- Apple Inc. v. Identity Security LLCRehearing deniedPTAB · Dec 15, 2022 · IPR2022-00171 · APJ Sharon Fenick · IPR · Rehearing
The Board denied Apple’s rehearing request, leaving the denial of institution for claims 1–4, 12, and 13 unchanged because Apple showed no abuse of discretion or overlooked matter.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. THE REQUEST FOR REHEARING On request for rehearing, “[t]he burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, a reply, or a surreply.” Id. 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.”” slip op. at 2
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“conclusions on the basis that Dr. Russ’s testimony is conclusory. Id. at 11. We disagree. We indicated in the Decision Denying Institution that Dr. Neuman’s testimony is conclusory. Dec. 22. For instance, Dr. Neuman testifies that the modifications that would have been needed for Petitioner’s proposed combination would have been “straightforward.” Ex. 1003 ¶ 81. Dr. Neuman’s testimony, however, is simply a conclusory statement without persuasive, supporting explanation or evidence. Id. As we indicated in the Decision Denying Institution, “Petitioner does not indicate or provide evidence supporting that the proposed modifications would have been made without introducing complexities.” Dec. 24. “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Decision to Institute as relating to only convenience. Req. 1–2, 8–11. In the Decision Denying Institution, we explained that Petitioner’s reasons to combine are insufficient because “Petitioner does not address the full teachings of Gullman.” Dec. 22, 25. We stated “[c]ontrary to Petitioner’s assertion (Pet. 33; Ex. 1003 ¶ 81) and consistent with Patent Owner’s position and Dr. Russ’s testimony that Gullman’s system eliminates the risk of the biometric template and input from being stolen during transmission (Ex. 2001 ¶ 119), Gullman describes its system as ‘secure,’ providing ‘secure identification,’ and, importantly, as providing ‘[t]ransmission security.’” Dec. 22–23 (citing Ex. 1004, 6:46–56). We particularly noted (id. at 23) Gullman’s teachings as follows: The method and apparatus of the present invention have significant advantages over known security systems. Reliable and secure identification is provided which eliminates the need for the user to memorize a code or carry a printed memorandum of the code. Transmission security is provided which is convenient, secure and useful on existing access devices of host systems in current use. In particular, the method and apparatus obviate the need for specially-designed hardware additions or modifications to existing access devices. Ex. 1004, 6:46–56. As we noted in the Decision to Institute, the Petition did not address Gullman’s teaching that its system provides “significant advantages” over known, more complex systems, which might have led an ordinarily skilled artisan away from using Padgett’s more complicated hashing process. Dec. 23–24.” slip op. at 4
§ 103 obviousnessPatents in suitUS 8,020,008 - ROKU, Inc. v. Universal Electronics, Inc.Rehearing deniedPTAB · Aug 17, 2021 · IPR2019-01615 · APJ Sharon Fenick · IPR · Rehearing
The Board denied Roku’s rehearing request, leaving intact its determination that claims 1, 3, 5, and 7 were not shown unpatentable over Chardon.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION On request for rehearing, “[t]he burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, reply, or a sur-reply.” Id. We have reviewed Petitioner’s Request and carefully considered all of the arguments presented. We are not persuaded that we misapprehended or overlooked any arguments or evidence, and thus we decline to modify the Decision.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“first communication method” and “second communication method” recited in claim 1 with Chardon’s “CEC command codes” and “IR command codes,” respectively, where Chardon’s command codes are stored in a database linked to the Extended Display Identification Data (EDID) for target devices. Dec. 20–21. We thus evaluated whether command codes in an EDID-linked database teach or suggest the claimed listing comprised of at least a first communication method and a second communication method, and determined that “the record falls short of providing evidence that one of ordinary skill in the art would have understood stored command codes to act as an identification of communication methods to be used.” Id. at 21–22. slip op. at 3
