- Delphi Technologies, LLC v. Microchip Technology Inc.Rehearing deniedPTAB · Dec 11, 2018 · IPR2017-00864 · APJ Daniel N Fishman · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1, 3–5, 7–9, 11–15, and 18–21 unpatentable because their scope did not require the buffer to store the specified information.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“party challenging the decision,” and, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the record. 37 C.F.R. § 42.71(d). III. DISCUSSION Patent Owner’s Request does not identify any arguments that we “misapprehended or overlooked” let alone “specifically identify” all such matters. Thus, Patent Owner’s Request fails to comply with our rules. Despite this failure of Patent Owner’s Request, we address the substance of Patent Owner’s argument as follows.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“misapprehended any argument. Furthermore, we are unpersuaded that our Decision was in error regarding independent claims 1, 3, 7, 18, and 23 because these claims have a different scope than claims 17, 22, and 24. As Patent Owner correctly noted, our construction of “dedicated USB connection” is “a USB connection that may include some shared physical communication path and includes a buffer for maintaining dedicated address, configuration and response information for the connection.” Dec. 33. Thus, a dedicated USB connection must include a buffer that is capable of storing/maintaining “dedicated address, configuration and response information” regardless of whether such data is actually stored/maintained therein.” slip op. at 3
Claim constructionPatents in suitUS 7,523,243 - Delphi Technologies, LLC v. Microchip Technology Inc.Rehearing deniedPTAB · Dec 11, 2018 · IPR2017-00861 · APJ Daniel N Fishman · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claim 25 unpatentable because its ACR data limitation did not distinguish its scope and the Board had not misapprehended or overlooked the controller argument.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“party challenging the decision,” and, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the record. 37 C.F.R. § 42.71(d). III. DISCUSSION Patent Owner’s Request does not identify any arguments that we “misapprehended or overlooked” let alone “specifically identify” all such matters. Thus, Patent Owner’s Request fails to comply with our rules. Despite this failure of Patent Owner’s Request, we address the substance of Patent Owner’s arguments below.” slip op. at 2
- BurdenDecided for patent owner
“party challenging the decision,” and, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the record. 37 C.F.R. § 42.71(d). III. DISCUSSION Patent Owner’s Request does not identify any arguments that we “misapprehended or overlooked” let alone “specifically identify” all such matters. Thus, Patent Owner’s Request fails to comply with our rules. Despite this failure of Patent Owner’s Request, we address the substance of Patent Owner’s arguments below.” slip op. at 2
NonePatents in suitUS 7,627,708 - PTAB · Nov 20, 2018 · CBM2018-00018 · APJ Josiah C Cocks · CBM · Rehearing
The Board denied Petitioner’s rehearing request, leaving in place the denial of CBM review of claims 1–17 and 22–24 because the patent did not qualify as a covered business method patent.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“completion of a purchase of a ticket, is a “recitation of a financial operation” sufficient to establish that claims 23 recite a covered business method. See 37 C.F.R. § 42.304(a) (“The petitioner must demonstrate that the patent for which review is sought is a covered business method patent . . . .”). Petitioner simply does not now explain persuasively why the transmission of a secured validating display by a computer system in the course of validating a ticket that had been purchased constitutes activity that is “active[] and contemporaneous[]” with the “management or administration of a financial product or service.” See Req. Reh’g 3–4. In order to be eligible for a CBM review, the challenged patent must “claim[] a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service . . . .” AIA § 18(d)(1). After considering the Petition, we determined that Petitioner did not meets its burden of demonstrating that the patent for which review is sought is a covered business method patent. Although Petitioner may disagree with our determination as to claim 23, disagreement is not, itself, a proper basis for requesting rehearing. Here, Petitioner does not identify persuasively that we misapprehended or overlooked any matter in reaching a determination other than that desired by Petitioner.” slip op. at 5
