- Cargill, Incorporated v. Bunge Loders Croklaan USA, LLCRehearing deniedPTAB · Apr 29, 2025 · IPR2024-01360 · APJ Debra L Dennett · IPR · Rehearing
The Board denied Cargill’s rehearing request, leaving institution denied for claims 1, 6–9, and 11–24 because the petition did not show a reason to combine the selected prior-art data without hindsight.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Upon request for rehearing, we assess a decision on institution “for an abuse of discretion” (37 C.F.R. § 42.71(c) (2020)), which occurs when a “decision was based on an erroneous conclusion of law,” “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 burden of showing a decision should be modified lies with the party challenging the decision. 37 C.F.R. § 42.71(c) (2020). 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. Thus, a request for rehearing 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. We have reviewed Petitioner’s Rehearing Request and carefully considered all the arguments presented. For the following reasons, we are not persuaded that we misapprehended or overlooked any arguments or evidence.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“As discussed in the Decision, “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (citing InTouch Technologies, Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). No matter the result of combining the allegedly “readily available and well-known” information taken from particular examples from the “documentary evidence” with Petrauskaite’s disclosure, a POSITA had to have been motivated to do so at the time the invention was made.1 What is missing from the Petition is the “why.” The only motivating force in this case appears to be hindsight spurring Petitioner on to choose particular examples of palm stearin disclosed in Deffense and the soybean oil in Neff in order to justify its assertion that Petrauskaite discloses the claimed wt% ranges of triglyceride classes.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentableNot shown unpatentable
“artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (citing InTouch Technologies, Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). No matter the result of combining the allegedly “readily available and well-known” information taken from particular examples from the “documentary evidence” with Petrauskaite’s disclosure, a POSITA had to have been motivated to do so at the time the invention was made.1 What is missing from the Petition is the “why.” The only motivating force in this case appears to be hindsight spurring Petitioner on to choose particular examples of palm stearin disclosed in Deffense and the soybean oil in Neff in order to justify its assertion that Petrauskaite discloses the claimed wt% ranges of triglyceride classes.” slip op. at 4
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner’s. We find no instance in the Petition in which “motivation” and “iodine value” are discussed together or linked in any way. The same can be said of Dr. Marangoni’s declaration. And, as noted in the Decision, it was not until the Preliminary Reply that Petitioner argued that specific data on fatty acid wt% used for the conversion calculations were selected to represent “knowledge generally available to one of ordinary skill in the art” due to similarity of the iodine value (“IV”) of the palm stearin (and soybean oil) disclosed in Petrauskaite. See Prelim. Reply 2–3. New evidence or argument in the Preliminary Reply that could have presented earlier is not permitted. On this record, we find Petitioner relies its Rehearing Request on arguments about a motivation to combine, stemming from the significance of iodine values, that were not raised in the Petition. Accordingly, Petitioner fails to support that the Decision misapprehended or overlooked arguments in the Petition about the significance of iodine values.” slip op. at 8
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,645,473 - Corning Incorporated v. Panduit Corp.Rehearing deniedPTAB · Jan 16, 2020 · IPR2019-00776 · APJ Debra L Dennett · IPR · Rehearing
The Board denied Corning’s rehearing request and left institution denied for claims 1–4 because the petition did not show a reasonable likelihood of proving obviousness on any asserted ground.
