- Restem, LLC. v. Jadi Cell, LLCInstitutedPTAB · Apr 20, 2022 · IPR2021-01535 · APJ Devon Zastrow Newman · IPR · Institution
The Board instituted IPR on claims 1–15 over all asserted grounds, finding a reasonable likelihood that Petitioner would show at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2019). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we conclude that the information presented shows a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we authorize an inter partes review to be instituted as to the Challenged Claims of the ’176 patent on the grounds raised in the Petition. Our factual findings and conclusions at this stage of the proceeding are based on the evidentiary record developed thus far (prior to Patent Owner’s Response). This is not a final decision as to patentability of claims for which inter partes review is instituted. Any final decision will be based on the record, as fully developed during trial.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 15 (citing Ex. 1007 ¶¶ 19–24). Patent Owner does not comment on the characterization offered by Petitioner or offer one of its own. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s characterization as it is consistent with the level of skill in the art at the time of the invention as reflected by the ’176 patent and the cited prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther
“Prelim. Resp. 16. Patent Owner cites Ex. 1001 6:32–34, noting that the patent specification “expressly defines ‘isolated cell’ as ‘[referring] to a cell that has been isolated from the subepithelial layer of a mammalian umbilical cord.’” Id. As neither party references any prosecution history related to interpretation of this claim term, we look only to the claim itself and the specification as intrinsic evidence. DePuy Spine, 469 F.3d at 1014. Claim 1 recites “an isolated cell prepared by a process comprising . . . ” Ex. 1001 at 19:6. As Patent Owner notes, the patent specification states “the term ‘isolated cell’ refers to a cell that has been isolated from the subepithelial layer of a mammalian umbilical cord.” Id. at 6:32–34. The remainder of the citations Petitioner cites relate to additional steps for isolating the cell, or characteristics of the cell, such as the markers expressed or not expressed, but do not further elucidate the meaning of “an isolated cell” itself. Dr. Olsen’s testimony reiterates the content of these citations but does not add any additional information or explanation. Ex. 1007 ¶¶ 67–68. Given the definition provided in the specification, we interpret “an isolated cell,” consistent with Patent Owner’s definition, to mean “one or more cells isolated from the subepithelial layer of a mammalian umbilical cord.”” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInstituted
“the Wharton’s Jelly, epithelium, etc.” and that, without evidence that the recited markers are expressed/not expressed as recited, there is no inherent disclosure. Prelim. Resp. 22, 25, 28–29 (citing Ex. 2022 ¶ 162). Patent Owner is correct that an ultimate finding of anticipation requires such confirmation, but, for purposes of institution, our standard is a reasonable likelihood. 35 U.S.C. § 314(a). Due to the breadth of claim 1, Majore’s method must produce only one cell having the recited limitations to anticipate. Petitioner’s expert testifies that production of such cells would be inherent by Majore. See Ex. 1007 ¶ 97 (“Majore’s protocol would produce a population of adherent cells that necessarily and inevitably comprise the cells of the subepithelial layer.”). And, although we recognize that the burden of persuasion does not rest on Patent Owner, Dr. Burger’s testimony, which focuses heavily on the differences in methodology between Majore and the ’176 patent disclosure and Petitioner’s alleged failure of proof, is not persuasive at this stage to overcome the evidence presented by Petitioner. See Ex. 2002 ¶¶ 137–163. Indeed, both Majore and the ’176 patent disclose umbilical cord tissue cut into sections and placed into environments fostering cell culture and replication. Ex. 1011 at 18, Ex. 1001 at 13:57–14:5. Both methods encourage and result in adherent cells growing on a plastic growth surface awash in culture media. Id. On this record, Petitioner has provided sufficient factual basis to establish a reasonable likelihood that Majore’s explant method of dissecting umbilical cord, culturing cells, and growing adherent cells would have produced (or did produce) at least one cell with the recited limitations. In this regard, we credit the testimony of Dr. Olsen that the isolated cells disclosed in Majore are MSCs cultured from umbilical cord tissues including the subepithelial layer, which have migrated to the periphery of the cut tissue and adhered to the tissue culture vessel. Ex. 1007 ¶¶ 95–97. That Majore discloses genetic markers with similar expression/non-expression to the markers