- Amazon.Com, Inc. / Amazon.Com LLC et al. v. VB Assets, LLCRehearing deniedPTAB · Apr 19, 2021 · IPR2020-01374 · APJ Sean P O’Hanlon · IPR · Rehearing
The Board denied rehearing, leaving institution denied because Petitioner did not show the panel misapprehended or overlooked a matter or abused its discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d) (2019). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004).” slip op. at 2
NonePatents in suitUS 8,886,536 - PTAB · Mar 4, 2021 · IPR2020-00344 · APJ Barry L Grossman · IPR · Rehearing
The Board denied rehearing and upheld denial of institution because Grounds 7, 8, 11, and 12 lacked particularity, justifying denial of the entire petition.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. REQUEST FOR REHEARING 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 1 The PTAB E2E docket system correctly identifies the denial of POP review as Paper “11,” dated “October 26, 2020.” This document itself, however, incorrectly states that it is “Paper 10.” In fact, “Paper 10” in the PTAB E2E docket system for this IPR proceeding is Patent Owner’s “RESPONSE TO PETITIONER’S REQUEST FOR REHEARING,” filed on August 21, 2020 See Paper 10. We note that Patent Owner was not authorized to file this response. See Consolidated Office Patent Trial Practice Guide (“Consolidated Practice Guide”), November 2019, 90 (“The opposing party should not file a response to a request for rehearing absent a request from the Board.”). No such request was made by the Board. Accordingly, Paper 10 will be expunged from this record and will not be considered in deciding Petitioner’s Request for Rehearing. 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. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). 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. Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . 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). If an inter partes review is instituted, a final written decision under 35 U.S.C. § 318(a) must decide the patentability of all claims, and all grounds, asserted in the petition. SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Petition fails to identify with particularity what disclosure is relied on from each of the references in Grounds 7, 8, 11, and 12, how it would be combined with the other disclosures, and why the proposed combination would have been obvious to a person of ordinary skill in the relevant technology. Without any explanation as to what, how, and why the references would have been combined in Grounds 7, 8, 11, and 12, we, and the Patent Owner, are left to speculate as to the specific details of asserted unpatentability based on combining the references to arrive at the claimed invention. See Paper 7 (“Decision” or “Dec.”), 14 (citation omitted). We determined that “[t]he lack of particularity [in Grounds 7, 8, 11, and 12] infects the proceeding sufficiently that we do not institute an inter partes review.” Id. at 16–17.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“asserted unpatentability of the claims challenged in Grounds 7 and 8, and why it would have been obvious to combine selected disclosures from each of the three references. We have not been directed to any persuasive evidence that the Petition met this burden.” slip op. at 10
- Other 314aInstitution denied discretionary otherDenied
“Petition, “the Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” See, e.g., Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11, 6 (PTAB Mar. 20, 2020) (Precedential). Apple v. Fintiv was decided in the context of evaluating the factors related to a co-pending parallel district court proceeding. The same holistic view applies equally to situations where some claims meet the requirements for instituting a trial and some do not. While we consider the number of claims that fail to meet the statutory and other requirements to institute an inter partes review, as well as the number of claims that meet these requirements, there is no fixed threshold or ratio of claims that meet the requirements compared to those that do not meet the requirements that controls our determination, as suggested by Petitioner (see Req. Reh’g 2. The Patent and Trademark Office addressed this issue in its “SAS Q&As”, which stated: D3. Q: Will the Board institute a petition based on the percentage of claims and grounds that meet the reasonable likelihood standard, e.g., 50%? A: No. The Board does not contemplate a fixed threshold for a sufficient number of challenges for which it will institute. Instead, the panel will evaluate the