• Ykk Corporation v. 3M Innovative Properties Co.Rehearing denied
  PTAB · Feb 10, 2022 · IPR2020-00699 · APJ Matthew S Meyers · IPR · Rehearing

  The Board denied rehearing, leaving claim 12 not shown unpatentable under Grounds 8 and 9 because the petition lacked evidence tying the claimed shear strength to the required loop basis weight.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. LEGAL STANDARDS A party requesting rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d). The party must specifically identify all matters it believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. A request for rehearing, therefore, is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. See, e.g., Presidio Components, Inc.v. AVX Corporation, IPR2015-01332, Paper 21, 4 (PTAB Feb. 21, 2016) (“Patent Owner’s arguments in this regard amount to a mere disagreement with our analysis or conclusion. But mere disagreement with our analysis or conclusion is not a sufficient basis for rehearing. It is not an abuse of discretion to provide analysis or conclusion with which Patent Owner disagrees.”)” slip op. at 3

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “Id. at 9. As to Petitioner’s first and second arguments, we specifically addressed Petitioner’s argument that the proposed combination of Petersen-1 and Busam would meet the shear strength limitation of claim 12. Dec. 69– 73. After reviewing the evidence and arguments presented by both parties, we agreed with Patent Owner’s position. As to Petitioner’s third argument, that we overlooked Busam’s disclosure of an overlapping loop basis weight range, that disclosure was never in dispute. Petitioner argues that “Patent Owner attempted to shift the focus of the Board to the unrelated issue of whether Busam explicitly discloses an anticipating example.” Req. Reh. 11. Petitioner seems to be implying that we applied an anticipation standard to its obviousness arguments, but we did not. Instead, our decision was based 6 on a lack of record evidence of obviousness. See, e.g., Dec. 72–73 (“Petitioner does not point us to any evidence that Busam’s female loop material is capable of engaging with a male fastening portion with a shear strength that was ‘reported to be greater than 500 grammes’ and has ‘a fiber basis weight in a range from 20 grams per square meter to 30 grams per square meter,’ as claim 12 requires.”). We also agreed with Patent Owner that the Petitioner had impermissibly relied on new obviousness theories in its Reply that were not presented in the Petitioner. Dec. 73 (“Petitioner does not explain why the arguments made in its Reply relating to claim 12 could not have been presented in the first instance in the Petition or how the arguments in the Reply are responsive to Patent Owner’s arguments in the Patent Owner Response”).” slip op. at 6

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Id. at 9. As to Petitioner’s first and second arguments, we specifically addressed Petitioner’s argument that the proposed combination of Petersen-1 and Busam would meet the shear strength limitation of claim 12. Dec. 69– 73. After reviewing the evidence and arguments presented by both parties, we agreed with Patent Owner’s position. As to Petitioner’s third argument, that we overlooked Busam’s disclosure of an overlapping loop basis weight range, that disclosure was never in dispute. Petitioner argues that “Patent Owner attempted to shift the focus of the Board to the unrelated issue of whether Busam explicitly discloses an anticipating example.” Req. Reh. 11. Petitioner seems to be implying that we applied an anticipation standard to its obviousness arguments, but we did not. Instead, our decision was based 6 on a lack of record evidence of obviousness. See, e.g., Dec. 72–73 (“Petitioner does not point us to any evidence that Busam’s female loop material is capable of engaging with a male fastening portion with a shear strength that was ‘reported to be greater than 500 grammes’ and has ‘a fiber basis weight in a range from 20 grams per square meter to 30 grams per square meter,’ as claim 12 requires.”). We also agreed with Patent Owner that the Petitioner had impermissibly relied on new obviousness theories in its Reply that were not presented in the Petitioner. Dec. 73 (“Petitioner does not explain why the arguments made in its Reply relating to claim 12 could not have been presented in the first instance in the Petition or how the arguments in the Reply are responsive to Patent Owner’s arguments in the Patent Owner Response”).” slip op. at 6

  § 103 obviousness
  Patents in suitUS 10,165,833
• Mercedes-Benz USA, LLC v. Carucel Investments, L.P.Rehearing denied
  PTAB · Mar 3, 2021 · IPR2019-01298 · APJ Thomas L Giannetti · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving in place its decision that all challenged claims were unpatentable.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: 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. A rehearing request is not an opportunity for the requesting party to reargue its case or merely to express disagreement with the Final Written Decision. Nor is it an opportunity for the moving party to present new arguments that were not in its original submissions.” slip op. at 3

