- Duke Manufacturing Co. v. Low Temp Industries, Inc.All claims unpatentablePTAB · Jul 6, 2022 · IPR2021-00414 · APJ Kristina M Kalan · IPR · Final written decision
Claims 1–26 are unpatentable: claims 1, 6, 7, 10, 12, 14, 16–20, and 22–26 as anticipated by Finegan; claims 1–26 as obvious over Finegan, Safyan, and Hansen; and claims 3–5 as obvious over Finegan and …
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. On this record, we find that the differences in the parties’ contentions as to the level of ordinary skill are not consequential, in part because the levels of skill both Petitioner and Patent Owner set forth are based on an engineering degree and a length and type of experience that overlap. Accordingly, we adopt Patent Owner’s definition, because it is consistent with the cited prior art. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “specific findings on the level of skill in the art . . . [are not required] ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“On this record, we determine that the control system limitations sufficiently connote structure and are not subject to means-plus-function construction. See Williamson, 792 F.3d at 1349 (stating the determination of whether a limitation is a means-plus-function term “subject to the strictures of § 112, para. 6” is not based merely on the presence or absence of the word “means” but on whether “the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure”). As to Petitioner’s argument that Patent Owner only demonstrates support for “controls” and “controllers” being known in the art and not for a “system,” as the claims recite (Reply 11–12), we determine that there is no meaningful distinction because the controls or controllers disclosed in the ’970 patent are necessarily included in systems with other known elements to control temperature. Further, the disclosure of exemplary apparatus in the specification, including disclosure incorporated by reference (Ex. 1101, 1:58–61), supports that temperature control systems are known structures/apparatuses, and Petitioner fails to establish that they are not (see generally Pet.; Reply). In sum, we determine the control system limitations are terms that persons of ordinary skill in the art would have understood to have a sufficiently definite meaning as the name for structures of a broad category of systems known to those of skill in the art. The breadth and diversity of the structures/apparatuses ordinarily skilled artisans would have understood to be included within the meaning of the terms do not subject the terms to means-plus-function construction. Further construction of the terms is not necessary.” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Regarding Patent Owner’s first argument, we find that Finegan sufficiently discloses thermally isolated wells and insulative gaps. Finegan’s wells are either thermally isolated as a result of their relative orientation (Pet. 31 (citing annotated Finegan Fig. 7)), or as a result of the insulation or insulative air gap (Pet. 29–31 (citing annotated Finegan Figs. 4, 7)). Finegan’s flanges, whether frosted or not, are “part of the well and must themselves be thermally isolated from their surroundings to facilitate frost formation,” and “the inclusion of the flanges does not defeat the well’s thermal isolation.” Reply 13; Ex. 1103 ¶¶ 294–297 (Dr. Homan’s testimony). Petitioner also demonstrates that Finegan’s insulation material would reduce heat transfer. Ex. 1149 ¶¶ 84–85 (Dr. Homan’s testimony that Finegan’s insulation material and insulation tape reduce heat transfer). Finegan’s insulation “extends over most of the well and the thermally-conductive material (38), to insulate the well.” Reply 13 (citing Ex. 1149 ¶ 84; Ex. 1105, 7:22–26, Fig. 4). Although we agree with Patent Owner that Finegan states that there is a “need to provide for a food service table or buffet that employs a shallow pan for use in both hot and cold service conditions while still providing sufficient frosting of the top surface” (Ex. 1105, 2:11–13), Petitioner has demonstrated that Finegan’s thermal isolation and insulation would not defeat this objective. Reply 13–14. Regarding Patent Owner’s second argument, we refer to our claim construction to find that Finegan teaches wells in a single frame. Because, under our construction, a well includes at least the interior well walls and exterior well walls (if present), and a frame refers to a “rigid supporting structure,” we find that Petitioner persuasively demonstrates that Finegan teaches wells in a single frame. Pet. 26–27, 29–31. We disagree that “skilled artisans would view the two apparatuses (10) in Figure 7 of Finegan to be independent pieces of equipment and thus not a module with wells bound by a single frame” and that “Finegan does not teach wells in a single frame” because the pans are separated by what Patent Owner argues is an “indeterminate distance of countertop.” PO Resp. 32. As discussed above, we decline to adopt Patent Owner’s claim construction for “a frame.” Accordingly, we find that, under our claim constructions, Petitioner demonstrates that Finegan’s countertop 14 and side walls housing its wells 18 meet the limitations of the challenged claims, particularly those that require an arrangement between the frame and the wells (i.e. claims 14, 23, and 25). Reply 14–15, 17 (citing Ex. 1105, annotated Figs. 1, 7; Ex. 1149 ¶ 101); see also Ex. 2050, 10–11 (finding unfounded the district court’s determination “that Finegan’s Figure 7 only discloses a single pan in each of two separate modules” and determining that Figure 7 “discloses a single ‘apparatus 10’ with two wells 18A and 18B . . . . Those wells are shown within a single countertop 14.”). Additionally, we disagree with Patent Owner’s characterization of Dr. Homan’s testimony as admitting that Finegan’s pans/wells are separate modules. PO Resp. 30–32 (citing Ex. 1130, 241:24–242:3, 217:20–24, 240:5–14). A fair reading of Dr. Homan’s testimony indicates that he was referring to “wells,” despite counsel using the term “modules,” ultimately supporting Petitioner’s position that Finegan discloses two wells in a single frame. Reply 15–16 (citing Ex. 1130, 241:15–242:2). Regarding Patent Owner’s third argument, and referring to our claim construction, we find that Finegan teaches the control system limitations. Although we do not find these terms to be subject to means-plus-function construction, we nevertheless find sufficient Petitioner’s mapping of these limitations to the structures in Finegan performing the functions of the control system limitations. See, e.g., Pet. 31–32 (regarding claim 1.c.1, referring to Finegan Fig. 7 to map PLC 80 connected to heating elements 78 (via switches 94) and valving 90 for controlling refrigerant flow from condensing unit 118 to cooling coils 32, and using user interface 96 and temperature sensors 82A). Petitioner persuasively argues that Finegan’s PLC (programmable logic controller) 80 and user interface 96 meet the control system limitations: “Both Finegan’s global control and the ‘970 patent’s individual controls perform this function [of independently controlling the wells’ temperatures] in the same way, by connecting the electrical resistance heating elements to an electrical power source and by operating valving to control the flow of refrigerant.” Reply 20 (citing Ex. 1101: 4:49–52, 4:56–63; Ex. 1105, 9:27–11:28); Pet. 32–33.” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“sufficiently discloses insulative gaps. The Petition shows that Finegan’s wells are “individually insulated and thermally isolated by thermal insulation (40) between exterior and interior wall (44, 20 (identifiable by opposed surfaces (36, 46))).” Pet. 50 (citing Ex. 1103 ¶ 273; Ex. 1105, Fig. 4). Safyan teaches air gaps (i.e., an unfilled insulating space) as an alternative to foam. Id. at 51 (citing Ex. 1103 ¶¶ 276–277, Ex. 1106, Fig. 2, 4:36–46). Petitioner argues with evidentiary support that one of ordinary skill in the art would have had reasons to omit Finegan’s insulating material to leave an insulative gap, as in Safyan, to reduce material and labor costs, as a matter of simple substitution, with a reasonable expectation of success. Id. at 52 (citing Ex. 1103 ¶¶ 279–282). Patent Owner’s argument that Finegan does not disclose an insulative gap and that its insulation does not meet the limitations of the challenged claims argues against Finegan individually, rather than against the Finegan-Safyan combination. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.”). Petitioner also provides adequate motivation to combine Finegan and Safyan, not limited to arguing that the two references are in the same field of endeavor. Pet. 51–53 (relying on Ex. 1103 ¶¶ 276–282); Reply 22–23. Regarding claim 9, we find that Petitioner provides adequate motivation as to why one of ordinary skill in the art “would have minimized the distance between wells.” Pet. 53–54; Ex. 1149 ¶ 124–126. We credit Petitioner’s reliance on references and evidence supporting its assertion that one of ordinary skill in the art “would have located Finegan’s wells as close together as needed (e.g., three inches or less)” to “meet size restrictions for a compact space-saving design.” Pet. 56 (citing Ex. 1103 ¶¶ 298–299). We disagree that “Finegan’s frost top would be destroyed” (PO Resp. 43) by this combination, because spacing “as small as a fraction of an inch between the flanges of adjacent wells would ensure thermal isolation of the wells and that a cooled flange would form frost.” Pet. 56 (citing Ex. 1103 ¶297).” slip op. at 36
Patent outcomesUS 8,661,970 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,661,970 - PTAB · Feb 16, 2022 · IPR2021-01397 · APJ Wesley B Derrick · IPR · Institution