challenges and determine whether, in the interests of efficient administration of the Office and integrity of the patent system (see 35 USC § 316(b)), the entire petition should be denied under 35 USC § 314(a). Ex. 3003, 8. As explained in our TPG, If a panel determines that a petition meets the standards for institution in relation to fewer than all the challenges presented, or where deficiencies in the petition (such as a failure to provide a construction under 35 U.S.C. § 112(f)) affect only a portion of the challenges presented, the panel will evaluate all the challenges and determine whether, in the interests of efficient administration of the Office and integrity of the patent system, the entire petition should be denied. TPG, 64. Where no trial is instituted, a decision to that effect will be provided, as was done in this proceeding. “The Board expects that the decision will contain a short statement as to why the standards were not met, although this may not be necessary in all cases.” Id. at 64–65.” slip op. at 20
§ 103 obviousnessDiscretionary denialPatents in suitUS 6,918,801 - Parrot S.A. / Parrot Drones S.A.S. et al. v. Qfo Labs, Inc.Rehearing deniedPTAB · Aug 11, 2020 · IPR2018-01690 · APJ Hyun J Jung · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 13–17 unpatentable and the motion to amend granted for claims 1–10 but denied for substitute claims 21–23.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified as set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. See also Req. Reh’g. 4 (quoting, in part, 37 C.F.R. § 42.71(d)). With this in mind, we address Patent Owner’s arguments below.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Owner’s Motion to Amend in its Rehearing Request. Compare Mot. 11–12, with Req. Reh’g. 7. We considered these arguments in our Decision, and Patent Owner’s arguments express disagreement with our interpretation of “orientation control scheme” but do not show how an argument was overlooked or misapprehended. See Final Dec. 74, 84–86. Patent Owner supplements its prior arguments with contentions that we construed “position” as a verb, not a noun. See Req. Reh’g. 6. Patent Owner does not identify where these additional contentions were previously presented, as required under 37 C.F.R. § 42.71(d). Thus, Patent Owner has failed to show that we misapprehended or overlooked these arguments. See id. Even if the additional contentions had been previously presented, our Decision considered Patent Owner’s proposed interpretation of “orientation control scheme.” See Final Dec. 85 (“Even under Patent Owner’s proposed interpretation of ‘orientation control scheme’ (Mot. 11–12), Petitioner persuades us that Louvel and Nagamitsu teach the final recitation of proposed substitute claim 21.”). Patent Owner’s arguments do not show how an argument was overlooked or misapprehended. In any event, we remain convinced that “Patent Owner’s proposed interpretations are not the broadest reasonable interpretation in view of the Specification of the ’292 patent because the Specification does not use these terms or describe state vectors.” See Final Dec. 74.” slip op. at 4
- Expert testimonyPetitioner expert creditedDecided for petitioner
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“We decline to consider Patent Owner’s constitutional challenge because the issue has been addressed by the Federal Circuit in Arthrex, 941 F.3d at 1328 (expressly limiting its holding “to those cases where final written decisions were issued (prior to Arthrex)”). See also Caterpillar Paving Prod. Inc. v. Wirtgen Am., Inc., 957 F.3d 1342, 1342–1343 (May 6, 2020) (“The court in Arthrex considered and rejected that argument, expressly limiting its holding ‘to those cases where final written decisions were issued.’”) (quoting 941 F.3d at 1340). Our Decision was entered February 20, 2020, after the Federal Circuit issued its October 2019 decision in Arthrex (see 941 F.3d at 1320).” slip op. at 10