recited in claim 1 is further evidence that at least some cells were cultured from the subepithelial layer. Id. ¶ 99. Moreover, even if we gave weight to the process limitations construed as requested by Patent Owner (Prelim. Resp. 13–20), the limitations are sufficiently broad as to read on Majore with the exception of the express/non-expressed markers. With regard to markers not examined by Majore, we credit Dr. Olson’s statement that “the cells obtained by Majore’s protocol necessarily and inevitably comprise the same cells produced by the process steps of claim 1[A] and 1[B]” and that the skilled artisan would have understood that the marker expression pattern would be identical for those cells. Id. ¶ 101.16 The evidence on this issue is subject to final determination on a more complete record developed through trial.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,803,176 - PTAB · Mar 17, 2022 · IPR2022-00093 · APJ Brent M Dougal · IPR · Institution
The Board instituted review of claims 1–14 on all grounds in the Petition, granted LG’s motion for joinder with IPR2021-00923, and terminated and joined this proceeding.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we institute an inter partes review.1 Further, for the reasons set forth below, we grant the Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“In Apple v. Uniloc, the petitioner filed a first petition for inter partes review that was denied and then, after another party filed an additional petition for inter partes review of the patent, the petitioner filed its second petition with a motion for joinder. Apple v. Uniloc at 6. However, not only was that the second petition for inter partes review filed by the petitioner, but the petitioner was also barred under 35 U.S.C. § 315(b) from filing any further petitions. Id. at 6–7. Thus, under these facts, among others, the panel exercised its discretion to decline institution of the petition after applying the General Plastic factors. Id. at 13. Here, however, none of the unique facts in Apple v. Uniloc are present. The Petition is substantially identical to the petition in IPR2021- 00923 (“the Apple IPR”), which it seeks to join, and it presents us with a standard “me too” petition with a motion for joinder. Patent Owner presents no unique facts here that separate the Petition from most other “me too” petitions with a motion for joinder, with the possible exception that Patent Owner sued both Petitioner and the petitioner in the Apple IPR for patent infringement, which is those parties only connection to one another identified by Patent Owner. See Prelim. Resp. 22–23.8” slip op. at 5
- Other 314aDecided for petitioner
“Patent Owner argues that “[i]n view of the finite resources of the Board and . . . co-pending [ex parte] reexamination [No. 90/014,902 of the ’924 patent], the Director should deny the Petition” under 35 U.S.C. § 315(d). Prelim. Resp. 27.” slip op. at 6
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Petitioner timely filed the Motion no later than one month after institution of the Apple IPR. See 37 C.F.R. § 42.122 (b). As noted, the Petition in this case asserts the same unpatentability grounds on which we instituted review in the Apple IPR. See Mot. 2. Petitioner also relies on the same prior art analysis and expert testimony submitted by the Apple petitioner. See id. Indeed, the Petition is nearly identical to the petition filed by the Apple petitioner. See id. at 6. Thus, this inter partes review does not present any ground or matter not already at issue in the Apple IPR. Id. If joinder is granted, Petitioner agrees to assume an “understudy role” and “will only assume the lead role in the proceedings if Apple is no longer a party to the proceedings or unable to advance arguments for one or more claims, or grounds, for example, because of § 315(e)(1).” Id. at 2. Petitioner further represents that it “will not advance any arguments separate from those advanced by Apple in the consolidated filings.” Id. at 3. Because Petitioner expects to participate only in a limited capacity, Petitioner submits that joinder will not impact the trial schedule for the Apple IPR. Id.” slip op. at 10
Discretionary denialPatents in suitUS 8,194,924 - PTAB · Feb 8, 2022 · PGR2021-00103 · APJ Patrick R Scanlon · PGR · Institution