- BurdenDecided for patent owner
“The burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): (d) Rehearing. . . . 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. We address below, in the order presented in the Request for Rehearing, the matters Petitioner asserts we overlooked or misapprehended.” slip op. at 3
NonePatents in suitUS 9,239,993 - Power Integrations, Inc. v. Semiconductor Components Industries, LLCAll claims unpatentablePTAB · Nov 7, 2018 · IPR2017-01329 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 16–18 and 21 are unpatentable as obvious over the combination of Yang ’089 and Yang ’824.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“In consideration of the above, we recognize a programmable signal can be selected to be constant or variable over time. Therefore, in this Decision, we apply the same construction applied in the Decision to Institute, i.e., we construe “programmable signal” to mean a selectable or potentially variable voltage or current signal. We address whether the combination of the references discloses a correlation between the claimed “programmable signal” and the claimed “input of the LED drive circuit” in our analysis of the combination of Yang ’089 and Yang ’824 that appears later in this Decision.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“motivated to combine the programmable LED driver of Yang ’089 with the current loop disclosed in Yang ’824 to generate the signal that switches the transistor switch. Pet. 40–41. Yang ’089 controls the current on the primary side on the magnetic device and uses that controlled primary side current to drive the LEDs. Ex. 1004, Fig. 3. Yang ’824 also controls the current on the primary side of the magnetic device (i.e., transformer 10), but provides the output current to the LEDs on the secondary side of the magnetic device. Ex. 1003, Fig. 1. Specifically, “[t]he secondary side switching current IS is determined by the primary side switching current IP and the winding turns of the transformer 10.” Id. at 3:28–30. Petitioner argues that the primary side regulator of Yang ’824 provides safety enhancing galvanic isolation and that Yang ’824 states “it is desirable to provide a control circuit for controlling output current of the power converter at the primary side of the power converter.” Id. at 40 (citing Ex. 1003, 1:18–20). Thus, Petitioner asserts that it would have been desirable to make a primary side controller for controlling LEDs with a programmable input by combining the teachings of Yang ’824 and Yang ’089. Id. (citing Bohannon Decl., Ex. 1008 ¶¶ 101, 105). According to Petitioner, using a programmable input such as that disclosed in Yang ’089 to modulate the output current of the switching signal of the controller, as shown in Yang ’824, uses a known technique to modify a known controller and yields predictable results. Id. at 41.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“of the LED by programming delay time T D. PO Resp. 44 (citing Pet. 48– 49). In Yang ’089, there is no clear correlation between the value of VCNT and the input of the LED drive circuit. Although delay T D is a function of the value of VCNT, VCNT in Yang ’089 appears to be a function of the desired LED brightness, independent of an input of the LED drive circuit. Although Petitioner explains that VCNT is programmable and that claim 16 does not recite how the programmable signal is generated, as is the case with all but the embodiment of Figure 2 of the ’764 patent, it remains unclear how VCNT in Yang ’089 is correlated to an input of the LED drive circuit. Pet. Reply 22–24.” slip op. at 21
- ExcludeMotion to exclude, deniedDenied
“Mr. Bohannon’s testimony. There need not be a perfect match between the expert’s qualifications and the patent at issue. See SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010). It is not necessary for Mr. Bohannon to demonstrate that he spent the bulk of his career designing power supplies. Indeed, to testify as an expert under FRE 702, a person need not be one of ordinary skill, but may be “‘qualified in the pertinent art.’” See B/E Aerospace, Inc. v. MAG Aerospace Indus. LLC, Case IPR2014-01513 (PTAB March 18, 2016) slip op. at 13–14 (Final Written Decision) (sustaining consideration of testimony of expert witness that lacked hands-on experience with the claimed subject matter). We agree with Petitioner that Mr. Bohannon’s experience