- PTAB · Apr 28, 2017 · IPR2015-01664 · APJ Justin Busch · IPR · Rehearing
The Board denied Ericsson’s rehearing request, leaving intact its final written decision that claims 8–12 and 18–22 were not shown unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“On rehearing, the burden of showing the Decision should be modified lies with the party challenging the Decision. 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. For the reasons that follow, Petitioner’s Request is denied.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for patent owner
“Petitioner provided no details in its Reply regarding how “within the limits of” adds additional confusion, or why a construction including such language would be inappropriate. The Patent Owner Response demonstrated Patent Owner’s clear disagreement with Petitioner’s position that the proposed prior art combination teaches transmitting the entirety of a broadcast channel in an OFDMA core-band. Nevertheless, in its Reply, Petitioner provided neither an explanation of its understanding of the alleged plain meaning of the disputed limitation nor an explicit statement that transmitting only a portion of a broadcast channel in an OFDMA core-band would be sufficient to meet the disputed limitation. Accordingly, we did not misapprehend or overlook Petitioner’s generic argument for adopting an unspecified “plain meaning” of the disputed limitation. We evaluated all arguments and evidence submitted by both parties, and we determined that the proper construction of the disputed limitation precluded transmitting any portion of the recited broadcast channel outside the OFDMA core-band.” slip op. at 5
- Strike new argumentNew argument disregardedDecided for patent owner
“As discussed in the Decision and above, we provided a preliminary construction of the plain meaning of the disputed term in our Institution Decision, Inst. Dec. 11, and Patent Owner contested that preliminary construction in its Patent Owner Response, see PO Resp. 14–16. Nevertheless, as explained above, Petitioner merely provided unsupported assertions that the plain and ordinary meaning of the disputed limitation should apply and argued Patent Owner’s proposed construction generated more confusion than clarity. See Pet. Reply 2, 3–5. Petitioner did not identify evidence to demonstrate the preliminary construction was correct. We are unable to find—and Petitioner does not cite—any portion of the Petition or Reply identifying the full bandwidth preamble to which Petitioner now refers, much less discussing its relevance to any issue. The panel questioned the parties extensively at the hearing regarding what it means to “transmit a broadcast channel in an” OFDMA core-band. See Tr. 10:4–21:4, 24:16–25:4. Petitioner never pointed to the now-cited disclosure in the specification, let alone argued that such a disclosure was relevant to the proper construction of the disputed limitation. Moreover, the technology is complex, and the record during trial lacks briefing from the parties or testimony from either party’s expert declarant on the portion of the specification now raised by Petitioner. We decline to consider Petitioner’s untimely argument presented for the first time in its Request for Rehearing.” slip op. at 6
Claim constructionPatents in suitUS 7,787,431 - NVIDIA Corporation v. Samsung Electronics Company, Ltd.Rehearing deniedPTAB · Mar 1, 2016 · IPR2015-01318 · APJ Jameson Lee · IPR · Rehearing
The Board denied NVIDIA’s rehearing request and left in place the denial of institution for claims 1–15 because the Petition did not explain Yamakawa’s differing embodiments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“given the discrepancy between the structures shown in Figure 17(2) and Figure 18(2) of Yamakawa, “Petitioner has not adequately explained how, in an anticipation analysis, it properly can rely on Yamakawa’s embodiment of Figure 18 to account for limitation 1(i) when it has relied on Yamakawa’s embodiment of Figures 16–17 to account for limitations 1(a), 1(b), 1(c), 1(d), 1(e), and 1(h).” Dec. 16–17. We stated: “Yamakawa itself does not appear to make clear what process steps are common between its embodiment of Figure 18 and its embodiment of Figures 16–17, and Petitioner has not provided an adequate explanation.” Id. at 17. As Patent Owner argued (Prelim. Resp. 9–10), the Petition must explain the relationship between the different structures shown and how they relate to the same process and involve the same features. Petitioner has not pointed to an explanation in the Petition that accounts for the different structures shown in Figure 17(2) and Figure 18(2) of Yamakawa, and that sufficiently presents the two illustrations as corresponding to a single embodiment of various steps and features. That explanation cannot be provided, for the first time, in a rehearing request. Although Yamakawa itself constitutes evidence, it was incumbent on Petitioner, in its Petition, to present and explain the evidence. We could not have overlooked evidence that was not identified and explained. The Petition may not be supplemented by explanations first set forth in a rehearing request.