§ 103 obviousnessPatents in suitUS 9,716,853 - Commscope Technologies LLC v. Dali Wireless Inc.Rehearing deniedPTAB · Jul 7, 2021 · IPR2020-01466 · APJ Melissa A Haapala · IPR · Rehearing
The Board denied rehearing and left in place the denial of institution on claims 1–12 because petitioner showed no overlooked matter or abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“On rehearing, the burden of showing that the Decision should be modified lies with Petitioner, the party challenging the Decision. See 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, a reply, or a sur-reply.” Id. “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“establish Hettstedt discloses the “reconfiguring each remote radio unit.” See Dec. 15. We disagree that we overlooked any arguments presented in the Petition with respect to this limitation. In its analysis of the “reconfiguring each remote radio unit” limitation in the Petition, Petitioner relied on Hettstedt’s disclosure that the CMU controls the frequency allocation of each carrier to the remote radio heads “by changing the MAC address of a specific carrier packet to correspond no longer to a first remote radio head, but instead be addressed to a different radio head in a high traffic area.” See Pet. 22 (citing Ex. 1005, 5:10–11; 3:8–16; 4:35–39). Our Decision expressly addressed Petitioner’s arguments and evidence: After reviewing Petitioner’s analysis and supporting evidence, and Patent Owner’s response, we determine Petitioner fails to establish Hettstedt discloses “reconfiguring each remote radio unit” as we construe the claim (changing the configuration of each remote radio unit). Petitioner relies on Hettstedt’s disclosure that the CMU controls allocation of each carrier by changing the MAC addresses of carrier packets to disclose the recited “reconfiguring.” See Pet. 22. However, while changing the MAC addresses of carrier packets may result in an increase or decrease of the number of carriers assigned to a radio head by the CMU when routing traffic, it does not reconfigure (change) the configuration of the remote radio head itself. As we noted in our analysis of the claim construction of this term, the plain language of the claim requires that the remote radio head itself be reconfigured. Petitioner’s analysis does not address how Hettstedt discloses reconfiguring the remote radio unit itself.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We are unpersuaded that we misconstrued the phrase “reconfiguring each remote radio unit by.” Petitioner’s proposed claim construction in the Rehearing Request does not give patentable weight to the claimed “reconfiguring each remote radio unit.” Although we agree with Petitioner that claim 1 requires limitations [b] and [c] (i.e., “determining a load percentage” and “increasing or decreasing the number of carriers”), we disagree with Petitioner that the term “by” before limitations [b] and [c] would require what comes before “by” to have no patentable weight. Rather, as stated in our Decision: we adopt the district court’s construction and construe “reconfiguring each remote radio unit” to be “changing the configuration of each remote unit.” We additionally note that the claim term requires that it is the remote radio unit itself that is changed because the “remote radio unit” is the direct object of the verb “reconfiguring.” This is consistent with the specification of the ’338 patent, which describes reconfiguring the RRUs themselves. Dec. 9–10 (citing Ex. 1001, 4:1–13, 7:16–31, 8:8–21, 8:48–55, 11:28–39).” slip op. at 7
- Strike new argumentNew argument disregardedDecided for patent owner