The Board instituted PGR on claims 1–28 and all petition grounds, finding the Luharuka, API 674, and Karassik challenge more likely than not to prevail on claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 324(a), a post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” After considering the Petition and Patent Owner’s Preliminary Response, as well as all supporting evidence, we determine that Petitioner has satisfied the burden under 35 U.S.C. § 324(a) to show that it is more likely than not that at least one of the challenged claims is unpatentable.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“These arguments are not persuasive, however, because Patent Owner does not explain adequately how the disclosures of Oehring and Shampine are cumulative of the disclosure of Mu. In this case, the mere fact that 8 We note that Exhibit 2007 does not have ¶ 95 cited by Patent Owner. not mean necessarily that the references are cumulative of Mu. For instance, Petitioner relies on Mu for allegedly disclosing several claim limitations including “receiving a demand hydraulic horse power (HHP) signal,” “the first output power being in the range of approximately 70% to 100% of a maximum continuous power (MCP) level,” and “the second output power . . . being in the range of approximately 70% of the MCP level to approximately a maximum intermittent power (MIP) level.” Pet. 19–41. Patent Owner does not direct us to any disclosure in Oehring or Shampine that are cumulative of these alleged teachings in Mu. Accordingly, we do not agree with Patent Owner that either of Oehring or Shampine is cumulative of Mu. As such, we determine that Petitioner’s reliance on Mu does not involve the same or substantially the same art or arguments previously presented to the Office, and the first part of the Advanced Bionics framework is not satisfied with respect to Mu. And although Crowe is cited in the ’764 patent (see Ex. 1001, code (56)), Petitioner’s reliance on Crowe is minimal. The ground based on Mu and Crowe, thus, does not implicate § 325(d).” slip op. at 8
- Skill levelOther
“This dispute presents a factual issue best decided on a complete record. Accordingly, for purposes of the Decision, we determine that no express finding is necessary, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that our obviousness analysis in this Decision would not differ if we adopted either Petitioner’s or Patent Owner’s definition.” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Lastly, on the current record, we disagree with Patent Owner’s argument that Mr. Marscher is not qualified to serve as an expert in this proceeding. See Prelim. Resp. 8. Mr. Marscher’s declaration and curriculum vitae show that he has extensive education and experience in relevant fields. Ex. 1003 ¶¶ 8–17; Ex. 1004.” slip op. at 11
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,815,764 - PTAB · Feb 8, 2022 · PGR2021-00102 · APJ Patrick R Scanlon · PGR · Institution
The Board instituted PGR on claims 1–28 on all asserted grounds, finding a sufficient likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 324(a), a post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” After considering the Petition and Patent Owner’s Preliminary Response, as well as all supporting evidence, we determine that Petitioner has satisfied the burden under 35 U.S.C. § 324(a) to show that it is more likely than not that at least one of the challenged claims is unpatentable.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“These arguments are not persuasive, however, because Patent Owner does not explain adequately how the disclosures of Oehring and Shampine are cumulative of the disclosure of Mu. In this case, the mere fact that 8 We note that Exhibit 2007 does not have ¶ 95 cited by Patent Owner. not mean necessarily that the references are cumulative of Mu. For instance, Petitioner relies on Mu for allegedly disclosing several claim limitations including “receiving a demand hydraulic horse power (HHP) signal,” “the first output power being in a selected range of a maximum continuous power (MCP) level,” and “the second output power . . . being in a selected range of the MCP level to a maximum intermittent power (MIP) level.” Pet. 19–41. Patent Owner does not direct us to any disclosure in Oehring or Shampine that are cumulative of these alleged teachings in Mu. Accordingly, we do not agree with Patent Owner that either of Oehring or Shampine is cumulative of Mu. As such, we determine that Petitioner’s reliance on Mu does not involve the same or substantially the same art or arguments previously presented to the Office, and the first part of the Advanced Bionics framework is not satisfied with respect to Mu. And although Crowe is cited in the ’459 patent (see Ex. 1001, code (56)), Petitioner’s reliance on Crowe is minimal. The ground based on Mu and Crowe, thus, does not implicate § 325(d).” slip op. at 8
- Skill levelOther
“This dispute presents a factual issue best decided on a complete record. Accordingly, for purposes of the Decision, we determine that no express finding is necessary, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that our obviousness analysis in this Decision would not differ if we adopted either Petitioner’s or Patent Owner’s definition.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionTerm construed board ownOther
