• Helmerich & Payne International Drilling Company / Helmerich & Payne Technologies, LLC et al. v. Nabors Drilling Technologies USA, Inc.Rehearing denied
  PTAB · Jan 21, 2022 · IPR2021-01018 · APJ Sean P O’Hanlon · IPR · Rehearing

  The Board denied rehearing and upheld denial of institution, finding the Petition did not show a reasonable likelihood that any challenged claim was unpatentable.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d) (2020). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 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. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004).” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsNot shown unpatentable

    “overlooked any matter in the Institution Decision. As we explained, the Petition “does little more than cite to its annotated version of Haci Figure 3 and the Schaaf Declaration, which in large measure presents the same conclusory assertions advanced in the Petition.” Inst. Dec. 17 (citing Pet. 43–46; Ex. 1005 ¶¶ 126–133). We explained that neither Petitioner nor its declarant addressed Haci’s full disclosure or attempted to reconcile the disclosure with the assertion that Haci’s “small dots” are toolface orientation data, and we provided several examples of the disclosure Petitioner and its declarant failed to consider. Id. at 17–20. For example, we noted that Petitioner and its declarant failed to reconcile Haci’s discussion of toolface orientation omitting reference to Haci’s graphical display 113 and the discussion of the graphical display omitting reference to the “small dots” relied upon by Petitioner. Id. at 17. We also noted the failure of Petitioner and its declarant to explain how any useful information could be conveyed by the “small dots” relied upon by Petitioner. Id. at 18. For example, Petitioner does not present an example case of the “small dots” conveying a specific tool face orientation at any given time. To the contrary, it appears that any vertical line passing through the “small dots”—during times of both rotary drilling and slide drilling— would intersect multiple dots. Moreover, as we noted in the Institution Decision, both Petitioner and its declarant failed to explain how the 242° tool face orientation disclosed via tool face indicator 73 in Figure 3 is conveyed by the “small dots” relied upon by Petitioner. Id. at 18. In essence, Petitioner argues in the Petition that because Haci’s graphical display 113 shows a toolface degree legend on the Y-axis in Figure 3, the “small dots” relied upon by Petitioner must be toolface orientation data. As explained in the Institution Decision, however, we disagree with this presumption. At best, the Y-axis legend suggests that toolface orientation data could be presented via the graphical display, but does not imply that the “small dots” relied upon by Petitioner are that data. By failing to reconcile Haci’s full disclosure with its assertions of what is conveyed in Figure 3, the Petition merely speculates about what is disclosed in Figure 3. However, “[s]uch speculation is inadequate to support Petitioner’s contentions.” Inst. Dec. 17.” slip op. at 3

  None
  Patents in suitUS 7,802,634
• Platform Science, Inc. v. XRS CorporationRehearing denied
  PTAB · Dec 14, 2021 · IPR2021-00325 · APJ Neil T Powell · IPR · Rehearing

  The Board denied rehearing and maintained its denial of institution because the Petition did not show a reasonable likelihood that claims 1–24 were unpatentable as obvious.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “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.” Id. When rehearing a decision on a” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “Petitioner has not offered persuasive evidence of any suggestion in the prior art that Nehowig’s onboard computer may be used with multiple different engine control modules that communicate data in different languages. Nor has Petitioner offered persuasive evidence of any suggestion in Nehowig that its engine control module uses more than one language. Contrarily, Nehowig suggests that the onboard computer and engine control module are vehicle specific without an indication that either needs to be adaptable for use in multiple different vehicles. . . . Additionally, regardless of whether Nehowig’s ECM uses one or multiple communication protocols, Petitioner does not provide persuasive evidence that it would have been obvious to modify Nehowig’s OBC 204 to meet limitation 1A.1. Fedorchuk discloses a device configured for connecting to and communicating with a diagnostic communication port of any of a variety of vehicles using any of a number of different possible protocols, enabled by interface device 10’s ability to detect the different possible protocols. . . . Petitioner does not provide persuasive evidence that Nehowig’s OBC 204 would be connected to any ECM without OBC 204 and the ECM already configured to communicate specifically with one another using one more predesignated protocols. . . . Petitioner does not provide persuasive evidence that Nehowig’s OBC 204 would not already have dedicated provisions for communicating with the ECM in the specific protocol(s) the ECM uses. Nehowig clearly discloses that OBC 204 already can communicate with Nehowig’s ECM, apparently using whatever protocol(s) the ECM uses. [Ex. 1005] ¶ 23. Accordingly, Petitioner has not shown sufficiently a reason that a person of ordinary skill in the art would have modified Nehowig’s OBC 204 to allow it to communicate with the ECM.” slip op. at 12