Claim constructionPatents in suitUS 9,904,292 - PTAB · Jul 9, 2020 · IPR2019-01393 · APJ Ryan H Flax · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no misapprehended or overlooked issue and no abuse of discretion in instituting review of all challenged claims on Grounds 1 and 2.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing of a Board decision has the burden to show that the decision should be modified. Pursuant to 37 C.F.R. § 42.71(d), the rehearing request must identify, specifically, 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. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c) (2019). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Here, a new and relevant Board decision in Fintiv was entered subsequent to our Denial Decision and during the course of the Board’s consideration of the Petitioner’s Request for Rehearing; a decision that has been designated precedential and is now controlling. Fintiv, Paper 11. The Board has regularly considered intervening case law in reconsidering a decision on institution. See Shenzhen Zhiyi Tech. Co. Ltd. v. iRobot Corp., IPR2017-02061, Paper 11 (PTAB May 1, 2018) (granting a request rehearing when considering the intervening Supreme Court decision in SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018)); Comcast Cable Comm., LLC v. Realtime Adaptive Streaming LLC, IPR2019-00760, Paper 45 (PTAB Jan. 17, 2020) (granting-in-part patent owner’s motion to terminate an instituted inter partes review in view of the intervening precedential decision in GoPro, Inc. v. 360Heros, Inc., IPR2018-01754, Paper 38 (PTAB Aug. 23, 2019) (precedential)). Foundationally, “administrative agencies possess inherent authority to reconsider their decisions, subject to certain limitations, regardless of whether they possess explicit statutory authority to do so.”” slip op. at 5
Discretionary denialPatents in suitUS 8,944,740 - Blackberry Corp. v. Facebook, Inc.Rehearing deniedPTAB · Apr 17, 2020 · IPR2019-01593 · APJ Miriam L Quinn · IPR · Rehearing
The Board denied rehearing and left in place its discretionary denial of the petition, finding no misapprehension or oversight in its assessment of the claim 23 challenges.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“According to 37 C.F.R. § 42.71(d), “[t]he burden of showing a decision should be modified lies with the party challenging the decision,” and the “request must specifically identify all matters the party believes the Board misapprehended or overlooked.” The burden here, therefore, lies with Petitioner to show we misapprehended or overlooked the matters it requests” slip op. at 2
- Other 314aInstitution denied discretionary otherDenied
“Partes Review. Paper 7 (“Dec.”). We exercised our discretion under 35 U.S.C. § 314(a) and denied the Petition based on our determination that Petitioner has only demonstrated a reasonable likelihood of prevailing as to three claim challenges (out of 17).1 Dec. 39−40. Petitioner filed a Request for Rehearing challenging several aspects of our Decision. Paper 8 (Req. Reh’g). In particular, Petitioner challenges our determination of the scope of “Global Positioning System data” (hereinafter “GPS Data”) a term recited in independent claim 23. Req. Reh’g 3−6. Petitioner further challenges our determination concerning the term “range of acceptable values,” recited in claim 23. Id. at 10−12. Thus, Petitioner argues, based on the correct interpretation of “GPS data” and “range of acceptable values,” we should have instituted trial because it demonstrated a reasonable likelihood of prevailing as to four or five out of eight challenged claims.2 Req. Reh’g 13.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“types of information that are GPS data, such as idle time. The portions of the Specification that Petitioner now cites, however, do not show that the GPS data is not, at a minimum, location information. As we stated in our Decision, other types of data may be transmitted from the remote unit to the central location, but the GPS data does refer to location information. Dec. 9. Moreover, Petitioner points out that the Specification discusses vehicle speed, idle time, movement, and actual windshield time as examples of calculated values, arguably from GPS location and time information. Req. Reh’g 3. But the Specification actually refers to these values to determine exceptions to be logged and noted (Ex. 1001, 4:41−49, 4:65−67, 6:1−3), which proves only that the system may use non-GPS data, in combination with GPS data, to determine exceptions. We acknowledge that claim 23’s recitation of GPS data could seem, at first blush, to potentially encompass every comparison that the Specification explains. Claim 23, however, must be interpreted in a manner that accounts for the recited two-part structure. In the first part, the claim recites a first comparison that involves the GPS data; and in the second part, the claim recites the second comparison that does not mention GPS data. Our analysis of the term GPS data in our Decision did not assume that the two comparisons involved the same data, e.g., GPS data. This is where Petitioner disagrees with our assessment, because it urges us to construe GPS data as