“In its rehearing request, Petitioner now newly argues that we overlooked Hettstedt’s disclosure that remote radio heads are channel-selective in the uplink (i.e., column 5, lines 6–8 of Hettstedt). But Petitioner’s new analysis and explanation that Hettstedt’s teaches “reconfiguring each remote radio unit head” because its radio units are channel selective in the uplink was not presented in the Petition, and we could not have overlooked arguments or evidence not before us.2 See 37 C.F.R. 42.71(d). A petition must include “a detailed explanation of the significance of the evidence.” 37 C.F.R. § 42.22(a)(2). We are not persuaded of any error in our Decision that Petitioner failed to demonstrate a reasonable likelihood of prevailing in establishing that claim 1 is anticipated by Hettstedt. See Dec. 13–15. 2 We acknowledge Petitioner’s reliance on Hettstedt’s column 5, lines 6–8 on page 21 of the Petition; however, the Petition relied on this portion of Hettstedt for Element F of claim 1 (“configuring each remote radio unit to receive or transmit a respective subset of the plurality of carriers, each respective subset of the plurality of carriers including a number of carriers”), not for Element G of claim 1 (“reconfiguring each remote radio unit by . . .”). See Pet. 21. Petitioner’s Rehearing Request also points to reliance on Hettstedt’s column 5, lines 6–8 on page 10 of the Petition and in paragraphs of Dr. Acampora’s testimony (see Req. Reh’g 6–8 (citing Pet. 10; Ex. 1003 ¶¶ 46–54)), however (i) page 10 of the Petition and paragraphs 46–52 of Dr. Acampora’s testimony are not addressing the “reconfiguring each remote radio unit” limitation, and (ii) while paragraphs 53–54 of Dr. Acampora’s testimony addresses the “reconfiguring each remote radio unit” these paragraphs do not reference Hettstedt’s column 5, lines 6–8. See Pet. 10; Ex. 1003 ¶¶ 46–54.” slip op. at 4
Claim constructionPatents in suitUS 8,682,338 - ROKU, Inc. v. Universal Electronics, Inc.Rehearing deniedPTAB · May 25, 2021 · IPR2019-01619 · APJ Minn Chung · IPR · Rehearing
The Board denied Roku’s rehearing request, leaving in place the denial of institution on claim 1 under § 325(d) because the petition did not show material Office error.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “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. 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.”). 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).” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“whether the art or arguments presented in the Petition are the same or substantially the same as those previously presented to the Office. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019- 01469, Paper 6 at 10 (PTAB Feb. 13, 2020) (designated precedential Mar. 24, 2020) (“Advanced Bionics”). Factors (c), (e), and (f) “relate to whether the petitioner has demonstrated a material error by the Office” in its prior consideration of that art or arguments. Id. Under a two-part framework set forth in Advanced Bionics, we first determine whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office by considering factors (a), (b), and (d). Id. at 8, 10. If “either condition of first part of the framework is satisfied”—that is, if “the same or substantially the same art previously was presented to the Office” or “the same or substantially the same arguments previously were presented to the Office,” we then consider factors (c), (e), and (f) to determine whether Petitioner has demonstrated a material error by the Office. Id. at 8, 10.” slip op. at 4
- BurdenDecided for patent owner
“argument by Petitioner that “the detailed mapping in the Petition” demonstrated material error by the Examiner by showing that Herz discloses various limitations of claim 1, including “limitations [1.0]–[1.3], and [1.5].” Req. 5–6. But Petitioner did not present such an argument in the Petition or the Reply. See Pet. 46–48; Reply 1–5. In addition, Petitioner did not explain how its mapping of Herz to disclose certain limitations of claim 1 demonstrates material error by the Examiner. See Advanced Bionics, 9 (“If reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability.”). That is, Petitioner did not meaningfully connect its obviousness mapping to a demonstration of Examiner error during the Reexamination Proceeding. See Pet. 15–48; Reply 1–5. We could not have misapprehended or overlooked arguments or evidence that were not presented or developed in the Petition or the Reply.” slip op. at 11
Discretionary denialPatents in suitUS 7,782,309 - Comcast Cable Communications, LLC v. Rovi Guides, Inc.Rehearing deniedPTAB · May 29, 2020 · IPR2019-01413 · APJ Karl D Easthom · IPR · Rehearing
The Board denied Rovi Guides’ rehearing request, leaving institution of inter partes review of claims 1–22 in place because the request showed no matters misapprehended or overlooked.