over 25 years, including his work on “buck and boost” converters and flyback power supplies provides him sufficient experience and knowledge of the claimed subject matter for his opinion to remain of record. Indeed, although the academic background of Patent Owner’s expert, Dr. Holberg, is extensive, his CV and declaration state only that he has “experience with the technology described in the ’764 Patent” including various electrical components and circuits involved (resistors, transformers, switching circuit). Ex. 2001 ¶ 8. Patent Owner’s expert, Dr. Holberg, states that he has designed high frequency synthesizers for hard-disk read-channel applications and started a company where he designed A/D converters, and other circuits, but does not state explicitly that he designed power supplies. Id. ¶ 11. We further note that neither expert’s testimony has been a significant factor in determining the outcome of this proceeding. Our citations to Mr. Bohannon’s testimony mostly concern Patent Owner’s criticism of Mr. Bohannon’s testimony in the Patent Owner Response. For example, Petitioner points out that Patent Owner’s discussion of the “input circuit” limitation in claim 16, alleging that Mr. Bohannon did not appreciate the difference between a wire and a circuit with buffers and other circuit elements, takes Mr. Bohannon’s testimony out of the context of the combination of the references. Opp. To Mot. To Exclude 4–5. Policy considerations for excluding expert testimony, such as those implemented by the gatekeeping framework established by the Supreme Court in Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579 (1993), are less compelling in bench proceedings such as inter partes reviews than in jury trials. See, e.g., Volk v. United States, 57 F. Supp. 2d 888, 896 n.5 (N.D. Cal. 1999); In re Bay Area Material Handling, Inc., No. C 95-1163 VRW, 1995 WL 729300, at *6 (N.D. Cal. Dec. 4, 1995). In the context of this proceeding, we can assess adequately each expert’s testimony and assign it appropriate weight.” slip op. at 34
Patent outcomesUS 9,049,764 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 9,049,764 - PTAB · Nov 6, 2018 · IPR2017-01328 · APJ Kamran Jivani · IPR · Final written decision
The Board canceled claims 14 and 15 and denied entry of substitute claims 16 and 17 because their feedback-signal limitation introduced unsupported new matter.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“must determine whether the motion to amend meets the statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121. A motion to amend “may not enlarge the scope of the claims of the patent or introduce new matter.” 35 U.S.C. § 316(d)(3). Further, our rules provide that “[a] motion to amend may be denied where . . . [t]he amendment seeks to enlarge the scope of the claims of the patent or introduce new subject matter.” 37 C.F.R. § 41.121(a)(2)(ii). In the Federal Circuit’s en banc decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017), the lead plurality opinion explains that “the patent owner must satisfy the Board that the statutory criteria in § 316(d)(1)(a)–(b) and § 316(d)(3) are met and that any reasonable procedural obligations imposed by the Director are satisfied.” Id. at 1305– 06; see also id. at 1341 (“There is no disagreement that the patent owner bears a burden of production in accordance [with] 35 U.S.C. § 316(d).” (Reyna, J., writing for a majority)). We, therefore, must determine whether Patent Owner has made a showing sufficient to establish that its Motion to Amend complies with Section 316(d)(3).” slip op. at 10
- ExcludeMotion to exclude, deniedDenied
“V. PATENT OWNER’S MOTION TO EXCLUDE Patent Owner moves to exclude Petitioner’s Exhibits 1015 and 1017, which are declarations of Mr. Bohannon, “on the basis that Mr. Bohannon is not qualified to testify as an expert with respect to the technology in this [proceeding].” Paper 29, 2. We dismiss as moot Patent Owner’s motion because we did not rely on Exhibits 1015 and 1017 in our determination above that Patent Owner did not show adequate support for proposed substitute claims 16 and 17. See supra Section III.B.” slip op. at 15
NonePatents in suitUS 6,845,019 - Technical Consumer Products, Inc. / Nicor Inc. et al. v. Lighting Science Group Corp.Some claims unpatentablePTAB · Oct 31, 2018 · IPR2017-01280 · APJ John A Hudalla · IPR · Final written decision
