- Micron Technology, Inc. v. Innovative Memory Systems, Inc.Some claims unpatentablePTAB · Apr 1, 2020 · IPR2016-00330 · APJ Kevin W Cherry · IPR · Remand
On remand, claims 21, 22, 27, 32, 33, and 38 remain unpatentable; claims 1, 2, 5, 6, 11, 12, 15, 23, 43, 44, 47, and 48 were not shown unpatentable because Tanaka lacks the required …
RulingsRemand decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Thus, the zones contain blocks that are already assigned for address translation. As discussed above, the properly construed remaining language in the claim then requires a controller that can adjust boundaries between zones of assigned blocks “such that blocks from one logical zone are shifted to another logical zone.” Id. Given this analysis and the Federal Circuit’s construction, we agree with Patent Owner that “adjusting blocks that are not yet assigned to logical zones to replace defective blocks that are already assigned to logical zones is not enough to satisfy the claim limitations.” PO Br. 2. Indeed, Federal Circuit noted that our original analysis found that “Tanaka discloses taking” slip op. at 13
- ExcludeMotion to exclude, deniedDenied
“A motion to exclude must explain why the evidence is not admissible (e.g., relevance or hearsay), but may not be used to challenge the sufficiency of the evidence to prove a particular fact. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,765, 48,767 (Aug. 14, 2012). While a motion to exclude may raise issues related to admissibility of evidence, it is not an opportunity to file a sur-reply, and also is not a mechanism to argue that a reply contains new arguments or relies on evidence necessary to make out a prima facie case. Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM2013–00004, Paper 53, at 62 (PTAB Mar. 13, 2014) (Final Written Decision). Patent Owner’s Motion to Exclude contains such improper arguments, and is in the nature of a sur-reply. Moreover, for the reasons discussed above (see supra Section II.B.2), we find Petitioner’s arguments involving “spare” blocks unpersuasive. For these reasons, Patent Owner’s Motion to Exclude Paragraph 24 of Dr. Subramanian’s Reply Declaration as presenting new arguments is denied.” slip op. at 21
Patent outcomesUS 6,901,498 mixed§ 103 obviousnessPatents in suitUS 6,901,498 - Nokia Of America Corporation v. Blackberry Ltd.Rehearing deniedPTAB · Oct 19, 2018 · IPR2018-00583 · APJ Aaron W Moore · IPR · Rehearing
The Board denied Nokia’s rehearing request, leaving institution denied for claims 5–17 because Cherian did not disclose the claimed antenna configuration information for the second or third component carrier.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Because Petitioner has not shown that we abused our discretion in denying institution, the Request for Rehearing is denied. 1 37 C.F.R. § 42.108(c) provides that “a genuine issue of material fact created by . . . testimonial evidence will be viewed in the light most favorable to the petitioner . . . for purposes of deciding whether to institute an inter partes review.” This does not require that we institute whenever there is conflicting testimony, or that every fact issue be resolved in the petitioner’s favor. We only need view the issue in the light most favorable to the petitioner. We did so here.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“. . . to ‘the number of Nxcarriers,’ constituting the number of data traffic channels” and that “[e]ach different channel . . . requires . . . a separate antenna port.” Ex. 1008 ¶ 85. This means that the NxParamsCount field would reflect the number of antennas/ports used for all data channels, not “antenna configuration for the second component carrier,” as recited in claims 1 and 14, or “antenna configuration for the third component carrier,” as recited in claim 14. For example, if there were four data channels, the NxParamsCount field would be set to four, even though, according to Dr. Min, the “second component carrier” and “third component carrier” would each have only one antenna. There is no genuine issue of fact warranting institution because we find Petitioner’s evidence insufficient even if we accept it as true.1 IV. CONCLUSION We denied institution because we found Petitioner failed to show how Cherian’s NxParamsCount value discloses “antenna configuration information”––including a number of ports/antennas––for “the second component carrier” or the “third component carrier.” Further review of the Petition and the Min Declaration, in light of Petitioner’s Rehearing Request, does not lead us to a different conclusion.