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “misapprehended that the Petition identified a particular proposed combination. We acknowledged Petitioner’s proposed combination. See Dec. 25–26 (“Petitioner then describes a scenario, argued ‘[t]o achieve this goal [of not having the official enter the vehicle],’ where the official ‘will provide a cable to the driver to plug into the EOBR’ . . . . Based on this, Petitioner concludes ‘[t]herefore, the combined system of Nehowig and Fedorchuk implementing the DOT regulations discloses transferring the hours of service information from the OBC to a safety assurance officer’s computer via a data cable.’”). And, even had we overlooked or misapprehended it, the outcome would not change. Again, the basis for the Decision is that Petitioner failed to explain adequately and persuasively why a person of ordinary skill in the art would arrange the data flow in this manner. Dec. 27. In view of the foregoing, we are not persuaded of any error in our Decision that the Petition did not demonstrate a reasonable likelihood of establishing obviousness of limitation 1B.1. See Dec. 27–28. IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated that we abused our discretion in not instituting an inter partes review of the challenged claims of the ’575 patent.” slip op. at 19

  § 103 obviousness
  Patents in suitUS 10,255,575
• Platform Science, Inc. v. XRS CorporationRehearing denied
  PTAB · Aug 26, 2021 · IPR2021-00323 · APJ Ken B Barrett · IPR · Rehearing

  The Board denied rehearing of its decision denying institution on claims 1–24, finding no abuse of discretion in its conclusion that the Petition inadequately explained the proposed data flow.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “decision should be modified. 37 C.F.R. § 42.71(d). “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.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “Dec. 13. We determined that “Petitioner does not explain adequately and persuasively why, in such circumstances—where the portable unit could directly transmit the report to the inspector—a person of ordinary skill in the art would see a reason to configure the system in a seemingly awkward way where the report is sent to the onboard system and then sent to the inspector.” Id. at 14.” slip op. at 7

  § 103 obviousness
  Patents in suitUS 8,626,568
• Cooler Master Co., Ltd. v. Aavid Thermalloy LLCRehearing denied
  PTAB · Sep 17, 2020 · IPR2019-00338 · APJ Ken B Barrett · IPR · Rehearing

  The Board denied Cooler Master’s rehearing request, leaving intact the determination that claim 8 was not shown obvious over Morikawa and Takahashi because the petition did not establish the claimed top shoulder.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. ANALYSIS A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “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.” Id.” slip op. at 2

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “that “Petitioner has not demonstrated that Morikawa discloses the recited [top shoulder limitation].” Final Dec. 45. In other words, our determination was that Petitioner had not met its burden of proving that a limitation was taught by the prior art, and therefore had not met its burden of proving that the challenged claim is unpatentable.” slip op. at 3

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “In the Final Decision, we stated: Petitioner’s implied construction is that the claimed “shoulder” is the top end of a column. This is inconsistent with the claim language which recites that the “hollow column . . . has a top shoulder disposed near a top end” thus indicating that the top shoulder is not merely the top end of the column but a structure “near” and discernable from the top end of the hollow column.” slip op. at 8

  • Strike new argumentNew argument disregardedDecided for patent owner

    “based on a misapprehension of the arguments associated with a figure . . . [from page 57] in the Petition,” and that “the Board incorrectly inferred Petitioner’s ‘implied construction’ for the term, ‘[a top] shoulder,’ in claim 8 of the ’680 patent as ‘the top end of a column.’” Req. Reh’g 1 (citing Final Dec. 45). Petitioner further argues that it “has always and consistently pointed to the corner portions located around the top outer rim of the hollow column as meeting the limitation of ‘a top shoulder,’ as shown [in the two figures from pages 56 and 57 of Petition and reproduced above].” Id. at 5–6.” slip op. at 8

  Claim construction§ 103 obviousness
  Patents in suitUS 7,100,680
• Cooler Master Co., Ltd. v. Aavid Thermalloy LLCRehearing denied
  PTAB · Sep 16, 2020 · IPR2019-00334 · APJ Linda E Horner · IPR · Rehearing

  The Board denied Petitioner’s rehearing request, leaving in place its determination that claim 1 was not shown unpatentable over Morikawa, Takahashi, and Nakamura.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “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.” Id.” slip op. at 2

