- Apple Inc. v. MPH Technologies OYInstitution deniedPTAB · Nov 6, 2019 · IPR2019-00825 · APJ Sally C Medley · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1 and 2 were obvious over RFC3104 and Grabelsky.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“established a reasonable likelihood that Petitioner would prevail in its challenge to claims 1 and 2 as unpatentable under 35 U.S.C. § 103(a) based on RFC3104 and Grabelsky.6 III. CONCLUSION For the foregoing reasons, we determine that Petitioner has not shown a reasonable likelihood that it would prevail in showing that claims 1 and 2 of the ’397 patent are unpatentable. IV. ORDER For the foregoing reasons, it is ORDERED that the Petition is denied as to all challenged claims, and no trial is instituted.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We agree with Patent Owner that RFC3104 does not describe any message ever being sent from address Nb to address Na, or that RSIP server N (the intermediate computer) sends or even can send any message from itself to itself. Prelim. Resp. 15. Petitioner does not identify any such description in RFC3104. Rather, Petitioner relies on Dr. Goldschlag’s testimony in support of Petitioner’s assertion that a person having ordinary skill in the art would have understood that a secure message sent to RSIP server N via address Nb is also sent to address Na as part of RFC3104’s tunneling operation. Pet. 39–40 (citing Ex. 1002 ¶¶ 105–106). Dr. Goldschlag’s testimony, however, is conclusory and unsupported by record evidence. Ex. 1002 ¶¶ 105–106. For example, Dr. Goldschlag does not explain how RFC3104’s “tunneling” operation results in the understanding that a message sent to RSIP server N via address Nb is also sent to address Na. Id.5 Dr. Goldshlag’s testimony provides no factual basis in support of the assertion that a person having ordinary skill in the art would have understood that tunneling as described in RFC3104 means that a message sent to server N via address Nb is also sent to address Na. Such ipse dixit is insufficient to show a reasonable likelihood of success. See Securus Techs. Inc. v. Glob. Tel*Link Corp., 701 F. App’x 971, 974–76 (Fed. Cir. 2017) (affirming the Board’s determination that conclusory testimony by an expert witness was insufficient to satisfy Petitioner’s burden of showing that the skilled artisan would have modified the references as asserted); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 11
- Expert testimonyPetitioner expert discountedDecided for patent owner
“testimony in support of Petitioner’s assertion that a person having ordinary skill in the art would have understood that a secure message sent to RSIP server N via address Nb is also sent to address Na as part of RFC3104’s tunneling operation. Pet. 39–40 (citing Ex. 1002 ¶¶ 105–106). Dr. Goldschlag’s testimony, however, is conclusory and unsupported by record evidence. Ex. 1002 ¶¶ 105–106. For example, Dr. Goldschlag does not explain how RFC3104’s “tunneling” operation results in the understanding that a message sent to RSIP server N via address Nb is also sent to address Na. Id.5 Dr. Goldshlag’s testimony provides no factual basis in support of the assertion that a person having ordinary skill in the art would have understood that tunneling as described in RFC3104 means that a message sent to server N via address Nb is also sent to address Na. Such ipse dixit is insufficient to show a reasonable likelihood of success. See Securus Techs. Inc. v. Glob. Tel*Link Corp., 701 F. App’x 971, 974–76 (Fed. Cir. 2017) (affirming the Board’s determination that conclusory testimony by an expert witness was insufficient to satisfy Petitioner’s burden of showing that the skilled artisan would have modified the references as asserted); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 12
- Skill levelSkill level petitioner adoptedOther
“4 Relying on the testimony of Dr. David Goldschlag, Petitioner offers an assessment as to the level of skill in the art at the time of the ’397 patent. Pet. 14 (citing Ex. 1002 ¶¶ 29–30). Patent Owner does not propose an alternative assessment. See generally Prelim. Resp. To the extent necessary, and for purposes of this Decision, we accept the assessment offered by Petitioner as it is consistent with the ’397 patent and the asserted prior art.” slip op. at 8
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,762,397 - Samsung Electronics America, Inc. / Asus Computer International, Inc. v. James B. GoodmanSome claims unpatentablePTAB · Oct 29, 2019 · IPR2017-02021 · APJ Kimberly Mcgraw · IPR · Final written decision