including values and information recited in the second comparison, i.e., the idle time or recited “stationary time.” Petitioner’s position cannot be correct because the claim does not require that the “stationary time” also be GPS data. Further, the comparison that claim 23 recites with respect to GPS data does not mention exceptions at all, so it does not follow that all the Specification’s descriptions of exceptions encompass GPS data. The second comparison recited in claim 23 (comparing the stationary time to a predetermined stationary time), in contrast, is expressly performed for the purpose of noting an exception. Claim 23 (“if the length of time that the remote unit remains in a stationary position is greater than the predetermined stationary time, the system notes an exception.”). Thus, Petitioner, even in arguing for the first time its claim construction position, has not shown that derived data must also be GPS data according to the plain reading of the claim language. Consequently, having reviewed Petitioner’s arguments, we are not persuaded that GPS data means data that is derived from and representative of GPS coordinates and time stamps, as argued for the first time in the Request for Rehearing.3” slip op. at 4
- BurdenDecided for patent owner
“construction issue. Patent Owner explicitly addressed the construction of the term, a fact we acknowledged in our Decision. Dec. 8 (citing Prelim. Resp. 29−30). Petitioner did not address the scope of the term explicitly or implicitly. And it was not apparent from any of the now-cited portions of the Petition that Petitioner contended a scope of the term to include data that is derived from and representative of GPS coordinates and time stamps. Petitioner’s argument attempts to characterize its omission of a contention regarding claim construction as an oversight on our part. The argument is not persuasive as it is Petitioner’s burden to show in the Petition its contentions regarding how the challenged claim is to be construed and how, so construed, the claim is rendered obvious by the asserted references. See 37 C.F.R. § 42.104(b)(3)−(4). Therefore, we could not have either overlooked Petitioner’s position on claim construction, since none was provided, or misapprehended a position of claim scope not made explicit.” slip op. at 3
Claim constructionDiscretionary denialPatents in suitUS 6,356,841 - In-Depth Geophysical, Inc. / In-Depth Compressive Seismic, Inc. v. Conocophillips CompanyRehearing deniedPTAB · Mar 30, 2020 · IPR2019-00849 · APJ Scott A Daniels · IPR · Rehearing
The Board denied rehearing and left institution denied for claims 1–6 because Petitioner did not show Li was a printed publication.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“On request for rehearing, the burden of showing a decision on whether to institute trial should be modified lies with the party challenging the decision. 37 C.F.R. § 42.71(d). “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 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.” 37 C.F.R. § 42.71(d). For reasons discussed below, we decline to modify the Decision. Thus, Petitioner’s Request is denied.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“It is Petitioner’s burden to demonstrate at the institution stage a reasonable likelihood that a reference is a printed publication by a preponderance of the evidence. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.”). Petitioner presented no additional evidence supporting its contentions, for example from someone familiar with the publication of Li or the referenced web pages, or even an explanation by Petitioner or a declarant that provided a countervailing argument to the SEG process and procedure for publication outlined by Dr. Aminzadeh in his Declaration. Instead, Petitioner simply points to purported “publication dates,” with no substantive explanation or fact witness corroboration. Req. Reh’g (citing Ex. 1020, Ex. 1021, Ex. 1026, Ex. 1030).” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“It is Petitioner’s burden to demonstrate at the institution stage a reasonable likelihood that a reference is a printed publication by a preponderance of the evidence. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.”). Petitioner presented no additional evidence supporting its contentions, for example from someone familiar with the publication of Li or the referenced web pages, or even an explanation by Petitioner or a declarant that provided a countervailing argument to the SEG process and procedure for publication outlined by Dr. Aminzadeh in his Declaration. Instead, Petitioner simply points to purported “publication dates,” with no substantive explanation or fact witness corroboration. Req. Reh’g (citing Ex. 1020, Ex. 1021, Ex. 1026, Ex. 1030). Although documents indicating a publication date of 1 September 2012 may have relevance, absent additional evidence explaining the origin and meaning of that date as to public accessibility, on the record before us, the date alone fails to show a reasonable likelihood that Li was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it. This is especially true in the face of Dr. Aminzadeh’s unrebutted testimony as to SEG’s regular practices surrounding the acceptance and dissemination of SEG conference papers. While his testimony may not speak directly to a date of public accessibility for Li itself, it is relevant, uncontroverted, and probative of accessibility to SEG papers in general, given the bare “1 September 2012” date relied on by Petitioner.” slip op. at 10
- Expert testimonyPatent owner expert creditedDecided for patent owner
“We agree with Petitioner to the extent that Dr. Aminzadeh did not attest to personal knowledge of the Li paper. Dr. Aminzadeh however provided a credible explanation of the process for authoring and presenting papers at the SEG (Society of Exploration Geophysicists) conference. Dr. Aminzadeh is a member and co-author of SEG papers, as well as a former President of SEG. Ex. 2007 ¶ 3. In our Decision, we explained that [w]e give weight to Dr. Aminzadeh’s testimony because it articulates a reasonable and unrebutted explanation for the September 2012 date listed by Researchgate exhibit. Dr. Aminzadeh’s testimony also persuasively explains how and why the dissemination and first public availability of Li would have most likely not occurred prior to the SEG 2012 Annual Meeting from November 4-9, 2012. Dec. 12. We also stated in our Decision that dissemination “of Li would have most likely not occurred prior to the SEG 2012 Annual Meeting” (id.) because, for one reason, Dr. Aminzadeh’s unrebutted testimony is that “[a]uthors submit papers to the SEG several months before the SEG conference. The papers are kept confidential by the SEG at that time.” Ex. 2007 ¶ 4. Although Dr. Aminzadeh does not testify specifically to knowledge of the Li reference, Petitioner has not explained persuasively why this indicates that Dr. Aminzadeh’s testimony as to the SEG confidentiality practices and paper dissemination, as set forth in his Declaration, is inaccurate or misleading.” slip op. at 5
§ 102 anticipationPatents in suitUS 9,632,193 - Parrot S.A. / Parrot Drones, S.A.S. et al. v. Qfo Labs, Inc.Rehearing deniedPTAB · Jun 12, 2019 · IPR2018-01690 · APJ Hyun J Jung · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution of IPR on claims 1–10 and 13–17 unchanged because no overlooked or misapprehended matter was shown.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“patent for which review is sought is available for inter partes review and that the petitioner is not barred or estopped from requesting an inter partes review challenging the patent claims on the grounds identified in the petition.” As noted by Patent Owner, Petitioners certified that they were not barred or estopped from requesting inter partes review of the ’292 patent. Pet. 96; Prelim. Resp. 11; Reh’g Req. 8–9. Our rule 104(a) only requires a certification and does not require explanation, argument, or evidence to support the certification. Patent Owner properly raised the issue of standing in its Preliminary Response. Prelim. Resp. 10–18. The Decision, thus, analyzed and reviewed the record to determine if Petitioners are barred under § 315(a)(1) from requesting inter partes review of the ’292 patent for the reasons raised by Patent Owner. Dec. to Inst. 8–13. We determined that, as applied to the circumstances of this proceeding, 35 U.S.C. § 315(a)(1) does not bar Petitioners from challenging the ’292 patent. Id.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“First, Patent Owner does not identify where this argument previously was made, and our review of the Preliminary Response indicates only arguments based on § 315(a)(1) or case law regarding § 315(b) were presented. See, e.g., Prelim. Resp. 10–17. Patent Owner did not argue we should exercise our discretion under 35 U.S.C. § 325(d) (see Prelim. Resp. passim), and because this argument was not previously made, we could not have misapprehended or overlooked it (see 37 C.F.R. § 42.71(d)). Even if arguments based on § 325(d) had been previously presented, we would not have exercised our discretion under § 325(d) based on our previous Decision for Case IPR2016-01550 which determined that certain claims of the challenged patent were shown to be unpatentable and because the ’292 patent is subject to a terminal disclaimer in view of the patent challenged in IPR2016-01550. See Ex. 1002, 92–96 (terminal disclaimer filed and approved in the prosecution history file of the ’292 patent).” slip op. at 11
