- Henny Penny Corporation v. Frymaster L.L.C.Rehearing deniedPTAB · Jan 20, 2017 · IPR2016-01435 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Henny Penny’s rehearing request, leaving institution on two obviousness grounds and denial of the other nine grounds unchanged.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“I. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen 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) (citations omitted). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d).” slip op. at 2
NonePatents in suitUS 8,497,691 - Micron Technology, Inc. v. Limestone Memory Systems LLCRehearing deniedPTAB · Jun 2, 2016 · IPR2016-00094 · APJ Barbara A Parvis · IPR · Rehearing
The Board denied Micron’s rehearing request, leaving institution denied because the petition insufficiently showed the claim 6 column redundancy decoder limitation and a reasoned basis to combine.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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) (citations omitted). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or reply. 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
“not shown sufficiently that the combination of McAdams and Minami teaches “a column redundancy decoder activating said redundant column selection line in response to said first column address when said second word line is activated” (“the column redundancy decoder limitation”), as recited in claim 6. Dec. 13. We further determined that Petitioner did not provide sufficiently an articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. Id. at 16.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“not shown sufficiently that the combination of McAdams and Minami teaches “a column redundancy decoder activating said redundant column selection line in response to said first column address when said second word line is activated” (“the column redundancy decoder limitation”), as recited in claim 6. Dec. 13. We further determined that Petitioner did not provide sufficiently an articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. Id. at 16.” slip op. at 2
§ 103 obviousnessPatents in suitUS 5,894,441 - Samsung Electronics Co., Ltd / Samsung Electronics America, Inc. et al. v. Imperium (IP) HoldingsRehearing deniedPTAB · Jan 8, 2016 · IPR2015-01231 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied rehearing of the institution denial because the petition did not explain how Hashimoto disclosed or suggested limitations 1.3 and 14.3.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“I. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen 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” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“not shown a reasonable likelihood of prevailing in showing that Hashimoto discloses or suggests limitations [1.3] and [14.3]. Dec. 13–16. In particular, we remarked that Petitioner’s claim charts did not include citations or quotations addressing these limitations directly. Id. at 14, 16. Rather, we noted that for limitation [1.3], Petitioner cited to ten different figures and twelve different portions of Hashimoto, one of which includes a span of seven columns of Hashimoto’s specification. Id. at 15 n.7. For limitation [14.3], we noted that Petitioner cited to nine different figures and eleven different textual portions of Hashimoto, one of which also includes a span of seven columns of Hashimoto’s specification. Id. at 16 n.8. Additionally, we reviewed and remarked upon the Neikirk Declaration, specifically, paragraph 74, upon which Petitioner also relied. Id. at 14 n.6. Paragraph 74 of the Neikirk Declaration does not elaborate upon or otherwise explain how one of ordinary skill in the art would understand the cited text or figures of Hashimoto to disclose or suggest limitations [1.3] and [14.3]. Id. Accordingly, we concluded that, on the record before us, Petitioner had not established a reasonable likelihood of prevailing on its asserted grounds based upon Hashimoto. See, e.g., id. at 16.” slip op. at 3
NonePatents in suitUS 6,271,884 - RPX Corporation v. Cedatech Holdings, LLCRehearing deniedPTAB · Oct 13, 2015 · IPR2015-00736 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied RPX’s rehearing request, leaving institution denied because the patent owner’s pre-institution statutory disclaimer did not require adverse judgment.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen 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) (citations omitted). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or reply. 37 C.F.R. § 42.71(d).” slip op. at 2
- Adverse judgmentAdverse judgmentDecided for patent owner