Claims 1, 5, 10, and 16 are unpatentable over Ooishi and Palaniswami, with Abe added for claims 10 and 16; claims 2–4, 6–9, and 11–15, 17–20 were not shown unpatentable.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“reasonable construction consistent with the Specification of a control device “for selectively electrically isolating said memory devices from respective address lines and respective control lines so that when said memory devices are electrically isolated, any signals received on said respective address lines and respective control lines do not reach said memory devices” as recited in independent claims 1 and 10 requires that the control device electrically isolate the memory devices from all address and control lines that communicate with the memory devices.10” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere Co, 383 U.S. 1, 17 (1966). Petitioner contends a person of ordinary skill in the art at the time of the alleged invention of the ’315 patent (a “POSITA”) would have had, inter alia, a bachelor’s degree in electrical, electronics, computer engineering; or the equivalent training, and would have had approximately 2 to 3 years of experience in computer systems, circuits, electronics, or a related discipline. Pet. 9; Ex. 1002 ¶¶ 27–30. Patent Owner does not contest Petitioner’s description of the level of ordinary skill. See PO Resp. 8. Based on our review of the ’315 patent, the cited prior art, and Dr. Wolfe’s testimony, we determine a specific finding regarding ordinary skill level is not required as the prior art reflects an appropriate level. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”). However, to the extent a specific finding regarding the level of skill is required, we find Petitioner’s articulation of a person of ordinary skill in the art is consistent with the teachings of the prior art and adopt Petitioner’s description of a POSITA as someone who “would have had a bachelor’s degree in electrical, electronics, or computer engineering; or the equivalent training, and would have had approximately two to three years of experience in computer systems, circuits, electronics, or a related discipline.” See Pet. 9.” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). A reference is deemed publically accessible upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence can locate it. Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1350–51 (Fed. Cir. 2008). Petitioner asserts JESD21-C was published January 1997 and is prior art under pre-AIA 35 U.S.C. § 102(b). Pet. 37–38. As support, Petitioner relies upon the Declaration of John J. Kelley (“the Kelley Declaration”), the current President of the Solid State Technology Association of the Joint Electron Device Engineering Council (“JEDEC”). See Ex. 1007 ¶ 2. Mr. Kelly states that JEDEC specification JESD21-C, Configurations for Solid State Memories, Release 7 (January 1997), a copy of which is attached to his declaration as Exhibit 17, “was made publicly available in January 1997.” Id. ¶¶ 4, 7. Mr. Kelley testifies that in January 1997 copies of the entire JESD21-C volume “would . . . have been available for purchase by anyone in the public” and that “pages comprising the specifically updated modules would have been sent to those who subscribed to the annual updating service for JESD21-C.” Id. ¶ 6. Patent Owner does not dispute that JESD21-C qualifies as prior art under 35 U.S.C. § 102(b). See PO Resp. 7. Based on the current record, we determine JESD21-C qualifies as a prior art printed publication under § 102(b).” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Petitioner has not persuasively shown that Dell discloses a control device that electrically isolates the memory devices as required under the claim construction set forth above in devices even when the devices are in a low-power or self-refresh mode, Petitioner has not shown that Dell’s memory devices are electrically isolated from “respective control lines” such that “any signals received on said . . . respective control lines do not reach said memory devices” as required by claims 1 and 10. Accordingly, we determine Petitioner has not shown by a preponderance of the evidence that claim 1 of the ’315 patent is unpatentable over Dell or that claim 10 is unpatentable over the combined teachings of Dell and Abe.” slip op. at 21
Patent outcomesUS 6,243,315 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,243,315 - ZTE (USA) Inc. v. Fractus, S.A.Rehearing deniedPTAB · Oct 4, 2019 · IPR2018-01457 · APJ Kevin C Trock · IPR · Rehearing
The Board denied ZTE’s rehearing request and left institution denied, finding no abuse of discretion under § 325(d) or § 314(a).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“DISCUSSION The applicable standard for granting a request for rehearing of a petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party seeking rehearing has the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for patent owner
“Petitioner appears to limit the inquiry to evaluation of the prior art by a particular examiner, namely the ’069 examiner. However, § 325(d) provides that “the Director may take into account whether . . . the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d) (emphasis added). Moreover, the Becton Dickinson factors are non-exclusive, and factor 4 considers, “the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection.” Becton Dickinson at 17 (emphasis added). Neither Section 325(d) nor Becton Dickinson appears to limit the inquiry to a particular examiner as Petitioner argues. Consideration of the asserted prior art by the Office during previous examination of the patent at issue or closely related patents is, therefore, a relevant consideration under Section 325(d).” slip op. at 5
- Other 314aDecided for patent owner
“The parties’ Joint Notice Regarding Scheduling Conference from the district court litigation appears to indicate that the case is going forward. We further note that district court has completed claim construction. See Ex. 2038. As such, our reasoning from the Decision regarding section 314(a) remains sound. See Dec. 16 (stating that we were “persuaded that granting institution would have the Board consider the same prior art and essentially identical evidence and arguments already under consideration in the Texas District Court Case. Given these circumstances, our discretion under 35 U.S.C. § 314(a) falls in favor of denying institution.”). In its Request for Rehearing, Petitioner has not presented any persuasive evidence or arguments to demonstrate that our exercise of discretion under 35 U.S.C. § 314(a) was based on an erroneous interpretation of the law or on factual findings that are not supported by substantial evidence, represents an unreasonable judgment in weighing relevant factors, or misapprehended or overlooked a significant fact.” slip op. at 9
Discretionary denialPatents in suitUS 8,976,069 - ZTE (USA) Inc. v. Fractus, S.A.Rehearing deniedPTAB · Oct 2, 2019 · IPR2018-01455 · APJ Kevin C Trock · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution under § 325(d) and § 314(a).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party seeking rehearing has the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“similarities and differences between the asserted art and the prior art involved during examination; and (2) the cumulative nature of the asserted art and the prior art evaluated during examination. Becton, Dickinson at 17– 18. Here, Petitioner concedes that the art asserted in the Petition, namely Misra I, Misra II, and Grangeat, was involved in the prior PTO reexamination proceedings, but argues that the asserted art was considered in a substantially different way than presented in the Petition. Req. Reh’g 8. The manner in which a petitioner relies on the prior art, however, is considered as part of Becton Dickinson factor 4 (the extent of the overlap between the arguments made during examination and the manner in which a petitioner relies on the prior art or a patent owner distinguishes the prior art), not factors 1 and 2. We do not agree that the Board was unreasonable in determining that factors 1 and 2 weighed in favor of denying institution, given that the art asserted in the Petition was also presented and considered in the reexamination proceedings.” slip op. at 4
- Other 314aInstitution denied discretionary otherDecided for patent owner
“litigation is stayed. Opp. 1. Patent Owner advises, “on March 15, 2019, the court issued a claim construction order reaffirming the earlier construction of the terms relevant to the present proceeding. Id. (citing Ex. 2028, passim). Patent Owner argues, “the claim construction order evidences the new court’s clear intent to proceed with the case.” Id. Patent Owner also advises that “[o]n April 12, 2019, the parties submitted a Joint Notice Regarding Scheduling Conference (1) requesting a trial date predating any conclusion to an instituted IPR, (2) confirming that fact discovery has completed, and (3) requesting a close to expert discovery on May 31, 2019.” Id. (citing Ex. 2029, 1–3). The parties’ Joint Notice Regarding Scheduling Conference from the district court litigation appears to indicate that the case is going forward. See Ex. 2029. We further note that district court has completed claim construction. See Ex. 2028. As such, our reasoning from the Decision regarding section 314(a) remains sound. See Dec. 20 (stating that we were “persuaded that granting institution would have the Board consider the same prior art and essentially identical evidence and arguments already under consideration in the Texas District Court Case. Given these circumstances, our discretion under 35 U.S.C. § 314(a) falls in favor of denying institution.”).” slip op. at 8