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). The party requesting rehearing bears the burden of showing that 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 › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), did not warrant terminating or staying this case. Dec. 26–27. Specifically, we explained that, according to Arthrex, “no constitutional infirmity [exists] in an institution decision.” Id. at 27 (quoting Arthrex, 941 F.3d at 1340) (alteration in Decision). We also explained that we generally do not stay cases pending an appeal to the Federal Circuit or the Supreme Court. Id.” slip op. at 2
NonePatents in suitUS 9,232,254 - Comcast Cable Commuications, LLC v. Rovi Guides, Inc.Rehearing deniedPTAB · Mar 25, 2020 · IPR2019-00292 · APJ William M Fink · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, leaving in place its denial of authorization to seek a stay or termination based on Arthrex.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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 7,937,394 - Comcast Cable Commuications, LLC v. Rovi Guides, Inc.Rehearing deniedPTAB · Mar 25, 2020 · IPR2019-00281 · APJ William M Fink · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests challenging the denial of authorization to seek a stay or termination based on Arthrex and the APA.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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 › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“(1) because the Federal Circuit’s mandate has not issued in Arthrex, the Administrative Patent Judges presiding over the instant proceedings remain unconstitutionally appointed and, therefore, the instant proceedings should be stayed (Reh’g Req. 6–8); (2) the proceedings should be stayed because the Arthrex remedy does not go far enough and violates the Administrative Procedure Act (APA) (id. at 9–13 (citing, e.g., Polaris Innovations Ltd. v. Kingston Tech. Co., No. 18-1768, Dkt. No. 90 at 2 (Fed. Cir. Nov. 8, 2019))); and (3) intervention from Congress and agency rulemaking may be necessary to remedy the defect identified in Arthrex, so termination of each of the instant proceedings is warranted (id. at 13–15). Patent Owner’s arguments have been addressed in our denials.6 See, e.g., IPR2019-00224, Paper 28 at 2 (PTAB Jan. 14, 2020) (quoting Arthrex, 941 F.3d at 1337 (“This as-applied severance . . . cures the constitutional violation”)); IPR2019-00224, Paper 39 at 4 (PTAB Feb. 18, 2020) (“[I]t is unclear how the issuance of the mandate in Arthrex would address the alleged APA defect.”). For these reasons, we also disagree with Patent Owner’s argument 6 In any event, the issuance of the mandate in Image Processing Techs. LLC v. Samsung Electronics Co. moots Patent Owner’s argument that Board judges are unconstitutionally appointed until the mandate in Arthrex issues. See Image Processing Techs. LLC v. Samsung Electronics Co., No. 2018- 2156 (Fed. Cir. Mar. 9, 2020), ECF No. 78; Mandate, Image Processing Techs. LLC v. Samsung Elecs. Co., Nos. 2019-1408, 2019-1485 (Fed. Cir. Mar. 9, 2020), ECF No. 75 (relying on Arthrex). Furthermore, in Arthrex, the Federal Circuit denied the petitions for panel rehearing and the petitions for rehearing en banc. Arthrex, Inc. v. Smith & Nephew, Inc., No. 2018-2140 (Fed. Cir. Mar. 23, 2020), ECF No. 115. that denying Patent Owner the opportunity for briefing “itself violates the [APA] because the denial lacks a reasoned basis.” Reh’g Req. 1. Accordingly, we deny Patent Owner’s Requests for Rehearing.” slip op. at 3
NonePatents in suitUS 9,621,956 - Comcast Cable Commuications, LLC v. Rovi Guides, Inc.Rehearing deniedPTAB · Mar 25, 2020 · IPR2019-00239 · APJ William M Fink · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests seeking authorization to move to stay or terminate the proceedings based on Arthrex and the APA.