Claims 1–3, 5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24 are unpatentable under § 103; claims 3 and 4 were not shown unpatentable over Zhang, Soderman, and Silescent.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(collectively, “Lead Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an inter partes review of claims 1–5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24 of U.S. Patent No. 8,967,844 B2 (Ex. 1001, “the ’844 patent”) pursuant to 35 U.S.C. §§ 311–319. Patent Owner, Lighting Science Group Corp. (“Patent Owner”), did not file a Preliminary Response to the Petition. We determined that the information presented in the Petition established that there was a reasonable likelihood that Lead Petitioner would prevail in challenging claims 1–5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24 of the ’844 patent under 35 U.S.C. § 103(a). Pursuant to 35 U.S.C. § 314, we instituted this proceeding on November 1, 2017, as to claims 1–5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24 of the ’844 patent. Paper 10 (“Dec. on Inst.”).” slip op. at 2
- Skill levelSkill level board ownDecided for patent owner
“The parties’ definitions of the level of skill differ in minor respects, including the number of years of experience and whether or not a 5 Patent Owner has not put forth any evidence or argument related to secondary considerations of nonobviousness. background in chemical engineering should be included. At his deposition, Dr. Bretschneider testified that he included a degree in chemical engineering in his definition because that degree confers expertise in heat transfer. Ex. 1023, 37:14–22. We find this testimony persuasive. Regarding the difference in years of experience, both declarants agree that three years of experience is appropriate. For these reasons, we define the person of ordinary skill in the art as having a bachelor’s degree in electrical engineering, mechanical engineering, chemical engineering, physics, or a related field and three years of experience in designing LED lighting products or fixtures. We are satisfied that this definition comports with the qualifications a person would have needed to understand and implement the teachings of the ’844 patent and the prior art of record.” slip op. at 12
- Expert testimonyPatent owner expert creditedDecided for patent owner
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“We agree with Petitioner (Pet. Reply 8–9), however, that an ordinarily skilled artisan would not have read Chou as narrowly as Patent Owner contends. Not only does Chou state that its fixture “may be configured to be installed into a recessed can housing having other geometries,” but also “recessed housings . . . developed with different geometries.” Ex. 1012, 3:65–4:7 (emphasis added). In light of this express teaching in Chou, we do not agree that Chou’s teachings are confined to 5- and 6-inch can lights, or even can lights in general. Junction boxes represent another geometry that can serve as a recessed housing for an LED light fixture. See Ex. 1023, 30:17–31:7 (Dr. Bretschneider testifying that, by 2009, LED light fixtures attached to junction boxes were known with “certain parts” inside the box). In addition, the fact that certain figures of Chou might depict a junction box external to a can light does not mean that junction boxes are excluded from the universe of “recessed housings” contemplated in the quotation above. In addition, Patent Owner contends Petitioner has provided no reason or motivation to combine Wegner with Chou. PO Resp. 10–11. Patent Owner also contends an ordinarily skilled artisan would not have combined Wegner with Chou because Wegner pertains to a light with a tall reflector, which must be installed in a can light fixture (and not a junction box). Id. at 11–12 (citing Ex. 2001 ¶¶ 74–75, 133–137). Yet Petitioner only cites Wegner for its teaching of removing an Edison base from an LED light fixture to facilitate direct wiring, and not for anything to do with reflectors. Pet. 24 (citing Ex. 1002 ¶ 53; Ex. 1016, 11:3–32). As such, Patent Owner’s arguments regarding Wegner’s light reflectors amounts to a bodily incorporation argument, which is not the test for obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.”). We are persuaded that, based on Wegner, an ordinarily skilled artisan would have known to remove the Edison base of Chou’s fixture regardless of the type of reflector and housing used in Wegner’s fixture. See Ex. 1002 ¶ 53. Regarding motivation, Petitioner posits a market-based rationale, namely, that an ordinarily skilled artisan would have been motivated to make a version of Chou’s luminaire to fit nominally sized junction boxes to serve the new construction market. Pet. 25 (citing Ex. 1002 ¶ 54). Dr. Coleman testifies that the Edison base would have been removed to make Chou’s luminaire work in a junction box. Ex. 1002 ¶ 53. We are persuaded that an ordinarily skilled artisan wanting to modify Chou for use in junction boxes would have known to make this modification.” slip op. at 19
