• Satco Products, Inc. v. The Regents Of The University Of CaliforniaAll claims unpatentable
  PTAB · Oct 12, 2021 · IPR2020-00780 · APJ Christopher L Crumbley · IPR · Final written decision

  Claims 1, 5–7, 9, 13, 14, 18–20, 22, and 26 are unpatentable based on anticipation by Okamoto or Miyahara and obviousness over the asserted combinations.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “construction requiring at least one lead to provide structural support to the LED chip. First, Patent Owner contends that the plain meaning of the term “lead frame” requires that the leads must form “the structural frame supporting the LED chip.” Sur-Reply 4. According to Patent Owner, “[o]n its face, the meaning is clear” that “‘lead frame’ is a frame formed by leads.” Id. We do not find this conclusory statement helpful in determining whether the leads in a lead frame are required to provide structural support to the LED chip. Patent Owner does not identify any evidence, intrinsic or extrinsic, that the plain meaning of the term “lead frame” requires that any leads provide direct or indirect support to the LED chip. In fact, Patent Owner refers to several dictionary definitions of the term “lead frame,” none of which makes any reference to support. PO Resp. 5 (citing Ex. 1023, 4 (“Lead Frame. The metallic portion of a component package that is used to interconnect with semiconductor die by wire bonding and to provide output terminal leads.”); Ex. 1024, 4 (“lead frame— . . . 2. The metal part of a solid-state device package that achieves electrical connection between the die and other parts of the system of which the IC is a component. . . .); Ex. 1026, 3 (“lead frame the metallic portion of the device package that makes electrical connections from the die to other circuitry.”).” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “The fundamental error in Petitioner’s argument on this point, however, is that the claims at issue in this proceeding do not require “a lead frame including a transparent plate,” but instead “a lead frame having a transparent plate therein.” Petitioner must do more than show that Okamoto discloses that “the transparent plate is part of the lead frame,” as argued in the Petition. And, as we pointed out in our Institution Decision, Petitioner concedes that “Okamoto’s lead frame sits on its transparent plate, rather than the transparent plate being in the lead frame.” Institution Dec. 17 (citing Pet. 39; Ex. 1008 ¶¶ 34, 36). During the trial, Petitioner did not engage with this issue or provide any reason for us to diverge from our prior conclusion that, because “the plain language of the claims requires that the lead frame have a transparent plate ‘therein’ . . . [b]y Petitioner’s own admission . . . Okamoto does not anticipate.” Id. In other words, because Petitioner concedes that Okamoto’s transparent plate is not in its lead frame, it cannot meet the requirement of claims 1 and 14 that the lead frame have a transparent plate therein. For this reason, we maintain our prior determination that Okamoto does not disclose a lead frame having a transparent plate therein, and as a result, Petitioner has not shown by a preponderance of the evidence that claims 1 and 14 are anticipated.” slip op. at 23

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

    “Patent Owner also asserts that “Petitioner fails to explain how its proposed modification of wrapping the wiring pattern 6 around the ends of the substrate results in a lower-profile.” PO Resp. 17. According to Patent Owner, “Okamoto already provides the alleged lower-profile benefits of Shimizu, as seen by comparing figure 2 of each reference.” Id. at 18. But Dr. Dupuis supports Petitioner’s contention by stating that a person of ordinary skill in the art would know to use a “chip-type” package instead of a “lead-type” package in applications where a lower profile is needed. Ex. 1003 ¶¶ 129–134 (citing Ex. 1017, 8:31–67; Ex. 1016, Fig. 1, 33–35; Ex. 1022, Figs. 1–3, 6–8, 13, ¶¶ 2–14). Also, Okamoto states that Figure 2 is “a planar view of the light source device of” Figure 1. Ex. 1008 ¶ 43. And Figure 1 of Okamoto, reproduced above, clearly shows protruding lead frame 8. Id. at Fig. 1, ¶ 29. Figure 2 of Okamoto, however, does not show lead frame 8. See id. at Fig. 2. Thus, we do not agree with Patent Owner that Figure 2 of Okamoto shows a package with a lower profile. Instead, the record supports Petitioner’s position that the modified device created using the disclosures of Okamoto and Shimizu has a lower profile (i.e., leads wrapped around substrate 2 as opposed to protruding as shown by Okamoto Figures 1 and 8). See Pet. 42–43; Ex. 1003 ¶¶ 138–142. Patent Owner argues that “Petitioner ignores Dr. Schubert’s explanation that Shimizu was directed towards general illumination, while Okamoto is directed towards a signaling light source” so a person of ordinary skill would not combine the two references. Sur-Reply 16 (citing Ex. 1044, 93:15–96:13). Because we do not see this argument in Patent Owner’s Response, nor do we see anything in Dr. Schubert’s declaration to support such an argument, we do not agree that Petitioner improperly failed to respond to an argument. See PO Resp. 12–21; Ex. 2008 ¶¶ 112–120. Moreover, we find that both Shimizu and Okamoto disclose methods of creating white light using an LED and, therefore, the evidence supports a finding that both references are relevant to a consideration of obviousness. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992) (“In order to rely on a reference as a basis for rejection of the applicant’s invention, the reference must either be in the field of the applicant’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned.”). In sum, on the complete record, we find that the combination of Okamoto and Shimizu teaches each limitation of claims 1 and 14, and we find that a skilled artisan would have had reasons, with rational underpinning, to combine Okamoto and Shimizu.” slip op. at 29

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

    “Upon further review, and in light of the arguments in Petitioner’s Reply (Reply 21–24), we conclude that our preliminary determination in the Institution Decision was in error, to the extent that we agreed with Patent Owner’s arguments that claims 13 and 26 require “all layers” of the LED to be transparent. The claims recite “a plurality of III-nitride layers, including an active region that emits light, wherein all of the layers except for the active region are transparent.” Ex. 1001, 21:46–52. The second half of this phrase, which contains the transparency requirement, recites “the layers,” meaning that it relies on an earlier recitation in the claim for antecedent basis of “layers.” This basis is found in the recitation of “a plurality of III-nitride layers.” In other words, the proper interpretation of “all of the layers” in claims 13 and 26 is that the term refers back to the III-nitride layers, not all of the layers of the LED as a whole (such as, for example, a mirror). And the parties agree that the mirror of a conventional LED is not a III-nitride layer. Tr. 18:15–18; 45:4–13. As a result, our preliminary determination that the non-transparent mirror of the APA LEDs prevented a finding of obviousness was incorrect. We agree with Petitioner that the ’916 patent admits that LEDs having transparent III-nitride layers were conventional in the art, and that these are “all of the layers except for the active region” as required in claims 13 and 26. Notably, during the trial Patent Owner did not attempt to defend against Petitioner’s ground for the same reason it raised in the Preliminary Response; instead, Patent Owner now argues that because of the mirror on conventional LEDs, these devices would not meet the claim limitation that “light is extracted effectively through all the layers.” PO Resp. 21. But this reflects a misunderstanding of Petitioner’s ground of unpatentability, which does not rely on the APA for this limitation. Petitioner’s ground is based on the argument that, while Okamoto discloses an LED without a mirror, it does not “specifically describe the layers of its blue LEDs, other than to say that it is a GaN-based LED.” Pet. 61. Petitioner turns to the APA for this missing information regarding the layers that were conventionally used in LEDs; but notably, the Petition does not rely on the APA’s mirror. Id. All Petitioner concludes from the APA is that a person of skill in the art “would reasonably expect the GaN-based LEDs of Okamoto to include multiple layers, which layers would at least include an active layer sandwiched between a p-side layer and an n-side layer.” Id. (citing Ex. 1003 ¶¶ 203– 205; Ex. 1001, 10:20–31). Patent Owner’s argument that the application of the APA’s layers to Okamoto would have brought along the mirror of the APA LED’s is therefore misguided and unpersuasive. In sum, we agree that a person of ordinary skill in the art would have looked to conventional LEDs, such as those admitted to be prior art in the ’916 patent, when determining the layers of Okamoto’s LED. And according to the ’916 patent, these conventional III-nitride layers would have been understood to be transparent to an emission wavelength. As a result, we conclude that claims 13 and 26 would have been obvious over the combined disclosures of Okamoto and Shimizu in light of the APA.” slip op. at 35

  Patent outcomesUS 10,217,916 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,217,916
• Intel Corporation v. Qualcomm, Inc.Some claims unpatentable
  PTAB · Feb 20, 2020 · IPR2018-01240 · APJ Trevor M Jefferson · IPR · Final written decision

  Claim 11 is unpatentable as obvious over Chu, Choi 2010, Hanington, and Myers; claim 10 was not shown unpatentable over Chu, Choi 2010, and Hanington.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “The ’558 specification and the context of claims 6, 8, and 13 and the related language of claim 10 support that the “source” must be able to receive both the boosted supply voltage and the first supply voltage (a selective boost). PO Resp. 35–38; Ex. 1201, 1:42–50, 5:31–49, 8:55–62, 8:62–9:17, 9:21–36, 10:19–29, Figs. 3 and 5. Accordingly, we do not agree with Petitioner that the use of a conditional “or” in claim 10 indicates that only one voltage is necessary to meet the claims. Pet. Reply 3–9. We credit Patent Owner’s evidence and arguments that the language of claims 10 and 11 and the ’558 patent specification support that claim 10, like dependent claim 11, require a selective boost. See PO Resp. 26–29. Petitioner’s arguments assert both that Patent Owner improperly limits the construction to one disclosed embodiment and that the Patent Owner’s construction improperly excludes a disclosed embodiment. Pet Reply 6–8. We are not persuaded by Petitioner’s argument that Patent Owner’s construction should be rejected because it excludes an embodiment. Pet. Reply 6 (citing EPOS Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338, 1347 (Fed. Cir. 2014); Anchor Wall Sys., Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1308 (Fed. Cir. 2003); Dow Chem. Co. v. Sumitomo Chem. Co., 257 F.3d 1364, 1378 (Fed. Cir. 2001)). The cases Petitioner cites refer to constructions that read out preferred embodiments. See EPOS Techs., 766 F.3d at 1347; Dow Chem. Co., 257 F.3d, at 1378; Anchor Wall Sys., 340 F.3d at 1308. Petitioner provides no persuasive evidence that the embodiment they identify as being excluded is the preferred embodiment of the ’558 patent. Further, Petitioner cites no support that claims 10 or 11 must be construed to cover all embodiments. See Baran v. Med. Device Techs., Inc., 616 F.3d 1309, 1316 (Fed. Cir. 2010). The Federal Circuit has stated that the broadest reasonable construction is not required to cover the most embodiments in a patent specification, but “must be reasonable in light of the claims and specification. The fact that one construction may cover more embodiments than another does not categorically render that construction reasonable.” PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 747, 755 (Fed. Cir. 2016). We are not persuaded by Petitioner’s argument that exclusion of a single embodiment renders Patent Owner’s claim construction improper.” slip op. at 12

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

    “persuasive. We credit Petitioner’s argument and evidence regarding the Chu and Choi 2010 concerns with power degradation and efficiency, which Patent Owner’s declarant testified were common concerns known before the ’558 patent. Pet. Reply 11–12 (citing Ex. 1330, 13:12–20, 13:21–14:2, 259:7–18); Ex. 1027 ¶ 18. We find that Petitioner presents persuasive evidence and argument that the issues of power degradation and efficiency were known in the art and within the knowledge and skill of a person of ordinary skill in the art. See id.; see also PO Resp. 32–33 (noting that “Patent Owner does not contest that efficiency and output distortion/robustness problems were generally known in the art.”). We also find that Petitioner identifies persuasive motivations to combine from the references themselves, identifying specific teachings in Choi 2010 in reference to boost converter systems like those in Chu. Pet. 57–58 (citing Ex. 1306, 1074, 1077). Indeed, Patent Owner’s declarant, Dr. Kelley, agreed that Choi 2010 teaches the use of boost converters to address battery degradation. Ex. 1030, 105:20–106:4, 156:3–6. Finally, Petitioner provides evidence that degrading battery performance affecting operation further motivates the combination of Chu and Choi 2010. Ex. 1030, 165:17–22; Pet. 57–61. We are also persuaded by Petitioner’s citation to secondary references of examples that use a boost converter to prevent distortion provides further support that a person of ordinary skill in the art would have been motivated to combine Chu with Choi 2010 and Hanington. See Pet. 58–60 (citing Ex. 1318, code (57); Ex. 1315, 8); Ex. 1303 ¶¶ 109–111. Patent Owner’s arguments regarding the secondary references attempts to bodily incorporate the teachings from these references into Chu and Choi 2010. Patent Owner also fails to address persuasively the support for the teachings these secondary references provide for modifying Chu’s supply modulator to incorporate a boost converter as disclosed in Choi 2010 and Hanington. Pet. 58–60 (citing Ex. 1318, code (57); Ex. 1315, 8); Ex. 1303 ¶¶ 109–111. Indeed, Patent Owner’s declarant agrees extending battery life, which is discussed in Exhibit 1315 and cited by Petitioner as a motivation to combine Chu and Choi 2010 (Pet. 58–60), would be achieved by the combination of Chu and Choi 2010 and was within the ordinary skill of an artisan. Ex. 1330, 281:6–282:2, 284:6–12. We also disagree with Patent Owner that the Petition fails to show how to combine the references to solve the conflicting problems that Petitioner alleges as motivation—efficiency and degradation. PO Resp. 33– 35. First, we credit Dr. Kelley’s testimony that the result of the combination was within the knowledge and skill of an artisan. Ex. 1330, 105:20–106:4, 156:3–6, 281:6–282:2, 284:6–12. Second, we find that the evidence and argument in the Petition explain sufficiently how Chu would have been modified to incorporate the boost supply voltage of Choi 2010 and Hanington and that such modifications involve typical and well known components widely used in boost converters. See Pet. 68–70; Ex. 1303 ¶¶ 112–113, 126–127; Ex. 1329 ¶ 24.” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “Owner argues “Choi 2010’s boost is a constant boost applied to the linear amplifier, and thus teaches away from a selective boost.” PO Resp. 39. Patent Owner further argues combining Myers’ selective boost with Choi 2010’s constant boost would destroy the purpose and benefits of Choi 2010’s design. Id. at 43. We do not find that Choi 2010’s use of a constant boost teaches away from selective boost in Myers. Patent Owner’s evidence and argument do not persuade us that Choi 2010’s teachings of boost exclude or discourage the use of selective boost. The portion of Choi 2010 Patent Owner cites does not criticize or discourage the use of selective boost, but applies boost generally to achieve its goals. See Ex. 1306, 1333–1334. We do not find that the teachings in Choi 2010 discourage a person of ordinary skill in the art from working with boosted voltage to achieve battery efficiencies. See Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013). Choi 2010 does not discredit or criticize selective boost to improve efficiency.” slip op. at 23

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner

    “the ITC investigation (see Ex. 2001, 36–37), Petitioner does not assert the direct incorporation of Myers technology into the combination of Chu and Choi 2010/Hanington. Instead, Petitioner asserts that Myers teaches a method of choosing a power source to improve operation efficiency. Pet. Reply 22–23; Pet. 72–76; Ex. 1312, 9:18–21, 1:19–23. Furthermore, Patent Owner’s declarant, Dr. Kelley, acknowledges this teaching. Ex. 1330, 270:13–271:5. Petitioner’s arguments and evidence differ materially from those cited in the ITC investigation. See Ex. 2001, 36–37. In the case before us, Petitioner does not directly incorporate Myers hardware into Chu or Choi 2010 and Hanington, but asserts that Myers— particularly Figure 7 that discloses the technique of switching between two different power sources—teaches a technique that would have been within the level of skill of an artisan at the time of patenting. Pet. Reply 23; see Pet. 72–76; Ex. 1330, 283:16–284:1; see also Ex. 1330, 152:21–153:4 (agreeing that a person of ordinary skill would have known how to select between two power sources). Contrary to the combination of the envelope elimination and restoration (EER) circuits of Myers into the linear amplifiers of Chu and Choi 2010 argued at the ITC, Petitioner has provided testimony and citations to the record that Myers’s selection functionality is applicable to the combination of Chu and Choi 2010. We credit Petitioner’s argument and evidence that a person of ordinary skill in the art would have been motivated to combine Chu, Choi 2010, and Hanington with the technique from Myers and would have had a reasonable expectation of success in doing so. Pet. 79–81 (providing supporting argument and testimony regarding battery and boosted voltage efficiency as taught by Myers). We find that Petitioner’s argument and evidence provide sufficient rationales with articulated reasoning to support the application of the Myers selection technique with the amplifiers of Chu and Choi 2010 to achieve battery efficiency during described operating modes. Pet. 57–61 77–82. Indeed, Dr. Kelley’s testimony supports the applicability of the techniques in Myers. See Ex. 1330, 270:13–271:5, 281:6–282:2, 284:6–12; Ex. 1312, 9:18–21 (discussing Myers’ teaching of choosing power source for operation efficiency). Based on our review of the full record, Petitioner demonstrates by a preponderance of the evidence an articulated rationale with articulated reasons to combine Chu, Choi 2010, Hanington, and Myers. In addition, Petitioner demonstrated by a preponderance of the evidence that Chu, Choi 2010, Hanington, and Myers teach the limitations of dependent claim 11.” slip op. at 24

  Patent outcomesUS 8,698,558 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,698,558
• Facebook, Inc. / Whatsapp Inc. et al. v. Uniloc 2017 LLCSome claims unpatentable
  PTAB · Jan 16, 2019 · IPR2017-01667 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 3, 6–8, 10–35, 38, and 39 are unpatentable; claims 4 and 5 were not shown unpatentable.

  RulingsFinal written decision

  • ExcludeOther

    “Response in each case. IPR2017-01667, Paper 17 (“1667 PO Resp.”); IPR2017-01668, Paper 16 (“1668 PO Resp.”). Petitioner4 then filed Replies. IPR2017-01667, Paper 24 (“1667 Reply”); IPR2017-01668, Paper 22 (“1668 Reply”). Patent Owner also filed a Motion to Exclude as Paper 21 in each case (“Mot. Excl.”), and Petitioner filed an Opposition as Paper 24 in each case (“Opp’n”). We held a consolidated oral argument in both proceedings, as well as in related proceeding IPR2017-01428, on August 30, 2018. A transcript of the oral hearing (“Tr.”) has been entered into the record of IPR2017-01667 as Paper 31 and into the record of IPR2017-01668 as Paper 29.” slip op. at 3

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “01668, Paper 6 (“1668 Prelim. Resp.”). We instituted inter partes review pursuant to 35 U.S.C. § 314 as to all challenged claims. IPR2017-01667, Paper 8 (“1667 Dec. on Inst.”); IPR2017-01668, Paper 8 (“1668 Dec. on Inst.”). During the pendency of the proceedings, Huawei Device Co., Ltd. and LG Electronics, Inc. filed a petition and motion for joinder requesting to join IPR2017-01667, which we granted. IPR2017-01667, Paper 12. