- Fasteners For Retail, Inc. v. RTC Industries, Inc.Rehearing deniedPTAB · Nov 15, 2018 · IPR2018-00742 · APJ Michael L Woods · IPR · Rehearing
The Board denied the rehearing request in all four proceedings, upholding denial of institution because Petitioner failed to identify Olympus as a real party in interest.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“b. Standard for Reconsideration The party filing a request for rehearing 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). Therefore, Petitioner bears the burden of establishing that we misapprehended or overlooked the matters that it requests that we review. When rehearing a decision whether to institute a trial, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 3
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“I. INTRODUCTION a. Background Fasteners for Retail, Inc. (“Petitioner”), filed four petitions (IPR2018- 00741, IPR2018-00742, IPR2018-00743, and IPR2018-00744) requesting inter partes review of claims in U.S. Patent Nos. 9,173,505, 9,149,132, 9,504,321, and 9,635,957. Paper 1.2 RTC Industries, Inc. (“Patent Owner”), filed a Preliminary Response (Paper 8, “Prelim. Resp.”) arguing that Petitioner failed to identify Olympus Partners LP (“Olympus”) as a real party-in-interest (“RPI”). Prelim. Resp. 28–39. After receiving the Preliminary Response, we issued an order (Paper 13, “Order”) permitting Petitioner to either: (1) amend its mandatory notices within 7 days to name Olympus as an RPI; or (2) file a reply brief within 7 days to address Patent Owner’s RPI argument. Order 4. Although it amended its mandatory notices to add certain additional RPIs (Paper 14), Petitioner chose to file a reply brief (Paper 15, “Reply”) rather than name Olympus as an RPI. We entered a decision denying institution (Paper 25, “DDI”), in which we explained that Petitioner failed to persuade us that Olympus was not an RPI. DDI 14.” slip op. at 2
Discretionary denialPatents in suitUS 9,149,132 - Fasteners For Retail, Inc. v. RTC Industries, Inc.Rehearing deniedPTAB · Nov 15, 2018 · IPR2018-00741 · APJ Michael L Woods · IPR · Rehearing
The Board denied Fasteners for Retail’s rehearing request, leaving institution denied because Petitioner failed to identify Olympus as a real party in interest.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“b. Standard for Reconsideration The party filing a request for rehearing 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). Therefore, Petitioner bears the burden of establishing that we misapprehended or overlooked the matters that it requests that we review. When rehearing a decision whether to institute a trial, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 3
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“Moreover, the 7-day period for amending its mandatory notices to name Olympus as an RPI expired on July 27, 2018, (Order 4), and we entered our decision denying institution based on Petitioner’s failure to name Olympus as an RPI on September 12, 2018, (DDI 14). To permit Petitioner to now amend its mandatory notices to cure its failure to name Olympus as an RPI would be unfair to Patent Owner and would encourage gamesmanship by allowing petitioners to refrain from naming all RPIs until if and after such unnamed RPI is the cause for denying institution. Indeed, we are not aware of any Board decision that has permitted such amendment to mandatory notices after a decision denying institution. Accordingly, Petitioner’s Request is denied.” slip op. at 5
Discretionary denialPatents in suitUS 9,173,505 - Cook Group Incorporated / Cook Medical LLC v. Boston Scientific Scimed, Inc.Some claims unpatentablePTAB · Nov 15, 2018 · IPR2017-00135 · APJ Robert L Kinder · IPR · Final written decision
Claims 1, 3–5, and 10 are unpatentable as obvious over Kimura (claims 1, 3–5) and Kimura with Sackier (claim 10); claims 7, 11–15, and 17 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Person of Ordinary Skill in the Art Petitioner proposes that a person of ordinary skill in the art as of the time of the filing of the application that became the ’371 patent would have possessed the knowledge and skill of an engineer or similar professional with at least an undergraduate degree in engineering, or a physician having experience with designing medical devices. Pet. 8 (citing Ex. 1029 ¶ 11). Patent Owner does not dispute Petitioner’s proposal, and we adopt it for purposes of this Decision.” slip op. at 15