Discretionary denialPatents in suitUS 7,394,432 - ZTE (USA) Inc. v. Fractus, S.A.Rehearing deniedPTAB · Oct 1, 2019 · IPR2018-01451 · APJ Kevin C Trock · IPR · Rehearing
The Board denied ZTE’s rehearing request and maintained denial of institution under § 325(d) and § 314(a), finding no abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“DISCUSSION The applicable standard for granting a request for rehearing of a petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party seeking rehearing has the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for patent owner
“similarities and differences between the asserted art and the prior art involved during examination; and (2) the cumulative nature of the asserted art and the prior art evaluated during examination. Becton, Dickinson at 17– 18. Here, Petitioner concedes that the art asserted in the Petition, namely Misra I, Misra II, and Grangeat, was involved in the prior PTO reexamination proceedings, but argues that the asserted art was considered in a substantially different way than presented in the Petition. Req. Reh’g 8–9. The manner in which a petitioner relies on the prior art, however, is considered as part of Becton Dickinson factor 4 (the extent of the overlap between the arguments made during examination and the manner in which a petitioner relies on the prior art or a patent owner distinguishes the prior art), not factors 1 and 2. We do not agree that the Board was unreasonable in determining that factors 1 and 2 weighed in favor of denying institution, given that the art asserted in the Petition was also presented and considered in the reexamination proceedings.” slip op. at 4
- Other 314aDecided for patent owner
“The parties’ Joint Notice Regarding Scheduling Conference from the district court litigation appears to indicate that the case is going forward. See Ex. 2030. We further note that district court has completed claim construction. See Ex. 2029. As such, our reasoning from the Decision regarding section 314(a) remains sound. See Dec. 20 (stating that we were “persuaded that granting institution would have the Board consider the same prior art and essentially identical evidence and arguments already under consideration in the Texas District Court Case. Given these circumstances, our discretion under 35 U.S.C. § 314(a) falls in favor of denying institution.”). In its Request for Rehearing, Petitioner has not presented any persuasive evidence or arguments to demonstrate that our exercise of discretion under 35 U.S.C. § 314(a) was based on an erroneous interpretation of the law or on factual findings that are not supported by substantial evidence, represents an unreasonable judgment in weighing relevant factors, or misapprehended or overlooked a significant fact.” slip op. at 9
Discretionary denialPatents in suitUS 7,397,431 - SPTS Technologies Ltd. v. Plasma-Therm LLCNo claims unpatentablePTAB · Aug 26, 2019 · IPR2018-00618 · APJ Elizabeth M Roesel · IPR · Final written decision
Claims 1 and 2 were not shown unpatentable because Singh was not shown to be prior art; the Board did not reach the obviousness ground.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes constructions for six claim terms. Pet. 32–38. Patent Owner contends that no claim term requires construction. PO Resp. 6–7. We determine that no claim term requires express construction for purposes of resolving the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). B.” slip op. at 11
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Level of Ordinary Skill in the Art In the Institution Decision, we adopted Patent Owner’s definition of a person of ordinary skill in the art (“POSITA”). Dec. 13. According to Patent Owner, a POSITA would have at least a Bachelor’s or Master’s degree in electrical engineering, chemical engineering, materials science, physics or chemistry, or a similar field, and at least three to four years of experience in process development or process engineering related to plasma etching. Alternatively, this person would have a Ph.D. in physics, chemistry, electrical engineering, materials science or a similar field. Prelim. Resp. 9. In the Institution Decision, we rejected Petitioner’s description of the field in which a POSITA would have had work experience as inconsistent with scope of technology described in the ’332 patent. Pet. 31; Dec. 12–13. Neither party challenges our determinations regarding the level of ordinary skill in the art, as set forth in the Institution Decision. Accordingly, in this final written decision, we continue to apply Patent Owner’s definition of a POSITA quoted above.” slip op. at 12