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “criticism of Morikawa’s heat pipe in its Reply, Petitioner failed to provide any expert testimony to support its argument as to how a person of ordinary skill in the art would understand Nakamura. Instead, Petitioner argued that “Nakamura describes some of its advantages over Morikawa’s ‘metal pipe 6’ only” and that “Nakamura is not describing any disadvantages at all associated with Morikawa’s ‘conventional spacer’ by ‘welding and fixing a metal column to upper and lower inner surfaces of the panel.” Pet. Reply 31–32 (citing Nakamura at 4; Morikawa, 4:31‒33). Patent Owner, however, provided expert testimony as to how a person having ordinary skill spacers. PO Resp. 57 (citing Ex. 2002 ¶ 160). We credited this testimony in our Final Decision. Final Dec. 47 (citing PO Resp. 58); id. at 47–48 (agreeing with Patent Owner’s argument).” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “improvement to Morikawa’s heat pipe, and, in fact, found that Nakamura’s teaching of an improvement and criticism of Morikawa’s configuration would have led one having ordinary skill in the art to replace all of Morikawa’s spacers with Nakamura’s concavities. See Final Dec. 47–48 (agreeing with Patent Owner’s arguments as to the manner in which Morikawa would have been modified in light of Nakamura’s disclosure); id. at 69–70 (finding, in the context of independent claim 3, that Petitioner provided adequate reasoning, premised on Nakamura’s criticism, to substitute Nakamura’s concavity for the pipe of Morikawa). Petitioner’s citation to pages 58–59 is misplaced to the extent Petitioner relies on this portion of the Petition for a reason to modify Morikawa to replace only some of Morikawa’s spacers with Nakamura’s concavities. Pages 58–59 of the Petition address Petitioner’s proposed modification of Morikawa to substitute Nakamura’s concavities for Morikawa’s pipes to meet the “depression” limitation found earlier in claim 1. See Pet. 55, 62–63 (Petitioner explaining that the proposed combination is the modification of Morikawa’s pipes “to solve these problems.”). The “spacer” limitation appears later in claim 1 and, similarly, Petitioner’s purported reasoning associated with that spacer limitation appears later in the Petition. See Pet. 71–75. The Petition’s discussion of the earlier “depression” limitation does not include a reason to replace only some of Morikawa’s spacers with Nakamura’s concavities.” slip op. at 5

  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,100,680
• Cooler Master Co., Ltd. v. Aavid Thermalloy LLCRehearing denied
  PTAB · Sep 16, 2020 · IPR2019-00337 · APJ Linda E Horner · IPR · Rehearing

  The Board denied the petitioner’s rehearing request, leaving claim 11 not shown unpatentable because the petition did not adequately explain why only some Morikawa spacers would be replaced with Nakamura depressions.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “As explained in the Final Decision, upon review and consideration of the arguments and evidence submitted by the parties, Petitioner failed to show that the combined teachings of Morikawa and Nakamura would have led one having ordinary skill in the art to the combination of conventional spacers, as discussed in Morikawa, and depressions formed by Nakamura’s concavities, as recited in claim 11. Petitioner’s arguments in the Request for Rehearing do not persuade us that we erred in our application of the facts as presented by Petitioner to the standard for determining obviousness, as set forth in KSR, in finding that Petitioner failed to show unpatentability of claim 11. C. Conclusion For the foregoing reasons, Petitioner has not shown that we misapprehended or overlooked Petitioner’s arguments or evidence in determining that Petitioner did not show by a preponderance of evidence that challenged claim 11 of the ’240 patent is unpatentable.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “not in accordance with the law.” Request 2; see also id. at 6 (arguing that “Petitioner need only provide ‘a reason’ as to why a [person having ordinary skill in the art] would substitute Nakamura’s depressions for some, but not all, of Morikawa’s columns in Morikawa’s device.”). Petitioner discusses the proposed replacement of Morikawa’s “through path” spacers with Nakamura’s concavities, but Petitioner does not discuss why Morikawa’s remaining spacers would also not be similarly replaced. In other words, as explained above, Petitioner provided no reason in its Petition to explain why one would have modified Morikawa by substituting only some spacers with Nakamura’s concavities, when Nakamura teaches making all of its spacers using abutting concavities. Pet. 88‒89 (citing Pokharna ¶ 93, which cross-references itself); Final Dec. 57 (describing Nakamura). As explained in the Final Decision, upon review and consideration of the arguments and evidence submitted by the parties, Petitioner failed to show that the combined teachings of Morikawa and Nakamura would have led one having ordinary skill in the art to the combination of conventional spacers, as discussed in Morikawa, and depressions formed by Nakamura’s concavities, as recited in claim 11. Petitioner’s arguments in the Request for Rehearing do not persuade us that we erred in our application of the facts as presented by Petitioner to the standard for determining obviousness, as set forth in KSR, in finding that Petitioner failed to show unpatentability of claim 11.” slip op. at 11