“Patent Owner did not disclaim the patent, for example by filing a disclaimer under 35 U.S.C. § 253(b); rather, Patent Owner disclaimed claims under § 253(a). Thus, subsection (b)(1) is inapplicable. indicates correctly that our subsequent Order (Paper 6) placed the burden on Patent Owner to explain why we should not construe Patent Owner’s statutory disclaimer as a request for adverse judgment. Id. at 1–2. Even though Patent Owner did not take the opportunity to respond to our request, we determined, nonetheless, not to construe Patent Owner’s disclaimer as a request for adverse judgment because Patent Owner undertook none of the “[a]ctions construed to be a request for adverse judgment” under 37 C.F.R. § 42.73(b). Subsection (b)(2), which refers to “disclaimer of a claim such that the party has no remaining claim in the trial” (emphasis added), is also inapplicable. Because it includes the phrase “such that the party has no remaining claim in the trial,” it is our view that subsection (b)(2) applies only after a trial has been instituted. See 37 C.F.R. § 42.2 (“Trial means a contested case instituted by the Board based upon a petition. A trial begins with a written decision notifying the petitioner and patent owner of the institution of the trial.”). In the circumstances here, however, trial had not yet been instituted. Thus, subsection (b)(2) does not require that we construe Patent Owner’s disclaimer as a request for adverse judgment. Additionally, Petitioner does not contend that subsections (b)(3) or (b)(4) apply, and we agree that they do not. Accordingly, the facts presented here do not fall within any of subsections (b)(1)–(4), and Petitioner has not pointed us to anything that requires us to construe Patent Owner’s disclaimer as a request for adverse judgment.” slip op. at 3
NonePatents in suitUS 7,707,591 - HTC Corporation / HTC America, Inc. v. NFC Technology, LLCRehearing deniedPTAB · Aug 20, 2015 · IPR2015-00384 · APJ James B Arpin · IPR · Rehearing
The Board denied HTC’s rehearing request and left in place its discretionary denial of institution on claims 13–15 and 19 based on § 325(d) and follow-on petition concerns.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply. (Emphasis added.) When rehearing a Decision on Institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for patent owner
“that, contrary to Petitioner’s argument, the two petitions challenge overlapping sets of claims.1 In particular, Petitioner expressly challenges claim 13 in both IPR2014- 01199 (see 1199 Dec. on Inst. 3) and IPR2015-00384 (Pet. 60 (“This Petition demonstrates that there is a reasonable likelihood that Petitioners will prevail in their challenge of patentability for Claims 13, 14, 15 and 19.” (emphasis added)). Further, to the extent that Petitioner argues that it only challenges the dependent claims, challenges to independent claim 13 are made expressly as part of the challenges to each of dependent claims 14, 15, and 19. Pet. 12–26 (claim 13 as unpatentable over Akiho); 31–39 (claim 13 as unpatentable over Amtmann); 44–46 (claim 13 as unpatentable over Amtmann and ECMA-340); 49–57 (claim 13 as unpatentable Charrat and Kuhl).2 With respect to claim 13, the asserted grounds in the Petition in IPR2015-00384 rely on the same references and make substantially the same arguments against claim 13 as those asserted in the Petition in IPR2014- 01199. As we indicated in the Decision on Institution, “we may exercise our discretion and decline to institute inter partes review under 35 U.S.C. § 325(d)” based on the assertion of the same references against claim 13. 384 Dec. on Inst. 9–10. Moreover, although at the time Petitioner filed its second Petition, Petitioner did not know on which, if any, of its asserted grounds we might institute review, Petitioner’s request that we consider identical challenges to claim 13 in each” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for patent owner
“Petition is unquestionably an attempt to obtain a “second bite at the apple,” at least with respect to claim 13.3 384 Dec. on Inst. 11; see Reh’g Req. 1. Moreover, to the extent that Petitioner also relies upon Arisawa to challenge claims 14, 15, or 19 on another ground(s), Petitioner’s asserted grounds and arguments make clear that Akiho or Charrat and Kuhl, or both, allegedly teach the additional limitations recited in claims 14, 15, or 19. See, e.g., Pet. 26–30 (applying the teachings of Akiho to claims 14, 15, and 19), 39–43 (applying the teachings of Amtmann and Arisawa to claims 14, 15, and 19). Petitioner presents no evidence or argument that Arisawa was not known or available to Petitioner at the time the Petition was filed in IPR2014-01199. We also note that Arisawa is listed among the “References Cited” on page 2 in Kuhl. See Conopo, Inc. v. The Proctor & Gamble Co., Case IPR2014-00506, slip op. at 6 (PTAB July 7, 2014) (Paper 17) (informative) (“The instant Petition relies on thirteen pieces of prior art: six that were raised in the 505 Petition . . .; and seven that are new to this proceeding . . . . Unilever, however, presents no argument or evidence that the seven newly cited references were not known or available to it at the time of filing of the 505 Petition.”); see also Samsung Elecs. Co. v. Rembrandt Wireless Techs., LP, Case IPR2015-00555, slip op. at 7 (PTAB June 19, 2015) (Paper 20) (“Petitioner simply presents arguments now that it could have made in [its earlier Petition], had it merely chosen to do so.”). Therefore, we deny Petitioner’s Request for Rehearing on this basis. 