- Square, Inc. v. Think Computer CorporationRehearing grantedPTAB · Feb 9, 2016 · CBM2014-00159 · APJ Michael W Kim · CBM · Rehearing
The Board granted Patent Owner’s rehearing request insofar as it addressed the assertions in the decision, but denied it in all other respects; the prior analysis remained unchanged.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“A request for rehearing can only point out that which the Board misapprehended or overlooked, and will be reviewed for abuse of discretion. 37 C.F.R. § 42.71(d). Moreover, as the moving party, the burden of persuasion falls on Patent Owner. 37 C.F.R. § 42.20(c). The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and where each matter was previously addressed in a motion, an opposition, or a reply. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).” slip op. at 1
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“are unpersuaded that they would alter our construction. For example, Patent Owner asserts that the claim limitation “any particular transaction” requires that “bidirectional account” be construed as allowing an account to function simultaneously as both a merchant account and a purchaser account under all transactions. We disagree, primarily because we are unclear as to what Patent Owner means by “under all transactions.” The relevant limitation of independent claim 1 reads “wherein the first account and the second account are adapted to selectively function as either a merchant or a purchaser account during any particular transaction.” We find that “[a]ny particular transaction” means any specific transaction, and is not necessarily limited to all transactions going forward, and find further that, logically, an account need only function in “merchant mode” or “purchaser mode” for that particular transaction; otherwise the account would be in the awkward position of performing a transaction with itself. Moreover, we are unclear as to why the same account cannot function as both, depending on the transaction, as an account is merely a repository within which funds are held, and whether the account is in “merchant mode” (i.e., the ability to send funds from the account) or “purchaser mode” (i.e., the ability to send funds to the account) does not alter the fundamental repository nature of the account itself. A similar analysis of the cited portions of the prosecution history and Specification yields similar conclusions. For example, Patent Owner’s discussion of the prosecution history on pages 4 and 5 of the Request for Rehearing do not amount to Patent Owner providing an explicit definition of “selectively function,” “during any particular transition,” or any other claim term as meaning “simultaneously”; nor do Patent Owner’s statements rise to the level of a clear and unmistakable disclaimer with respect to the meaning of the claim terms.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“2. whether Dalzell fails to meet the claims’ requirements Based on Patent Owner’s proposed claim construction of “bidirectional accounts,” Patent Owner asserts that Dalzell does not disclose “bidirectional accounts.” Req. 7‒10. As we are unpersuaded, however, that the Board misapprehended or overlooked the items identified by Patent Owner in construing “bidirectional accounts,” we are unpersuaded that our analysis of Dalzell and “bidirectional accounts” set forth on pages 28 to 29 of the Final Written Decision should be modified in any way. See Dec. 29 (“[W]e find that a more logical reading of paragraph 59 of Dalzell is that a buyer, from a particular account, can add a seller feature to that particular account, without the need to create a whole new account. Such a finding is supported by extensive analysis and testimony by Dr. Sadeh-Koniecpol, with explicit citations to Dalzell, which we find credible, reasonable, and persuasive. Ex. 1002 ¶¶ 147-164 (citing Ex. 1006 ¶¶ 9, 27, 49, 57, 61, 82, 85, 87, 132, 163, Figs. 1A, 1B).”)” slip op. at 9
Claim construction§ 103 obviousnessPatents in suitUS 8,396,808 - C.R. Bard, Inc. v. Medical Components, Inc.Institution deniedPTAB · Feb 4, 2016 · IPR2015-01654 · APJ Lynne E Pettigrew · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–22 obvious over any of the three asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“the Petition fails to provide adequate reasoning for combining the references in the manner asserted to arrive at the claimed subject matter. Prelim. Resp. 7–38. Having reviewed both parties’ arguments and evidence, we agree with Patent Owner that Petitioner has not articulated sufficient rationale with support in the record for modifying the Titanium Implanted Port of PORTS as suggested in the Petition. In particular, we are persuaded by the following arguments presented by Patent Owner. First, we agree with Patent Owner that the Petition does not provide adequate reasoning based on rational underpinnings for why it would have been obvious in view of Powers to modify the Titanium Implanted Port of PORTS—which Petitioner does not allege can handle power injection—to be rated for power injection. See id. at 8–11. Although claim 1 does not require