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. Thus, a request for rehearing 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.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Request for Rehearing (Paper 16, “Rehearing Request” or “Reh’g Req.”) of our Decision denying institution of an inter partes review (Paper 15, “Decision” or “Dec.”) of claims 1–4 of U.S. Patent No. 8,488,115 B2 (Ex. 1001, “the ’115 patent”). In the Decision, we found that Petitioner failed to provide sufficient evidence to show that the choosing limitation of the claims would have been obvious over cited references in view of the knowledge of one of ordinary skill in the art. Dec. 20, 26, 29. We, thus, found that Petitioner did not establish a reasonable likelihood of prevailing in showing that claims 1–4 of the ’115 patent are unpatentable as obvious on any asserted ground. Id. at 22, 23, 27–30.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableNot shown unpatentable
“negative slopes. See Ex. 1006, Figs. 2, 3. Petitioner failed to explain why one of ordinary skill in the art at the time of the invention, without using the ’115 patent as a template, would have elected to consider only some selected data in Abbott, while ignoring other data, or would have elected to choose an optical fiber based on such consideration. See Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (“To draw on hindsight knowledge of the patented invention, when the prior art does not contain or suggest that knowledge, is to use the invention as a template for its own reconstruction—an illogical and inappropriate process by which to determine patentability.” (citing W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983))). Instead, Petitioner merely cited to the conclusory opinion of its expert declarant. Pet. 42 (citing Ex. 1005 ¶ 252).” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“The second part of Petitioner’s first argument is that we “committed legal error by construing claim 1” of the ’115 patent “as requiring the slope to always be negative.” Reh’g Req. 4, 6–8. We made no such construction, either expressly or implicitly. In fact, we determined that no claim term required express construction. Dec. 7. In arguing that we committed legal error, Petitioner points to statements in Patent Owner’s briefing (Reh’g Req. 6–9), but Petitioner identifies nothing in our Decision that indicates we construed the “choosing” limitation of claim 1 to require that the DMD slope always be negative. Consequently, Petitioner’s assertion of legal error is unsupported.” slip op. at 7
Claim construction§ 103 obviousnessPatents in suitUS 8,488,115 - Corning Incorporated v. Panduit Corp.Rehearing deniedPTAB · Jan 16, 2020 · IPR2019-00775 · APJ Michelle N Ankenbrand · IPR · Rehearing
Denied Corning’s rehearing request; the Board maintained its denial of institution because the petition did not show a reasonable likelihood that claims 1–4 were obvious on any asserted ground.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“institute an inter partes review, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c) (2018). In pertinent part, 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. Thus, a request for rehearing 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.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Request for Rehearing (Paper 16, “Rehearing Request” or “Reh’g Req.”) of our Decision denying institution of an inter partes review (Paper 15, “Decision” or “Dec.”) of claims 1–4 of U.S. Patent No. 8,351,027 B2 (“the ’027 patent,” Ex. 1001). In the Decision, we found that Petitioner failed to provide sufficient evidence to show that the combined teachings of the prior art would have rendered obvious the limitation of claim 1 that requires “choosing for use in a communications network those optical fibers in which the result of subtracting the peak delay at the first radius from the peak delay at the second radius is a negative number” (“the choosing step”). Dec. 23–25, 29–30, 32. We, thus, determined that Petitioner did not establish a reasonable likelihood of prevailing in showing that claims 1–4 of the ’027 patent would have been obvious based on any asserted ground. Id. at 25–26, 30–33.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot reached
“negative slopes. See Ex. 1006, Figs. 2, 3. Petitioner failed to explain why one of ordinary skill in the art at the time of the invention, without using the ’027 patent as a template, would have elected to consider only some selected data in Abbott, while ignoring other data, or would have elected to choose an optical fiber based on such consideration. See Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (“To draw on hindsight knowledge of the patented invention, when the prior art does not contain or suggest that knowledge, is to use the invention as a template for its own reconstruction—an illogical and inappropriate process by which to determine patentability.” (citing W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983))); see also Dec. 25 (concluding that Petitioner’s argument appears to be the product of hindsight). Instead, Petitioner merely cited to the conclusory opinion of its expert declarant. Pet. 44 (citing Ex. 1005 ¶ 164).” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“legal error by construing claim 1” of the ’027 patent “as requiring the slope to always be negative.” Reh’g Req. 4, 6–8. We made no such construction. In fact, we determined that no claim term required express construction, expressly or implicitly. Dec. 7. In arguing that we committed legal error, Petitioner points to statements in Patent Owner’s briefing, see Reh’g Req. 6– 9, but does not identify anything in our Decision that indicates we construed the choosing step of claim 1 as requiring that the DMD slope should always be negative. Consequently, Petitioner’s assertion of legal error is unsupported.” slip op. at 7
Claim construction§ 103 obviousnessPatents in suitUS 8,351,027 - C&D Zodiac, Inc. v. B/E Aerospace, Inc.Rehearing deniedPTAB · Mar 9, 2018 · IPR2017-01274 · APJ Scott A Daniels · IPR · Rehearing
The Board denied C&D Zodiac’s rehearing request and left in place its denial of institution because the hypothetical forward wall limitation did not provide ascertainable claim scope.