  • BurdenNot shown unpatentable

    “2. Petitioner’s Burden As also explained in the Final Decision, “Petitioner bears the burden of proving unpatentability of the claims challenged in the Petition, and that burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner must establish by a preponderance of the evidence that the challenged claims are unpatentable. 35 U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d) (2018).” Final Dec. 9.” slip op. at 5

  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,066,240
• Infinera Corp. v. Core Optical Technologies, LLCRehearing denied
  PTAB · Jul 11, 2019 · IPR2018-01259 · APJ Ken B Barrett · IPR · Rehearing

  The Board denied Infinera’s rehearing request, leaving in place the denial of institution because the Petition inadequately addressed claim construction, prior-art combinations, and reasons to combine.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. ANALYSIS A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “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.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “This is not the first time that the ’211 patent has been before a tribunal. It cannot be said that Petitioner is unaware of the important claim construction matters that go to the heart of dispositive patentability issues. Petitioner, on the facts of this case,[] has failed to identify adequately its proposed construction applicable to its patentability challenges. Further, Petitioner cannot avoid its duty to comply with Rule 104(b)(3)[1] by merely inviting us to apply a means-plus-function interpretation rather than affirmatively advocating (in this forum) the application thereof. Petitioner has neither taken a definitive position nor provided complete briefing, and we decline to assume Petitioner’s task of fully analyzing the claim construction for XPIC. Petitioner’s failure in this regard is reason enough to deny the petition. Dec. 13–14 (footnote omitted). We further denied institution because Petitioner’s articulation of a single ground implicated the application of multiple potential constructions. See Dec. 16–17 (explaining—in the context of Petitioner’s challenge to claim 15 over Cusani 1992, Cusani 1997, and Kavehrad—“[t]he number of possible asserted combinations is further multiplied by the overlay of the multiple potential claim constructions discussed above.”).” slip op. at 3

  • BurdenDecided for patent owner

    “Petitioner’s analysis in many places is little more than an assertion that each particular element of a larger limitation was individually known in the prior art. Petitioner does not describe adequately a specific proposed combination of references. Because of this and in light of, at least, the massive number of possible proposed combinations, Petitioner has failed to identify adequately how each challenged claim is to be construed and how the construed claim is unpatentable. 37 C.F.R. § 42.104(b)(3), (4). Dec. 18. Petitioner does not identify any portion of the Petition where a specific proposed combination of references is adequately described. See Req. Reh’g 13. Rather, Petitioner impliedly argues that it need not do so. Id. (quoting, but not explaining the relevance to this case, a bodily-incorporation proposition from In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012)). Petitioner makes the conclusory argument that “[i]n providing demonstrative illustrations of a combined system, coupled with a thorough analysis of the teachings of the prior art, Petitioner’s obviousness arguments directly addressed that question” of “what the combined teachings of the references would have suggested to those having ordinary skill in the art.” Id. (citing In re Mouttett, 686 F.3d at 1333). Petitioner’s argument is, in effect, merely an assertion of disagreement with our determination that the Petition was not persuasive. Petitioner has not identified anything we misunderstood or overlooked.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “combined the references’ teachings to arrive at the claimed subject matter” and that “Petitioner’s reasoning is an oversimplification and too conclusory to constitute the necessary articulated reasoning with rational underpinning.” Dec. 20, 21 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). That oversimplification was a reference to Petitioner’s arguments pertaining to the alleged similarity of signal transmission systems, whereas “the key issues involve the specific techniques used to cancel specific types of interference of received signals in optical systems versus radio frequency systems.” Id. at 23. In this regard, we stated: “Demonstrating obviousness in this case requires more than a showing that optical and RF [radio frequency] systems both utilize general techniques related to orthogonally polarized signals and had known interference problems.” Id.” slip op. at 10

  § 103 obviousness
  Patents in suitUS 6,782,211
• Unified Patent Inc. v. Plectrum LLCRehearing denied
  PTAB · Dec 12, 2017 · IPR2017-01430 · APJ Sheila F Mcshane · IPR · Rehearing

  The Board denied rehearing, leaving in place the denial of institution for claims 1–6, 12–14, and 21–24 because the petition did not show a reasonable likelihood of success on obviousness.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. DISCUSSION A party requesting rehearing has the burden to show a decision should be modified by specifically identifying all matters the party believes were misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise 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. 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).” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not shown unpatentable

    “The Request for Rehearing repeatedly refers to alleged mischaracterizations in Patent Owner’s assertions. However, as discussed in the Decision, it is the failure of the Petition to demonstrate a reasonable likelihood of prevailing on its assertion that the challenged claims are obvious—and not the Patent Owner’s assertions—that was determinative. See Dec. 14–16. We are aware, as the Petitioner argues (see Req. Reh’g 4–5), that there is no requirement under § 103 that claim terms be described verbatim in a prior art reference. As discussed in the Decision, however, the issue of an explicit disclosure of the term “row” in Cheriton was not in itself determinative. See Dec. 14–16. The Decision states that institution was denied because the Petition failed demonstrate a reasonable likelihood of prevailing on the obviousness challenge based on lack of adequate support in Cheriton for the alleged teaching of a comparison of values associated with a row in a cache, as well as the lack of support for the expert’s view that it would have been obvious to one of skill in the art to compare the cache value by row. Id. The disclosures in Cheriton that Petitioner relied upon fail to disclose or suggest the use of rows in caches. Id. at 14–15. And, Petitioner expert’s testimony regarding the knowledge of one of skill in the art concerning row comparisons in caches is conclusory and, therefore, deserved little to no credit. Id. at 15; see Perreira v. Dep’t of Health and Human Serv., 33 F.3d 1375, 1377 n.6 (Fed. Cir. 1994) (“An expert opinion is no better than the soundness of the reasons supporting it.”). Petitioner’s argument that Fujishima’s disclosure of 4-way set associative cache organized by rows, which corroborates its expert’s testimony, misses the point. Although the use of rows in 4-way set associative caches may have been known, the Petition fails to provide sufficient support to identify why one of skill in the art would view Cheriton as teaching or suggesting the specific limitations associated with the use of rows.” slip op. at 3

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “requirement under § 103 that claim terms be described verbatim in a prior art reference. As discussed in the Decision, however, the issue of an explicit disclosure of the term “row” in Cheriton was not in itself determinative. See Dec. 14–16. The Decision states that institution was denied because the Petition failed demonstrate a reasonable likelihood of prevailing on the obviousness challenge based on lack of adequate support in Cheriton for the alleged teaching of a comparison of values associated with a row in a cache, as well as the lack of support for the expert’s view that it would have been obvious to one of skill in the art to compare the cache value by row. Id. The disclosures in Cheriton that Petitioner relied upon fail to disclose or suggest the use of rows in caches. Id. at 14–15. And, Petitioner expert’s testimony regarding the knowledge of one of skill in the art concerning row comparisons in caches is conclusory and, therefore, deserved little to no credit. Id. at 15; see Perreira v. Dep’t of Health and Human Serv., 33 F.3d 1375, 1377 n.6 (Fed. Cir. 1994) (“An expert opinion is no better than the soundness of the reasons supporting it.”). Petitioner’s argument that Fujishima’s disclosure of 4-way set associative cache organized by rows, which corroborates its expert’s testimony, misses the point. Although the use of rows in 4-way set associative caches may have been known, the Petition fails to provide sufficient support to identify why one of skill in the art would view Cheriton as teaching or suggesting the specific limitations associated with the use of rows.” slip op. at 3

  None
  Patents in suitUS 5,978,951
• The Gillette Company v. Shavelogic, Inc.Rehearing denied
  PTAB · Mar 16, 2017 · IPR2016-00699 · APJ Richard H Marschall · IPR · Rehearing

  The Board denied Gillette’s rehearing request and left intact the denial of institution on claims 1–6 because the petition did not show that Ohtsubo disclosed the construed limitation.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “for Rehearing could have been made, but were not, in the Petition. Despite relying almost exclusively on Figure 7E for its construction, which shows the longitudinal axis of inertia passing through the center of mass of the handle, the Petition never addresses the center of mass or explains why the limitation should not be construed to require an axis passing through the center of mass. Pet. 10. Petitioner addresses the issue for the first time in the Request for Rehearing. We cannot misapprehend or overlook arguments never made in the Petition.” slip op. at 3