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“given the discrepancy between the structures shown in Figure 17(2) and Figure 18(2) of Yamakawa, “Petitioner has not adequately explained how, in an anticipation analysis, it properly can rely on Yamakawa’s embodiment of Figure 18 to account for limitation 1(i) when it has relied on Yamakawa’s embodiment of Figures 16–17 to account for limitations 1(a), 1(b), 1(c), 1(d), 1(e), and 1(h).” Dec. 16–17. We stated: “Yamakawa itself does not appear to make clear what process steps are common between its embodiment of Figure 18 and its embodiment of Figures 16–17, and Petitioner has not provided an adequate explanation.” Id. at 17. As Patent Owner argued (Prelim. Resp. 9–10), the Petition must explain the relationship between the different structures shown and how they relate to the same process and involve the same features. Petitioner has not pointed to an explanation in the Petition that accounts for the different structures shown in Figure 17(2) and Figure 18(2) of Yamakawa, and that sufficiently presents the two illustrations as corresponding to a single embodiment of various steps and features. That explanation cannot be provided, for the first time, in a rehearing request. Although Yamakawa itself constitutes evidence, it was incumbent on Petitioner, in its Petition, to present and explain the evidence. We could not have overlooked evidence that was not identified and explained. The Petition may not be supplemented by explanations first set forth in a rehearing request.” slip op. at 2
NonePatents in suitUS 8,252,675 - Under Armour, Inc. v. Adidas AGRehearing deniedPTAB · Feb 29, 2016 · IPR2015-01532 · APJ Justin Busch · IPR · Rehearing
The Board denied Under Armour’s rehearing request, leaving in place the denial of institution on claim 17 for anticipation by Bouve and, alternatively, Kim.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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). slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Petitioner argues it just needs to show “that Kim discloses storing data that falls within the scope of the plain words ‘a length of the route.’” We agree with Petitioner that the plain meaning of “a length of the route” is the appropriate construction because, on this record, we find no reason to give the phrase a special meaning. The Petition, however, did not present persuasive argument that the plain meaning of “a length of the route” encompasses Kim’s total altitude distance.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“users needed to manually estimate route distances between points of interest. Pet. 17–18 (quoting Ex. 1004, 1:28–35). The Petition asserted “Bouve improved upon the prior art system by maintaining route length information in a database.” Id. at 18 (emphasis added). In support of that assertion, the Petition pointed to Bouve’s disclosure that “The processors . . . compute the mileage indication, along the retrieved travel route(s), for each individual item of travel information which is retrieved from the data bases,” and concluded that Bouve computes mileage information along a route and route length between points of interest using route length information stored in a database. Id. (quoting Ex. 1004, 8:18–22 (underlining added). The Petition, however, failed to identify any disclosure in Bouve that “route length information” is maintained in a database. The Petition also argued Bouve discloses recommending a route “based on that stored length of a route” because Bouve allows a user to select the shortest route between two points. Id. at 19.” slip op. at 3
Claim construction§ 102 anticipationPatents in suitUS 8,652,009 - PTAB · Dec 23, 2014 · IPR2014-00673 · APJ Kristen L Droesch · IPR · Rehearing
The Board denied rehearing of the decision declining institution on claims 23–27, 29, 30, 32, 33, and 36–40 because the Petition did not adequately explain its prior-art arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW In its request for rehearing, the dissatisfied party must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously. 37 C.F.R. § 42.71(d). Upon a request for rehearing, the decision on a petition will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- BurdenInstitution denied merits
“declaration in the claim charts at pages 19, 21, 25, 27, 28, and 30 of the Petition. Pet. 19, 21, 25, 27, 28, and 30. The citations to the specific paragraphs of the Declaration appear in the claim chart, and take the form of “(See Ex. 1001, ¶¶ 105-107),” “(See Ex. 1001, ¶¶ 114–117),” “(See Ex. 1001, ¶¶ 143–146),” “(See . . . Ex. 1001, ¶¶ 154–157),” “(See Ex. 1001, ¶¶ 165–169),” “(See Ex. 1001, ¶¶ 178–180),” and “(See . . . Ex. 1001, ¶¶ 196–199).” Id. The Petition does not include a detailed explanation of the significance of Mr. Rosenblatt’s Declaration, as required by 37 C.F.R. § 42.22(a)(2). See id. Nor does Mr. Rosenblatt’s testimony explain how the relied upon language in Digibox discloses the limiting access to unprotected data limitation. Based on Petitioner’s arguments in its Request for Rehearing, Petitioner alleges that we overlooked the evidence in Mr. Rosenblatt’s declaration because we did not incorporate the arguments and explanations from the cited paragraphs of Mr. Rosenblatt’s declaration into the Petition. Contrary to Petitioner’s arguments, however, our rules state that arguments must not be incorporated by reference from one document into another document. 37 C.F.R. § 42.6(a)(3). Because the Petition did not include a detailed explanation of the significance of paragraphs 105–107, 114–117, 143–146, 154–157, 165–169, 178–180, and 196–199 of Mr. Rosenblatt’s declaration, and because arguments must not be incorporated by reference from Mr. Rosenblatt’s declaration into the Petition, we did not abuse our discretion in denying institution of inter partes review of claims 24, 25, 30, 32, 33, 36, and 38 as anticipated by Digibox.” slip op. at 4