Discretionary denialPatents in suitUS 9,904,292 - Syrinix, Inc. v. Blacoh Fluid Control, Inc.Rehearing deniedPTAB · Jul 10, 2018 · IPR2018-00414 · APJ Frederick C Laney · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding it had not misapprehended or overlooked the arguments about the construction of “transient” or abused its discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“(d) Rehearing. 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. 37 C.F.R. § 42.71(d) (2018). To be entitled to relief, the party seeking rehearing must demonstrate that the Board abused its discretion. 37 C.F.R. § 42.71(c) (2018); see also PNY Techs., Inc. v. Phison Elecs. Corp., No. IPR2013–00472, slip op. at 2 (PTAB April 24, 2014) (Paper 16) (available at https://go.usa.gov/xQUuS). A decision based on an erroneous interpretation of law, a factual finding that is not supported by substantial evidence, or an unreasonable judgment in weighing relevant factors may” slip op. at 2
NonePatents in suitUS 7,219,553 - Controls Southeast, Inc. v. Qmax Industries, LLCRehearing deniedPTAB · May 30, 2018 · IPR2017-00977 · APJ Patrick R Scanlon · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution of review of claim 3 under § 103 over Malone, Bilbro, and Mizuno in place.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“the Board reviews its 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. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). We further note that 37 C.F.R. § 42.71(d) states: 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
- Expert testimonyNot reached
“Regarding Petitioner arguing, with respect to claim 1, that it would have been obvious to one of ordinary skill in the art “to form metal foil 9 of Malone from the rigid metal used for channel member 10 [of Bilbro]” in order to meet the limitation of the heat transfer element physically protecting the tracer tubing (Pet. 24 (citing Ex. 1014 ¶ 160)), we determined that this argument was an alternative to Petitioner’s argument that Malone’s foil 9, unmodified, physically protects heating cable 8, and expressly did not rely on this alternative argument with respect to claim 3. Dec. 23. In addition, we noted that Petitioner’s expert, Dr. Abraham, testified in connection with claim 3 that one of ordinary skill in the art would be motivated to form foil 9 into a rigid structure (see Ex. 1014 ¶¶ 310, 313, 314), but found it unnecessary to rely on this testimony. Dec. 23 n.7. As such, we did not determine that the Petition was ambiguous and did not “piece together support” for Petitioner’s unpatentability theory, as alleged by Patent Owner. See Reh. Req. 5.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Regarding Petitioner arguing, with respect to claim 1, that it would have been obvious to one of ordinary skill in the art “to form metal foil 9 of Malone from the rigid metal used for channel member 10 [of Bilbro]” in order to meet the limitation of the heat transfer element physically protecting the tracer tubing (Pet. 24 (citing Ex. 1014 ¶ 160)), we determined that this argument was an alternative to Petitioner’s argument that Malone’s foil 9, unmodified, physically protects heating cable 8, and expressly did not rely on this alternative argument with respect to claim 3. Dec. 23. In addition, we noted that Petitioner’s expert, Dr. Abraham, testified in connection with claim 3 that one of ordinary skill in the art would be motivated to form foil 9 into a rigid structure (see Ex. 1014 ¶¶ 310, 313, 314), but found it unnecessary to rely on this testimony. Dec. 23 n.7. As such, we did not determine that the Petition was ambiguous and did not “piece together support” for Petitioner’s unpatentability theory, as alleged by Patent Owner. See Reh. Req. 5.” slip op. at 6
§ 103 obviousnessPatents in suitUS 8,662,156 - Flexitallic Investments, Inc. v. Eriks N.V.Rehearing deniedPTAB · Mar 28, 2018 · IPR2017-01968 · APJ Scott C Moore · IPR · Rehearing
The Board denied Flexitallic’s rehearing request and left in place the denial of institution because the petition did not adequately show that the Bond References taught or suggested all limitations of claims 1–5.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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. We review our Decision under an abuse of discretion standard. 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