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“The issue we have with Patent Owner’s contentions, as pointed out by Petitioner, is that Patent Owner does not establish persuasively how its claims require the “reversible open/close” feature and the “tactile feel features.” See Pet. Reply 27–29. Even presuming that these features did indeed drive tremendous commercial success and industry praise for the commercial products, Patent Owner does not adequately explain in its analysis how the claims of the challenged patent require these particular features that drive commercial success. Patent Owner seems to suggest that a break section in the control wire will fracture and that this feature in the commercial product relates to the tactile feel. PO Resp. 57 (citing Ex. 2029 ¶¶ 91–93) (“After the yoke has disengaged, if the handle spool is moved further proximally, a break section in the control wire will fracture, leaving the ball within the yoke and uncoupling the control wire from the distal components of the device.”). This “break section in the control wire” is not, however, claimed or covered in claim 1, the claim that purportedly embodies the commercial product. The claims alleged to cover the product do not specifically require any “tactile feel feature.”3 Likewise, while the claims may allow for an opening and closing of the clip assembly, there is no requirement in these claims that the clip assembly, as “demanded” by physicians, repeatedly open and close. Thus, both of the drivers of commercial success and industry praise are not commensurate in scope with the claims of the patented invention. See Ex. 1046 ¶¶ 23–29 (explaining how features are not claimed).” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“district court proceeding, Petitioner contends that “coupled to the sheath” means “slideable inside the sheath” and “the sheath confines the bushing.” Pet. 9. Petitioner provides no additional support. The district court tentatively rejected this broad interpretation. See Ex. 2003, 27–28 (“[T]he Court recommends that ‘coupled to the sheath’ be construed as ‘linked together, connected, or joined, but not slidable inside the sheath.’”). Patent Owner contends that Petitioner’s proposed construction of “coupled to the sheath” is “unreasonably broad,” but provides little citation to the intrinsic record before us. Prelim. Resp. 13–14. Instead, Patent Owner notes that the plain and ordinary meaning of coupled is “linked together, connected, or joined,” citing to an unrelated Federal Circuit decision as well as the related district court determination. Id. at 14; Ex. 2003, 28. In our proceeding, Petitioner has not provided persuasive evidence or argument to support its claim interpretation by merely pointing to what Patent Owner purportedly argued in district court. Based on the final record before us, “coupled to the sheath” means “linked together, connected, or joined” to the sheath. Our construction is consistent with the district court’s analysis and reflects the common understanding of the term “coupled” in the mechanical arts to require more than simply abutting or contacting. See generally Ex Parte Paul Robert Homrich, Appeal 2014-005786, 2016 WL 3541285, at *3 (PTAB, June 27, 2016) (“When used in mechanical systems, the plain and ordinary meaning of ‘coupled’ means to link together or connect,” and coupled requires more than contact or abut.).” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We are not persuaded that Petitioner has demonstrated sufficiently that Adams discloses “a bushing extending between a proximal end coupled to the sheath,” (Ex. 1027, 17:4–5) as required by claim 1 of the ’371 patent. Based on the final record, Petitioner’s contention that retainer 110 [bushing] is slidable inside the sheath, or confined by the sheath, does not establish persuasively that the proximal end of the bushing is coupled to the sheath as required by claim 1. The claimed coupling must be “proximal coupling” and Petitioner can only point to distal coupling via distal tabs 118, 119 (Pet. Supp. Reply 6) – this is