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “As discussed further below, after considering all the evidence, we provided in the Final Written Decision a detailed analysis of Patent Owner’s arguments, and rejected Patent Owner’s proposed limitations for “mobile unit,” determining that the ordinary meaning should apply and no further construction was necessary. Final Dec. 14–26. D. The Final Written Decision Our analysis of “mobile unit” in the Final Written Decision was guided by Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Final Dec. 11. In summary, for the reasons that follow, we are not persuaded that our analysis of “mobile unit” under Phillips was incorrect, or that we overlooked or misapprehended Patent Owner’s arguments or evidence in that analysis.” slip op. at 5

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 7,221,904
• Mercedes-Benz USA, LLC v. Carucel Investments, L.P.Rehearing denied
  PTAB · Mar 3, 2021 · IPR2019-01404 · APJ Daniel J Galligan · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving claims 1, 4–11, and 14–23 unpatentable based on its construction of “mobile device” and findings on combining CDMA and TDMA.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “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. A rehearing request is not an opportunity for the requesting party to reargue its case or merely to express disagreement with the Final Written Decision. Nor is it an opportunity for the moving party to present new arguments that were not in its original submissions.” slip op. at 3

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “We disagree that we misapprehended or overlooked any matters in addressing Patent Owner’s proposed construction for “mobile device.” Rather, we provided a comprehensive analysis of the term “mobile device.” anything that was overlooked or misapprehended in this analysis, as required by 37 C.F.R. § 42.71(d). Instead, Patent Owner merely expresses its disagreement with our conclusions and proceeds to reargue points and evidence already considered and rejected in the Final Written Decision. This approach is not proper in a rehearing request. Furthermore, Patent Owner’s own arguments show the error in its proposed construction. For example, Patent Owner argues that the recited “mobile device” “must register with and be able to directly communicate with the cellular network.” PO Resp. 13; Req. Reh’g 1 n.1. Yet, Patent Owner acknowledges that “the claims of the ’023 Patent require the apparatus/movable base station to communicate directly with the cellular network (and not the ‘mobile device’).” Req. Reh’g 3 (emphasis added). As we pointed out in the Final Decision, the only claimed communication involving the mobile device is between the claimed “apparatus” (the mobile base station) and the mobile device, and Patent Owner acknowledges that this communication need not be cellular. Final Dec. 14 (citing PO Sur-reply 9). Thus, Patent Owner’s arguments undermine its proposed construction.” slip op. at 3

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundOther

    “[t]he Board erred in finding that that ‘CDMA and TDMA are not incompatible’ by improperly disregarding substantial evidence set forth by Patent Owner and its expert—that undermines any expectation of success and would have discouraged a [person of ordinary skill in the art] from attempting Petitioner’s combinations.” Req. Reh’g 14 (citing Final Dec. 79). Patent Owner does not attempt to identify any specific errors in citing pages from Patent Owner’s written submissions and testimony from its declarant. Req. Reh’g 14 n.31. We disagree that we misapprehended or overlooked any matters in this regard. Rather, we considered Patent Owner’s submissions and disagreed with them, finding instead that the record demonstrated that CDMA and TDMA can be combined, and we relied on, among other evidence, a prior art reference that expressly discloses a combination of CDMA and TDMA. Final Dec. 56–57 (citing Ex. 1033), 79. We further found that a person of ordinary skill in the art would have had reason to make the proposed combinations and would have had a reasonable expectation of success in doing so. Final Dec. 57–58, 79–81. slip op. at 6

  Claim construction§ 103 obviousness
  Patents in suitUS 7,979,023
• Intel Corporation v. VLSI Technology LLCRehearing denied
  PTAB · Feb 19, 2021 · IPR2020-00527 · APJ Kimberly Mcgraw · IPR · Rehearing

  The Board denied Intel’s rehearing requests and left in place its § 314(a) denial of institution in both proceedings based on the Fintiv factors.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner

    “Petitioner has not shown that this change in circumstance warrants modifying (1) the determination that Fintiv factor 4 weighs in favor of exercising discretion to deny institution or (2) the determination, after weighing all factors and taking a holistic view of the relevant circumstances, to exercise discretion to deny institution. Several of the claims challenged in each Petition are still at issue in the parallel proceeding, and the combinations of references asserted by Petitioner in the district court largely overlap with the combinations of references asserted in the Petitions. Petitioner has not identified any differences among the claims that have been dropped and the claims that remain as a reason to modify our Decision. See Fintiv, Paper 11 at 13 (“if a petition involves the same prior art challenges but challenges claims in addition to those that are challenged in the district court, it may still be inefficient to proceed because the district court may resolve validity of enough overlapping claims to resolve key issues in the petition”).” slip op. at 5

  Discretionary denial
  Patents in suitUS 6,633,187
• Intel Corporation v. VLSI Technology LLCRehearing denied
  PTAB · Feb 19, 2021 · IPR2020-00526 · APJ Kimberly Mcgraw · IPR · Rehearing

  The Board denied Intel’s rehearing requests, leaving institution denied in both proceedings based on its Fintiv analysis of the parallel litigation.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. ANALYSIS A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner

    “noted that, “[e]ven if Petitioner’s contentions are true, Petitioner has not shown these contentions will avoid adjudication of Intel’s invalidity defenses” in the related Western District of Texas litigation. Dec. Inst. 13. In light of the record at the time, we found that Petitioner’s arguments in connection with Fintiv factor 6 did not weigh against exercising our discretion to deny institution. Id. at 13–15. Accordingly, we maintain our finding that Petitioner’s argument does not weigh against exercising our discretion to deny institution.” slip op. at 4

  Discretionary denial
  Patents in suitUS 6,633,187
• Intel Corporation v. VLSI Technology LLCRehearing denied
  PTAB · Feb 11, 2021 · IPR2020-00582 · APJ Bart A Gerstenblith · IPR · Rehearing

  The Board denied Intel’s rehearing request and maintained its discretionary denial of institution under Fintiv, despite weighing Factor 6 neutrally.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. ANALYSIS A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied

    “The change in circumstances regarding the trial date does not persuade us to change our decision to exercise our discretion to deny institution. Even if we were to institute an inter partes review proceeding, the deadline for issuing a final written decision could be no earlier than February 2022. Thus, at this time, it appears likely that trial will occur many months before any final written decision would likely issue in this proceeding. Therefore, we maintain our finding that Fintiv Factor 2” slip op. at 4

  Discretionary denial
  Patents in suitUS 7,292,485
• FMC Technologies, Inc. v. Onesubsea IP UK LimitedRehearing denied
  PTAB · Jan 13, 2021 · IPR2019-00935 · APJ James A Tartal · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request and left in place its determination that claims 1–15 are unpatentable under the listed § 103 grounds.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “the burden of showing a decision should be modified, and the request for rehearing must specifically identify all matters the party believes we misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d). Therefore, Patent Owner bears the burden of establishing that we misapprehended or overlooked the matters that it requests that we review.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “weighed the testimony of Mr. Voss. In our Decision, we considered the testimony of Mr. Voss, but we were not persuaded that the testimony outweighs Petitioner’s evidence supporting the proposed modification. In particular, we weighed the evidence of both parties to determine whether Petitioner had shown by a preponderance of the evidence that a skilled artisan would have known and had reason to place seals above the transition point as proposed by Petitioner. We determined that Petitioner established by a preponderance of the evidence that it was known to place seals above a transition point in order to provide an isolated flow path. Dec. 50. We also credited the testimony of Mr. Parks over the testimony of Mr. Voss and found that implementation of the modifications proposed by Petitioner would have been within the basic level of skill of a person of ordinary skill in the art. Id. at 60. We considered and rejected Mr. Voss’s assertion that Petitioner’s proposed modification would place seals on uneven surfaces and on shoulder surfaces that are an improper location for a seal, and would locate seals at different diameters. Dec. 60 (citing Ex. 2004 ¶¶ 148–150).” slip op. at 4