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“ports” from the broadest reasonable interpretation of “antenna configuration,” “misapprehended or overlooked Nokia’s arguments that an ‘antenna configuration’—i.e., ‘information regarding how the antenna is configured’—encompasses a number of antenna ports,” and “[i]n particular, . . . misapprehended or overlooked Nokia’s presentation of the ’772 Patent’s specification, which states that a number of antenna ports constitutes an ‘antenna configuration.’” Req. Reh’g 1–2, 6. We did not, however, exclude the number of ports from the broadest reasonable interpretation of “antenna configuration.” Instead, we found that, “[b]y Petitioner’s own admission, what is included in the NxParamsCount field is ‘the number of Nxcarriers,’ not antenna configuration information.” Decision 10. In other words, the skilled artisan would have understood––again, as Nokia acknowledges––that the NxParamsCount field specifies the number of carriers, not information about the antenna configuration information, including a number of antennas or ports. We further found “[t]he fact that the number of channels might be used to glean information about the number of antennas does not mean that the message includes ‘information regarding how the antenna is configured,’” even if the number of antennas happens to be the same as the number of channels, as Nokia alleges. Id. Because the field identifies the number of carriers, not a number of antennas or ports, we concluded that Cherian does not disclose each and every element arranged as recited in the claim, as required for anticipation. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“ports” from the broadest reasonable interpretation of “antenna configuration,” “misapprehended or overlooked Nokia’s arguments that an ‘antenna configuration’—i.e., ‘information regarding how the antenna is configured’—encompasses a number of antenna ports,” and “[i]n particular, . . . misapprehended or overlooked Nokia’s presentation of the ’772 Patent’s specification, which states that a number of antenna ports constitutes an ‘antenna configuration.’” Req. Reh’g 1–2, 6. We did not, however, exclude the number of ports from the broadest reasonable interpretation of “antenna configuration.” Instead, we found that, “[b]y Petitioner’s own admission, what is included in the NxParamsCount field is ‘the number of Nxcarriers,’ not antenna configuration information.” Decision 10. In other words, the skilled artisan would have understood––again, as Nokia acknowledges––that the NxParamsCount field specifies the number of carriers, not information about the antenna configuration information, including a number of antennas or ports. We further found “[t]he fact that the number of channels might be used to glean information about the number of antennas does not mean that the message includes ‘information regarding how the antenna is configured,’” even if the number of antennas happens to be the same as the number of channels, as Nokia alleges. Id. Because the field identifies the number of carriers, not a number of antennas or ports, we concluded that” slip op. at 3
Claim construction§ 102 anticipationPatents in suitUS 9,253,772 - PTAB · Jul 26, 2018 · IPR2017-01903 · APJ Kamran Jivani · IPR · Rehearing
The Board denied Power Integrations’ rehearing request, leaving institution denied because it did not show Mammano and the SMP3 Datasheet were publicly accessible printed publications.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply. (Emphasis added.) See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). 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).” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“As we explained in the Institution Decision, “‘[p]ublic accessibility’ is the touchstone in determining whether a reference is a ‘printed publication.’” Inst. Dec. 9 (citing In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)); see, e.g., L-3 Commc’n. Holdings, Inc. v. Power Survey, LLC, Case IPR2014- 00832, slip op. at 11–12 (PTAB Nov. 14, 2014) (Paper 9) (applied reference not shown to be publicly accessible); C&D Zodiac, Inc. v. B/E Aerospace, Inc., Case IPR2014-00727, slip op. at 20–22 (PTAB Oct. 29, 2014) (Paper 15) (applied reference shown to be publicly accessible). Consequently, “[a] reference will be considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”’ Inst. Dec. 9 (emphasis added) (citing Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008))). The status of a reference as a printed publication is a legal conclusion “based on underlying factual determinations.” Blue Calypso, 815 F.3d at 1348 (citing In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009)).” slip op. at 4
- Strike new argumentNew argument disregardedDecided for patent owner
“we should find that Mammano is a printed publication consistent with the requirements of In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Reh’g Req. 10; see id. at 7–10. We decline to draw now the conclusions argued for the first time in this Request for Rehearing. A request for rehearing is not an opportunity for the requestor to present new arguments or evidence. It goes without saying that we could not have overlooked or misapprehended arguments that Petitioner did not make, and it is not an abuse of discretion not to consider such arguments. Thus, Petitioner’s submission of new arguments and evidence in its Request for Rehearing is both improper and unpersuasive.” slip op. at 7