Patent outcomesUS 8,967,844 mixed§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,967,844 - PTAB · Oct 17, 2018 · IPR2017-00467 · APJ Kamran Jivani · IPR · Rehearing
The Board denied rehearing, leaving institution denied because the Uchida and Bramhill combination did not show the claimed write restriction for claims 15, 18, 24, and 25.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). We “review [our] decision for an abuse of discretion.” Id. § 42.71(c). The request for rehearing “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. § 42.71(d). slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not shown unpatentable
“In our Decision, we determined Petitioner failed to show a reasonable likelihood of success on its challenges combining Uchida and Bramhill because Petitioner failed to show teachings or suggestions sufficient to meet the following limitation of independent claim 15: “providing restricted-access to the storage device when the storage device does not store the device-specific security information by preventing the digital data from being written to the storage device during the write access.” Dec. 13–15. We similarly determined Petitioner failed to show teachings or suggestions sufficient to meet the commensurate limitation recited in independent claim 18: “configuring the storage drive to prevent write access to the storage device when the security information is not sensed.” Id. at 15.” slip op. at 3
NonePatents in suitUS 6,968,459 - PTAB · Oct 17, 2018 · IPR2018-00651 · APJ Meredith C Petravick · IPR · Rehearing
The Board denied rehearing and denied institution because Petitioner did not show a reasonable likelihood of prevailing on challenged claims 23–25, 33, 35, 36, 39, 40, 42, and 44.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A. Standard of Review When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. See 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. See Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). “The burden of showing a decision should be modified lies with the party challenging the decision.” Id.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Statute, however, provides that: [t]he Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition. 35 U.S.C. § 314(a) (emphasis added). Here, we have determined that the information presented in the Petition fails to show a reasonable likelihood that Petitioner would prevail with respect to at least one of challenged claims 23–25, 33, 35, 36, 39, 40, 42, and 44. Pursuant to § 314(a), we may not institute an inter partes review in this proceeding.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“in light of the disclosure at column 6, lines 32–37 of the ’296 Patent, but still determine that Petitioner’s proposed construction is unreasonably broad. Petitioner’s reliance on the disclosure at column 6, lines 32–37 is misplaced. When reviewed in a wider context, the ’296 Patent’s disclosure is consistent with our construction adopted in the Decision. Starting at column 5, line 58, the ’296 Patent describes a process or procedure “[f]or a given position of breast 102, such as a positon that is the same or similar to the CC position for a conventional mammogram.” The process or procedure includes moving the x-ray source, relative to the immobilized breast, to different angular positons, including conventional mammogram imaging positions and tomosyntheseis imaging positions. See Ex. 1003, 5:58–21. The ’296 Patent then states: Thus, two types of images can be produced in accordance with the currently preferred embodiment while breast 102 is immobilized in the same position. One type is the same or is at least similar to a conventional mammogram, which can be read and interpreted in the manner familiar to health professionals. The other type is tomosynthetic images reconstructed from the image data and displayed either separately or as an adjunct to the display of the image that is the same or similar to a conventional mammogram. The process described above for one position of breast 102 can be repeated for another position. For example one process can be for a breast position in a manner that is the same or similar to