slip op. at 5
Claim constructionPatents in suitUS 7,177,798 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Dynamics, Inc.Rehearing deniedPTAB · Oct 13, 2020 · IPR2020-00504 · APJ Trevor M Jefferson · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no error or abuse of discretion in its decision to institute inter partes review.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. LEGAL STANDARDS “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) (2019) (emphasis added). When rehearing a decision on petition, the Board will 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: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision. Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (internal citations omitted).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“the fact that there is a stay in the district court proceeding, and ignored the duplications of efforts at the pending ITC proceeding for factor 1.” Req. Reh’g 6. We disagree with Patent Owner’s characterization of our analysis under Apple v. Fintiv factor 1. For factor 1, we merely stated that the district court’s stay weighed against exercising discretion to deny institution, and that the duplicative efforts with the ITC proceeding must be considered further in Apple v. Fintiv factors 2 and 4. Dec. 9–10. Patent Owner argues “[g]iven that trial has already begun, Fintiv factor 1 should have been determined in favor of denial.” Req. Reh’g 7. But the proximity of the trial date to the Board’s projected statutory deadline is exactly what is considered under Apple v. Fintiv factor 2. See Dec. 10. Likewise, Patent Owner argues “[r]elitigating the exact same issues petitioner asserted in its final invalidity contentions at the ITC cannot be considered to be efficient, nor a sign of ‘integrity of the system.’” Req. Reh’g. 6. This, however, is considered under Apple v. Fintiv factor 4. See Dec. 11–12. In sum, Patent Owner argues we should have considered Apple v. Fintiv factors 2 and 4 under factor 1. See Req. Reh’g 6–7. We do not agree with this contention. Patent Owner does not show we misapprehended or overlooked any fact, evidence, or legal issue in rendering our Institution Decision, regardless of the Apple v. Fintiv factor under which it was considered. In any case, we considered all factors, including factors 1, 3, and 4, in concluding that the balance of the Apple v. Fintiv factors weighed against exercising discretion to deny institution. Thus, Patent Owner has not demonstrated we misapprehended or overlooked any fact in our Apple v. Fintiv factor 1 analysis. B.” slip op. at 3
Discretionary denialPatents in suitUS 10,223,631 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Dynamics, Inc.Rehearing deniedPTAB · Oct 13, 2020 · IPR2020-00502 · APJ Trevor M Jefferson · IPR · Rehearing
The Board denied Patent Owner’s request for rehearing, finding no error or abuse of discretion in its decision to institute review of claims 1–20.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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) (2019) (emphasis added). When rehearing a decision on petition, the Board will 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: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision. Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (internal citations omitted).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Fintiv factors 2 and 4 under factor 1. See Req. Reh’g 6–7. We do not agree with this contention. Patent Owner does not show we misapprehended or overlooked any fact, evidence, or legal issue in rendering our Institution Decision, regardless of the Apple v. Fintiv factor under which it was considered. In any case, we considered all factors, including factors 1, 3, and 4, in concluding that the balance of the Apple v. Fintiv factors weighed against exercising discretion to deny institution. Thus, Patent Owner has not demonstrated we misapprehended or overlooked any fact in our Apple v. Fintiv factor 1 analysis. B.” slip op. at 4