the recited port assembly actually be rated for power injection, modifying the Titanium Implanted Port to handle power injection is an important first step in Petitioner’s obviousness analysis. See Pet. 29. Specifically, as noted above, Petitioner states that a person of ordinary skill in the art would have known the Titanium Implanted Port could be constructed to handle power injection by modifying it in view of Powers to handle higher pressures and flow rates associated with power injection. Id. Petitioner’s assertion, however, is conclusory, and relies only on Mr. Tallarida’s declaration testimony, which merely repeats the conclusory statements in the Petition without citation to the asserted prior art references or any other evidence. See Ex. 1009 ¶ 139. Accordingly, his testimony has little, if any, probative value. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Moreover, neither the Petition nor Mr. Tallarida’s testimony explains how the Titanium Implanted Port would have been modified so as to be rated for power injection, nor do they point to any disclosure in Powers that would have suggested how such a modification would have been made. See Pet. 29; Ex. 1009 ¶ 139.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“First, we agree with Patent Owner that the Petition does not provide adequate reasoning based on rational underpinnings for why it would have been obvious in view of Powers to modify the Titanium Implanted Port of PORTS—which Petitioner does not allege can handle power injection—to be rated for power injection. See id. at 8–11. Although claim 1 does not require the recited port assembly actually be rated for power injection, modifying the Titanium Implanted Port to handle power injection is an important first step in Petitioner’s obviousness analysis. See Pet. 29. Specifically, as noted above, Petitioner states that a person of ordinary skill in the art would have known the Titanium Implanted Port could be constructed to handle power injection by modifying it in view of Powers to handle higher pressures and flow rates associated with power injection. Id. Petitioner’s assertion, however, is conclusory, and relies only on Mr. Tallarida’s declaration testimony, which merely repeats the conclusory statements in the Petition without citation to the asserted prior art references or any other evidence. See Ex. 1009 ¶ 139. Accordingly, his testimony has little, if any, probative value. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Moreover, neither the Petition nor Mr. Tallarida’s testimony explains how the Titanium Implanted Port would have been modified so as to be rated for power injection, nor do they point to any disclosure in Powers that would have suggested how such a modification would have been made. See Pet. 29; Ex. 1009 ¶ 139.” slip op. at 11
- Obviousness (§103) › Analogous artNon analogous artDecided for patent owner
“For substantially the same reasons discussed above with respect to the asserted obviousness ground based on PORTS, Powers, PowerPort, and Hickman, Petitioner has not provided adequate reasoning based on rational underpinnings for combining the references to arrive at the claimed invention. With regard to Meyer, we agree with Patent Owner that Petitioner has not shown Meyer cures the deficiencies of PORTS and Powers. See Prelim. Resp. 35–38. Petitioner alleges the alphanumeric cutouts in Meyer would be visible under X-ray examination, yet neither Meyer nor the cited paragraphs from Mr. Tallarida’s declaration testimony sufficiently support such a statement. See Pet. 50–51 (citing Ex. 1006; Ex. 1009 ¶¶ 227–31). Moreover, even if the collar in Meyer can be considered a flange, it is not a flange of anything resembling a venous access port. Petitioner has not shown adequately that Meyer, which discloses collars for containers, is “from the same field of endeavor” or “reasonably pertinent to the particular problem” addressed by the inventors of the ’160 patent in developing the recited venous access port, as required to be prior art under 35 U.S.C. § 103. Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011) (quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)); see Ex. 1006, 3 (summary). Therefore, we are not persuaded by Petitioner’s argument that Meyer “emphasize[s]” the obviousness of including X-ray discernable indicia in the form of voids in the flange of the Titanium Implanted Port of PORTS. See Pet. 53.” slip op. at 17
- PTAB / AIA Trials › Real party in interest / privityNot reached
“E. Real Party-in-Interest Patent Owner alleges in its Preliminary Response that the Petition should have named Bard Access Systems, Inc. as a real party-in-interest in addition to C.R. Bard, Inc. Prelim. Resp. 54–59. In view of our determination that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims, we do not reach this issue.” slip op. at 18
§ 103 obviousnessPatents in suitUS 8,852,160 - PTAB · Sep 17, 2015 · IPR2015-00531 · APJ Patrick M Boucher · IPR · Order
The Board terminated the proceedings as to MediaTek Inc. and MediaTek USA, Inc., vacated the scheduling orders, and continued the proceedings as to Bandspeed, Inc.
