• Ebay Inc. / Alibaba.Com Hong Kong Ltd. et al. v. Global Equity Management (SA) Pty. Ltd.Rehearing granted
  PTAB · Oct 12, 2018 · IPR2016-01828 · APJ Kevin C Trock · IPR · Rehearing

  Rehearing was granted in part: review was instituted on all challenged claims and grounds, but claims 16 and 28 were not shown unpatentable because their scope could not be determined without speculation.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted in part

    “For the reasons explained below, we grant Patent Owner’s request for rehearing to the extent we (1) modify our Institution Decision to institute on all of the challenged claims, including claims 16 and 28, and all of the grounds presented in the Petition, including Ground 2; and (2) modify our Final Written Decision to include a determination with respect to claims 16 and 28. We deny, however, Patent Owner’s request for rehearing to the extent we decline to read claims 16 and 28 on the prior art.” slip op. at 2

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

    “In SAS, the Supreme Court held that a decision to institute under 35 U.S.C. § 314 may not institute on less than all claims challenged in the petition. SAS Inst., Inc., 1348 at 1359–60. In our Institution Decision, we determined that Petitioner demonstrated a reasonable likelihood that it would establish that at least one of the challenged claims of the U.S. Patent No. 8,650,591 B2 is unpatentable. Inst. Dec. 23. Because of the Supreme Court’s ruling in SAS, we now modify our Institution Decision to institute on all of the challenged claims, including claims 16 and 28, and on all of the grounds presented in the Petition, including Ground 2, and we determine, in this Decision on Patent Owner’s Motion for Rehearing, whether claims 16 and 28 have been shown, by a preponderance of the evidence, to be unpatentable.” slip op. at 4

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “If our unpatentability analysis requires “considerable speculation as to the meaning and assumptions as to the scope” of the claims, In re Steele, 305 F.2d 859, 862 (CCPA 1962), the differences between the claimed invention and the prior art cannot be ascertained. See id.; see also BlackBerry Corp. v. MobileMedia Ideas, LLC, Case IPR2013-00036, slip op. at 19–20 (PTAB Mar. 7, 2014) (Paper 65) (citing Steele, 305 F.2d at 862–63 for the proposition that “the prior art grounds of unpatentability must fall, pro forma, because they are based on speculative assumption[s] as to the meaning of the claims” and reasoning that “an obviousness determination based on less than all of the claimed elements is speculative as to the meaning or scope of the claims”). In other words, “[w]ithout ascertaining the proper claim scope, we cannot conduct a necessary factual inquiry for determining obviousness—ascertaining differences between the claimed subject matter and the prior art.” Id. at 20 (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)).” slip op. at 6

  • Prior constructionPrior construction adoptedDecided for patent owner

    “least one partition of said at least one secondary storage device through said secondary storage partitions window,” “means for manipulating said at least one cabinet record through said cabinet visible partition window,” and “means for modifying said at least one cabinet record through said cabinet visible partition window.” Ex. 101, 9:66–10:25. In related litigation, the district court found in its claim construction opinion that the ’400 patent does not provide structure corresponding clearly to the functions of these limitations. Ex. 1010, 49–61. We have reviewed and considered the district court’s analysis and findings and we concur with the district court’s conclusion. We are unable to discern structure in the ’400 patent that corresponds clearly to the functions recited in the “means for” limitations of claim 16. Claim 28 recites similarly “program code for configuring said at least one partition of said at least one secondary storage device through a secondary storage partitions window,” “program code for manipulating said virtual cabinet record through said cabinet visible partition window,” and “program code for means for modifying said at least one cabinet record through said cabinet visible partition window.” Ex. 1001, 10:65–11:29. The district court also found that the ’400 patent did not provide structure corresponding clearly to the function of these limitations. Ex. 1010, 49–61. We have reviewed and considered the district court’s analysis and findings and we concur with the district court’s conclusion. We are unable to discern structure in the ’400 patent that corresponds clearly to the functions recited in the “program code for” limitations of claim 28.” slip op. at 5

  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 6,690,400

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.