NonePatents in suitUS 6,314,409 - PTAB · Dec 23, 2014 · IPR2014-00672 · APJ Kristen L Droesch · IPR · Rehearing
The Board denied IBM’s rehearing request, leaving institution denied for claims 1–11 and 13–21 because the petition did not adequately explain how Digibox disclosed the disputed limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously. 37 C.F.R. § 42.71(d). Upon a request for rehearing, the decision on a petition will be reviewed 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
“21, the Petition does not explain how Digibox’s disclosure of access rules that can designate who may unlock a DigiBox, together with Digibox’s disclosure of encrypted (i.e., protected) digital information contained in the Digibox, discloses limited or controlled access to an unprotected (i.e., unencrypted) form of the protected portions of the data, as required by claims 1 and 21. In effect, Petitioner’s arguments in the Request for Rehearing allege that we misapprehended the evidence in the Petition because we did not fit together Petitioner’s dispersed puzzle pieces of quotations and disclosures from Digibox. Contrary to Petitioner’s arguments, however, our rules state that each petition must include a detailed explanation of the significance of the evidence, and must specify where each element of the claim is found in the prior art relied upon. 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4). The Petition does not include a detailed explanation of the significance of Digibox’s disclosure of access rules that can designate who can unlock the Digibox, and does not specify where the disputed limitations of claims 1 and 21 are found in Digibox. But, as we discussed above, even if Digibox did include sufficient disclosure, we do not see how the newly cited portions of Digibox meet the disputed limitations of claims 1 and 21. Thus, we did not abuse our discretion in denying institution of inter partes review of the claims based on Digibox.” slip op. at 3
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“Contrary to Petitioner’s apparent invitation, the members of the Board deciding an institution matter do not, under 35 U.S.C. § 6(c), select themselves, and, similarly are not granted authority to select other Board members to decide the matter, upon request of a party or otherwise. See Apple Inc. v. Rensselaer Polytechnic Instit., Case IPR2014-00319, slip. op. 2 n.1 (PTAB Dec. 12, 2014) (Paper 20) (expanded panel) (per curiam). As indicated in the Standard Operating Procedure, the Chief Judge, on behalf of the Director, may act to expand a panel on a “suggestion” from a judge or panel. BPAI SOP 1 at 1. The Standard Operating Procedure creates “internal norms for the administration of the Board” but “does not create any legally enforceable rights.” Id. Accordingly, we cannot grant Petitioner’s request for rehearing by an expanded panel. We further note that our application of 37 C.F.R. §§ 42.6(a)(3), 42.22(a)(2) and 42.104(b)(4) in the case before us is bound to the specific facts of this case, and is consistent with the application of these rules in the expanded panel decision in Cisco Systems, Inc. v. C-Cation Technologies, LLC, Case IPR2014-00454 (PTAB Aug. 29, 2014) (Paper 12). II. DECISION ON REHEARING Petitioner’s request for rehearing is denied and request for panel expansion is dismissed.” slip op. at 6
NonePatents in suitUS 6,314,409 - Netflix, Inc. v. Opentv, IncRehearing deniedPTAB · Aug 14, 2014 · IPR2014-00274 · APJ James T Moore · IPR · Rehearing
The Board denied Netflix’s rehearing request, leaving in place its denial of inter partes review of claims 1–20 because the petition did not show it was more likely than not to prevail.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a request for 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 grant the request to reconsider the decision insofar as we have reconsidered the decision, but 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
“III. CONCLUSION Accordingly, we conclude that the Petitioner has not met its burden to show it is more likely than not to prevail. We, therefore, deny the request for reconsideration.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“This argument does not persuade us to alter our earlier decision. The newly proposed interpretation is inconsistent with the plain language of claim 1 reciting that the “browser retrieves the requested Internet information segments under the direction and control of the controller means.” Ex. 1001, col. 13:60-63. An embodiment allowing a user the flexibility to go back to access a list of URLs at the user’s leisure after the presentation does not alter the requirement that the controller means drives the presentation during the audio or video program.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
Claim construction§ 103 obviousnessPatents in suitUS 6,018,768
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.