- Asustek Computer, Inc. / Asus Computer International v. Avago Technologies General IP (Singapore) Pte. LtdRehearing grantedPTAB · Mar 8, 2017 · IPR2016-00647 · APJ Glenn J Perry · IPR · Rehearing
Granted petitioner’s request for reconsideration and added institution of the §102 Cioffi challenge to claims 8, 11, 12, 14, 15, 18, and 19.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“III. CONCLUSIONS For the foregoing reasons, we are persuaded that our Decision to Institute overlooked or misapprehended the matters discussed in this Decision, and that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail with respect to its challenge as to the patentability of claims 8, 11, 12, 14, 15, 18, and 19 as being anticipated by Cioffi. The Board has not made a final determination on the patentability of any challenged claims or the construction of any claim terms. Our final decision will be based on the record as fully developed during trial.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Upon review on rehearing, we are persuaded the Petition demonstrates sufficiently for purposes of institution that data and synchronization signals are multiplexed and encoded by MUX & ENCODER 43 in Cioffi’s Figure 3. Multiplexed sub-symbols are passed to modulator 45, which incorporates an inverse fast Fourier transform (IFFT). Based on this understanding of Cioffi, the detailed reading of claims 8, 11, 12, 14, 15, 18, and 19 on Cioffi at Petition pages 35–53, supported by the Lyon Declaration (Ex. 1003), presents a reasonable likelihood of Petitioner prevailing as to this challenge. We, therefore, modify our Decision on Institution to include this challenge.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Upon review on rehearing, we are persuaded the Petition demonstrates sufficiently for purposes of institution that data and synchronization signals are multiplexed and encoded by MUX & ENCODER 43 in Cioffi’s Figure 3. Multiplexed sub-symbols are passed to modulator 45, which incorporates an inverse fast Fourier transform (IFFT). Based on this understanding of Cioffi, the detailed reading of claims 8, 11, 12, 14, 15, 18, and 19 on Cioffi at Petition pages 35–53, supported by the Lyon Declaration (Ex. 1003), presents a reasonable likelihood of Petitioner prevailing as to this challenge. We, therefore, modify our Decision on Institution to include this challenge.” slip op. at 4
§ 102 anticipationPatents in suitUS 6,430,148 - Hilti, Inc. / Snap-On Incorporated v. Milwaukee Electric Tool CorporationNo claims unpatentablePTAB · Nov 14, 2016 · IPR2015-01166 · APJ Patrick R Scanlon · IPR · Final written decision
Claims 1–19 were not shown unpatentable under § 103 over Takano and Yanai because the proposed combination relied on unsupported assumptions and impermissible hindsight.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“After institution, Snap-On Incorporated (“Snap-On”) filed a Petition and a Motion for Joinder to this proceeding. IPR2016-00345, Papers 2, 3. We granted the Motion for Joinder, and IPR2016-00345 was joined with IPR2015-01166 and terminated. Paper 24, 6. Consequently, Hilti and Snap-On (collectively, “Petitioner”) are joined in this proceeding.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We construed three claim terms in our Decision to Institute: (1) “hand held power tool,” (2) “battery cells being capable of producing an average discharge current greater than or equal to approximately 20 amps,” and (3) “nominal voltage.” Inst. Dec. 6–12. Neither party has indicated that the interpretations for those phrases were improper, and we do not perceive any reason or evidence that now compels any deviation from our initial determinations. Accordingly, the following interpretations are not in dispute and apply to this Decision:” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“select a positive electrode surface area of 540 cm2 for Yanai’s cell 1-4 would be to rely on the disclosure of Adachi; that is, to assert that it would have been obvious to one of ordinary skill in the art to modify the combination of Takano and Yanai with the teaching of Adachi. Petitioner, however, has repeatedly argued that this is not what it proposes. Reply 3; Tr. 22:22–23:4. Furthermore, we agree with Patent Owner that the Petition does not provide an adequate reason to combine Adachi with Takano and Yanai.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableDecided for patent owner
“Furthermore, Petitioner’s obviousness analysis relies on (1) selecting an 18650-size or 26650-size cell; (2) estimating the positive electrode surface area to be 540 cm2; (3) selecting a foil thickness of 15 micrometers; (4) selecting an average discharge voltage of 3.6 volts; and (5) for 18650-size cells, connecting two in parallel. Petitioner fails to point out how the prior art indicates that using all of these particular values in combination would be desirable for a lithium-based battery pack when several other possible values could have been selected. Where “‘the prior art gave either no indication of which parameters were critical or no direction as to which of many possible choices is likely to be successful,’ courts should reject ‘hindsight claims of obviousness.’” In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1070–71 (Fed. Cir. 2012) (quoting In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009)). Accordingly, we agree with Patent Owner that Petitioner’s obviousness analysis relies on impermissible hindsight.” slip op. at 20
Patent outcomesUS 7,999,510 not shown unpatentableClaim construction§ 103 obviousnessPatents in suitUS 7,999,510 - TD Ameritrade Holding Corp. / TD Ameritrade, Inc. et al. v. Trading Technologies International, Inc.Rehearing deniedPTAB · Feb 2, 2015 · CBM2014-00133 · APJ Philip J Hoffmann · CBM · Rehearing