The Board instituted inter partes review of claims 1–17 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim would be shown unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Examiner, and art provided to the Office by an applicant, such as on an Information Disclosure Statement (IDS).” Advanced Bionics, 7–8. Thus, citation of Mavretic and Mason on an IDS satisfies part one of the Advanced Bionics framework for at least the first ground. 2. Whether the Office Erred in a Manner Material to the Patentability of Challenged Claims Next, we proceed to the second part of the framework set forth in Advanced Bionics. As discussed above, neither Mavretic nor Mason were applied in a rejection during prosecution of the ’057 patent––the Examiner’s consideration of both references appears limited to initialing an IDS. See Ex. 1013, 160, 164. Patent Owner also relies, however, on Mavretic having been used “as the primary reference in rejecting the [’057 patent’s grandparent] application twice under section 103.” Prelim. Resp. 36; Ex. 1014, 445–455, 492–504. Regardless, there was no rejection grounded on Mavretic during prosecution of the ’057 patent, and the claims in the ’057 patent differ from those in the grandparent application. Thus, as to factor (c) of Becton Dickinson, “the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection,” the circumstances do not weigh heavily in favor of discretionary denial.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In sum, for the reasons discussed above, Petitioner establishes a reasonable likelihood of prevailing on this challenge with respect to claim 1. Having determined that Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’057 patent is unpatentable, the statutory threshold for instituting trial as to all challenged claims on all grounds has been met. See SAS Inst., 138 S. Ct. at 1359–60; USPTO, Guidance on the Impact of SAS on AIA Trial Proceedings (April 26, 2018; 37 C.F.R. § 42.108(a).” slip op. at 38
- Skill levelSkill level petitioner adoptedDecided for petitioner
“On this record, we find Petitioner’s definition of the level of ordinary skill reasonable as to including “a person with a graduate degree in electrical engineering with knowledge of RF matching networks and plasma chamber processes.” We also recognize that work experience with RF matching networks and plasma chamber processes can likely substitute to an extent for experience Petitioner contends are sufficient. However, given that the relevant testimony at this stage of the proceeding is from Dr. Voldman, who “has a Ph.D. in electrical engineering and extensive knowledge of both matching networks and plasma systems” (Pet. 24–25 (citing Ex. 1002 ¶¶ 8– 17)), we need not address how work experience can substitute for education for this Decision, and so determine that the level of ordinary skill as including “a person with a graduate degree in electrical engineering with knowledge of RF matching networks and plasma chamber processes” (id. at 24).” slip op. at 10
- Expert testimonyPetitioner expert discountedDecided for patent owner
“On this record, we are not persuaded that Petitioner adequately establishes that Mason discloses an impedance matching circuit operating at a constant frequency. As highlighted by Patent Owner, Dr. Voldman does not sufficiently explain how he reached the conclusion that Mason’s apparatus operates at a constant frequency based on Mason’s disclosures. See Ex. 1002 ¶ 98. Accordingly, we give little weight to his testimony in this regard. Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“It is within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate.”); cf. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.”); 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 31
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,707,057 - PTAB · Jan 25, 2022 · IPR2021-01295 · APJ James J Mayberry · IPR · Institution
The Board instituted IPR on claims 1–15, finding a reasonable likelihood that at least one challenged claim is unpatentable on the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“We determine, on the current record, that Petitioner has standing to bring this proceeding. Here, as was the case in Cardiovascular Sys., the record does not include any evidence that, at the time the Petition was filed, Petitioner actually owned the ’276 patent. In fact, the parties do not dispute that Patent Owner is the current registered owner of the ’276 patent, and was the owner when Petitioner filed the Petition. See Prelim. Reply 1; Prelim. Resp. 1. Notably, although Petitioner did assert ownership in the district court, Patent Owner disputed that assertion, claiming to be “the sole owner, by assignment, of all right, title and interest in and to the ’276 [p]atent.” Prelim. Reply 1 (quoting Ex. 1032 ¶ 55); see also Ex. 3001 (showing the assignment record for the ’276 patent, indicating that Patent Owner is the recorded owner of the patent); 35 U.S.C. § 261 (“Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing.”); 37 CFR § 3.73(a) (“The original applicant is presumed to be the owner of an application for an original patent, and any patent that may issue therefrom, unless there is an assignment.”). Patent Owner does not direct us Petitioner. To the contrary, Petitioner directs us to Patent Owner’s argument in the district court proceeding that Patent Owner did not assign its interest to Petitioner. Prelim. Reply 1 (citing Ex. 1033, 9–15). The record evidence therefore indicates that Patent Owner is the owner of the ’276 patent. Accordingly, because Petitioner is not the owner of the ’276 patent, Petitioner has standing to file the Petition.” slip op. at 11