- BurdenDecided for patent owner
“Reh’g Req. 13–14. Although we did not require that Petitioner show “every possible detail,” we did require Petitioner to make a threshold showing. In finding that Petitioner failed to make the necessary threshold showing, we applied the standard clearly set forth by our reviewing court in Blue Calypso, Kyocera Wireless, and SRI International to Petitioner’s arguments and evidence. Inst. Dec. 9. A request for rehearing is not an opportunity to reargue positions, elaborate on previous positions, or to disagree with the analysis or conclusions of the panel. See Nestlé Purina Petcare Co. v. Oil-Dri Corp. of Amer., Case IPR2015-00737, slip op. at 8 (PTAB Feb. 9, 2017) (Paper 39) (“Merely disagreeing with our analysis or conclusions does not serve as a proper basis for a request for rehearing.”).” slip op. at 10
§ 102 anticipation - Apple Inc. / Fitbit, Inc. v. Valencell, Inc.All claims unpatentablePTAB · Jun 5, 2018 · IPR2017-00321 · APJ James B Arpin · IPR · Final written decision
Claims 14–21 are unpatentable as obvious; the Board denied the contingent motion to amend substitute claims 22–29.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“review of claims 14–21 (“the challenged claims”) of U.S. Patent No. 8,923,941 B2 (Ex. 1001, “the ’941 patent”) under 35 U.S.C. §§ 311– 319. Paper 2 (“Pet.”). Valencell, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). We instituted the instant inter partes review as to the challenged claims.2 Paper 11 (“Inst. Dec.”). Fitbit, Inc. (also “Petitioner”) filed a corresponding Petition (IPR2017-01556, Paper 2), accompanied by a Motion for Joinder (IPR2017-01556, Paper 3), challenging claims 14–21 of the ’941 patent, and we granted the Motion for Joinder and instituted review of the challenged claims based on the corresponding Petition (IPR2017-01556, Paper 9).” slip op. at 2
- BurdenFwd all claims unpatentableUnpatentable
“A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter 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). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art;5 and (4), when in evidence, objective evidence of nonobviousness, i.e., secondary considerations.6 Graham v. 5 Petitioner proposes an assessment of the level of ordinary skill in the art. Pet. 11; see Ex. 1003 ¶ 54. Petitioner’s declarant, Dr. Sarrafzadeh, and Patent Owner’s declarant, Dr. Pollonini, exceeds this assessed level. Ex. 1004; Ex. 2010 ¶¶ 6–11. Patent Owner does not contest Petitioner’s assessment or propose an alternative assessment. See MTA 11. To the extent necessary, we adopt Petitioner’s assessment. 6 In the instituted proceeding, Patent Owner does not raise arguments or present evidence based on the presence of such objective evidence of nonobviousness. See In re Applied Materials, 692 F.3d 1289, 1299 (Fed. Cir. 2012) (“The party seeking the patent bears the burden to overcome the prima facie case of obviousness with evidence of secondary considerations, such as commercial success.”); Medtronic, Inc. v. Nuvasive, Inc., Case IPR2014-00087, 2015 WL 1546574, at *11 (PTAB 2015) (“Although it is Patent Owner's burden to introduce evidence supporting such objective indicia, see In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996), the ultimate burden of persuasion never shifts to Patent Owner, see 35 U.S.C. § 316(e).”), aff’d, In re Nuvasive, Inc., 689 Fed. Appx. 954 (Fed. Cir. 2017); but see Prelim. Resp. 4–6. Therefore, this factor does not play into our analysis of Petitioner’s challenges to any claim on any ground. John Deere Co., 383 U.S. 1, 17–18 (1966). Nevertheless, the Supreme Court cautions us against “the temptation to read into the prior art the teachings of the invention in issue.” Graham, 383 U.S. at 36.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“6. “PPG sensor” (claims 14–21) In the Institution Decision, we adopted Patent Owner’s proposed construction of the term “PPG sensor” as the broadest reasonable interpretation of the term. Id. at 10–11. In the Patent Owner Response, Patent Owner proposes a slight modification to this interpretation (PO Resp. 9), to which Petitioner does not object (see Reply 1–4). Patent Owner now contends that the broadest reasonable interpretation of the term “PPG sensor” is “an optical sensor which obtains a plethysmogram that results from blood flow modulations caused by the subject’s heartbeat.” PO Resp. 9 (emphasis added); see Ex. 2005, 1. We agree that the term should include express reference to “an optical sensor,” rather than merely to “an optically obtained plethysmogram.” Inst. Dec. 10; see Ex. 1001, 1:64–2:6. We determine that our previous construction, as modified by Patent Owner, is the broadest reasonable interpretation of this term.