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“to a POSITA that the invention possessed by the inventors includes “the frame of the work piece having an exposed lower surface,” as recited in claim 1. Ex. 1001, 16:8–9. Our finding is supported by the following disclosures of the ’450 application and the corresponding disclosures of the ’119 parent application. Ex. 1008, 14 (“As is shown in Figure 3, the thinned substrate is then adhered to a thin tape (5) which in turn is mounted to a rigid frame (6).”); id. at 17 (“The transfer arm may support both the tape and frame or the frame alone.”); id. at 18 (“The lift mechanism touches the frame area and provides no point contact to the substrate.”); id. (“Figure 13 shows the lift mechanism contacting the frame from the underside.”); Ex. 1009, 18, 22, 24. Our finding is supported by the testimony of both parties’ experts concerning how a POSITA would have understood the disclosures of the priority applications. Ex. 2002 ¶¶ 53, 54; Ex. 2010, 41:24–42:20, 49:18– 50:4, 51:8–15, 59:21–61:2. Our finding is supported by Petitioner’s contentions and the testimony of both parties’ experts concerning conventional techniques for joining a tape to a frame known to a POSITA at the time the ’450 provisional application was filed. Pet. 65–66; Ex. 1013 ¶¶ 32, 125–127; Ex. 2002 ¶¶ 54, 55; Ex. 2009 ¶¶ 11–15; Ex. 2010, 13:13– 20, 16:1–6, 17:9–17, 23:8–24:16. Our finding is also supported by Dr. Spencer’s declaration testimony concerning the meaning of “a portion of the work piece overlapped by the frame” (Ex. 1013 ¶¶ 82, 83) and his admission that “the frame area” in the ’450 provisional application has the same meaning (Ex. 1028 ¶ 10). It is true that the drawings of the priority applications do not show the frame of the work piece as having an exposed lower surface. Nor do they show the frame as having flat edges or notches such that conventional methods for cutting the tape would leave portions exposed, i.e., not covered by tape. Nevertheless, in view of the record as a whole, including the parties’ and experts’ agreement that the frame of the work piece having an exposed lower surface is conventional, we are persuaded that the priority applications reasonably convey to a POSITA that this feature is part of the invention possessed by the inventors. Tr. 19:1–4; Pet. Reply 6; PO Resp. 14–17; Pet. 65–66; Ex. 1013 ¶¶ 125–127; Ex. 2002 ¶¶ 54, 55; Ex. 2009 ¶¶ 11–15; Ex. 2010, 23:8–24:16. See Hologic, 884 F.3d at 1362 (“The written description does not require that every claimed element be illustrated in the figures, particularly in predictable arts and where the element not depicted is conventional and not ‘necessary for the understanding of the subject matter sought to be patented.’” (quoting 35 U.S.C. § 113)).” slip op. at 38
Patent outcomesUS 8,785,332 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 8,785,332 - Dispersive Networks, Inc. v. Nicira, Inc.Rehearing grantedPTAB · Jul 17, 2019 · PGR2018-00063 · APJ Debra K Stephens · PGR · Rehearing
Patent Owner’s rehearing request was granted as to claim 7, which was removed from institution under § 112(b); institution on claims 1–6 and 8–11 remained unchanged.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“We agree. We erroneously instituted review of claim 7 under 35 U.S.C. § 112(b). We modify our Decision to the extent that we do not institute on claim 7 under 35 U.S.C. § 112(b). That is, we institute a post-grant review of claims 1–6 and 8–11 of the ’815 Patent on the challenge that these claims are indefinite and unpatentable under 35 U.S.C. § 112(b).” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We agree. We erroneously instituted review of claim 7 under 35 U.S.C. § 112(b). We modify our Decision to the extent that we do not institute on claim 7 under 35 U.S.C. § 112(b). That is, we institute a post-grant review of claims 1–6 and 8–11 of the ’815 Patent on the challenge that these claims are indefinite and unpatentable under 35 U.S.C. § 112(b).” slip op. at 10
NonePatents in suitUS 9,722,815 - Juniper Networks, Inc. v. Finjan, Inc.Rehearing deniedPTAB · Jul 16, 2019 · IPR2019-00060 · APJ Miriam L Quinn · IPR · Rehearing
The Board granted rehearing only to address the overlooked construction dispute, but again denied institution because Jensen did not teach “mobile protection code.”