Discretionary denialPatents in suitUS 10,032,100 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Dynamics Inc.Rehearing deniedPTAB · Oct 5, 2020 · IPR2020-00499 · APJ Georgianna W Braden · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no error or abuse of discretion in its decision to institute review of claims 1 and 5–8 despite the Fintiv arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“B. Standard for Reconsideration When rehearing a decision on petition, the Board will 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: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision. Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (internal citations omitted). The party challenging the decision has the burden of showing a decision should be modified, and the 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 its papers. 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“the fact that there is a stay in the district court proceeding, and ignored the duplications of efforts at the pending ITC proceeding for factor 1.” Req. Reh’g 6. We disagree with Patent Owner’s characterization of our analysis under Apple v. Fintiv factor 1. For factor 1, we merely stated that the district court’s stay weighed against exercising discretion to deny institution, and that the duplicative efforts with the ITC proceeding must be considered further in Apple v. Fintiv factors 2 and 4. Dec. 11–13.” slip op. at 3
Discretionary denialPatents in suitUS 8,827,153 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Dynamics Inc.Rehearing deniedPTAB · Sep 18, 2020 · IPR2020-00505 · APJ Jon M Jurgovan · IPR · Rehearing
The Board denied the Patent Owner’s rehearing request, finding no misapprehended or overlooked facts or abuse of discretion in its decision to institute review.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision. Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (internal citations omitted). The party challenging the decision has the burden of showing a decision should be modified, and the 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 its papers. 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Fintiv factors 2 and 4 under factor 1. We do not agree with this contention. Apple v. Fintiv recognizes there is some overlap among the factors (Paper 11 at 6), so the same facts could apply to multiple factors. Appellant does not show that we misapprehended or overlooked any fact in rendering our Institution Decision, regardless of the Apple v. Fintiv factor under which it was considered. In any case, we considered all factors, including factors 1, 2 and 4, in concluding that the Apple v. Fintiv factors weighed against exercising discretion to deny institution.” slip op. at 4
Discretionary denialPatents in suitUS 10,255,545 - Kemet Electronics, Corp. / Vishay Americas, Inc. v. Mec Resources, LLCAll claims unpatentablePTAB · Aug 11, 2020 · IPR2019-00583 · APJ Robert J Weinschenk · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over Franco- and Amada-based combinations with Shafer and, for dependent claims, additional references.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that “a person of ordinary skill in the art (‘POSITA’)” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“1. Enhanced Inductance Patent Owner proposes construing the term “enhanced inductance” to mean “the increase in inductance of the inductor described by the ’390 patent in comparison to the same inductor containing the same number of winding turns, but without the magnetic resin layer embedding the conducting coil.” PO Resp. 5 (citing Ex. 1001, 3:64–6:22; Ex. 2009 ¶ 31). Patent Owner argues that “[t]he specification contains tables that describe the ’390 patent’s ‘Enhancement in Inductance’ in terms of ‘factors of inductance enhancement’ compared with a baseline ‘Inductance per unit winding turn.’” Id. Patent Owner also contends that the term “enhanced inductance” does not include EMI properties because the ’390 patent “specifically distinguishes ‘increased inductance’ from ‘reduced EMI effect and magnetic leaks.’” Id. at 5–6 (citing Ex. 1001, 3:27–31; Ex. 2009 ¶ 32). Petitioner opposes Patent Owner’s proposed construction. Pet. Reply 6–7. Petitioner argues that the ’390 patent does not limit the term “enhanced inductance” to “a single metric.” Id. at 6 (citing Ex. 1001, 1:6–9, 1:50–53, 3:56–62). According to Petitioner, the term “enhanced inductance” refers to “a number of features, including greater inductance per unit volume, reduced EMI interference, and reduced magnetic leakage.” Id. at 6– 7 (citing Ex. 1001, code (57), 1:6–14, 1:50–58, 2:37–50, 3:27–31). The ’390 patent describes an inductor with “improved” inductance and, more specifically, with “increased inductance per unit volume.” Ex. 1001, 1:6–9, 1:50–53. Consistent with that description, the parties appear to agree that the term “enhanced inductance” refers to “increased inductance per unit volume.” See PO Resp. 5 (“the increase in inductance of the inductor . . . in comparison to the same inductor containing the same number of winding turns”); Pet. Reply 6 (“greater inductance per unit volume”). Thus, based on the specification, we also agree that the term “enhanced inductance” means “increased inductance per unit volume.” As discussed above, Patent Owner further asserts that the increased” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“9. Reasons for Combining Franco and Shafer Petitioner presents evidence that a person of ordinary skill in the art would have had reason to combine the cited teachings of Franco and Shafer. Pet. 10–12 (citing Ex. 1003 ¶¶ 35–41). We agree with and adopt Petitioner’s reasoning. Specifically, Franco and Shafer relate to the same field of endeavor as the ’390 patent, namely, inductors. Pet. 8–10; Ex. 1001, 1:6–9; Ex. 1003 ¶ 36; Ex. 1005, 300; Ex. 1007, 1:25–27. It would have been obvious to modify Franco to embed the outer periphery of Franco’s coil in Shafer’s magnetic molding material using compression molding. Pet. 10– 12; Ex. 1003 ¶¶ 35, 40. Doing so would have been obvious because it would provide Franco’s inductor with the following benefits: 1) magnetic shielding; 2) physical protection; 3) increased inductance; 4) decreased size for a given inductance; and 5) reduced manufacturing costs.10 Pet. 10–12; Ex. 1003 ¶¶ 37–40. Further, combining the cited teachings of Franco and Shafer would have been within the level of ordinary skill in the art. Pet. 12; Ex. 1003 ¶ 41. 10 Petitioner also asserts that the Franco and Shafer combination would minimize air spaces in Franco’s inductor. Pet. 11–12. We do not rely on that particular reason to combine Franco and Shafer. Patent Owner responds that Petitioner fails to explain how and why Franco and Shafer would have been combined. PO Resp. 9–12. Patent Owner’s argument is not persuasive. As discussed above, Petitioner explains how Franco and Shafer would have been combined, namely, by embedding the outer periphery of Franco’s coil in Shafer’s magnetic molding material using compression molding. Pet. 10–12; Ex. 1003 ¶¶ 35, 40. Petitioner also explains why it would have been obvious to combine Franco and Shafer, specifically, because it would provide Franco’s inductor with the following benefits: 1) magnetic shielding; 2) physical protection; 3) increased inductance; 4) decreased size for a given inductance; and 5) reduced manufacturing costs.11 Pet. 10–12; Ex. 1003 ¶¶ 37–40. a. Patent Owner’s Arguments Regarding How to Combine Franco and Shafer Patent Owner responds that Petitioner “simply state[s] that the proposed combination of Franco and Shafer ‘would have been within the level of ordinary skill in the art,’” which “should be given no probative value.” PO Resp. 12–13; see PO Sur-reply 5–8. Patent Owner’s argument is not persuasive. Shafer teaches that its compression molding process and magnetic molding material can be used to embed an inductor coil, which supports Petitioner’s argument that it would have been within the level of ordinary skill in the art to use Shafer’s compression molding process and magnetic molding material to embed the outer periphery of Franco’s coil. Pet. 15–17; Ex. 1007, 3:24–26, 4:1–6, 5:8–10, Fig. 6. Further, Petitioner’s declarant, Dr. Erickson, explains that it would have been within the level of 11 Any one of these identified benefits individually provides a sufficient reason to combine Franco and Shafer.” slip op. at 25
- ExcludeMotion to exclude, deniedDenied
“sufficient to support a finding that the item is what the proponent claims it is. Fed. R. Evid. 901. Here, Exhibits 2001 and 2002 indicate that they are excerpts from an Encarta World English Dictionary. Ex. 2001; Ex. 2002. Petitioner does not provide any specific reason for us to believe that Exhibits 2001 and 2002 are not what they purport to be. See Pet. Mot. Excl. 2–3. Absent a persuasive explanation, Petitioner’s Motion to Exclude is denied with respect to Exhibits 2001 and 2002.” slip op. at 84
Patent outcomesUS 6,137,390 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,137,390 - Microsoft Corporation v. Uniloc 2017 LLCInstitution deniedPTAB · May 6, 2020 · IPR2020-00101 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution because Microsoft did not show a reasonable likelihood that claims 1–15 were obvious over Olkin and Kim, particularly as to the required confirmation step.