- PTAB / AIA Trials › Discretionary denialDenied
“Patent Owner asks us, in the alternative, to exercise our discretion to deny the Petition. Prelim. Resp. 15. Patent Owner does not explain on what basis we would exercise this discretion, other than “based upon the undisputed factual circumstances detailed above.” Id. Because Patent Owner fails to adequately develop this argument, we do not exercise discretion to deny the Petition.” slip op. at 12
- Skill levelSkill level board ownDecided for petitioner
“For the purposes of this Decision, based on the limited record before us, we preliminarily agree with aspects of both parties’ characterizations, and disagree with other aspects. We focus on the experience aspect of Petitioner’s characterization. Although we agree with Patent Owner that, in the abstract, a trained mechanical engineer may not have the requisite knowledge to be a person of ordinary skill and a chemist may have the requisite knowledge, Petitioner’s characterization goes further, and requires three years of experience in blending polymer resins—the main technological aspect of not only the ’276 patent, but of Harris, Thomas, and Starita. See, e.g., Ex. 1001, 1:41–58 (disclosing that the composition is a blend of polymers); Ex. 1003, code (57) (stating that the disclosed composition is a melt blend of resins); Ex. 1005, 13 (indicating that Phase 2 is directed at blends of virgin and recycled resins); Ex. 1006, code (57) (indicating that it discloses melt blended HDPE). As we will discuss in greater detail below, in connection with our claim construction analysis, and analysis of Patent Owner’s arguments directed to the merits of Petitioner’s obviousness positions, we do not agree with Patent Owner that the ’276 patent requires extensive experience in working with granular resins. Also, Patent Owner and Mr. Thomas’s distinctions based on what constitutes a polyethylene supplier and Petitioner’s characterization of the required experience is deficient. See Prelim Resp. 17–19; Ex. 2002 ¶¶ 54–56. A person having ordinary skill in the art is a hypothetical person, not an actual person working at a specific type of facility. See, e.g., In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998) (“Obviousness is determined from the vantage point of a hypothetical person having ordinary skill in the art to which the patent pertains.”). Accordingly, based on our review of the current record, including the ’276 patent and the prior art of record, we preliminarily determine that a person having ordinary skill in the art would have had a bachelor’s degree in chemical engineering or related engineering field, or chemistry, and three years of experience in blending polymer resins.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“We determine that we need not expressly construe this claim term to resolve the parties’ disputes on the current record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,570,276 - Google LLC v. Ecofactor Inc.Institution deniedPTAB · Nov 9, 2021 · IPR2021-00982 · APJ Jeffrey W Abraham · IPR · Institution
The Board denied institution of IPR challenging claims 1–7 and 10–30, exercising § 314(a) discretion under Fintiv based on the parallel ITC investigation.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“involving the ’983 patent, Patent Owner correctly notes that Fintiv expressly addresses ITC investigations, and the Board has considered ITC investigations in weighing whether or not to exercise its discretion under 35 U.S.C. § 314. Fintiv, Paper 11 at 8 (“[E]ven though the Office and the district court would not be bound by the ITC’s decision, an earlier ITC trial date may favor exercising authority to deny institution under NHK if the ITC is going to decide the same or substantially similar issues to those presented in the petition.”); Garmin Int’l, Inc. v. Koninklijke Philips N.V, IPR2020- 00754, Paper 11 (PTAB Oct. 27, 2020); Comcast Cable Commc’ns, LLC v. Rovi Guides, Inc., IPR2020-00800, Paper 10 (PTAB Oct. 22, 2020). In view of this, we consider the facts surrounding the ITC investigation for purposes of analyzing the Fintiv factors in this case. Specifically with regard to Factor 1, there is no evidence here that Petitioner has requested a stay of the ITC investigation, and we agree with Patent Owner that a stay of the ITC investigation is unlikely given the advanced stage of the investigation, including the fact that the hearing in the ITC investigation is scheduled to begin on December 13, 2021. Accordingly, we determine that this factor weighs against instituting this proceeding.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“the Fintiv factors. Because our analysis is fact driven, no single factor is determinative of whether we exercise our discretion to deny institution under § 314(a). Further, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review” when evaluating these factors. Fintiv, Paper 11 at 6. Having evaluated all of the factors based on the arguments and evidence of record, in the exercise of the Director’s discretion under 35 U.S.C. § 314(a), inter partes review is not instituted. III. ORDER In consideration of the foregoing, it is hereby ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 14