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “inertia,” a limitation found in claim 1, the only independent claim. In our Decision, we noted that Petitioner argued “longitudinal axis of inertia” did not have a defined meaning to one of ordinary skill in the art, and that Figure 7E of the ’282 patent discloses the longitudinal axis of inertia. Dec. 6. We agreed that Figure 7E discloses the limitation, and that the figure, for purposes of the Decision, was controlling on the meaning of the term given the absence of any textual description of the term in the specification and the parties’ reliance on Figure 7E. Id. at 8. We concluded that because Figure 7E discloses the longitudinal axis of inertia passing through the center of mass of the handle, and specifically labels the center of mass in the figure, that “at a minimum” the limitation “requires a longitudinal axis that passes through the center of mass of the handle.” Id. at 9. Based on that construction, we agreed with Shavelogic, Inc. (“Patent Owner”) that Petitioner failed to establish that the prior art discloses the limitation, and we denied institution. Id. at 11–13.” slip op. at 2

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Our conclusion as to the claim construction did not purport to construe the entire phrase “longitudinal axis of inertia of the handle” and only concluded that, “at a minimum,” the phrase requires a longitudinal axis that passes through the center of mass of the handle. Dec. 9. We did not suggest that the center of mass alone defined the axis, or further define the scope of “longitudinal axis of inertia.” Our limited construction was sufficient to address the issues raised by the Petition because Petitioner did not adequately establish that the prior art disclosed the limitation, so construed. Ohtsubo” slip op. at 6

  Claim construction§ 103 obviousness
  Patents in suitUS 8,789,282
• Robert Bosch LLC / Daimler AG v. Orbital Australia Pty LimitedRehearing denied
  PTAB · Feb 2, 2016 · IPR2015-01249 · APJ Jeremy M Plenzler · IPR · Rehearing

  The Board denied rehearing of the institution denial, finding no error in its conclusion that Petitioner had not shown claims 1, 3-7, 9, 12, 14, and 15 unpatentable.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “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.” 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.” 1 U.S. Pat. No. 5,080,064, iss. Jan. 14, 1992 (Ex. 1004, “Buslepp”). 2 U.S. Pat. No. 5,078,109, iss. Jan. 7, 1992 (Ex. 1005, “Yoshida”). PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). In its request for rehearing, the dissatisfied party must identify the place in the record where it previously addressed each matter it submits for review. 37 C.F.R. § 42.71(d).” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “A. Claim Construction Petitioner does not dispute our construction of the “initial position” recited in the claims. See Req. Reh’g 5–8. Petitioner, however, alleges that we incorrectly characterized their construction of that limitation. Id. at 5–6. We are not persuaded that we incorrectly characterized the construction set forth in the Petition. Notwithstanding that determination, Petitioner’s arguments on this issue are unpersuasive because we evaluated their challenges based on our construction of the “initial position” recited in the claims, which, as noted above, Petitioner does not dispute.” slip op. at 3

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “identification of Buslepp’s disclosure of a feed-forward determination in the form of the BASE VALUE.” Req. Reh’g 9 (citing Pet. 1, 12). This is an inaccurate characterization of our Decision. Our Decision specifically notes Petitioner’s reliance on Buslepp’s “BASE VALUE” as corresponding to the claimed initial position (Dec. 9–10), and Petitioner cites to this portion of our Decision in its Request (Req. Reh’g 11). Petitioner asserts that “[t]he only deficiency the Board notes with Buslepp, based on Patent Owner’s misleading statements, is that the THROTTLE POSITION (a different variable from the BASE VALUE) is determined by a feedback control loop.” Id. (citing Dec. 10). Ultimately, our Decision was based on Petitioner’s failure to explain sufficiently how Buslepp’s “BASE VALUE” discloses the claimed “initial position.” See Dec. 10. Petitioner essentially disagrees with our Decision, which is not a proper basis for requesting rehearing. As noted above, there is no dispute regarding the proper construction of the “initial position,” and we considered the arguments asserted in the Petition identifying Buslepp’s “BASE VALUE” as corresponding to the claimed “initial position.” Furthermore, as Petitioner acknowledges (Req. Reh’g 11), our Decision explicitly acknowledged that Buslepp’s “BASE VALUE” is an open-loop determination. See Dec. 10. The Petition failed to establish that Buslepp discloses that the BASE VALUE is the initial position for its throttle valve, rather than merely a value used to determine a position for the throttle valve. Claim 1 not only requires “determining an initial position of said throttle means,” but also “moving the throttle means to said initial position.”” slip op. at 3

  Claim construction§ 102 anticipation
  Patents in suitUS 5,606,951

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