not “proximal” coupling. Further, for the bushing and the sheath to be coupled requires them to be “linked together, connected, or joined” in some manner and Petitioner has not established any such connection for proximal coupling. Petitioner also has failed to establish a persuasive reason for linking or connecting retainer 110 and sheath 112 – indeed, doing so would negatively impact the ability of retainer 110 to freely slide out of sheath 112. See Prelim. Resp. 27. Adams suggest that when control wire 108 is actuated and the clip is locked into the lock sleeve, retainer release 109 pulls retainer 110 back, disengaging retainer tabs 118, 119 from the two retainer holes as depicted in Figure 4.” Ex. 1023, 7:26–44 Finally, we note that our decision would not change if we adopted the district court’s claim interpretation. The district court adopted a claim construction of “a bushing extending between a proximal end coupled to the sheath” as “linked together, connected, or joined, but not slidable inside the sheath.” Ex. 2003, 28 (emphasis added). Should the district court’s interpretation be the correct one, Patent Owner’s position is much stronger whereas Petitioner’s theory is based on slidable movement. See Pet. 9 (arguing for “slideable inside the sheath” and “the sheath confines the bushing”); Pet. Supp. Reply 6. Having now considered the evidence in the complete record established during trial, we are not persuaded that Petitioner has demonstrated by a preponderance of the evidence that claim 1 would have been anticipated by Adams. Petitioner has not established persuasively that Adams discloses “a bushing extending between a proximal end coupled to the sheath.” For this reason, Petitioner has failed to prove by a preponderance of the evidence that Adams anticipates claim 1.” slip op. at 22
Patent outcomesUS 8,974,371 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,974,371 - Donner Technology, LLC v. Pro Stage Gear, LLCRehearing grantedPTAB · Nov 9, 2018 · IPR2018-00708 · APJ John A Hudalla · IPR · Rehearing
The Board granted rehearing and instituted review of claims 9–13 and 22–30 on all petition grounds, finding a reasonable likelihood of prevailing on the asserted obviousness challenges.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“for an abuse of discretion. See 37 C.F.R. § 42.71(c). The party requesting rehearing has the burden of showing the decision should be modified, which” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“SCC-700 and Mullen teaches all the limitations of claim 9. Pet. 35–54. Petitioner has also provided a reason with a rational underpinning for combining Mullen with SCC-700. Id. at 43–44. Thus, Petitioner has established a reasonable likelihood that it would prevail in showing that the subject matter of claim 9 would have been obvious over the combination of SCC-700 and Mullen.” slip op. at 10
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Institution, our determination that Mullen is nonanalogous art was based on defining the relevant problem as “guitar effects pedal mounting.” Dec. 20. Notwithstanding, Petitioner does present some evidence that a problem addressed by Mullen—namely, providing wiring channel space under shelf parts—is reasonably pertinent to a problem recognized in the ’023 patent— namely, providing an area for cable routing and placement in a pedal effects mounting board.” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner
“For purposes of this Decision, we determine that SCC-700 qualifies as prior art under § 102(b) based on Petitioner’s evidence of public dissemination of SCC-700 during the 1980s. See Pet. 20–23. The public dissemination of SCC-700 occurred more than one year before the earliest possible effective filing date of the challenged claims, which is September 7, 1999. Ex. 1001, [60].” slip op. at 7
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 6,459,023 - Fanduel, Inc. / Draftkings, Inc. v. Interactive Games LLCSome claims unpatentablePTAB · Nov 8, 2018 · IPR2017-01333 · APJ George R Hoskins · IPR · Final written decision
Claims 1–3 are unpatentable as obvious over Carter and Barton; claim 6 is unpatentable as obvious over Carter, Barton, and Walker. Claims 1–3 and 6 were not shown unpatentable over Carter and Martin.