Discretionary denialPatents in suitUS 10,612,983 - Google LLC v. Ecofactor, Inc.Rehearing deniedPTAB · Oct 14, 2021 · IPR2020-00968 · APJ Wesley B Derrick · IPR · Rehearing
The Board denied Google’s rehearing request and left in place its discretionary denial of inter partes review based on parallel proceedings under Fintiv.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). When rehearing a decision on a petition, the decision will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs where the decision is based on an erroneous interpretation of the law, on factual findings that are not supported by substantial evidence, or represents an unreasonable judgment in weighing relevant factors.” Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“Additionally, Petitioner disagrees with our assessment that Fintiv’s fourth factor weighs “slightly in favor of institution,” arguing that we “gave insufficient weight to [this] factor, which looks to the overlap between the issues.” Req. 3–4, 11–12; Dec. 13–15. Contrary to Petitioner’s assertion, we did consider sufficiently all of the evidence regarding whether the ITC proceeding would resolve all or substantially all of the patentability disputes between the parties. Specifically, in our Decision we expressly stated that “[b]ecause the ITC proceeding involves only claims 1, 2, and 5, the ITC proceeding will not directly resolve the dispute concerning the patentability of other claims challenged by Petitioner, claims 3, 4, and 6–14.” Dec. 14. Moreover, consistent with Petitioner’s arguments, we determined “[t]his weighs in favor of institution.” Id. Petitioner would have us end our evaluation of Fintiv’s fourth factor there, but doing so would require that we overlook additional information in the record relevant to the overlap of issues in the ITC and in this proceeding. This additional information includes Patent Owner’s undisputed assertions and evidence demonstrating some overlapping claims, prior art, and invalidity theories in the ITC investigation and the Petition. Dec. 14–15; Prelim. Resp. 10–12; Sur-reply 6 (noting “there is substantial overlap in issues between the Petition and the ITC case when looking at the overlap of claims”). As explained in the Decision, there is no reason to expect that the ITC proceeding would not substantially address the issues for all challenged claims in this proceeding. Dec. 14–15. Therefore, after considering all relevant evidence, we determined that “[o]n balance, based on the fact that the Petition is directed to some [Fintiv’s fourth] factor weighs slightly in favor of institution.” Dec. 15. Our consideration of all relevant facts regarding the the overlap of issues presented to the Board and the ITC undermines Petitioner’s assertion that we erred in the application of Fintiv’s fourth factor. Furthermore, with regard to Petitioner’s argument that we failed to give a single Fintiv factor sufficient weight, we note that our Fintiv analysis is fact driven and no single factor is determinative of whether we exercise our discretion to deny institution under § 314(a).” slip op. at 5
- Strike new argumentNew argument disregardedDecided for patent owner
“Instead of specifically identifying matters the Board purportedly misapprehended, Petitioner uses the Rehearing Request as an opportunity to express its disagreement with our Decision and present new arguments. A request for rehearing, however, is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or for Petitioner to present new arguments or evidence.” slip op. at 3
Discretionary denialPatents in suitUS 8,423,322 - Google LLC v. Ecofactor Inc.Rehearing deniedPTAB · Oct 14, 2021 · IPR2020-00946 · APJ Jeffrey W Abraham · IPR · Rehearing