RulingsOther- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingNot reached
“IPR2015-01581, and IPR2015-01582 (“the related proceedings”). In each of the related proceedings, a petition was filed by Qualcomm Incorporated on July 12, 2015, with a motion to join a respective one of these proceedings. Papers 1, 2 in each of the related proceedings. We note that the joinder motions in the related proceedings were filed before the instant motions to terminate were filed in these proceedings. Patent Owner opposes the joinder motions in the related proceedings. Paper 8 in each of the related proceedings. If the joinder motions are not granted, the related proceedings are barred under 35 U.S.C. § 315(b). See 35 U.S.C. § 315(c). Patent Owner has not yet filed a preliminary response in any of the related proceedings, the deadline for which is October 28, 2015, nor sought to expedite the related proceedings by filing a waiver under 37 C.F.R. § 42.107(b). It is thus 2 Citations are to IPR2015-00314. premature to decide the joinder motions in the related proceedings. See 35 U.S.C. § 315(c). Nevertheless, we discern no compelling interest to be served by delaying termination of these proceedings with respect to MediaTek Inc. and MediaTek USA, Inc., both of which have settled with Patent Owner. See 35 U.S.C. § 317 (“An inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner unless the Office has decided the merits of the proceeding before the request for termination is filed” (emphasis added)). These proceedings are at an early stage, and no motions are pending in any of these proceedings. Under these circumstances, we determine that it is appropriate to terminate these proceedings with respect to MediaTek Inc. and MediaTek USA, Inc. We exercise the discretion afforded under 35 U.S.C. § 317(a) to decline, at this time, to terminate these proceedings with respect to Patent Owner. Because no petitioner remains in these proceedings, we vacate the Scheduling Order in each proceeding (Paper 13 in IPR2015-00314, IPR2015-00316, and IPR2015-00531; and Paper 15 in IPR2015-00315). If necessary, we will revisit scheduling for these proceedings after decisions on the joinder motions are made in the related proceedings. If appropriate, we will also revisit the Motions to Terminate as to Patent Owner after ruling on the motions for joinder in the related proceedings.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted in part
“The Joint Motions to Seal are granted to the extent that they request that the agreement be treated as business confidential information and be kept separate from the patent files under 37 C.F.R. § 42.74(c) but otherwise denied. The requests should not have been filed as “Motions to Seal,” which has other meaning, under 37 C.F.R. § 42.14, with respect to the underlying document in the context of the proceeding, e.g., expungement or made public under certain circumstances.” slip op. at 3
NonePatents in suitUS 8,542,643 - Motionpoint Corporation v. Transperfect Global, Inc.All claims unpatentablePTAB · Jul 15, 2015 · CBM2014-00060 · APJ Bart A Gerstenblith · CBM · Final written decision
Claims 1–28 are unpatentable for lack of adequate written description under § 112, first paragraph.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“that “hyperlink” is a well-understood term that the ’022 patent uses in accordance with its ordinary meaning. As explained above, the Microsoft Computer User’s Dictionary makes clear that a hyperlink includes a connection to another element or document. Patent Owner points to no persuasive evidence that the ’022 patent describes a hyperlink as separate from this connection such that the connection can be changed with the hyperlink remaining the same. Indeed, the ’022 patent describes “replac[ing] all links in the translated web page 7 with links that point to the translation manager 4” as part of the translation process. Ex. 1001, 3:37–38. Thus, as described in the patent, changing the connection to point to the translation manager requires a new link. This is consistent with the ordinary meaning of a hyperlink as including a specific connection from one document to another element or document. Our preliminary construction of “hyperlink” included “a link or connection” but did not include a recitation of the element or document linked. To resolve the parties’ dispute, consistent with the ordinary meaning and the specification, we conclude, on the full record before us, that one of ordinary skill in the art at the time of the invention would have understood “hyperlink” to mean “a connection between an element in a hypertext document, such as a word, phrase, symbol, or image, and a different element in the document, another hypertext document, a file, or a script.”” slip op. at 10
- ExcludeMotion to exclude, deniedDenied
“First, the inter partes reexamination of the ’022 patent is relevant to our consideration of the claim construction issues presented here because claim construction was at issue in the reexamination. Second, we see no risk of undue prejudice that would outweigh the probative value of the documents and evidence submitted in the reexamination. Of note, is that this proceeding is not a jury trial and, thus, the risk of prejudice in this forum is less than what may otherwise exist before a jury. Third, we agree with Petitioner that Exhibit 1013 is not hearsay at least under Federal Rule of Evidence 801(d)(2)(B) because the testimony in Dr. Nakhimovsky’s Declaration was submitted by, and on behalf of, Patent Owner to the Patent Office, thus evidencing that Patent Owner manifested a belief that the statements contained therein were true. Accordingly, Patent Owner’s Motion to Exclude as applied to Exhibit 1013 is denied.” slip op. at 22
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable
“Patent Owner’s first argument is contrary to our constructions of the term “hyperlink” and the phrase “said hyperlink.” As reflected in our construction, “said hyperlink” in each of independent claims 1, 17, and 26, refers back to the original recitation of “one or more hyperlinks” in the original (untranslated) electronic communication. The portion of the specification relied upon by Patent Owner does not disclose providing translation of said further electronic communications when the original one or more hyperlink is activated. Rather, this disclosure indicates that the translation manager may replace all of the links (i.e., hyperlinks) in the translated web page with links that point to the translation manager. These replaced links are in the translated electronic communication (e.g., web page 7), and not in the original untranslated electronic communication (e.g., web page 2). Thus, this disclosure does not reasonably convey to one of ordinary skill in the art that the inventors had possession of a translation manager that provides translation of further electronic communications when the one or more hyperlinks in the original untranslated electronic communication is activated (i.e., one or more hyperlinks with unmodified destination addresses). See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).” slip op. at 25
- Disclosure Requirements (§112) › Definiteness (Nautilus)Not reached
“E. Indefiniteness of Claims 23 and 25–28 Under 35 U.S.C. § 112, Second Paragraph Our determination that each challenged claim is unpatentable for lack of an adequate written description renders it unnecessary to reach Petitioner’s contentions that claims 23 and 25–28 of the ’022 patent are indefinite.” slip op. at 31
Patent outcomesUS 6,857,022 unpatentableClaim construction§ 112 disclosurecites PhillipsPatents in suitUS 6,857,022 - 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 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.