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“(1) because the Federal Circuit’s mandate has not issued in Arthrex, the Administrative Patent Judges presiding over the instant proceedings remain unconstitutionally appointed and, therefore, the instant proceedings should be stayed (Reh’g Req. 6–8); (2) the proceedings should be stayed because the Arthrex remedy does not go far enough and violates the Administrative Procedure Act (APA) (id. at 9–13 (citing, e.g., Polaris Innovations Ltd. v. Kingston Tech. Co., No. 18-1768, Dkt. No. 90 at 2 (Fed. Cir. Nov. 8, 2019))); and (3) intervention from Congress and agency rulemaking may be necessary to remedy the defect identified in Arthrex, so termination of each of the instant proceedings is warranted (id. at 13–15). Patent Owner’s arguments have been addressed in our denials.6 See, e.g., IPR2019-00224, Paper 28 at 2 (PTAB Jan. 14, 2020) (quoting Arthrex, 941 F.3d at 1337 (“This as-applied severance . . . cures the constitutional violation”)); IPR2019-00224, Paper 39 at 4 (PTAB Feb. 18, 2020) (“[I]t is unclear how the issuance of the mandate in Arthrex would address the alleged APA defect.”). For these reasons, we also disagree with Patent Owner’s argument 6 In any event, the issuance of the mandate in Image Processing Techs. LLC v. Samsung Electronics Co. moots Patent Owner’s argument that Board judges are unconstitutionally appointed until the mandate in Arthrex issues. See Image Processing Techs. LLC v. Samsung Electronics Co., No. 2018- 2156 (Fed. Cir. Mar. 9, 2020), ECF No. 78; Mandate, Image Processing Techs. LLC v. Samsung Elecs. Co., Nos. 2019-1408, 2019-1485 (Fed. Cir. Mar. 9, 2020), ECF No. 75 (relying on Arthrex). Furthermore, in Arthrex, the Federal Circuit denied the petitions for panel rehearing and the petitions for rehearing en banc. Arthrex, Inc. v. Smith & Nephew, Inc., No. 2018-2140 (Fed. Cir. Mar. 23, 2020), ECF No. 115. that denying Patent Owner the opportunity for briefing “itself violates the [APA] because the denial lacks a reasoned basis.” Reh’g Req. 1. Accordingly, we deny Patent Owner’s Requests for Rehearing.” slip op. at 3
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“(1) because the Federal Circuit’s mandate has not issued in Arthrex, the Administrative Patent Judges presiding over the instant proceedings remain unconstitutionally appointed and, therefore, the instant proceedings should be stayed (Reh’g Req. 6–8); (2) the proceedings should be stayed because the Arthrex remedy does not go far enough and violates the Administrative Procedure Act (APA) (id. at 9–13 (citing, e.g., Polaris Innovations Ltd. v. Kingston Tech. Co., No. 18-1768, Dkt. No. 90 at 2 (Fed. Cir. Nov. 8, 2019))); and (3) intervention from Congress and agency rulemaking may be necessary to remedy the defect identified in Arthrex, so termination of each of the instant proceedings is warranted (id. at 13–15). Patent Owner’s arguments have been addressed in our denials.6 See, e.g., IPR2019-00224, Paper 28 at 2 (PTAB Jan. 14, 2020) (quoting Arthrex, 941 F.3d at 1337 (“This as-applied severance . . . cures the constitutional violation”)); IPR2019-00224, Paper 39 at 4 (PTAB Feb. 18, 2020) (“[I]t is unclear how the issuance of the mandate in Arthrex would address the alleged APA defect.”). For these reasons, we also disagree with Patent Owner’s argument 6 In any event, the issuance of the mandate in Image Processing Techs. LLC v. Samsung Electronics Co. moots Patent Owner’s argument that Board judges are unconstitutionally appointed until the mandate in Arthrex issues. See Image Processing Techs. LLC v. Samsung Electronics Co., No. 2018- 2156 (Fed. Cir. Mar. 9, 2020), ECF No. 78; Mandate, Image Processing Techs. LLC v. Samsung Elecs. Co., Nos. 2019-1408, 2019-1485 (Fed. Cir. Mar. 9, 2020), ECF No. 75 (relying on Arthrex). Furthermore, in Arthrex, the Federal Circuit denied the petitions for panel rehearing and the petitions for rehearing en banc. Arthrex, Inc. v. Smith & Nephew, Inc., No. 2018-2140 (Fed. Cir. Mar. 23, 2020), ECF No. 115. that denying Patent Owner the opportunity for briefing “itself violates the [APA] because the denial lacks a reasoned basis.” Reh’g Req. 1. Accordingly, we deny Patent Owner’s Requests for Rehearing.” slip op. at 3