RulingsFinal written decision- Prior constructionPrior construction adoptedDecided for petitioner
“It “remains true in construing patent claims before the PTO” that “the prosecution history . . . serves as intrinsic evidence for purposes of claim construction.” Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 977 (Fed. Cir. 2014). “The PTO should also consult the patent’s prosecution history in proceedings in which the patent has been brought back to the agency for a second review,” such as the present inter partes review. Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015), overruled on other grounds by Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017). Upon our review of the entire record, we agree with the construction of “selectable betting parameter” previously provided by the Board, during ex parte prosecution of the ’952 patent, as set forth above. Therefore, for the reasons provided in that previous Board decision, none of which are disputed here, we apply that construction here. 2.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for patent owner
“However, the Federal Circuit has “cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004); Teleflex, Inc. v. Ficosa North America Corp., 299 F.3d 1313, 1327–28 (Fed. Cir. 2002); In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We find no such clear disclaimer in the ’952 patent specification that would require Patent Owner’s narrow interpretation of the “corresponding” claim term. In particular, while any given location in the cited example from the ’952 patent corresponds to one value of the parameter so the location “determines the bet input” (Ex. 1001, 2:20–22), there is no clear disclosure that other locations may not correspond to that same parameter. It is only in one “example” that each different location “corresponds to a different roulette number.” Id. at 2:22–24 (emphasis added). Thus, the ’952 patent disclosure does not clearly disclaim multiple different locations each corresponding to the same bet input (number or color). See id. at 2:12–31.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“After full consideration of the foregoing arguments, we conclude Patent Owner’s analysis of the scope of the claim limitation at issue is vague and confusing. That claim limitation is: the first and second selectable betting parameters are different such that selecting one would cause a different result for the bet than selecting the other. Ex. 1001, 35:23–28. Such language, on its own, presents a straight-forward claim requirement. Patent Owner’s overlying varnish suggesting that the claim requires a relationship between the first and second parameters, making them “comparable variables,” is not supported by the claim language at issue, and confuses Patent Owner’s analysis of the prior art at issue. We reject Patent Owner’s implicit claim construction of this claim limitation and determine no explicit claim construction of this limitation is needed to resolve the issues presented by the arguments and evidence of record. 4. Remaining Claim Terms The parties do not offer any further explicit claim constructions. We determine no further explicit claim constructions are needed to resolve the issues presented by the arguments and evidence of record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “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)).” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We agree with Patent Owner that Petitioner’s reference to video game experience, as opposed to some other computer gaming experience, is not required to achieve ordinary skill in the art pertinent to the ’952 patent. The ’952 patent is concerned principally with implementing different gaming rules via computer hardware and software as a mobile gaming device moves between jurisdictions; the specific technical implementation of presenting the game on a computer screen is only a secondary consideration. See, e.g., Ex. 1001, Abstract. However, even if we were to accept Petitioner’s position on this point, it would not affect the bases for our decision set forth below. We agree with Petitioner that ordinary skill here requires gaming experience, and does not encompass telecommunications experience without gaming experience. While wireless communication and location tracking are components of the ’952 patent’s claimed invention, the specifics of how such communication and tracking occur is only a secondary consideration. See, e.g., Ex. 1001, Abstract, 1:51–2:11, 7:48–8:12. However, even if we were to accept Patent Owner’s position on this point, it would not affect the bases for our decision set forth below. We determine a person of ordinary skill in the art pertaining to the ’952 patent would have a Bachelor of Science Degree in Electrical Engineering, Computer Engineering, or a similar field. Such a person, further, would have at least about two years of experience designing and developing computer hardware and software to be used for playing games.” slip op. at 18
Patent outcomesUS 9,306,952 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,306,952 - Microsoft Corporation v. Ipa Technologies Inc.Rehearing deniedPTAB · Nov 8, 2018 · IPR2018-00793 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, finding no abuse of discretion in timely issuing the institution decisions before resolving the § 315(b) time-bar contention.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“III. STANDARD OF REVIEW Pursuant to 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 5