positioning the breast for a conventional CC view, the breast can then be released, the support 204 and C-arm 200 rotated to other angular positions and the breast repositioned in a manner that is the same and similar to the position for an MLO view, and the procedure repeated. Ex. 1001, 6:21–37 (emphases added). Consistent with our statement in the Decision that “[t]he ’296 patent does not describe decompressing the breast between imaging positions” (Dec. 9), but describes decompressing the breast between processes or procedures, in other words between exams. Id. at 6:32–37. As can be seen from the discussion above, the ’296 Patent discloses moving the source to conventional mammogram imaging positions and tomosynthesis imaging positions while the breast remains immobilized during one process, procedure, or exam. Id. at 5:58–6:37.” slip op. at 5
Claim constructionPatents in suitUS 7,831,296 - Huawei Technologies Co., Ltd. v. Samsung Electronics Co., Ltd.Rehearing deniedPTAB · Oct 11, 2018 · IPR2017-01979 · APJ Kamran Jivani · IPR · Rehearing
The Board denied Huawei’s rehearing request, finding no abuse of discretion in denying institution on grounds 4–6 because the Petition did not adequately explain how to harmonize the references’ conflicting teachings.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). We “review [our] decision for an abuse of discretion.” Id. § 42.71(c). The request for rehearing “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. § 42.71(d). After considering the Request for Rehearing, we determine that Petitioner has not demonstrated that we abused our discretion in denying institution. We deny the Request for Rehearing for the reasons that follow. slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Id. Figure 1 of R1-071000 identifies the scope of its contribution as limited to transmission of control information together with data information. Id. Thus, R1-071000, on its face, is directed to the opposite scenario of R1- 072122, which is directed to transmitting control information without data. Id.; see also Dec. 14–15 citing (Ex. 1008, 1 (Title: “Data non-associated control signal transmission with UL data.”)). Even if we were to accept arguendo Petitioner’s first argument that R1-071000 invites skilled artisans to expand and apply the data mapping scheme of R1-072122, such an invitation does not remedy Petitioner’s failure to explain sufficiently how one with ordinary skill in the art would have modified the system of R1- 072122 to transmit control signals with data, contrary to the express teachings of that reference. See Reh’g Req. 4; Pet. 85–86. For instance, Petitioner does not address how one would reconcile the two references’ diametrically opposed teachings regarding placement of the ACK/NAK. As we stated: Finally, although the cited portions of R1-071000 teach placing data in the symbols directly adjacent to the symbol containing the reference signal, R1-071000 depicts placing the ACK/NAK in the symbols farthest from the symbol containing the reference signal––directly opposite to the cited teachings of R1-072122 describing placing the ACK/NAK in the symbols directly adjacent to the reference signal. Ex. 1008, Figs. 4, 5. Here too, Petitioner and Dr. Akl do not address how or why an ordinarily skilled artisan would have harmonized the disparate teachings of these two references. Dec. 15 (bold emphasis added; italics original). Absent sufficient evidence and explanation, Petitioner’s argument amounts to impermissible hindsight reconstruction of the challenged claims. See, e.g., In re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011) (cautioning against the use of hindsight).” slip op. at 5
- Strike new argumentNew argument disregardedDecided for patent owner
“Rehearing. Reh’g Req. 4–6. A request for rehearing “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. § 42.71(d). Petitioner identifies a single page of its Petition as “the place where [that argument] was previously addressed.” Reh’g Req. 4–6 (citing Pet. 86). The cited page of the Petition, recites only a single sentence and string citation related to this argument: “Further, a number of 3GPP contributions, including both R1- 071000 and R1-072122, expressly disclose and teach that it is advantageous to limit the number of different transmission formats due to complexity of UE design.” Pet. 86 (citing Ex. 1008, 2, 5; Ex. 1006, 2; Ex. 1009, 5; Ex. 1003 ¶ 225). A request for rehearing is not an opportunity to present new arguments. See 37 C.F.R. § 42.71(d); see