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 slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“In the Institution Decision, we explained that we were unable to determine the metes and bounds of the hypothetical enclosure unit limitation required by all the challenged claims. Inst. Dec. 7–12. Specifically, we found that “[a]s a whole, the claim language does not in any comprehensible way tie the relative position of the seat support to the shape of the wall, be it “substantially not flat” or, hypothetically speaking, “substantially flat.”” Inst. Dec. 10. In light of this uncertainty, we found that “Petitioner has not provided sufficient information for a determination of the scope of certain limitations, such as the ‘additional space’ and, therefore, we cannot conduct the necessary factual inquiry for determining whether the prior art meets this limitation.” Id. at 16.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In the Institution Decision, we explained that we were unable to determine the metes and bounds of the hypothetical enclosure unit limitation required by all the challenged claims. Inst. Dec. 7–12. Specifically, we found that “[a]s a whole, the claim language does not in any comprehensible way tie the relative position of the seat support to the shape of the wall, be it “substantially not flat” or, hypothetically speaking, “substantially flat.”” Inst. Dec. 10. In light of this uncertainty, we found that “Petitioner has not provided sufficient information for a determination of the scope of certain limitations, such as the ‘additional space’ and, therefore, we cannot conduct the necessary factual inquiry for determining whether the prior art meets this limitation.” Id. at 16.” slip op. at 3
Claim constructioncites MarkmanPatents in suitUS 9,365,292 - C&D Zodiac, Inc. v. B/E Aerospace, Inc.Rehearing deniedPTAB · Mar 8, 2018 · IPR2017-01273 · APJ Jennifer S Bisk · IPR · Rehearing
The Board denied rehearing of its decision denying institution because Petitioner did not show an abuse of discretion in finding claims 1–6 indefinite in scope.
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
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In the Institution Decision, we explained that we were unable to determine the metes and bounds of the hypothetical enclosure unit limitation required by all the challenged claims. Inst. Dec. 7–9. Specifically, we found that the claim language “leaves us to compare the claimed enclosure unit with a configuration that we know nothing about, except that it has an alternative hypothetical enclosure unit with ‘a substantially flat front wall located in the substantially the same position in the cabin as the forward wall.’” Inst. Dec. 8. In light of this uncertainty, we found that “Petitioner has not provided sufficient information for a determination of the scope of the hypothetical enclosure unit limitation and, therefore, we cannot conduct the necessary factual inquiry for determining whether the prior art meets this limitation.” Id. at 9.” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“determine the metes and bounds of the hypothetical enclosure unit limitation required by all the challenged claims. Inst. Dec. 7–9. Specifically, we found that the claim language “leaves us to compare the claimed enclosure unit with a configuration that we know nothing about, except that it has an alternative hypothetical enclosure unit with ‘a substantially flat front wall located in the substantially the same position in the cabin as the forward wall.’” Inst. Dec. 8. In light of this uncertainty, we found that “Petitioner has not provided sufficient information for a determination of the scope of the hypothetical enclosure unit limitation and, therefore, we cannot conduct the necessary factual inquiry for determining whether the prior art meets this limitation.” Id. at 9.” slip op. at 3
Claim constructionPatents in suitUS 9,434,476 - Taiwan Semiconductor Manufacturing Company Limited / Globalfoundries U.S. Inc. v. Godo Kaisha IP Bridge 1Rehearing deniedPTAB · Feb 21, 2018 · IPR2016-01264 · APJ Michael J Fitzpatrick · IPR · Rehearing
The Board denied the Patent Owner’s rehearing request, leaving claims 1–3, 5–7, and 9 unpatentable as obvious over Zhang, Ding, and Sun.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. LEGAL STANDARD “A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board.” 37 C.F.R. § 42.71(d). “The burden of showing a decision should be modified lies with the party challenging the decision.” Id. “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.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“PO Resp. 55. In this argument, Patent Owner is either (A) implying that Zhang teaches upper surfaces only of pure tantalum, which is erroneous (see Ex. 1004, 3:50–62)) or (B) talking past (and not rebutting) Petitioner’s asserted combination of prior art teachings, which relies on Zhang’s explicit teaching of nitrogen in the upper surface. In our Decision, we reasonably interpreted Patent Owner to be arguing the former (i.e., that Zhang exclusively teaches or requires pure tantalum in the upper surface), because the latter would be non-responsive to the obviousness challenge as raised by Petitioner.” slip op. at 5