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableDecided for petitioner

    “that the pipes and valves taught by Reimert that correspond, without alteration, to the recited “isolated path” does not actually teach an “isolated path” unless Reimert expressly states which valves are open or closed to make an “isolated path” through the subsea tree. Id. According to Patent Owner “‘where an apparatus need[s] to be altered in order to be “configured” as claimed and there was no evidence of such alteration,’ it does not anticipate or render obvious those claims.” Reh’g Req. 8 (quoting ParkerVision, 903 F.3d at 1361–62). Patent Owner’s assertion that whether a valve is opened or closed is an “alteration” of the apparatus is not persuasive. See, e.g., Fantasy Sports Properties, Inc. v. Sportsline.com, Inc., 287 F.3d 1108, 1118 (Fed. Cir. 2002) (stating that “although a user must activate the [valves] by selecting [particular valves], the user is only activating [valves] that are already present”). Patent Owner further argues that “as explained by Mr. Voss, Reimert specifically articulates how the completion system is intended to operate and provides specific instructions for opening and closing the valves of the system.” Id. at 10. Claims 1 and 9, the only independent claims challenged, are directed to “a system,” not a method. Ex. 1001, 6:40–65, 7:27–49. As explained in the Decision, “Patent Owner’s arguments are improperly premised on how Patent Owner contends Reimert was intended to be operated, depending on the circumstances, based on how Reimert teaches ‘specific instructions for opening/closing valves.’” Dec. 74–75. Further, we explained in the Decision as follows: Patent Owner then concedes that there are “alternative flow paths,” but argues, based on closing certain valves and opening others, that “even when annulus fluid is permitted to flow into the tubing hanger, the annulus fluid is not permitted to flow into the tree.” Id. at 64–65 (citing Ex. 1006, 5:47–49). Patent Owner proceeds to explain how Reimert would be operated during “typical operation” and how valves would be operated “during workover mode,” “not when a tree is attached.” Whether Reimert teaches, as an apparatus, a system configured to allow annulus fluid to flow through the tree simply does not turn on whether a valve taught by Reimert is opened or closed by an operator. Petitioner persuasively shows that “Reimert’s configuration shown in FIG. 4 provides a fluid flow path through the tubing spool, tubing hanger, and into the tree (e.g., via the plenum) that is in communication with ‘annular region 56.’” Pet. Reply 19–20 (citing Ex. 1032 ¶ 61). Dec. 75. For these reasons, Patent Owner fails to show that we misapprehended the evidence presented and, as a result, erred in determining that the alternative production flow passage of Reimert is an annulus flow passage through the subsea tree, as shown by a preponderance of the evidence by Petitioner.” slip op. at 7

  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner

    “A request for rehearing is not an opportunity to submit new arguments that were not made previously, and Patent Owner fails to identify where the constitutional arguments it now presents were previously raised. See 37 C.F.R. § 42.71(d). We issued the Decision in this case on October 14, 2020, nearly a year after the Federal Circuit issued Arthrex on October 31, 2019. The Federal Circuit issued a mandate in Arthrex on April 6, 2020. Arthrex, Inc. v. Smith & Nephew, Inc., No. 2018-2140, Dkt. No. 119 (Fed. Cir. April 6, 2020). Thus, Patent Owner had notice of Arthrex prior to the Final Written Decision. Indeed, Patent Owner submitted a sur-reply (Paper 26, filed May 15, 2020) and conducted oral arguments on June 29, 2020 (see Paper 42) without presenting any Appointments Clause argument. The Federal Circuit has rejected similar Appointments Clause challenges on the ground that the Board judges were deemed constitutionally appointed as of the date that the Federal Circuit issued its precedential decision in Arthrex. Caterpillar Paving Products Inc. v. Wirtgen America, Inc., 957 F.3d 1342, 1343 (Fed. Cri. 2020); see also Arthrex, Inc. v. Smith & Nephew, Inc., 953 F.3d 760, 764 (Fed. Cir. 2020) (Moore, J., concurring in denial of rehearing) (“Because the APJs were constitutionally appointed as of the implementation of the severance, inter partes review decisions going forward were no longer rendered by unconstitutional panels.”). Accordingly, we deny Patent Owner’s request that this case be dismissed.” slip op. at 8

  § 103 obviousness
  Patents in suitUS 9,945,202
• Netflix, Inc. v. Divx, LLCRehearing denied
  PTAB · Dec 2, 2020 · IPR2020-00511 · APJ Bart A Gerstenblith · IPR · Rehearing

  The Board denied DivX’s rehearing request, leaving the institution decision in place because the rule remained effective and Dr. McDaniel’s testimony was supported on the record.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. ANALYSIS A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “assertions regarding Dr. McDaniel’s testimony. Dr. McDaniel testified that (a) Chen teaches video data streams, (b) “[a]s was widely known in the art, for example as disclosed by Grab-333,[1] a [person of ordinary skill in the art] would have understood that video data streams were comprised of a series of video frames,” and (c) a person of ordinary skill in the art “would have understood that Chen teaches a plurality of frames of video are encrypted using at least one scrambling key/control word.” Ex. 1003 ¶ 112;” slip op. at 3

  None
  Patents in suitUS 9,184,920
• Google LLC v. Uniloc 2017, LLCRehearing denied
  PTAB · Oct 16, 2020 · IPR2019-01584 · APJ Kevin F Turner · IPR · Rehearing