- PTAB / AIA Trials › §315(b) time barNot reached
“telephone conference call with the Board, “put at issue” the question whether an inter partes review may not be instituted under 35 U.S.C. § 315(b) because Petitioner, a real party in interest, or a privy of Petitioner was served with a complaint alleging infringement of the ’021 patent more than one year prior to the filing of the Petition. See, e.g., Req. Reh’g 10 (contending that Patent Owner put § 315(b) at issue). Patent Owner has not. During the September 17th conference call, Patent Owner mentioned several documents, including indemnification policies, license agreements, and correspondence as materials that Patent Owner is either aware of or seeking from Petitioner. See, e.g., Ex. 2001, 6:24–8:3 (discussing these documents), 10:19–11:14 (same). Neither party, however, has placed those documents in evidence, nor has Patent Owner advanced its argument regarding § 315(b) in any briefing. See World Inc. v. Bungie, Inc., 903 F.3d 1237, 1244 (Fed. Cir. 2018) (“We agree, however, that a patent owner must produce some evidence that tends to show that a particular third party should be named a real party in interest. A mere assertion that a third party is an unnamed real party in interest, without any support for that assertion, is insufficient to put the issue into dispute.” (footnote omitted)). Thus, at this time, Patent Owner has not “put at issue” whether Petitioner is barred under § 315(b). Additionally, Patent Owner’s Rehearing Request fails to identify where it previously raised the question of § 315(b) in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d). As explained above, Patent Owner has not. Thus, we could not have misapprehended or overlooked an issue not raised previously.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“V. CONCLUSION For the foregoing reasons, Patent Owner has not shown that we abused our discretion by timely issuing institution decisions in the five cases captioned above. Nothing in this Decision precludes Patent Owner from advancing its § 315(b) contention in its post-institution submissions.” slip op. at 7
NonePatents in suitUS 6,742,021 - Microsoft Corporation v. Ipa Technologies Inc.Rehearing deniedPTAB · Nov 8, 2018 · IPR2018-00792 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, finding no abuse of discretion in timely issuing institution decisions and leaving the § 315(b) contention open for post-institution submissions.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“III. STANDARD OF REVIEW Pursuant to 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 5
- PTAB / AIA Trials › §315(b) time barNot reached
“than one year prior to the filing of the Petition. See, e.g., Req. Reh’g 10 (contending that Patent Owner put § 315(b) at issue). Patent Owner has not. During the September 17th conference call, Patent Owner mentioned several documents, including indemnification policies, license agreements, and correspondence as materials that Patent Owner is either aware of or seeking from Petitioner. See, e.g., Ex. 2001, 6:24–8:3 (discussing these documents), 10:19–11:14 (same). Neither party, however, has placed those documents in evidence, nor has Patent Owner advanced its argument regarding § 315(b) in any briefing. See World Inc. v. Bungie, Inc., 903 F.3d 1237, 1244 (Fed. Cir. 2018) (“We agree, however, that a patent owner must produce some evidence that tends to show that a particular third party should be named a real party in interest. A mere assertion that a third party is an unnamed real party in interest, without any support for that assertion, is insufficient to put the issue into dispute.” (footnote omitted)). Thus, at this time, Patent Owner has not “put at issue” whether Petitioner is barred under § 315(b). Additionally, Patent Owner’s Rehearing Request fails to identify where it previously raised the question of § 315(b) in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d). As explained above, Patent Owner has not. Thus, we could not have misapprehended or overlooked an issue not raised previously.” slip op. at 7
NonePatents in suitUS 6,742,021 - Microsoft Corporation v. Ipa Technologies Inc.Rehearing deniedPTAB · Nov 8, 2018 · IPR2018-00791 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, finding no abuse of discretion in issuing the institution decisions before resolving the § 315(b) time-bar contention.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“deadline set forth in 35 U.S.C. § 314(b). Req. Reh’g 10 n.2. Patent Owner contends that “[t]he deadline under 35 U.S.C. § 314(b) should not be an obstacle because Congress has recognized that there should be some flexibility with respect to deadlines.” Id. (citing 35 U.S.C. § 316(a)(11)). Section 316(a)(11) provides up to six additional months to issue a final written decision when good cause is shown. Section 316(a)(11) does not, however, address extending the three-month time period after a preliminary response is filed to issue an institution decision. That three-month time period is governed by § 314(b), and Patent Owner fails to offer any support for its argument that we can extend the deadline under § 314(b). Accordingly, we are unaware of any statutory authority by which we may extend the deadline to determine whether to institute an inter partes review under § 314(b), even with a showing of good cause.” slip op. at 6
- PTAB / AIA Trials › §315(b) time barNot reached