§ 103 obviousnessPatents in suitUS 6,538,324 - Taiwan Semiconductor Manufacturing Company Limited / Globalfoundries U.S. Inc. v. Godo Kaisha IP Bridge 1Rehearing deniedPTAB · Feb 21, 2018 · IPR2016-01249 · APJ Michael J Fitzpatrick · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1–3, 5–7, and 9 and proposed substitute claims 11 and 12 unpatentable as obvious over Ding in view of Zhang.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. LEGAL STANDARD “A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board.” 37 C.F.R. § 42.71(d). “The burden of showing a decision should be modified lies with the party challenging the decision.” Id. “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.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We agree, as Patent Owner argues, that Zhang teaches a “desirability” of, and not a requirement for, an upper surface of pure tantalum. But, it cannot reasonably be disputed that Zhang also teaches a desirability for nitrogen in the upper surface. Ex. 1004, 3:57–62; see also id. at Abstract (“The nitrogen percentage for the second portion (32) is lower than the nitrogen atomic percentage for the first portion (22).”). It is this latter teaching, and not that of pure tantalum, on which Petitioner’s obviousness challenge was premised. See, e.g., Pet. 14–15 (arguing that Zhang’s upper surface includes nitrogen and a person of ordinary skill in the art “would have found it obvious to modify the top tantalum film in Ding to purposely add a small content of nitrogen therein, as taught in Zhang”).” slip op. at 5
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“Our Decision states: As discussed above, all of the challenged claims are unpatentable as obvious over Ding in view of Zhang. Patent Owner’s proposed claims 11 and 12 are unpatentable because they introduce limitations—nitrogen throughout the first film (claim 11) and nitrogen at the upper surface of the first film (claim 12)— that are met by the very references asserted in the ground of unpatentability involved in this inter partes review. Patent Owner’s Motion to substitute claims 11 and 12 is premised, incorrectly, on Zhang requiring pure tantalum (and, thus, no nitrogen) at the upper surface of its tantalum-rich tantalum nitride film. In fact, Zhang does not require any portion of the tantalum-rich tantalum nitride film to be pure tantalum. Ex. 1004, 3:53–54 (“The tantalum-rich tantalum nitride film has a range of approximately 0-30 atomic percent nitrogen.”). And, Zhang explicitly teaches that the upper surface may include nitrogen. Id. at 3:57–62 (“A lower atomic percent nitrogen at the upper surface typically gives better adhesion to copper films. At the upper surface, the atomic percent tantalum may be at least 95% and the atomic percent nitrogen may be less than 5% if copper adhesion is particularly problematic.”); Ex. 1036, 40:1– 6, 42:2–9, 42:15–21, 54:14–20 (Dr. Harris acknowledging that the upper surface of the film would contain some nitrogen). Accordingly, a preponderance of the evidence establishes that Patent Owner’s proposed claims 11 and 12 are not patentable over the art of record in this inter partes review. Put another way, and as Petitioner argues, claims 11 and 12 (like challenged claim 5) are unpatentable as they claim subject matter that would have been obvious over Ding in view of Zhang. Final Dec. 33–34. Thus, we considered every limitation of proposed claims 11 and 12, including the limitations they would introduce relative to claim 5, and determined that proposed claims 11 and 12 claim subject matter that would have been obvious over Ding and Zhang.” slip op. at 8
§ 103 obviousnessPatents in suitUS 6,538,324 - Adidas AG v. Nike, Inc.Rehearing deniedPTAB · Jul 20, 2017 · IPR2017-00264 · APJ James B Arpin · IPR · Rehearing