3 As noted below, however, Petitioner waited until after Patent Owner had filed a Preliminary Response in IPR2014-01199 before filing the follow-on Petition in IPR2015-00384.” slip op. at 5
- Strike new argumentNew argument disregardedDecided for patent owner
“presents evidence (e.g., Arisawa) and arguments that Petitioner had no reason to raise in the Petition in IPR2014-01199. Reh’g Req. 8–10. In particular, Petitioner argues that Patent Owner had not asserted that Petitioner infringed dependent claims 14, 15, and 19 until after the Petition in IPR2014-01199 was filed. Id. Petitioner presents a timeline in its Request for Rehearing, in which Petitioner suggests that Patent Owner filed an amended complaint in the related litigation alleging for the first time that Petitioner infringed dependent claims 14, 15, and 19. Id. at 2. Petitioner argues in the Request for Rehearing that, on August 19, 2014, Patent Owner served a second set of infringement contentions in the lawsuit, asserting dependent claims 14, 15, and 19 for the very first time. Because it was too late to address those claims in the first petition, Petitioner[] prepared and filed this second petition for inter partes review on December 6, 2014. Id. at 3 (emphasis added). Petitioner does not identify, however, where it raised this argument in its Petition in IPR2015-00384, as required by 37 C.F.R. § 42.71(d). See id. We determine that neither the timeline nor the fact that Patent Owner filed an amended complaint was raised or argued in the Petition in IPR2015-00384, as justification for filing a second petition. We could not have “misapprehended or overlooked” evidence or argument not previously presented. Therefore, we also deny Petitioner’s Request for Rehearing on this basis.” slip op. at 6
Discretionary denialPatents in suitUS 7,665,664 - Unified Patents Inc. v. Data Speed Technology LLCRehearing deniedPTAB · May 14, 2015 · IPR2014-01564 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Unified Patents’ rehearing request, leaving institution denied because the petition did not persuasively map prior-art disclosures to the challenged claim limitations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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) (citations omitted). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or reply. 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
“not established a reasonable likelihood of prevailing on its challenges to the ’686 patent because Petitioner had not shown persuasively that the citations to, and quotations from, High Performance1 and Comparison2 disclosed the 1 Robbert van Renesse et al., The Design of a High-Performance File Server, PROCEEDINGS OF THE INTERNATIONAL CONFERENCE ON DISTRIBUTED COMPUTING SYSTEMS, Newport Beach, CA, 22–27 (June 1989) (Ex. 1003, “High Performance”). 2 Fred Douglis et al., A Comparison of Two Distributed Systems: Amoeba and Sprite, 4 (4) COMPUTING SYSTEMS 353–84 (Fall 1991) (Ex. 1004, “Comparison”). “reserving the memory space for the exclusive use of the requesting computer” and “denying write access to the memory space by any other computer of the plurality of computers” limitations of claims 1–5 (Dec. 5– 9), similar recitations in claims 6–9 (id. at 9–10), and the “granting exclusive write access to the identified memory space by the requesting computer for a duration of the access grant to the requesting computer” limitations of claims 10 and 11 (id. at 10–12).” slip op. at 2
- BurdenOther
“First, Petitioner alleges that we overlooked pages 21–25 of the Petition. Req. Reh’g 3–4. Petitioner is incorrect. We considered carefully the Petition in its entirety, including Petitioner’s arguments on pages 21–25. The pages to which Petitioner points begin by discussing the alleged disclosures of the “Amoeba” file server and the “Bullet File Server,” include quotations from Dr. Hutchinson’s Declaration (Ex. 1005), and conclude with comparisons between the “Amoeba” file server (which Petitioner also referred to as the “Flat File Server” (Paper 4, 25 (“Pet.”)) and the Bullet File Server. Pet. 21–25. Although Petitioner alleged that the Bullet File Server “discloses many of the features of the ’686 Patent claims” (id. at 23), Petitioner did not connect this discussion to the limitations of any of the challenged claims. Petitioner should not expect us to search the record and piece together what may support Petitioner’s arguments. It is a requirement of a Petition to align the evidence and arguments with the various limitations of the challenged claims. See 37 C.F.R. § 42.22(a)(2) (the “petition . . . must include . . . [a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence” (emphasis added)). Here, the Petition did not do so. Accordingly, we” slip op. at 3
NonePatents in suitUS 5,867,686 - TRW Automotive US LLC v. Magna Electronics Inc.Rehearing deniedPTAB · Aug 28, 2014 · IPR2014-00259 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied TRW’s rehearing request, leaving institution denied for claims 1–3, 9, 11, 12, 16, 20, 24, 26, and 28 because the petition did not sufficiently support its anticipation and obviousness arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen 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) (citations omitted). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). III.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not reached
“In the Petition, Petitioner cited this portion of Bottesch not as teaching that Bottesch is capable of performing the claimed function, but rather as supporting the argument that “the limitation is . . . disclosed by Bottesch.” See Pet. 18–19 (quoting Bottesch’s “lateral tracking capabilities” and the disclosure regarding recognizing the presence of an object as noted above). Petitioner, however, did not argue that these disclosures show that Bottesch is capable of performing the “high level function” claimed. Even if this argument in the Petition were intended to support the position that Bottesch is capable of performing the claimed function rather than actually disclosing the claimed function, the Petition fails to include the argument raised in the Rehearing Request—that Bottesch’s disclosure of performing one high level function means that its microcomputer is capable of performing another high level function (e.g., with additional programming).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“respect to the “said control analyzing particular groupings of photosensor elements . . . while ignoring other particular groupings of photosensor elements” element of claim 1 because that was the portion of Vellacott cited in the Petition as allegedly rendering it obvious “to develop specific algorithms for vision systems to sample ‘a collection of pixels,’ while ignoring other pixels, [to] determine the presence of an object or item of interest.” Pet. 35; see also id. at 34 (citing Vellacott’s “top section” discussing an edge detection algorithm); Decision 12–13. Thus, in considering Petitioner’s arguments with respect to this claim element, we focused the Decision where Petitioner directed us to focus. Additionally, the Petition did not tie the use of Vellacott’s CMOS image sensor and edge detection algorithm to the use of such an algorithm in what Petitioner now refers to in the Rehearing Request as “the rear view mirror headlight detection embodiment.” See Req. Reh’g 7. Further, Petitioner’s argument as to why one of ordinary skill in the art would have been prompted to replace Bottesch’s CCD camera with the CMOS image sensor of Vellacott, does not, in and of itself, mean that it would have been obvious to one of ordinary skill in the art to maintain Vellacott’s edge detection algorithm when combined with Bottesch or to “develop specific algorithms for vision systems” (Pet. 35 (emphasis added)) as alleged in the Petition. The argument and further explanation provided in the Rehearing Request was not in the Petition, and may not be raised for the first time on rehearing. Accordingly, because the Petition did not explain sufficiently how the substitution of Vellacott’s CMOS image sensor for Bottesch’s CCD camera allegedly would have rendered it obvious to one of ordinary skill in the art to develop specific algorithms for vision systems, such as that recited in claim 1, we did not abuse our discretion in denying institution on the asserted ground.” slip op. at 4
§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,344,261 - TRW Automotive US LLC v. Magna Electronics Inc.Rehearing deniedPTAB · Aug 28, 2014 · IPR2014-00293 · APJ Frances L Ippolito · IPR · Rehearing