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“have had reason to combine the teachings of Kosuda and Maekawa in the manner proffered by Petitioner. Initially, we note that although Patent Owner has suggested an alternative solution to the signal-to-noise problem, neither Patent Owner nor its declarant provides support for their contention that the alternative solution is superior to that taught by the combination of the teachings of Kosuda and Maekawa. See PO Resp. 24; Ex. 2010 ¶ 90. But even if it had, as Petitioner notes, “the law does not require that a particular combination be the preferred, or the most desirable, combination described in the prior art in order to provide motivation for the claimed invention.” Reply 8; see In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (“The question is whether there is something in the prior art as a whole to suggest the desirability, and thus the obviousness, of making the combination, not whether there is something in the prior art as a whole to suggest that the combination is the most desirable combination available.” (emphasis added)). Thus, the existence of potentially superior alternatives does not negate the combination of teachings proposed by Petitioner. Accordingly, we are persuaded that Petitioner demonstrates sufficiently that a person of ordinary skill in the art would have had reason for combining the teachings of Kosuda and Maekawa to achieve the device recited in claim 14 of the ’941 patent.” slip op. at 29
Patent outcomesUS 8,923,941 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,923,941 - PTAB · Apr 30, 2018 · IPR2017-01904 · APJ James B Arpin · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution because Petitioner did not show that Mammano was a printed publication or that the Board misapprehended or overlooked evidence.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply. (Emphasis added.) See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). 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. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” Inst. Dec. 8 (quoting 35 U.S.C. § 311(b) (emphasis added)); see 37 C.F.R. § 42.104(b)(2). Petitioner had the burden to establish in its Petition a reasonable likelihood of success, including, among other things, making a threshold showing that Mammano is a “printed publication” within the meaning of 35 U.S.C. §§ 102(b) and 311(b). Inst. Dec. 9 (citing 35 U.S.C. § 314(a)); see 37 C.F.R. § 42.108(c); Apple, Inc. v. DSS Tech. Mgmt., Inc.,” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“As we explained in the Institution Decision, “‘[p]ublic accessibility’ is the touchstone in determining whether a reference is a ‘printed publication.’” Inst. Dec. 10 (citing In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)); see, e.g., L-3 Commc’n. Holdings, Inc. v. Power Survey, LLC, Case IPR2014- 00832, slip op. at 11–12 (PTAB Nov. 14, 2014) (Paper 9) (applied reference not shown to be publicly accessible); C&D Zodiac, Inc. v. B/E Aerospace, Inc., Case IPR2014-00727, slip op. at 20–22 (PTAB Oct. 29, 2014) (Paper 15) (applied reference shown to be publicly accessible). Consequently, “[a] reference will be considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”’ Inst. Dec. 10–11 (emphasis added) (citing Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008))). The status of a reference as a printed publication is a legal conclusion “based on underlying factual determinations.” Blue Calypso, 815 F.3d at 1348 (citing In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009)).” slip op. at 4
- Strike new argumentNew argument disregardedDecided for patent owner
“we should find that Mammano is a printed publication consistent with the requirements of In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Reh’g Req. 10; see id. at 7–10. We decline to draw now the conclusions argued for the first time in this Request for Rehearing. A request for rehearing is not an opportunity for the requestor to present new arguments or evidence. It goes without saying that we could not have overlooked or misapprehended arguments that Petitioner did not make, and it is not an abuse of discretion not to consider such arguments. Thus, Petitioner’s submission of new arguments and evidence in its Request for Rehearing is both improper and unpersuasive.” slip op. at 7
§ 102 anticipation - PTAB · Apr 30, 2018 · IPR2017-01975 · APJ James B Arpin · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution because Petitioner did not show the UC1828 datasheet was publicly accessible as a printed publication.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply. (Emphasis added.) See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). 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. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” Inst. Dec. 8 (quoting 35 U.S.C. § 311(b) (emphasis added)); see 37 C.F.R. § 42.104(b)(2). Petitioner has the burden to establish in its Petition a reasonable likelihood of success, including, among other things, making a threshold showing that the UC1828 datasheet is a “printed publication” within the meaning of 35 U.S.C. §§ 102(b) and 311(b). Inst. Dec. 9 (citing 35 U.S.C. § 314(a)); see 37 C.F.R. § 42.108(c); Apple, Inc. v. DSS Tech. Mgmt., Inc., Case IPR2015-00369, slip op. at 4–5, 9–11 (PTAB Aug. 12, 2015) (Paper 14)). As we explained in the Institution Decision, “‘[p]ublic accessibility’ is the touchstone in determining whether a reference is a ‘printed publication.’” Inst. Dec. 10 (citing In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)); see, e.g., L-3 Commc’n. Holdings, Inc. v. Power Survey, LLC, Case IPR2014- 00832, slip op. at 11–12 (PTAB Nov. 14, 2014) (Paper 9) (applied reference not shown to be publicly accessible); C&D Zodiac, Inc. v. B/E Aerospace, Inc., Case IPR2014-00727, slip op. at 20–22 (PTAB Oct. 29, 2014) (Paper 15) (applied reference shown to be publicly accessible). Consequently, “[a] reference will be considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”’ Inst. Dec. 10 (emphasis added) (citing Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008))). The status of a reference as a printed publication is a legal conclusion “based on underlying factual determinations.” Blue Calypso, 815 F.3d at 1348 (citing In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009)).” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“As we explained in the Institution Decision, “‘[p]ublic accessibility’ is the touchstone in determining whether a reference is a ‘printed publication.’” Inst. Dec. 10 (citing In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)); see, e.g., L-3 Commc’n. Holdings, Inc. v. Power Survey, LLC, Case IPR2014- 00832, slip op. at 11–12 (PTAB Nov. 14, 2014) (Paper 9) (applied reference not shown to be publicly accessible); C&D Zodiac, Inc. v. B/E Aerospace, Inc., Case IPR2014-00727, slip op. at 20–22 (PTAB Oct. 29, 2014) (Paper 15) (applied reference shown to be publicly accessible). Consequently, “[a] reference will be considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”’ Inst. Dec. 10 (emphasis added) (citing Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008))). The status of a reference as a printed publication is a legal conclusion “based on underlying factual determinations.” Blue Calypso, 815 F.3d at 1348 (citing In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009)).” slip op. at 4
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner did not request the opportunity to submit additional evidence of public accessibility during the Preliminary Proceeding. Id. at 14 n.5; see 37 C.F.R. § 42.2 (“Preliminary Proceeding”). Nevertheless, Petitioner now asks that we take official notice of evidence contained in several issued patents and an abandoned patent application that were not made of record during the Preliminary Proceeding to support arguments presented for the first time in its Request for Rehearing. Reh’g Req. 4 n.1; see 37 C.F.R. § 42.62(c) (“Judicial notice”). We decline to take official notice of any new evidence during consideration of this Request for Rehearing. A request for rehearing is not an opportunity for the requestor to present new arguments or evidence, and it goes without saying that we could not have misapprehended or overlooked new evidence that was not of record during the Preliminary Proceeding or new arguments that were not previously presented regarding that new evidence.” slip op. at 5
§ 102 anticipation - PTAB · Apr 30, 2018 · IPR2017-01944 · APJ James B Arpin · IPR · Rehearing
The Board denied Power Integrations’ rehearing request, leaving in place the denial of institution because Mammano was not shown to be a printed publication.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“(Emphasis added.) See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). 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. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” Inst. Dec. 9 (quoting 35 U.S.C. § 311(b) (emphasis added)); see 37 C.F.R. § 42.104(b)(2). Petitioner had the burden to establish in its Petition a reasonable likelihood of success, including, among other things, making a threshold showing that Mammano is a “printed publication” within the meaning of 35 U.S.C. §§ 102(b) and 311(b). Inst. Dec. 9–10 (citing 35 U.S.C. § 314(a)); see 37 C.F.R. § 42.108(c); Apple, Inc. v. DSS Tech. Mgmt., Inc., Case IPR2015-00369, slip op. at 4–5, 9–11 (PTAB Aug. 12, 2015) (Paper 14)).” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” Inst. Dec. 9 (quoting 35 U.S.C. § 311(b) (emphasis added)); see 37 C.F.R. § 42.104(b)(2). Petitioner had the burden to establish in its Petition a reasonable likelihood of success, including, among other things, making a threshold showing that Mammano is a “printed publication” within the meaning of 35 U.S.C. §§ 102(b) and 311(b). Inst. Dec. 9–10 (citing 35 U.S.C. § 314(a)); see 37 C.F.R. § 42.108(c); Apple, Inc. v. DSS Tech. Mgmt., Inc., Case IPR2015-00369, slip op. at 4–5, 9–11 (PTAB Aug. 12, 2015) (Paper 14)).” slip op. at 3
- Strike new argumentNew argument disregardedDenied
“Reh’g Req. 4–5 (emphasis added). Regardless whether it “would be reasonable to conclude” that certain facts exist, Petitioner did not make these arguments in its Petition, and it was not error to fail earlier to draw these conclusions, and we decline to draw these conclusions now.” slip op. at 6
§ 102 anticipation - Apple Inc. v. Papst Licensing GmbH & Co. KGNo claims unpatentablePTAB · Apr 13, 2018 · IPR2016-01863 · APJ Miriam L Quinn · IPR · Final written decision
The Board held claims 1, 4, 6-8, 10, 11, 14, 20, 21, 23, 30, 34, and 35 not shown unpatentable under the asserted § 103 grounds for failure to establish a sufficient reason to combine …
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We find the Zadok testimony in this regard persuasive as it presents more than just the educational level of a person of ordinary skill in the art. Petitioner’s proposal is more helpful as it identifies the familiar objects of the technology used by a person of ordinary skill at the time of the invention: operating systems (e.g., MS-DOS, Windows, Unix) and their associated file systems (e.g., a FAT file system), device drivers for computer components and peripherals (e.g., mass storage device drivers), and communication interfaces (e.g., SCSI and PCMCIA interfaces). Ex. 1003 ¶ 28. We, therefore, determine that Petitioner’s level of ordinary skill in the art is appropriate.” slip op. at 11
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“required to enable the transfer of files from the ION node to the workstation. In this case, we have testimony from Petitioner’s expert opining that the emulation of the ION node as a disk would lead a person of ordinary skill in the art to understand Pucci as accomplishing the file transfer using “existing SCSI hard disk drivers.” Ex. 1003 ¶ 133. On the other hand, we have testimony of Mr. Gafford that explains Pucci’s workstation program as being involved in the request of the A-to-D converted data by “implement[ing] specific functions by enabling the reading or writing of specific block addresses within the ION drive.” Ex. 2006 ¶ 65. That is, Dr. Zadok’s view of Pucci is that once the ION system is set up to emulate a hard disk, no other software is required to transfer data. In contrast, Mr. Gafford’s testimony does not negate Pucci’s use of the SCSI protocol, but ascribes to the workstation application control over the data read, such that the software is required to enable the transfer data. In this regard, we credit the testimony of Mr. Gafford over the testimony of Dr. Zadok, as it is more consistent with the disclosure of Pucci. Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (stating that it is “within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate”); see also, In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”). As we stated above with regard to the file system limitation, Pucci’s principle of operation” slip op. at 41
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“In view of Patent Owner’s arguments and evidence, we are not persuaded that a person of ordinary skill in the art would have had reason to combine the teachings of Pucci and Kepley, as asserted by Petitioner, to achieve the challenged claims. Our determination is based on two findings: a) First, we determine that Pucci does not teach or suggest a reason for the use of a file system for storing digitized voice messages at the ION node; and b) Second, we determine that achieving computer-to-computer file transfer, as taught by Kepley, and the “traditional” nature of the substitution proffered by Petitioner, are not sufficient motivations to modify Pucci, in light of the changes to Pucci that would impermissibly alter Pucci’s principle of operation.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for patent owner
“Petitioner also argues that the ’746 patent works the same way as Pucci in this regard, and, therefore, buffering in real time could be handled as a file even though there is no file at the acquisition time. Reply, 8; Tr. 7 Claim 1 of the ’746 patent, for instance, requires that the “digitized analog data is stored in a file system of the data storage memory as at least one file of digitized analog data,” and Petitioner has identified the “digitized analog data” as the data from the A-to-D converters. Pet. 2728 (emphasis omitted). 24:1221. This argument risks analyzing Pucci in hindsight, with the knowledge of what is disclosed in the ’746 patent. It would be improper, absent any other evidence, for us to rely on the ’746 patent disclosure regarding real-time input to ascertain whether Pucci suggests handling its raw data in the same way. See Nike, Inc. v. adidas AG, 812 F.3d 1326, 1344 n.5 (Fed. Cir. 2016) (“We are troubled by the Board’s citation to the ’011 patent’s written description and the corresponding appearance of using the ’011 patent to find claim 49 unpatentable.”). Instead, as stated above, we rely on what Pucci teaches to a person of ordinary skill in the art at the time of the invention, without the benefit of the ’746 patent disclosure. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984) (“It is difficult but necessary that the decisionmaker forget what he or she has been taught . . . about the claimed invention and cast the mind back to the time the invention was made (often as here many years), to occupy the mind of one skilled in the art.”).” slip op. at 25
Patent outcomesUS 8,504,746 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,504,746 - Eset, LLC / Eset Spol S.R.O. v. Finjan, Inc.Rehearing deniedPTAB · Feb 15, 2018 · IPR2017-01969 · APJ Patrick M Boucher · IPR · Rehearing
The Board denied ESET’s rehearing request, leaving in place denial of its petition and joinder motion because the added grounds, evidence, and arguments weighed against joinder.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“To the extent that ESET has identified matter that we misapprehended or overlooked, we have reconsidered our Decision. In doing so, we exercise our discretion in accordance with the mandate that our regulations “be construed to secure the just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R. § 1(b). For the reasons expressed above, consideration of the full scope of relevant factors continues to weigh against granting ESET’s Petition or Joinder Motion. III. ORDER In consideration of the foregoing, it is hereby: ORDERED that ESET’s Rehearing Request is denied.” slip op. at 9
- Other 314aInstitution denied discretionary otherInstitution denied
“discretionary. See General Plastic Industrial Co., Ltd. v. Canon Kaushiki Kaisha, Case IPR2016-01347, slip op. at 15 (PTAB Sept. 6, 2017) (Paper 19) (precedential) (citing 35 U.S.C. § 314(a); 37 C.F.R. § 42.108(a)). And the decision whether to join a petitioner to an instituted proceeding, even when the petitioner files a petition that “warrants institution of an inter partes review,” is also discretionary. 35 U.S.C. § 315(c) (“. . . the Director, in his or her discretion, may join as a party . . .”) (emphasis added). Although the circumstances presented here differ from the underlying facts of the Board’s precedential General Plastic decision—in this case, different petitioners are involved in filing multiple petitions challenging the same patent—the policy considerations guiding the application of our discretion are similar. In particular, General Plastic explains that we take into account “undue inequities and prejudices to Patent Owner,” and that we recognize that “shifts” in arguments and the use of “[m]ultiple, staggered petitions challenging the same patent and same claims raise the potential for abuse.” General Plastic at 17. Exercising our discretion in a manner that takes insufficient account of those impacts “is unfair to patent owners and is an inefficient use of the inter partes review process.” Id. at 17–18. In the instant case, we are cognizant of those impacts, particularly because ESET’s Petition presents arguments that differ materially from those presented in the original Blue Coat petition upon which the 1444 proceeding was instituted, and because ESET’s Rehearing Request introduces additional shifts in those arguments. In addition, we are mindful of the equities resulting from the procedural history, in which Patent Owner repeatedly finds itself defending its patent, in the same proceeding, against new petitioners who rise up to replace those with whom it has settled.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“discretionary. See General Plastic Industrial Co., Ltd. v. Canon Kaushiki Kaisha, Case IPR2016-01347, slip op. at 15 (PTAB Sept. 6, 2017) (Paper 19) (precedential) (citing 35 U.S.C. § 314(a); 37 C.F.R. § 42.108(a)). And the decision whether to join a petitioner to an instituted proceeding, even when the petitioner files a petition that “warrants institution of an inter partes review,” is also discretionary. 35 U.S.C. § 315(c) (“. . . the Director, in his or her discretion, may join as a party . . .”) (emphasis added). Although the circumstances presented here differ from the underlying facts of the Board’s precedential General Plastic decision—in this case, different petitioners are involved in filing multiple petitions challenging the same patent—the policy considerations guiding the application of our discretion are similar. In particular, General Plastic explains that we take into account “undue inequities and prejudices to Patent Owner,” and that we recognize that “shifts” in arguments and the use of “[m]ultiple, staggered petitions challenging the same patent and same claims raise the potential for abuse.” General Plastic at 17. Exercising our discretion in a manner that takes insufficient account of those impacts “is unfair to patent owners and is an inefficient use of the inter partes review process.” Id. at 17–18. In the instant case, we are cognizant of those impacts, particularly” slip op. at 5
- Strike new argumentNew argument disregardedDecided for patent owner