The Board denied adidas’s rehearing requests and maintained its denial of institution because the petitions relied on the same or substantially the same prior art previously presented to the Office.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“B. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” “An abuse of discretion occurs 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.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000)). The request must identify, with specificity, all matters that the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). Nevertheless, [a] request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. It is not an abuse of discretion to have performed an analysis or reached a conclusion with which Petitioner disagrees, and mere disagreement with the Board’s analysis or conclusion is not a proper basis for rehearing.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“Board’s finding that the art and arguments presented in the [Petitions of the above captioned cases] are substantially the same as those in the ‘920 IPR petition. To the contrary, the arguments are materially different with respect to the primary references and the obviousness combinations presented.” ’263 Req. 8 (emphasis added); ’264 Req. 8. Nevertheless, our invocation of § 325(d) did not require that we determine that the same or substantially the same prior art and arguments presented in the instant Petitions previously were presented to the Office, but rather that the same or substantially the same prior art or arguments previously were presented to the Office. Thus, our exercise of discretion in denying of institution under 35 U.S.C. § 325(d) is warranted by our finding that the same or substantially the same prior art had previously been presented to the Office. b. The Same or Substantially the Same Prior Art and Arguments Petitioner’s identification of “primary” and “secondary” references and its application of the teachings of these references to the challenged claims are arguments. In particular, Petitioner argues that “by beginning with Reed as the primary reference instead of Nishida, the [person of ordinary skill in the art’s (POSA’s)] motivation to combine the references is presented differently.” ’263 Req. 11 (emphasis added); ’264 Req. 10. As noted above, it was not necessary for us to determine whether those arguments also were the same or substantially the same as arguments previously presented to the Office. Nevertheless, to the extent that Petitioner contends that these arguments are not the same or substantially the same as its previous arguments because Petitioner relied on a different primary reference, the Board previously has held that the order in which art is applied in a utility application is not necessarily material. See In re Bush, 296 F.2d 491, 496 (CCPA 1961) (“where a rejection is predicated on two references each containing pertinent disclosure which has been pointed out to the applicant, we deem it to be of no significance, but merely a matter of exposition, that the rejection is stated to be on A in view of B instead of on B in view of A, or to term one reference primary and the other secondary.”).” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“[we] may not authorize an inter partes review to be instituted unless [we] determine[] 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). Thus, we evaluate Petitioner’s reasonable likelihood of prevailing in showing the unpatentability of challenged claims on a claim– by-claim basis, upon consideration of the arguments and evidence presented in the Petitions. A petitioner’s arguments and evidence presented in other petitions with respect to other challenged claims of other patents is largely irrelevant to the institution decision in a different petition presenting different arguments and evidence for similar limitations in different challenged claims of a different patent.” slip op. at 8
Discretionary denialPatents in suitUS 8,042,288 - Adidas AG v. Nike, Inc.Rehearing deniedPTAB · Jul 20, 2017 · IPR2017-00263 · APJ James B Arpin · IPR · Rehearing
The Board denied adidas’s rehearing requests and maintained its denial of institution under § 325(d) because the petitions presented the same or substantially the same prior art and arguments previously presented.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“a panel will review the decision for an abuse of discretion.” “An abuse of discretion occurs 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.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000)). The request must identify, with specificity, all matters that the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). Nevertheless, [a] request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. It is not an abuse of discretion to have performed an analysis or reached a conclusion with which Petitioner disagrees, and mere disagreement with the Board’s analysis or conclusion is not a proper basis for rehearing.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“Board’s finding that the art and arguments presented in the [Petitions of the above captioned cases] are substantially the same as those in the ‘920 IPR petition. To the contrary, the arguments are materially different with respect to the primary references and the obviousness combinations presented.” ’263 Req. 8 (emphasis added); ’264 Req. 8. Nevertheless, our invocation of § 325(d) did not require that we determine that the same or substantially the same prior art and arguments presented in the instant Petitions previously were presented to the Office, but rather that the same or substantially the same prior art or arguments previously were presented to the Office. Thus, our exercise of discretion in denying of institution under 35 U.S.C. § 325(d) is warranted by our finding that the same or substantially the same prior art had previously been presented to the Office.” slip op. at 4