The Board denied Google’s rehearing request, leaving institution denied under § 314(a) based on the Fintiv analysis of parallel proceedings.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). When rehearing a decision on a petition, the decision will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs where the decision is based on an erroneous interpretation of the law, on factual findings that are not supported by substantial evidence, or represents an unreasonable judgment in weighing relevant factors.” Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“Additionally, Petitioner disagrees with our assessment that Fintiv’s fourth factor weighs “slightly in favor of institution,” arguing that we “gave insufficient weight to [this] factor, which looks to the overlap between the issues.” Req. 3–4, 11–12; Dec. 12–14. Contrary to Petitioner’s assertion, we did consider sufficiently all of the evidence regarding whether the ITC proceeding would resolve all or substantially all of the patentability disputes between the parties. See Req. 11–12. Specifically, in our Decision we expressly stated that “[b]ecause the ITC proceeding involves only claims 1, 2, and 5 of the ’497 patent, whereas Petitioner’s challenges in this proceeding involve claims 1–12, resolution of the ITC proceeding will not directly resolve the parties’ dispute concerning patentability of claims 3, 4, and 6–12 of the ’497 patent.” Dec. 13. Moreover, consistent with Petitioner’s arguments, we determined “[t]his weighs in favor of institution.” Dec. 13.” slip op. at 5
Discretionary denialPatents in suitUS 8,131,497 - Google LLC v. Ecofactor Inc.Rehearing deniedPTAB · Oct 14, 2021 · IPR2020-00947 · APJ Jeffrey W Abraham · IPR · Rehearing
The Board denied Google’s rehearing request, leaving in place its denial of IPR because parallel proceedings, including the ITC investigation, supported discretionary denial under Fintiv.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). When rehearing a decision on a petition, the decision will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs where the decision is based on an erroneous interpretation of the law, on factual findings that are not supported by substantial evidence, or represents an unreasonable judgment in weighing relevant factors.” Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDecided for patent owner
“III. DISCUSSION In our Decision, in the exercise of the Director’s discretion under 35 U.S.C. § 314(a), we declined to institute an inter partes review in view of parallel proceedings, including an ITC proceeding involving the same parties and the ’497 patent. Dec. 5–16. Petitioner contends that we misapplied the factors set forth in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”), for determining when discretionary denial of institution is warranted. Req. 1. According to Petitioner, “[t]he Board erred in several ways that collectively amount to a misapprehension of the relevant law and facts leading to an abuse of discretion.” Req. 2–3. We disagree.” slip op. at 3
Discretionary denialPatents in suitUS 8,131,497 - Comcast Cable Communications, LLC v. Rovi Guides, Inc.Rehearing deniedPTAB · Jun 10, 2020 · IPR2019-01431 · APJ Jameson Lee · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no overlooked matter or abuse of discretion in instituting review of claims 1–20.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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. Inc., 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
NonePatents in suitUS 8,272,019 - Comcast Cable Communications, LLC v. Rovi Guides, Inc.Rehearing deniedPTAB · Jun 9, 2020 · IPR2019-01416 · APJ Wesley B Derrick · IPR · Rehearing
The Board denied Rovi’s rehearing request, finding no overlooked or misapprehended matter and no abuse of discretion in instituting review of claims 1–16.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“On this record, Patent Owner neither persuades us that we overlooked or misapprehended any matter, nor sufficiently shows that instituting an inter partes review of claims 1–16 of the ’107 patent was an abuse of discretion. IV. ORDER For the reasons given, it is: ORDERED that Patent Owner’s Request for Rehearing is denied.” slip op. at 4
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“The Federal Circuit’s mandate has now issued. Arthrex, Inc. v. Smith & Nephew, Inc., No. 2018-2140, Dkt. No. 119 (Fed. Cir. April 6, 2020) (Ex. 3001). As to the contended insufficiency in the remedy set forth in Arthrex, Patent Owner’s position is contrary to that decision by our reviewing court. See Arthrex, 941 F.3d at 1337 (“This as-applied severance . . . cures the constitutional violation.”). Further, as set forth in the Decision, we determined that Arthrex did not warrant terminating or staying this case. Dec. 42. First, we set forth that “Arthrex indicates that there is ‘no constitutional infirmity’ in an institution decision.” Id. (citing Arthrex, 941 F.3d at 1340). Second, we set forth that “the Board generally declines to stay proceedings pending an appeal to the Federal Circuit or the Supreme Court.” Id. (citing Askeladden LLC v. Purple Leaf, LLC, IPR2016-1720, Paper 22 at 2 (PTAB Sept. 11, 2017). Patent Owner’s disagreement with Arthrex and the sufficiency of its remedy does not meet Patent Owner’s burden here. In sum, Patent Owner’s arguments do not identify any matter” slip op. at 3
NonePatents in suitUS 7,735,107 - PTAB · Sep 26, 2019 · IPR2019-00184 · APJ Wesley B Derrick · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because Petitioner showed no overlooked or misapprehended matter regarding claim construction or Li’s and Fujiwara’s disclosures.