“We agree with Patent Owner that Petitioner has not explained sufficiently what a “maximum power output value” means in the context of the ’459 patent. Nor has Petitioner explained sufficiently why “maximum intermittent power” should be tied to the “maximum power output value.” In contrast, Patent Owner’s proposed construction is supported by the Specification, although we do not agree with the last clause of the construction because the references to “typical” values do not assist in understanding the claim language. Accordingly, for purposes of this Decision, we preliminarily construe “maximum intermittent power” to mean “an elevated operating output level that the pump unit may operate intermittently throughout its operating life without excessive damage to the pump unit.”” slip op. at 14
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · Graham · NautilusPatents in suitUS 10,907,459 - PTAB · Dec 6, 2021 · IPR2021-00923 · APJ Brent M Dougal · IPR · Institution
The Board instituted inter partes review of claims 1–14 on all petitioned grounds, finding a reasonable likelihood that Apple would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been unpatentable. See 35 U.S.C. § 314(a). A claim is unpatentable as obvious under 35 U.S.C. § 103 if “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). We resolve the question of obviousness based on underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the prior art and the claims; (3) the level of skill in the art; and (4) when in evidence, objective indicia of nonobviousness. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“(a) Success in Modifying Petitioner argues that “a [person of ordinary skill in the art] would have anticipated success in modifying Mann’s wristwatch based on similarities in functionality and structure of the computer, cameras, and control functionality taught by Mann and Numazaki.” Pet. 20–21. In support of this argument, Petitioner cites to the Bederson Declaration testimony modification would have been well within the skill set of a [person of ordinary skill in the art].” Id. at 21 (citing Ex. 1003 ¶ 46). Petitioner also cites to legal precedent for the proposition that it is “obvious to use known techniques to improve similar devices in the same way.” Id. (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)). Petitioner further explains that Mann includes “the requisite structure to capture gestures (i.e., PDA and wristwatch devices with cameras facing that user), and it expressly describes receiving finger-based input to control the operation of the wristwatch,” while “Numazaki similarly describes PDA and wristwatch devices with cameras facing the user such that a user can perform gestures over the devices to exert control over the operation of the device. Id. (citing Ex. 1004, 11–13, 15; Ex. 1005, 52:5–32). Petitioner concludes that “[a] [person of ordinary skill in the art] would have recognized that [the] modif[ication] . . . would have required a straightforward replacement of Mann’s native user-facing imaging with Numazaki’s gesture-recognition hardware” and “a straightforward software update (i.e., adding Numazaki’s gesture detection routines).” Id. at 21–22 (citing Ex. 1003 ¶ 46).” slip op. at 17
- Expert testimonyPetitioner expert discountedOther
“Patent Owner correctly notes that “[t]he Petition [and the declarant] fail[] to provide any explanation or reasoning as to why Numazaki’s no-touch gestures would draw ‘much less’ attention than physically interacting with a watch interface or using a stylus on a PDA.” Prelim. Resp. 9–10. We further note that though the Bederson Declaration testimony makes statements similar to those in the Petition, no support is provided for what appear to be conclusory statements. See Ex. 1003 ¶ 47. Further, the declarant does not identify any experience or expertise in things of a “covert nature.” See id. at App. A (declarant’s resume). Thus, we give the Bederson Declaration testimony little weight on this point. Patent Owner further argues that physical contact with a wristwatch or PDA was the normal way in which one would have expected someone to interact with such a device at the time of the invention. Prelim. Resp. 9. Patent Owner further argues that “no-touch gesture recognition . . . [is] more likely to intrigue the subject and draw their attention.” Id. at 9–10. On this record, Patent Owner’s arguments appear to have merits. Nevertheless, we do not need to determine whether this additional reason to combine by Petitioner is sufficient in light of our determination regarding the first reason to combine.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We apply these principles to the Petition’s challenges. 2. Level of Ordinary Skill in the Art Petitioner asserts that “[a] person having ordinary skill in the art (‘PHOSITA’) at the time of the ’924 Patent would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 5 (citing Ex. 1003 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. Prelim. Resp. 5. statement is consistent with the problems and solutions in the ’924 patent and prior art of record. We adopt this definition for the purposes of this Decision.” slip op. at 6
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 8,194,924 - PTAB · Apr 12, 2018 · IPR2017-01576 · APJ James J Mayberry · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, holding that it considered the preliminary responses and could institute on all claims in a ground after finding the threshold likelihood for at least one claim.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When considering a request for rehearing a decision instituting trial, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). We further note that 37 C.F.R. § 42.71(d) states: 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, an opposition, or a reply.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Director may not authorize an inter partes review unless a petition demonstrates “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (emphasis added); see ’1574 Req. Reh’g 4. In our ’1574 Decision, we analyzed a representative claim for each of the seven grounds asserted in the ’1574 Petition. See ’1574 Dec. on Inst., 15–37. Similarly, in our ’1576 Decision, we analyzed a representative claim for each of the four grounds asserted in the ’1576 Petition. See ’1576 Dec. on Inst., 15–36. In its Requests, Schlumberger does not dispute that Halliburton has established a reasonable likelihood of prevailing at trial with respect to at least one of the claims challenged for each of the instituted grounds in each proceeding. Schlumberger fails to explain persuasively how the language of 35 U.S.C. §§ 313 and 314 guarantees more than an analysis of one claim in our institution decision, given the plain reading of § 313 and § 314(a) or how we abused our discretion based on our interpretation of 35 U.S.C. § 313 and § 314(a).” slip op. at 4
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“We are also unpersuaded by Schlumberger’s arguments that we somehow “violate[d] . . . due-process guarantees by instituting this proceeding without performing a meaningful analysis of Patent Owner’s substantive arguments” and “failed to provide Patent Owner with notice of the facts and arguments that support the[] decision to institute trial.” ’1574 Req. Reh’g 7. As noted above, Schlumberger does not dispute that Halliburton has established a reasonable likelihood of prevailing at trial with respect to the representative claims for each ground on which trial was instituted. Also, Schlumberger does not assert that our Decisions failed to address any of its arguments directed to those representative claims. Schlumberger has an opportunity to be heard with respect to other instituted claims (and, indeed, the claims expressly addressed in the Decisions) in its Patent Owner Responses in these two proceedings. Our not addressing arguments directed to claim 26 in IPR2017-01574 or claim 41 in IPR2017- 01576 does not deprive Schlumberger from making the same (or different) arguments with respect to these two claims in the respective Patent Owner Responses. Further, as to “notice of the facts and arguments” with respect to claim 26 in IPR2017-01574 or claim 41 in IPR2017-01576, the Petitions and supporting evidence in these proceedings provide Schlumberger with the requisite notice as to these claims.” slip op. at 6
NonePatents in suitUS 9,322,260 - PTAB · Apr 12, 2018 · IPR2017-01574 · APJ James J Mayberry · IPR · Rehearing
The Board denied the Patent Owner’s rehearing requests, finding no abuse of discretion in instituting trial on all challenged claims in grounds meeting the threshold for at least one claim.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When considering a request for rehearing a decision instituting trial, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). We further note that 37 C.F.R. § 42.71(d) states: 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, an opposition, or a reply.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Director may not authorize an inter partes review unless a petition demonstrates “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (emphasis added); see ’1574 Req. Reh’g 4. In our ’1574 Decision, we analyzed a representative claim for each of the seven grounds asserted in the ’1574 Petition. See ’1574 Dec. on Inst., 15–37. Similarly, in our ’1576 Decision, we analyzed a representative claim for each of the four grounds asserted in the ’1576 Petition. See ’1576 Dec. on Inst., 15–36. In its Requests, Schlumberger does not dispute that Halliburton has established a reasonable likelihood of prevailing at trial with respect to at least one of the claims challenged for each of the instituted grounds in each proceeding. Schlumberger fails to explain persuasively how the language of 35 U.S.C. §§ 313 and 314 guarantees more than an analysis of one claim in our institution decision, given the plain reading of § 313 and § 314(a) or how we abused our discretion based on our interpretation of 35 U.S.C. § 313 and § 314(a).” slip op. at 4