The Board denied TRW’s rehearing request, leaving in place the denial of institution because the petition did not sufficiently identify the reference combinations or show the challenged limitations and reason to combine.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen 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) (citations omitted). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“In the Decision, we concluded that the Petition’s analysis was silent on any reason for combining Bottesch, Yanagawa, Zheng, and/or Vellacott for the limitations of a “control comprising an image processor, said image processor processing image data captured by said photosensor array” and “said control analyzes image data captured by photosensor elements where an object exterior of the equipped vehicle is determined to be present more than said control analyzes image data captured by other photosensor elements where the determined object is not present,” as recited in claim 1. Decision 16–17. We did not find the Petition’s conclusory statement of equivalent substitution persuasive. Id.” slip op. at 7
- Expert testimonyPetitioner expert discountedDecided for patent owner
“summarily dismisses the expert declaration of Dr. Miller.” Req. Reh’g 12. Petitioner further asserts that the Petition need “offer nothing more” than Dr. Miller’s suggestion that “the claimed invention is nothing more than a combination of familiar elements doing what one in the art would expect them to do.” Id. at 14. We did not overlook the testimony of Dr. Miller cited by Petitioner in the Petition. To the contrary, we considered the evidence and argument presented in the Petition, but found that the cited portions of Dr. Miller’s declaration repeated the same unpersuasive arguments and statements presented in the Petition. Decision 17 n.4. Thus, Petitioner’s contention is merely a disagreement with our decision, which is not a sufficient basis on which to request rehearing. slip op. at 9
§ 103 obviousnessPatents in suitUS 8,314,689 - TRW Automotive US LLC v. Magna Electronics Inc.Rehearing deniedPTAB · Aug 28, 2014 · IPR2014-00257 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied TRW’s rehearing request, leaving institution denied for all challenged claims because the Petition did not clearly present Yanagawa as optional or explain a specific rationale to combine its teachings.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We disagree. First, we did not overlook the testimony of Dr. Miller cited by Petitioner in the Petition; rather, we addressed Dr. Miller’s statements in our Decision and found them insufficient. Decision 10–11. Thus, Petitioner’s contention is merely a disagreement with our decision, which is not a sufficient basis on which to request rehearing.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“It is incumbent upon Petitioner to identify, in the Petition, the specific reference or combination of references it relies upon for its challenge, and to 1 Although we specifically refer to the citations of Yanagawa as applied to claim 1, the Petition’s discussion of independent claims 12, 20, and 26 relies upon the analysis presented for claim 1 and, thus, similarly relies upon Yanagawa without clearly indicating that it was an alternative, non-essential reference. See Pet. 30–34 (addressing claim 12); id. at 37–42 (addressing claim 20); id. at 42–46 (addressing claim 26). explain what specific teachings of what references are relied upon and how they are combined. See 37 C.F.R. §§ 42.104(b)(2), 42.104(b)(4). If Petitioner sought to raise a ground based solely upon Bottesch, Petitioner must do so clearly and identify it as such. Petitioner’s identification of “Ground 1” did not do so; rather, it identified a combination of four references, one of which was Yanagawa.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“B. Rationale to Combine Yanagawa Petitioner reiterates several quotations from the references cited and asserts that “[t]he references themselves teach to look to other vehicular vision art for interchangeable components, including features disclosed in Yanagawa. The cited prior art sufficiently suggest a motive to combine features of the references.” Req. Reh’g 8. Petitioner, however, did not argue in the Petition that any particular reference provided a specific reason as to why one of ordinary skill in the art would combine any of the specific teachings of Yanagawa with one or more of the teachings of the other references. That each reference may be in the field of “vehicular vision” is insufficient, in and of itself, to provide a reason with rationale underpinning as to why one of ordinary skill in the art would have sought to combine specific teachings of such references. See Decision 10–12.” slip op. at 4