The Board denied both rehearing requests, leaving in place institution on claims 1–28 under § 101 and denial of institution under § 103.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). For the reasons that follow, Petitioner does not show that the Board abused its discretion.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Ameritrade Online Holdings Corp. (collectively, “Petitioner”) filed a Petition (Paper 1, “Pet.”) on May 19, 2014, which requested review under the transitional program for covered business method patents of U.S. Patent No. 7,676,411 B2 (Ex. 1001, “the ’411 patent”). Trading Technologies International, Inc. (“Patent Owner”) filed a Preliminary Response (Paper 18, “Prelim. Resp.”) on September 3, 2014. The Board instituted covered business method patent review of claims 1–28 of the ’411 patent under 35 U.S.C. § 101, and denied institution of any claims under 35 U.S.C. § 103. Paper 19 (“Decision”). Petitioner and Patent Owner each filed a Request for Rehearing asking that the Board reconsider its Decision – Petitioner requesting that we institute based on grounds 2 and 3 of the Petition because claims 1–28 are obvious based on Silverman, Gutterman, and Togher with or without Paal (Paper 21, “Petitioner’s Req. Reh’g”), and Patent Owner requesting that we deny institution because the ’411 patent does not qualify for covered business method patent review (Paper 22, “Patent Owner’s Req. Reh’g”).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“characterizing Togher’s disclosure, for the following reasons we find that Petitioner relied on Silverman and Gutterman to render obvious claim 1’s limitation “selecting a particular graphical area in the order entry region through a single action of the user input device to . . . set a price for the trade order and send the trade order . . . to the electronic exchange,” and relied on Togher to disclose the claim limitation “the trade order having a default quantity.” Thus, Petitioner’s argument that Togher discloses “a single action of the user input device [] both set[ting] a price for the trade order and send[ing] the trade order having a default quantity” is not timely raised, and will not be a basis for instituting covered business method patent review.” slip op. at 3
- BurdenDecided for patent owner
“information in a certain arrangement on the GUI, as well as setting order parameters and sending the order to the exchange with the GUI. Id. Thus, inasmuch as claim 1 recites only known hardware, Patent Owner does not persuade us that claim 1 recites a novel GUI tool.” slip op. at 7
§ 103 obviousnessDiscretionary denialPatents in suitUS 7,676,411 - PTAB · Sep 10, 2014 · IPR2014-00336 · APJ Scott E Kamholz · IPR · Order
The Board granted the parties’ joint motion and terminated IPR2014-00336 as to all parties; it did not decide patentability.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The parties filed a joint motion to terminate the instant proceeding (Paper 13 (“Mot.”)), and a true copy of their written settlement agreement (Ex. 1005) made in connection with the termination, in accordance with 35 U.S.C. § 317 and 37 C.F.R. § 42.74(b). The parties also jointly requested that their settlement agreement be treated as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Mot. 2-3. For the reasons provided below, the joint motion to terminate is granted. The joint request that the settlement agreement be treated as business confidential information is also granted.” slip op. at 2
NonePatents in suitUS 8,622,984 - PTAB · Sep 2, 2014 · IPR2014-00472 · APJ Glenn J Perry · IPR · Order
The Board granted the parties’ joint motion to terminate the preliminary IPR proceeding and terminated it without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“these circumstances, the Board determines that it is appropriate to enter judgment2 and terminate without rendering a final written decision under 37 C.F.R. § 42.72. ORDER It is, therefore, ORDERED that the joint motion to terminate this proceeding is GRANTED and the proceedings are hereby terminated; and FURTHER ORDERED that the settlement agreement shall be treated as business confidential information.” slip op. at 3
NonePatents in suitUS 7,096,358 - PTAB · Aug 25, 2014 · IPR2014-00582 · APJ Glenn J Perry · IPR · Order
The Board granted the parties’ joint motions and terminated the three proceedings before institution, without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Each of the captioned inter partes review cases is in its preliminary stage. The Petition in each of the captioned cases has not been granted. Under these circumstances, the Board determines that it is appropriate to enter judgment4 and terminate each of the trials without rendering a final written decision under 37 C.F.R. § 42.72.” slip op. at 3
NonePatents in suitUS 8,149,124 - PTAB · Aug 25, 2014 · IPR2014-00588 · APJ Glenn J Perry · IPR · Order
The Board granted the parties’ joint motions and terminated the proceedings before institution, without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Each of the captioned inter partes review cases is in its preliminary stage. The Petition in each of the captioned cases has not been granted. Under these circumstances, the Board determines that it is appropriate to enter judgment4 and terminate each of the trials without rendering a final written decision under 37 C.F.R. § 42.72.” slip op. at 3
NonePatents in suitUS 8,466,795 - ZTE (USA), Inc. v. Pragmatus Mobile LLCAdverse judgmentPTAB · Aug 11, 2014 · IPR2014-00670 · APJ Glenn J Perry · IPR · Adverse judgment
The Board granted the parties’ joint motion and terminated the proceeding by settlement before deciding the petition.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“The parties have requested that these trial proceedings be terminated pursuant to a settlement. On August 5, 2014, the Board authorized (Paper 8) the parties to file a Joint Motion to Terminate this proceeding along with a true copy of any and all settlement agreements between them related to the patent at issue. On August 8, 2014, the parties filed a Joint Motion to Terminate (Paper 9) in accordance with 35 U.S.C. § 327(a) and 37 C.F.R. § 42.72. The parties also filed a Joint Motion to Treat the Parties’ Settlement Agreement as Business Confidential pursuant to 35 U.S.C. § 317(b) and Rule 42.74 (Paper 10). The settlement agreement (Paper 11), marked “Confidential,” purports to settle matters between the parties with respect to the patent at issue in this inter partes review. This inter partes review is in its preliminary stage. A decision on the Corrected Petition (Paper 4) has not yet been rendered. The parties have not identified any other USPTO proceedings related to the patent at issue. Under these circumstances, the Board determines that it is appropriate to enter judgment1 and terminate the trial without rendering a final written decision under 37 C.F.R. § 42.72.” slip op. at 2
NonePatents in suitUS 8,466,795
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.