NonePatents in suitUS 9,322,260 - PTAB · Feb 9, 2018 · IPR2017-01575 · APJ Jeremy M Plenzler · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, holding that it could institute on all challenged claims after finding a reasonable likelihood of prevailing on at least one claim in each petition.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“III. STANDARD OF REVIEW When considering a request for rehearing, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). We further note that 37 C.F.R. § 42.71(d) states: 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, an opposition, or a reply.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“have the right to file a preliminary response to the petition . . . that sets forth reasons why no inter partes review should be instituted based upon the failure of the petition to meet any requirement of this chapter” (35 U.S.C. § 313) and that trial cannot be instituted “unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition” (35 U.S.C. § 314(a)).” slip op. at 4
NonePatents in suitUS 8,905,133 - PTAB · Feb 9, 2018 · IPR2017-01569 · APJ Jeremy M Plenzler · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, finding no legal error or abuse of discretion in instituting on all challenged claims after the threshold showing was met.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“when a Preliminary Response has been filed, 35 U.S.C. §§ 313 and 314 require that the merits of each argument must be addressed in an institution decision. See Req. Reh’g 5 (“The Board overlooked that it was required to substantively consider the arguments put forth in Patent Owner’s Preliminary Response.”). Patent Owner, however, fails to explain persuasively, and we do not see, support for that position in the statutes. We considered Patent Owner’s Preliminary Responses, which did not address claim 26 of the ’543 patent or claims 1 and 28 of the ’133 patent, for example, which were addressed in our Decisions. In its Requests, Patent Owner does not dispute that Petitioner has established a reasonable likelihood of prevailing at trial with respect to at least one of the claims challenged in each of the Petitions (e.g., claim 26 of the ’543 patent or claims 1 and 28 of the ’133 patent). Contrary to Patent Owner’s assertions, our approach does not “lead[] to the nonsensical result of rendering preliminary responses meaningless.” Req. Reh’g 4. For example, had Patent Owner’s Preliminary Responses addressed specifically claim 26 of the ’543 patent, claim 1 of the ’133 patent, or claim 28 of the ’133 patent, our Decisions, which specifically address those claims, would have considered those arguments. It was Patent Owner’s decision not to address those claims in its Preliminary Responses.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We considered Patent Owner’s Preliminary Responses, which did not address claim 26 of the ’543 patent or claims 1 and 28 of the ’133 patent, for example, which were addressed in our Decisions. In its Requests, Patent Owner does not dispute that Petitioner has established a reasonable likelihood of prevailing at trial with respect to at least one of the claims challenged in each of the Petitions (e.g., claim 26 of the ’543 patent or claims 1 and 28 of the ’133 patent). Contrary to Patent Owner’s assertions, our approach does not “lead[] to the nonsensical result of rendering preliminary responses meaningless.” Req. Reh’g 4. For example, had Patent Owner’s Preliminary Responses addressed specifically claim 26 of the ’543 patent, claim 1 of the ’133 patent, or claim 28 of the ’133 patent, our Decisions, which specifically address those claims, would have considered those arguments. It was Patent Owner’s decision not to address those claims in its Preliminary Responses.” slip op. at 5
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“We are also unpersuaded by Patent Owner’s argument that we somehow “violate[d] . . . due-process guarantees by instituting this proceeding without performing a meaningful analysis of Patent Owner’s substantive arguments” and “failed to provide Patent Owner with notice of the facts and arguments that support the[] decision to institute IPR.” Req. Reh’g 10. As noted above, there is no dispute that Petitioner has established a reasonable likelihood of prevailing at trial on the challenges to claim 26 of the ’543 patent or claims 1 and 28 of the ’133 patent, or that our Decisions failed to address any argument directed to those claims. That is the basis for our Decisions (i.e., Petitioner has established a reasonable likelihood of success at trial on at least its challenges to claim 26 of the ’543 patent and claims 1 and claim 28 of the ’133 patent).” slip op. at 5
NonePatents in suitUS 8,220,543 - 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
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.