“Third, ESET introduces still further additional evidence with its Rehearing Request to support its argument that Necula is not prior art. Specifically, ESET provides a copy of a Markman Order entered in related litigation between Patent Owner and ESET, asserting that it “should inform this Board’s determination of an appropriate Phillips-type construction.” Req. Reh’g 2; Ex. 1028. It is axiomatic that we could not have misapprehended or overlooked the relevance of this evidence in our Decision when the evidence was not previously of record in the proceeding. “A request for rehearing is not an opportunity for a party to introduce new argument, bolster insufficient argument, or mend gaps in the evidence relied on in the Petition.” Ericsson Inc. v. Intellectual Ventures II LLC, Case IPR2015-01872, slip op. at 4 (PTAB Apr. 19, 2016) (Paper 15). Notably, the Markman Order that ESET only now brings to our attention was entered in the related litigation on November 14, 2017, but ESET took no steps to bring it to our attention during the several weeks that passed before our Decision was entered—even though ESET urges that it “should inform this Board’s determination.” Although the district court’s order is relevant, it comes too late as evidence in this proceeding for us to consider it.” slip op. at 8
Discretionary denialPatents in suitUS 8,079,086 - Freebit As v. Bose CorporationRehearing deniedPTAB · Jan 23, 2018 · IPR2017-01309 · APJ Bryan F Moore · IPR · Rehearing
The Board denied Freebit’s rehearing request and left in place the denial of institution on claims 1–3, 5, 6, 8–11, and 13 based on the deficient obviousness showing and Tan antedating.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply. (Emphasis added.) See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). 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 1 IPR2017-01307 Inst. Dec. 34 (“As we noted above, although Patent Owner mentions both March 26, 200[9] (Prelim. Resp. 8), and May 26, 2009 (id. at 1, 10), as the date of actual reduction to practice, it is clear from Mr. Annunziato’s testimony and supporting evidence, that actual reduction to practice occurred by May 26, 2009. Ex. 2001 ¶¶ 9, 11; see id., Ex. A, 2.”). 2 We note that Petitioner presented substantially identical arguments regarding Patent Owner’s antedating of Tan in its Request for Rehearing filed in IPR2017-01307 and IPR2017-01308. See, e.g., IPR2017-01308, Paper 11. Our reasons for denying rehearing here regarding the antedating of Tan are substantially the same as the reasons presented in IPR2017-01307 and IPR2017-01308. 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. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“testimony that there was a known, retention problem with in-ear earpieces as of the earliest priority date for challenged claims of the ’853 patent. See Inst. Dec. 14 (citing Ex. 1003 ¶ 149). Nor did we question that Howes discusses that problem and teaches a possible solution to that problem. See id. at 11–13. The failure in Petitioner’s argument and Petitioner’s declarant’s testimony was to draw the necessary link between the known problem and Howes’s possible solution and the teachings of Sapiejewski. In order to link this problem and its possible solution to the teachings of Sapiejewski, Petitioner relies on Dr. Staab’s testimony. Id. at 14. It is this testimony that we find unsupported and conclusory.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundTeaching away not found
“testimony that there was a known, retention problem with in-ear earpieces as of the earliest priority date for challenged claims of the ’853 patent. See Inst. Dec. 14 (citing Ex. 1003 ¶ 149). Nor did we question that Howes discusses that problem and teaches a possible solution to that problem. See id. at 11–13. The failure in Petitioner’s argument and Petitioner’s declarant’s testimony was to draw the necessary link between the known problem and Howes’s possible solution and the teachings of Sapiejewski. In order to link this problem and its possible solution to the teachings of Sapiejewski, Petitioner relies on Dr. Staab’s testimony. Id. at 14. It is this testimony that we find unsupported and conclusory.” slip op. at 6
- Strike new argumentNew argument disregardedDecided for patent owner
“Initially, we note that Petitioner did not raise these arguments anywhere in its Petition or its authorized Reply to Patent Owner’s Preliminary Response. Not only did Petitioner fail to raise the issue of “Peeler diligence,” but Petitioner’s Request for Rehearing does not include a single citation to its Petition or to its Reply on this point. Thus, Petitioner’s Request for Rehearing fails to identify the place where each matter that allegedly was overlooked or misapprehended was previously addressed in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). A request for rehearing is not an opportunity for the requestor to present new arguments or evidence. It goes without saying that we could not have overlooked or misapprehended arguments that Petitioner did not make, and it is not an abuse of discretion not to consider such arguments.” slip op. at 10
§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,036,853
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.