- David’S Bridal, Inc. v. Jenny Yoo Collection, Inc.Rehearing grantedPTAB · Jun 15, 2017 · PGR2016-00041 · APJ Jennifer S Bisk · PGR · Rehearing
Rehearing was granted to consider David’s Bridal’s acquiescence argument but otherwise denied; institution of review of the patent’s sole claim remained denied.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“DISCUSSION The applicable standard for granting a request for rehearing is abuse of discretion. The requirements are set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a single 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, an opposition, or a reply. Petitioner argues that the Board: (1) “misapprehended and overlooked” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“SUMMARY Petitioner, David’s Bridal, Inc., requests rehearing of the Board’s decision (Paper 11) (“Institution Decision”), entered February 22, 2017, denying institution of inter partes review of the sole claim of U.S. Patent D744,723 (Ex. 1002) (“the ’723 patent”). Paper 12 (“Reh’g Req.”). For the reasons that follow, Petitioner’s request is granted to the extent that we address Petitioner’s “acquiescence argument,” but denied in all other respects.” slip op. at 2
None - PTAB · Mar 24, 2017 · IPR2016-01223 · APJ Jennifer S Bisk · IPR · Rehearing
The Board reconsidered its analysis but denied institution because Petitioner did not show McNeill disclosed or rendered obvious the claimed analog signal acquisition channel.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision[,]” which party “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.” 37 C.F.R. § 42.71(d). We grant Petitioner’s request insofar as we have reconsidered our analysis of whether Petitioner has shown that the prior art discloses the claimed “analog acquisition channel,” but we decline to modify our previous decision. slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“inherency. First, Petitioner’s expert states that “[i]t is implicit and inherent for a scanner to have an analog signal acquisition channel for receiving a signal from analog source.” Reh’g Req. 4 (quoting Ex. 1306 ¶ 98). This sentence is exactly, word for word, the same as the sentence in the Petition it is relied upon to support. Pet. 35. Repetition of this legal conclusion in a declaration signed by a technical expert adds nothing to Petitioner’s attorney argument. It is not persuasive evidence. Second, both the Petition and the expert state that “[a] typical scanner at the priority date of the ’746 patent had a CCD and analog to digital circuitry to produce a digital representation of an image.” Pet. 35; Ex. 1306 ¶ 98. This statement does not adequately support a finding that the scanner discussed in McNeill necessarily discloses an analog signal acquisition channel. “Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). This evidence goes only to a typical scanner, not all scanners. Petitioner has not directed us to any other evidence supporting a finding of inherency. And as noted in our Institution Decision (Inst. Dec. 11), the Petition does not address why a person of ordinary skill in the art would find the addition of an analog signal acquisition channel obvious based on McNeill’s disclosure. The closest Petitioner gets to addressing this issue is in a statement that says “[a]dding an analog sensor to the ‘exemplary system’ of McNeill is inherent, but if it is not, a POSITA would find it obvious to do so.” Pet. 35. This vague and conclusory statement, part of a section of the brief which does not even reference the term “analog signal acquisition channel,” is insufficient to show that Petitioner is reasonably likely to prevail in showing that a limitation of the claim, not expressly disclosed in the reference, would have been obvious.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“the claimed “analog signal acquisition channel,” such an element is inherently disclosed by McNeill’s scanner. Reh’g Req. 3–5. Because McNeill’s scanner produces analog signals and then transmits those signals to an analog-to-digital converter, Petitioner asserts the scanner must “necessarily” include a channel connecting the analog sensor. Id. at 5 (citing Ex. 1306 ¶ 98. However, Petitioner’s evidence does not adequately support a finding of inherency. Petitioner relies on expert testimony to support its assertion of inherency. First, Petitioner’s expert states that “[i]t is implicit and inherent for a scanner to have an analog signal acquisition channel for receiving a signal from analog source.” Reh’g Req. 4 (quoting Ex. 1306 ¶ 98). This sentence is exactly, word for word, the same as the sentence in the Petition it is relied upon to support. Pet. 35. Repetition of this legal conclusion in a declaration signed by a technical expert adds nothing to Petitioner’s attorney argument. It is not persuasive evidence. Second, both the Petition and the expert state that “[a] typical scanner at the priority date of the ’746 patent had a CCD and analog to digital circuitry to produce a digital representation of an image.” Pet. 35; Ex. 1306 ¶ 98. This statement does not adequately support a finding that the scanner discussed in McNeill necessarily discloses an analog signal acquisition channel. “Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). This evidence goes only to a typical scanner, not all scanners. Petitioner has not directed us to any other evidence supporting a finding of inherency.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“And as noted in our Institution Decision (Inst. Dec. 11), the Petition does not address why a person of ordinary skill in the art would find the addition of an analog signal acquisition channel obvious based on McNeill’s disclosure. The closest Petitioner gets to addressing this issue is in a statement that says “[a]dding an analog sensor to the ‘exemplary system’ of McNeill is inherent, but if it is not, a POSITA would find it obvious to do so.” Pet. 35. This vague and conclusory statement, part of a section of the brief which does not even reference the term “analog signal acquisition channel,” is insufficient to show that Petitioner is reasonably likely to prevail in showing that a limitation of the claim, not expressly disclosed in the reference, would have been obvious.” slip op. at 5
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,504,746
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.