Discretionary denialPatents in suitUS 8,042,288 - PTAB · Mar 30, 2017 · IPR2016-01331 · APJ Michael J Fitzpatrick · IPR · Rehearing
The Board denied rehearing of the institution denial because Petitioner had not shown that the prior art disclosed an interlayer insulating film as required by the challenged claims.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW “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 paper of record. 37 C.F.R. § 42.71(d). And, because Petitioner seeks rehearing of our Decision denying the Petition, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“It was Petitioner’s affirmative duty to explain how the challenged claims should be construed and how, as so construed, they are unpatentable. See 37 C.F.R. § 42.104(b)(3)–(4). Petitioner did not do this. The Petition, in relevant part, merely states: Ting[1] discloses the semiconductor device 52 in FIG. 5 comprises an interlayer insulating film (dielectric layer 25) including upper and lower regions 26 and 27 “formed to insulate the underlying layers from the subsequent conducting layer.” Ex. 1006, 7:4–12, FIG. 5. Pet. 25–26. Although the Petition explains, and offers evidence to show, the insulating aspect of Ting’s dielectric layer 25, it does not explain how or why Ting’s dielectric layer might constitute an interlayer insulating film within the meaning of the challenged claims. At best, the Petition implies that an “interlayer insulating film” is any structure that provides any insulation between conducting layers. The problem with such a construction is that it would be incomplete because it does not specify whether such a film may also be located or buried within one of the conducting layers.2 This was fatal because such is the structure of the very art that Petitioner asserted. More specifically, Ting’s dielectric layer 25 is both between conducting layers 21 and 36 and within the same” slip op. at 4
- BurdenDecided for patent owner
“It was Petitioner’s affirmative duty to explain how the challenged claims should be construed and how, as so construed, they are unpatentable. See 37 C.F.R. § 42.104(b)(3)–(4). Petitioner did not do this. The Petition, in relevant part, merely states: Ting[1] discloses the semiconductor device 52 in FIG. 5 comprises an interlayer insulating film (dielectric layer 25) including upper and lower regions 26 and 27 “formed to insulate the underlying layers from the subsequent conducting layer.” Ex. 1006, 7:4–12, FIG. 5. Pet. 25–26. Although the Petition explains, and offers evidence to show, the insulating aspect of Ting’s dielectric layer 25, it does not explain how or why Ting’s dielectric layer might constitute an interlayer insulating film within the meaning of the challenged claims. At best, the Petition implies that an “interlayer insulating film” is any structure that provides any insulation between conducting layers. The problem with such a construction is that it would be incomplete because it does not specify whether such a film may also be located or buried within one of the conducting layers.2 This was fatal because such is the structure of the very art that Petitioner asserted. More specifically, Ting’s dielectric layer 25 is both between conducting layers 21 and 36 and within the same” slip op. at 4
- Strike new argumentNew argument disregardedDecided for patent owner
“On rehearing, Petitioner now argues: “At least th[e] portion of [Ting’s] dielectric [layer] 25 that is not buried provides electrical insulation between layers in a vertical direction under the plain meaning of ‘interlayer insulating film.’” Reh’g Req. 13. This is a new argument. In the Decision denying institution, we noted that such an argument had not been made. We noted the following: [I]n Figure 5—the embodiment asserted by Petitioner— dielectric layer 25 “has a lower region 27 comprised of silicon dioxide (SiO2) and an upper region 26 comprised of silicon nitride (Si2N4).” Ex. 1006, 7:9–12. Petitioner does not assert that upper region 26 alone constitutes an “interlayer insulating film” within the meaning of claims 18 and 35. See Pet. 25–27. Dec. 11 n.5. We did not overlook the argument that upper region 26 alone constitutes an interlayer insulating film. Rather, the argument was not made.” slip op. at 5
Nonecites Phillips
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.