  The Board denied Google’s rehearing request, finding no abuse of discretion in denying institution of review of claims 1–3, 5, 6, 8, 39, and 41 under its General Plastic analysis.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW When rehearing a decision on institution, we do not review the merits of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, 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.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for patent owner

    “petitions are only relevant if Petitioner was a party to the prior proceedings, or had a relationship with the prior petitioners. Reh’g Req. 7. But a review of the cited precedential decision does not reflect Petitioner’s suggestion. See General Plastic, Paper No. 19 at 15−19 (“Our intent in formulating the factors was to take undue inequities and prejudices to Patent Owner into account.”). General Plastic does not proscribe panels of the Board from considering whether a subsequent petitioner knew of the prior art cited in the subsequent petition at the time of filing of the first petition, per the second factor. Similarly, we are not barred, under General Plastic, from considering the length of time that elapsed between when a petitioner learned of the art and when the petition, based on that art, was filed, or whether petitioner provides an adequate explanation for the time elapsed between the filings of multiple petitions, per the fourth and fifth factors. Additionally, we are not persuaded that the factors enumerated in General Plastic, as viewed through the lens of Valve Corp., must all be limited by any possible relationship between the multiple petitioners. Although the discussion of the first factor in Valve Corp. makes clear that “any relationship between those petitioners when weighing the General Plastic factors” must be considered, the remaining factors take into account the knowledge of the second petitioner irrespective of a specific relationship. See Valve Corp., Paper 11 at 9−15. As such, the relationship between the different petitioners certainly has some bearing on what the second petitioner knew, when they knew it, and when they acted upon it, but the consideration of the second through seventh factors does not require a showing of a specific relationship between the petitioners to consider those factors.” slip op. at 5

  Discretionary denial
  Patents in suitUS 6,519,005
• Bentley Motors Limited / Bentley Motors, Inc. v. Jaguar Land Rover LimitedRehearing denied
  PTAB · Oct 2, 2020 · IPR2019-01539 · APJ Barry L Grossman · IPR · Rehearing

  The Board denied rehearing and left in place the denial of institution, finding the Fintiv factors favored discretionary denial under § 314(a).

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “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). 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. Petitioner asserts that “under NHK Spring, the Board here abused its § 314(a) discretion because it lacked an independent reason for denying review beyond the existence of a related district court action.” Req. Reh’g 3. According to Petitioner, “NHK Spring does not give the Board authority to deny institution solely or primarily because a related district court action could potentially resolve the overlapping invalidity disputes before a final decision by the Board.” Id. We disagree. Petitioner has provided no persuasive authority supporting its interpretation of NHK Spring. Binding precedent, discussed below, is contrary to Petitioner’s argued interpretation.” slip op. at 4

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “7. Conclusion Under Fintiv, the Board takes “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv, Paper 11 at 6. Fintiv factor 1 weighs evenly for each party. Fintiv factor 2 weighs moderately in favor of exercising our discretion to not institute a trial. Fintiv factor 3 weighs strongly in favor of denying institution and avoiding duplication at PTAB of discovery and other work by the parties and the Court. Fintiv factor 4 weighs in favor of discretionary denial of an inter partes review. Fintiv factor 5 weighs in favor of discretionary denial. Fintiv factor 6 favors discretionary denial. Thus, based on this analysis, we determine under the particular circumstances of this case, the interests of efficiency and integrity of the patent system tilt toward invoking our discretionary authority under § 314(a) to deny institution of the Petition. Based on our analysis, Petitioner has not shown that we abused our discretion in denying the Petition. Accordingly, the request for rehearing is denied.” slip op. at 13

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied

    “7. Conclusion Under Fintiv, the Board takes “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv, Paper 11 at 6. Fintiv factor 1 weighs evenly for each party. Fintiv factor 2 weighs moderately in favor of exercising our discretion to not institute a trial. Fintiv factor 3 weighs strongly in favor of denying institution and avoiding duplication at PTAB of discovery and other work by the parties and the Court. Fintiv factor 4 weighs in favor of discretionary denial of an inter partes review. Fintiv factor 5 weighs in favor of discretionary denial. Fintiv factor 6 favors discretionary denial. Thus, based on this analysis, we determine under the particular circumstances of this case, the interests of efficiency and integrity of the patent system tilt toward invoking our discretionary authority under § 314(a) to deny institution of the Petition. Based on our analysis, Petitioner has not shown that we abused our discretion in denying the Petition. Accordingly, the request for rehearing is denied.” slip op. at 13

  Discretionary denial

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.