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 1 We excused Petitioner’s failure to timely file its Request for Rehearing by the original deadline of June 12, 2019, and extended the date for filing to June 26, 2019. Paper 25. factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden of showing the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 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
“Petitioner”) filed a Petition (Paper 18, “Pet.”) to institute an inter partes review of claims 1–15 of U.S. Patent No. 8,709,578 B2 (“the ’578 patent”). Dasso International, Inc., (“Patent Owner”) filed a Preliminary Response. Paper 22 (“Prelim. Resp.”). Having considered the Petition, the Preliminary Response, and the evidence of record, and applying the standard set forth in 35 U.S.C. § 314(a), which requires that Petitioner demonstrates a reasonable likelihood that it would prevail with respect to at least one challenged claim, we did not institute an inter partes review. Paper 23 (“Decision” or “Dec.”). slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“‘each bamboo strip may be broken into a plurality of smaller bamboo strips connected with each other,’” as Petitioner contends, but directly addressed the cited language and Petitioner’s contention that its position was consistent, before “determin[ing] that the plain meaning of the phrase ‘slots penetrating through [a] bamboo strip’ requires an extant bamboo strip, namely, one with slots in it.” Dec. 7–8 (citing Pet. 10, 18; Ex. 1001, 2:57–58; Ex. 1003 ¶ 47). As we explained, we declined “to further construe the term ‘slot’ or the phrase ‘plurality of slots . . . strip,’” because it was not necessary to do so in reaching our decision. Id. at 8. Petitioner’s further argument that we misapprehended or overlooked its claim construction argument because we failed to construe “through” in the phrase “slots penetrating through [a] bamboo strip” is misplaced. Req. 2–4. We fully considered the issues raised before determining both that the plain meaning of the phrase, which we determined was its proper meaning, “requires an extant bamboo strip . . . with slots in it” and that it was unnecessary to determine whether the slots extend completely through the bamboo strip. Dec. 8.” slip op. at 3
- Expert testimonyDecided for patent owner
“overlooked in our Decision. As we explained, Petitioner failed to explain sufficiently both how “cross-linked bamboo strand strips with gaps therein” are properly viewed as an extant “bamboo strip” with slots formed therein and that the gaps “would be oriented to ‘extend through the thickness of the bamboo strips’ so as to meet the limitations of the claim.” Dec. 14–16. We further explained how Li’s disclosure of rolling to form its “cross-linked 2 Petitioner cites paragraph 28 of Mr. Böck’s testimony in its Request for Rehearing despite having only cited this paragraph, with others, in the Petition as support for bamboo having similar, in some cases superior, properties to wood and being substituted in traditional wood uses. Pet. 5–6. bamboo strand strips with gaps therein” did not remedy these deficiencies because the bamboo product formed by rolling would not necessarily meet the claim limitations. Id. at 13–16. We also explained how Mr. Böck’s testimony as to the “gaps between the ‘strands’ of Li’s bamboo strand strips . . . appears grounded on the bare assumption that the rolling process in Li would provide the same structure as disclosed in the ’578 patent.” Dec. 15 (citing Ex. 1003 ¶¶ 59–62). Although Petitioner disagrees, arguing that Li requires a rolling process that forms such slots (Req. 7 (citing Ex. 1003 ¶ 61)), and offers further argument as to “the very way the machine works, and its purpose, . . . cutting longitudinal slots” (id. at 8–9), Petitioner fails to identify any matter misapprehended or overlooked in our Decision. As to the newly-raised arguments, they likewise do not identify any matter that we misapprehended or overlooked in denying institution because those arguments were not before us. See 37 C.F.R. § 42.71(d).” slip op. at 6
Claim constructionPatents in suitUS 8,709,578
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.