RulingsRehearing decision- RehearingRehearing, deniedDenied
“(“Dec. on Inst.”). The panel concluded that Petitioner had not shown a reasonable likelihood of prevailing in the asserted obviousness grounds because, for a particular ground, Petitioner failed to demonstrate sufficiently that Jensen1 teaches “mobile protection code.” Dec. on Inst. 11−12.2 Petitioner has filed a Request for Rehearing. Paper 8 (“Req. Reh’g”). Petitioner argues that the scope for the claim term “mobile protection code” was in dispute, and that we “failed to resolve the key claim construction dispute between the parties.” Id. at 1. According to Petitioner, rehearing is warranted to resolve the claim construction dispute and “fix the plain error in the Institution Decision.” Id. We are persuaded that in failing to address Petitioner’s construction, we overlooked the matter raised in Petitioner’s Request for Rehearing. Nevertheless, for the reasons discussed infra, after giving due consideration to Petitioner’s argument, we are persuaded that our decision to deny institution was correct, and therefore we deny the request insofar as it calls upon us to institute trial.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“(“Dec. on Inst.”). The panel concluded that Petitioner had not shown a reasonable likelihood of prevailing in the asserted obviousness grounds because, for a particular ground, Petitioner failed to demonstrate sufficiently that Jensen1 teaches “mobile protection code.” Dec. on Inst. 11−12.2 Petitioner has filed a Request for Rehearing. Paper 8 (“Req. Reh’g”). Petitioner argues that the scope for the claim term “mobile protection code” was in dispute, and that we “failed to resolve the key claim construction dispute between the parties.” Id. at 1. According to Petitioner, rehearing is warranted to resolve the claim construction dispute and “fix the plain error in the Institution Decision.” Id. We are persuaded that in failing to address Petitioner’s construction, we overlooked the matter raised in Petitioner’s Request for Rehearing. Nevertheless, for the reasons discussed infra, after giving due consideration to Petitioner’s argument, we are persuaded that our decision to deny institution was correct, and therefore we deny the request insofar as it calls upon us to institute trial.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“1 Protection Wrappers: A Simple and Portable Sandbox for Untrusted Applications, Proceedings on the 8th ACM SIGOPS European Workshop on Support for Composing Distributed Applications, filed in the record as Exhibit 1006. 2 We also exercised our discretion under 35 U.S.C. §§ 314(a) and 325(d) and denied institution. Petitioner does not challenge the exercise of discretion in this request for rehearing.” slip op. at 2
- Other 314aInstitution denied discretionary otherInstitution denied
“1 Protection Wrappers: A Simple and Portable Sandbox for Untrusted Applications, Proceedings on the 8th ACM SIGOPS European Workshop on Support for Composing Distributed Applications, filed in the record as Exhibit 1006. 2 We also exercised our discretion under 35 U.S.C. §§ 314(a) and 325(d) and denied institution. Petitioner does not challenge the exercise of discretion in this request for rehearing.” slip op. at 2
Claim constructionDiscretionary denialPatents in suitUS 7,647,633 - Infinera Corp. v. Core Optical Technologies, LLCRehearing deniedPTAB · 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 obviousnessPatents in suitUS 6,782,211 - Juniper Networks, Inc. v. Parity Networks, LLCRehearing deniedPTAB · Jun 17, 2019 · IPR2018-01643 · APJ Jeffrey S Smith · IPR · Rehearing
The Board denied Juniper’s rehearing request, leaving institution denied because the Petition did not explain how Schwartz taught the claimed virtual output queues.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW Section 37 C.F.R. § 42.71(d) states the following: 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.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundOther
“The Petition did not explain how the background section of Schwartz teaches “virtual output queues” as claimed. Nor did the Petition explain how the teachings of the background section of Schwartz would have been modified to teach “establishing at each input port, a number of virtual output queues equal to the number of output ports” as claimed, especially in light of Schwartz’s discouragement of quadratically increasing the number of queues as the number of input/output ports increases. See Para-Ordnance Mfg., Inc. v. SGS Importers Int’l, Inc. 73 F.3d 1085, 1090 (Fed. Cir. 1995) (“A reference may be said to teach away when a person of ordinary skill, upon [examining] the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.”). To the contrary, the Petition relied on Schwartz’s disclosure that the invention “avoid[s] the quadradic increase in packet queues, relative to increasing numbers of input/output ports” and “provides for the linear increase in packet queues, relative to increasing numbers of input/output ports.” See Pet. 29 (quoting Ex. 1004, 3:2–13). The Petition did not explain how providing a linear increase in packet queues relative to increasing numbers of input/output ports teaches “establishing at each input port, a number of virtual output queues equal to the number of output ports.”” slip op. at 6
§ 103 obviousnessPatents in suitUS 6,831,891
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.