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Second, each quotation from Dr. Miller’s Declaration appears in a claim chart in the same row as the last element of each claim. For example, Dr. Miller’s chart discussing claim 1 addresses the final element of claim 1 by referring to citations from three different references—Bottesch, Borcherts, and Yanagawa—and then states “[a]ny of the above listed references would be combinable to utilize and substitute the known and disclosed elements in the additional references.” Ex. 1010 ¶ 18. Thus, Dr. Miller’s statement appears to apply to this final element of claim 1 and there is no indication that it was intended to apply to any other element of claim 1. Third, even if Dr. Miller’s statement were intended to apply to each element of claim 1 and the numerous citations from the four references relied upon for each element of the claim, such a catch-all, conclusory statement that any of the above listed references would be combinable with the other references is insufficient to clearly articulate a reason with a rationale underpinning as to why one of ordinary skill in the art would have combined any particular teaching of any one of the references with another reference. In other words, it lacks specificity.2 IV.” slip op. at 5
§ 103 obviousnessPatents in suitUS 8,203,440 - TRW Automotive US LLC v. Magna Electronics Inc.Rehearing deniedPTAB · Aug 27, 2014 · IPR2014-00294 · APJ Frances L Ippolito · IPR · Rehearing
The Board denied TRW’s rehearing request, leaving in place the denial of institution on claims 34, 39–48, and 50–54 because the Petition did not show a reasonable likelihood of prevailing.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen 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) (citations omitted). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“claim 50 and its dependent claims 51 and 53 because the Petition’s analysis of certain “control” limitations did not include a sufficient reason for why one of ordinary skill in the art would have combined Yanagawa’s alleged teaching with Bottesch or Vellacott. Decision 30. In the Request for Rehearing, Petitioner contends that (1) the Petition states Bottesch teaches use of “any other photo sensitive device,” and (2) Yanagawa describes a vehicle recognition device capable of automatically controlling headlights, which is different from the other applied references “only in the choice of which vehicle system to control.” Req. Reh’g 5. Petitioner maintains that this is sufficient to show that Yanagawa is a “suitable equivalent for the particular photosensor arrays embodiments of Bottesch.” Id. (citing Pet. 18). We are not persuaded because these arguments were not presented in the Petition for the “control” limitations. For example, we agree that Bottesch states that any photo sensitive device, such as CCDs, may be used with its vehicle system (Pet. 17); however, we are unpersuaded that Petitioner presented this reasoning for the combination of Bottesch with other references as teaching the specific “control” limitations discussed on pages 31 and 32 of the Petition. On those pages, the Petition’s analysis does not include any reason for combining the applied references. Pet. 31–32. Although Petitioner may have intended for us to mix and match features among those disclosed in the references and rely on other portions of the Petition for a reason to combine, we were unable to discern such an intent from the wording and structure of pages 31–32 of the Petition. Moreover, in coming to our conclusion, we considered the Petition’s arguments that portions of Yanagawa’s system may be substituted for portions of Bottesch; however, we found these arguments unpersuasive. Decision 30. Thus, Petitioner’s contention is merely a disagreement with our decision. Disagreement with the decision is not a sufficient basis on which to request rehearing.” slip op. at 5
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petitioner contends the Decision constitutes an abuse of discretion because it “summarily dismiss[es] the expert declaration of Dr. Miller.” Req. Reh’g 11. Petitioner further asserts that the Petition need “offer nothing more” than Dr. Miller’s suggestion that “the claimed invention is nothing more than a combination of familiar elements doing what one in the art would expect them to do.” Id. at 12. We did not overlook the testimony of Dr. Miller cited by Petitioner in the Petition. We considered the evidence and argument presented in the Petition, but found that the cited portions Dr. Miller’s declaration repeated the same unpersuasive conclusory statements presented in the Petition for combining Bottesch, Yanagawa, Vellacott, and Zheng. Decision 17 n.4. Thus, Petitioner’s contention is merely a disagreement with our decision, which is not a sufficient basis for a rehearing.” slip op. at 10
§ 103 obviousnessPatents in suitUS 8,314,689
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.