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the above reasons, we determine that Microsoft has not adequately shown that Olkin teaches or suggests limitation 1.6 of claim 1. Microsoft does not point to any passage in Kim that would supply the missing teaching. See Pet. 26–29. Nor do Microsoft’s arguments regarding limitations 1.1–1.5 demonstrate that the combination of Olkin and Kim teaches limitation 1.6. See id. at 11–26. Thus, we determine that Microsoft has not demonstrated a reasonable likelihood of prevailing in showing that claim 1 would have been obvious over Olkin in combination with Kim.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Citing testimony of Dr. Houh, Microsoft argues that a person of ordinary skill in the art “would have a bachelor’s degree in computer science, electrical and/or computer engineering, or equivalent training, and two years of experience in computer networking and information security.” Pet. 9 (citing Ex. 1008 ¶ 43 (Dr. Houh’s testimony to that effect)). For the purpose of its Preliminary Response, Uniloc does not dispute Microsoft’s assertion. See Prelim. Resp. 10–11. We find that Microsoft’s proposed level of ordinary skill is consistent with the teachings of the ’359 patent and the cited prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself may provide evidence as to the appropriate level of ordinary skill). Therefore, we adopt Microsoft’s uncontested formulation as the level of ordinary skill for this decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Microsoft contends that the claims of the ’359 patent “do not require proposed constructions that differ from the claim language in order for the Board to compare the prior art to the claims.” Pet. 9. Likewise, Uniloc “contends that no claim terms require specific construction to resolve the unpatentability issues presented” in the Petition. Prelim. Resp. 10. In light of the parties’ arguments and evidence, we agree with the parties that it is unnecessary to expressly construe any claim terms for our determination of whether to institute an inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Nevertheless, our interpretation of the ’359 patent claims is informed by the disclosure and prosecution history, and we will discuss our interpretation of pertinent claim terms in the context of our analysis in the section below.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Finally, Microsoft has not sufficiently explained why a person of ordinary skill in the art would have modified Olkin’s system by adding an independent verification step. Olkin uses “conversation keys,” which are associated with a flow of messages “from a single source to one or more destinations.” Ex. 1003, 21:48–50. In Olkin’s system, the originator sends the messages to members of a recipient list, but the intended recipients on that list need not be authenticated before, or even after, the originator sends the message. See Ex. 1003, 9:55–60 (an intended recipient need not be registered with the system when the originator requests the key); id. at 10:3– 7 (alternatively, the security server “need not be concerned with whether the receivers . . are registered”). Microsoft has not adequately explained why, in Olkin’s system, where messages may be broadcast to multiple recipients before those recipients are even registered, a person of ordinary skill in the art would have had reason to independently verify to the recipients that the originator asked for, and was sent, an encryption key. For the above reasons, we determine that Microsoft has not adequately shown that Olkin teaches or suggests limitation 1.6 of claim 1. Microsoft does not point to any passage in Kim that would supply the missing teaching. See Pet. 26–29. Nor do Microsoft’s arguments regarding limitations 1.1–1.5 demonstrate that the combination of Olkin and Kim teaches limitation 1.6. See id. at 11–26. Thus, we determine that Microsoft has not demonstrated a reasonable likelihood of prevailing in showing that claim 1 would have been obvious over Olkin in combination with Kim.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,495,359 - Microsoft Corporation v. Ipa Technologies Inc.Rehearing deniedPTAB · Apr 3, 2020 · IPR2019-00840 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Microsoft’s rehearing request, leaving institution denied because it did not show error in the Board’s § 325(d) analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. 37 C.F.R. § 42.71(d). “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.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for patent owner