“than one year prior to the filing of the Petition. See, e.g., Req. Reh’g 10 (contending that Patent Owner put § 315(b) at issue). Patent Owner has not. During the September 17th conference call, Patent Owner mentioned several documents, including indemnification policies, license agreements, and correspondence as materials that Patent Owner is either aware of or seeking from Petitioner. See, e.g., Ex. 2001, 6:24–8:3 (discussing these documents), 10:19–11:14 (same). Neither party, however, has placed those documents in evidence, nor has Patent Owner advanced its argument regarding § 315(b) in any briefing. See World Inc. v. Bungie, Inc., 903 F.3d 1237, 1244 (Fed. Cir. 2018) (“We agree, however, that a patent owner must produce some evidence that tends to show that a particular third party should be named a real party in interest. A mere assertion that a third party is an unnamed real party in interest, without any support for that assertion, is insufficient to put the issue into dispute.” (footnote omitted)). Thus, at this time, Patent Owner has not “put at issue” whether Petitioner is barred under § 315(b). Additionally, Patent Owner’s Rehearing Request fails to identify where it previously raised the question of § 315(b) in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d). As explained above, Patent Owner has not. Thus, we could not have misapprehended or overlooked an issue not raised previously.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Owner”) filed a Request for Rehearing and Reconsideration (“Rehearing Request” or “Req. Reh’g”)2 of our Decision instituting inter partes review (“Decision” or “Dec.”).3 In instituting the inter partes reviews, we determined that Petitioner established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims of each challenged patent. See, e.g., Dec. 2, 22.” slip op. at 2
NonePatents in suitUS 6,742,021 - Microsoft Corporation v. Ipa Technologies Inc.Rehearing deniedPTAB · Nov 8, 2018 · IPR2018-00794 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied the Patent Owner’s rehearing requests, finding no abuse of discretion in issuing the institution decisions before resolving the § 315(b) time-bar contention.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“III. STANDARD OF REVIEW Pursuant to 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 5
- PTAB / AIA Trials › §315(b) time barNot reached
“telephone conference call with the Board, “put at issue” the question whether an inter partes review may not be instituted under 35 U.S.C. § 315(b) because Petitioner, a real party in interest, or a privy of Petitioner was served with a complaint alleging infringement of the ’021 patent more than one year prior to the filing of the Petition. See, e.g., Req. Reh’g 10 (contending that Patent Owner put § 315(b) at issue). Patent Owner has not. During the September 17th conference call, Patent Owner mentioned several documents, including indemnification policies, license agreements, and correspondence as materials that Patent Owner is either aware of or seeking from Petitioner. See, e.g., Ex. 2001, 6:24–8:3 (discussing these documents), 10:19–11:14 (same). Neither party, however, has placed those documents in evidence, nor has Patent Owner advanced its argument regarding § 315(b) in any briefing. See World Inc. v. Bungie, Inc., 903 F.3d 1237, 1244 (Fed. Cir. 2018) (“We agree, however, that a patent owner must produce some evidence that tends to show that a particular third party should be named a real party in interest. A mere assertion that a third party is an unnamed real party in interest, without any support for that assertion, is insufficient to put the issue into dispute.” (footnote omitted)). Thus, at this time, Patent Owner has not “put at issue” whether Petitioner is barred under § 315(b).” slip op. at 6
NonePatents in suitUS 6,742,021 - Microsoft Corporation v. Ipa Technologies Inc.Rehearing deniedPTAB · Nov 8, 2018 · IPR2018-00734 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, finding no abuse of discretion in timely instituting review; Patent Owner may raise its § 315(b) contention in post-institution submissions.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“III. STANDARD OF REVIEW Pursuant to 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 5
- PTAB / AIA Trials › §315(b) time barNot reached
“than one year prior to the filing of the Petition. See, e.g., Req. Reh’g 10 (contending that Patent Owner put § 315(b) at issue). Patent Owner has not. During the September 17th conference call, Patent Owner mentioned several documents, including indemnification policies, license agreements, and correspondence as materials that Patent Owner is either aware of or seeking from Petitioner. See, e.g., Ex. 2001, 6:24–8:3 (discussing these documents), 10:19–11:14 (same). Neither party, however, has placed those documents in evidence, nor has Patent Owner advanced its argument regarding § 315(b) in any briefing. See World Inc. v. Bungie, Inc., 903 F.3d 1237, 1244 (Fed. Cir. 2018) (“We agree, however, that a patent owner must produce some evidence that tends to show that a particular third party should be named a real party in interest. A mere assertion that a third party is an unnamed real party in interest, without any support for that assertion, is insufficient to put the issue into dispute.” (footnote omitted)). Thus, at this time, Patent Owner has not “put at issue” whether Petitioner is barred under § 315(b).” slip op. at 7
NonePatents in suitUS 6,523,061
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.