also, e.g., Captioncall, Inc. v. Ultratec, Inc., IPR2014-00780, Paper No. 40 (PTAB May 19, 2016) (discussing that a rehearing request is “not intended as a vehicle simply to disagree with [the] outcome or to provide new arguments”). Contrary to Petitioner’s assertions on rehearing, the cited portion of the Petition does not provide sufficient explanation for the following statements made in the Request for Rehearing: that “R1-072122 also expressly teaches that a single mapping scheme for control information is preferred”; that “R1-070998, another contemporaneous 3GPP contribution, provides a similar statement”; or that “skilled artisans would have been motivated to apply the same control mapping scheme regardless of the presence of data.” Compare Reh’g Req. 4–6 with Pet. 86. Indeed, the cited page of the Petition does not discuss R1-070777or R1-070998. See Pet. 86. Because Petitioner’s second argument was not presented in its Petition, we do not consider it on rehearing. 37 C.F.R. § 42.71(d). To the extent Petitioner contends its declarant Dr. Akl presented the extensive argument that Petitioner now puts forth in its Request for Rehearing, our rules particularly require identification of “the place where [that argument] was previously addressed in a motion, an opposition, or a reply.” Id. (emphasis added); see also 37 C.F.R. § 42.6(3) (prohibiting incorporation of arguments by reference).” slip op. at 6
§ 103 obviousnessPatents in suitUS 8,761,130 - Unified Patents Inc. v. Intellectual Ventures II, LLCRehearing deniedPTAB · Sep 27, 2018 · IPR2016-01404 · APJ Kamran Jivani · IPR · Rehearing
The Board granted the motion to excuse late filing and denied rehearing, maintaining that claims 1, 2, 13, 14, 33, 34, 39, 46, and 48 were not shown unpatentable over Bensimon.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision . . .” who “must specifically identify all matters the party believes [we] 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). Petitioner’s argument is predicated upon a mischaracterization of our factual findings. Petitioner asserts that we found Bensimon “taught all of the elements of the claim in ‘one possible mode of operation.’” Reh’g Req. 1 (citing Decision 17). We, however, made no such finding. The phrase that Petitioner attributes to us—namely, “one possible mode of operation”—does not appear anywhere in our Final Written Decision. Compare Reh’g Req. 1 (citing Decision 17) to Decision 17. Contrary to Petitioner’s assertions, we did not find “that Bensimon sometimes teaches all of the elements of the claim” nor did we find “that Bensimon discloses a ‘restricted-access mode’ by disclosing a ‘write protection’ mode.” Reh’g Req. 1–3 (citing Decision, 16–17). Rather, we found the exact opposite—that Bensimon fails to disclose the claimed restricted-access mode because, as claimed, that mode requires the absence of the claimed device-specific security information (i.e. the read/write password, or alternatively the combination of the read/write password and password-enabling flag). Decision 16–17 (citing Reply 16– 22) (“Petitioner identifies Bensimon’s read/write password, alone or in combination with the password-enabling flag, as the device-specific security information, yet Petitioner does not identify in Bensimon an explicit disclosure that Bensimon’s storage device operates in the claimed restricted-access mode when the read/write password is absent from the device.”) (bolding added; italics original). slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“claim” nor did we find “that Bensimon discloses a ‘restricted-access mode’ by disclosing a ‘write protection’ mode.” Reh’g Req. 1–3 (citing Decision, 16–17). Rather, we found the exact opposite—that Bensimon fails to disclose the claimed restricted-access mode because, as claimed, that mode requires the absence of the claimed device-specific security information (i.e. the read/write password, or alternatively the combination of the read/write password and password-enabling flag). Decision 16–17 (citing Reply 16– 22) (“Petitioner identifies Bensimon’s read/write password, alone or in combination with the password-enabling flag, as the device-specific security information, yet Petitioner does not identify in Bensimon an explicit disclosure that Bensimon’s storage device operates in the claimed restricted-access mode when the read/write password is absent from the device.”) (bolding added; italics original).” slip op. at 6
§ 102 anticipationPatents in suitUS 6,968,459
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.