“B. The Decision Denying Institution In the Decision, we found that Petitioner had failed to make an adequate showing that the Bond References disclose, teach, or suggest all limitations of challenged claims 1–5. Regarding claims 1, 4, and 5, we determined: Petitioner has not made an adequate showing that the Bond References disclose (expressly or inherently), teach, or suggest, “an intermediate stress gas/liquid sealing zone between the core inner surface and the flange inner surface” of the type required by claims 1, 4, and 5. Dec. 17. With respect to claims 2 and 3, we determined: Petitioner has not made an adequate showing that the Bond References disclose (expressly or inherently), teach, or suggest the step of “selecting a deformable pillow material and a deformable pillow thickness such [that] upon compression of the gasket . . . the gasket intermediate portion exhibits a stress level sufficient to preclude gas and liquid flowing through the pipe from passing radially outward beyond the gasket intermediate portion,” as required by claims 2 and 3.” slip op. at 3
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“adequate showing that the Bond References disclose, teach, or suggest all limitations of challenged claims 1–5. Regarding claims 1, 4, and 5, we determined: Petitioner has not made an adequate showing that the Bond References disclose (expressly or inherently), teach, or suggest, “an intermediate stress gas/liquid sealing zone between the core inner surface and the flange inner surface” of the type required by claims 1, 4, and 5. Dec. 17. With respect to claims 2 and 3, we determined: Petitioner has not made an adequate showing that the Bond References disclose (expressly or inherently), teach, or suggest the step of “selecting a deformable pillow material and a deformable pillow thickness such [that] upon compression of the gasket . . . the gasket intermediate portion exhibits a stress level sufficient to preclude gas and liquid flowing through the pipe from passing radially outward beyond the gasket intermediate portion,” as required by claims 2 and 3.” slip op. at 3
- Expert testimonyPetitioner expert discountedDecided for patent owner
“First and foremost, Petitioner does not provide any citation to the Petition or Dr. Green’s Declaration to demonstrate that it previously argued that limitation 1.3 requires a “flange” that “extends radially inward along the entire circumferential inner surface of the core.” See Reh. Req. 5. We could not have misapprehended or overlooked an argument that Petitioner failed to make. 37 C.F.R. 42.71(d). We also note that claim limitation 1.3 does not recite a flange that extends “along the entire circumferential surface of the core” (see Ex. 1001, 8:60–62), and that the claim construction portion of the Petition did not argue that limitation 1.3 should be construed to require a flange that extends radially inward “along the entire circumferential surface of the core” (see Pet. 14–20). In addition, Petitioner fails to identify any testimony from Dr. Green that the Bond References teach or suggest a flange that extends radially inward “along the entire circumferential inner surface of the core” of the type Petitioner now seemingly concedes is necessary for those references to teach or suggest an “intermediate zone.” See Reh. Req. 5. Though Dr. Green testifies regarding a single-projection embodiment in which the projection “extend[s] radially inward from the core inner surface,” Dr. Green never testifies that the single projection of this embodiment extends radially inward “along the entire circumferential inner surface of the core.” See Ex. 1012 ¶¶ 97–99. Our Decision did not overlook or misapprehend Dr. Green’s testimony. To the contrary, we considered and analyzed Dr. Green’s testimony, and determined that Dr. Green’s opinions were not adequately supported by the evidence of record. See Dec. 16–17 (analyzing the portions of the Bond References cited by Dr. Green, and rejecting Dr. Green’s assertion that these portions of the Bond References disclose, teach or suggest a flange that extends radially inward “along the entire circumferential inner surface of the core.”) Petitioner’s argument that we improperly disregarded Dr. Green’s testimony thus has no merit.” slip op. at 5
§ 103 obviousnessPatents in suitUS 9,388,924
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.