“Petitioner did not argue, in the Petition, that FIPA97 was released as individual parts. Petitioner’s Rehearing Request (page 8) cites to the Petition at page 20 and Exhibit 1054. Page 20 of the Petition, however, contains Petitioner’s argument that FIPA97 was made publicly available as a single document, as discussed above. It does not include any argument or suggestion that FIPA97 was released as individual parts. Additionally, Exhibit 1054 is not cited on page 20 of the Petition in the discussion of FIPA97 nor does it appear that Exhibit 1054 was cited anywhere in the Petition. Thus, because Petitioner did not argue, in the Petition, that FIPA97 was released as individual parts, we could not have overlooked that argument. Petitioner’s contention of error in our determination that FIPA97 was involved during examination of the ’128 patent application is premised upon finding that FIPA97 existed as individual parts. Because Petitioner fails to demonstrate that we overlooked an argument that was not made, we are not persuaded of error.” slip op. at 4
Discretionary denialPatents in suitUS 7,036,128 - Microsoft Corporation v. Ipa Technologies Inc.Rehearing deniedPTAB · Apr 3, 2020 · IPR2019-00838 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Microsoft’s rehearing request, leaving institution denied under § 325(d) because Microsoft did not show the Board overlooked arguments made in the petition.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “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.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“and the prior art relied upon in Petitioner’s challenges to the ’128 patent, Petitioner did not address 35 U.S.C. § 325(d) in the Petition (Paper 1). Instead, Petitioner made two critical representations—(1) that the Examiner of the ’128 patent “did not have FIPA97 before him, or any other FIPA reference for that matter” (Pet. 1) and (2) that despite there being seven “Parts” to FIPA97, “FIPA97 was made publicly available as a single document” and was “developed and published as a single, integrated work.” Pet. 20 (citing Ex. 1055 (FIPA97 Table of Contents for Parts 1–7)); Ex. 1026, 5 (Foundation for Intelligent Physical Agents, “Resolution of Munich meeting”). In the Petition (Paper 1), Petitioner never contended that FIPA97 was published or available as separate and distinct parts, such that access to one part might not mean access to each other part. Rather, Petitioner’s sole statement regarding separate parts was that it filed FIPA97 as seven separate exhibits “due to its size and numbering schedule.” Id. at 20. Accordingly, on the record presented, we agreed with Petitioner’s representation and we found that FIPA97 (Exs. 1006–1012) constitutes a single document, which we then found was involved during examination of the ’128 patent application. Inst. Dec. 15.” slip op. at 3
Discretionary denialPatents in suitUS 7,036,128 - Microsoft Corporation v. Ipa Technologies Inc.Rehearing deniedPTAB · Apr 3, 2020 · IPR2019-00839 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Microsoft's rehearing request, leaving institution denied under § 325(d) because it did not show the Board overlooked arguments about FIPA97 or misweighed the Becton factors.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “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.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“and the prior art relied upon in Petitioner’s challenges to the ’128 patent, Petitioner did not address 35 U.S.C. § 325(d) in the Petition (Paper 1). Instead, Petitioner made two critical representations—(1) that the Examiner of the ’128 patent “did not have FIPA97 before him, or any other FIPA reference for that matter” (Pet. 1) and (2) that despite there being seven “Parts” to FIPA97, “FIPA97 was made publicly available as a single document” and was “developed and published as a single, integrated work.” Pet. 20 (citing Ex. 1055 (FIPA97 Table of Contents for Parts 1–7)); Ex. 1026, 5 (Foundation for Intelligent Physical Agents, “Resolution of Munich meeting”). In the Petition (Paper 1), Petitioner never contended that FIPA97 was published or available as separate and distinct parts, such that access to one part might not mean access to each other part. Rather, Petitioner’s sole statement regarding separate parts was that it filed FIPA97 as seven separate exhibits “due to its size and numbering schedule.” Id. at 20. Accordingly, on the record presented, we agreed with Petitioner’s representation and we found that FIPA97 (Exs. 1006–1012) constitutes a single document, which we then found was involved during examination of the ’128 patent application. Inst. Dec. 15.” slip op. at 3
Discretionary denialPatents in suitUS 7,036,128
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.