NonePatents in suitUS 7,779,011 - Comcast Cable Commuications, LLC v. Rovi Guides, Inc.Rehearing deniedPTAB · Mar 25, 2020 · IPR2019-00555 · APJ William M Fink · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests seeking authorization to move to stay or terminate the proceedings based on Arthrex and APA arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“(1) because the Federal Circuit’s mandate has not issued in Arthrex, the Administrative Patent Judges presiding over the instant proceedings remain unconstitutionally appointed and, therefore, the instant proceedings should be stayed (Reh’g Req. 6–8); (2) the proceedings should be stayed because the Arthrex remedy does not go far enough and violates the Administrative Procedure Act (APA) (id. at 9–13 (citing, e.g., Polaris Innovations Ltd. v. Kingston Tech. Co., No. 18-1768, Dkt. No. 90 at 2 (Fed. Cir. Nov. 8, 2019))); and (3) intervention from Congress and agency rulemaking may be necessary to remedy the defect identified in Arthrex, so termination of each of the instant proceedings is warranted (id. at 13–15). Patent Owner’s arguments have been addressed in our denials.6 See, e.g., IPR2019-00224, Paper 28 at 2 (PTAB Jan. 14, 2020) (quoting Arthrex, 941 F.3d at 1337 (“This as-applied severance . . . cures the constitutional violation”)); IPR2019-00224, Paper 39 at 4 (PTAB Feb. 18, 2020) (“[I]t is unclear how the issuance of the mandate in Arthrex would address the alleged APA defect.”). For these reasons, we also disagree with Patent Owner’s argument 6 In any event, the issuance of the mandate in Image Processing Techs. LLC v. Samsung Electronics Co. moots Patent Owner’s argument that Board judges are unconstitutionally appointed until the mandate in Arthrex issues. See Image Processing Techs. LLC v. Samsung Electronics Co., No. 2018- 2156 (Fed. Cir. Mar. 9, 2020), ECF No. 78; Mandate, Image Processing Techs. LLC v. Samsung Elecs. Co., Nos. 2019-1408, 2019-1485 (Fed. Cir. Mar. 9, 2020), ECF No. 75 (relying on Arthrex). Furthermore, in Arthrex, the Federal Circuit denied the petitions for panel rehearing and the petitions for rehearing en banc. Arthrex, Inc. v. Smith & Nephew, Inc., No. 2018-2140 (Fed. Cir. Mar. 23, 2020), ECF No. 115. that denying Patent Owner the opportunity for briefing “itself violates the [APA] because the denial lacks a reasoned basis.” Reh’g Req. 1. Accordingly, we deny Patent Owner’s Requests for Rehearing.” slip op. at 3
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“(1) because the Federal Circuit’s mandate has not issued in Arthrex, the Administrative Patent Judges presiding over the instant proceedings remain unconstitutionally appointed and, therefore, the instant proceedings should be stayed (Reh’g Req. 6–8); (2) the proceedings should be stayed because the Arthrex remedy does not go far enough and violates the Administrative Procedure Act (APA) (id. at 9–13 (citing, e.g., Polaris Innovations Ltd. v. Kingston Tech. Co., No. 18-1768, Dkt. No. 90 at 2 (Fed. Cir. Nov. 8, 2019))); and (3) intervention from Congress and agency rulemaking may be necessary to remedy the defect identified in Arthrex, so termination of each of the instant proceedings is warranted (id. at 13–15). Patent Owner’s arguments have been addressed in our denials.6 See, e.g., IPR2019-00224, Paper 28 at 2 (PTAB Jan. 14, 2020) (quoting Arthrex, 941 F.3d at 1337 (“This as-applied severance . . . cures the constitutional violation”)); IPR2019-00224, Paper 39 at 4 (PTAB Feb. 18, 2020) (“[I]t is unclear how the issuance of the mandate in Arthrex would address the alleged APA defect.”). For these reasons, we also disagree with Patent Owner’s argument 6 In any event, the issuance of the mandate in Image Processing Techs. LLC v. Samsung Electronics Co. moots Patent Owner’s argument that Board judges are unconstitutionally appointed until the mandate in Arthrex issues. See Image Processing Techs. LLC v. Samsung Electronics Co., No. 2018- 2156 (Fed. Cir. Mar. 9, 2020), ECF No. 78; Mandate, Image Processing Techs. LLC v. Samsung Elecs. Co., Nos. 2019-1408, 2019-1485 (Fed. Cir. Mar. 9, 2020), ECF No. 75 (relying on Arthrex). Furthermore, in Arthrex, the Federal Circuit denied the petitions for panel rehearing and the petitions for rehearing en banc. Arthrex, Inc. v. Smith & Nephew, Inc., No. 2018-2140 (Fed. Cir. Mar. 23, 2020), ECF No. 115. that denying Patent Owner the opportunity for briefing “itself violates the [APA] because the denial lacks a reasoned basis.” Reh’g Req. 1. Accordingly, we deny Patent Owner’s Requests for Rehearing.” slip op. at 3
NonePatents in suitUS 9,668,014 - Comcast Cable Commuications, LLC v. Rovi Guides, Inc.Rehearing deniedPTAB · Mar 25, 2020 · IPR2019-00290 · APJ William M Fink · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests challenging denial of authorization to seek a stay or termination based on Arthrex and APA arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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 7,937,394
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.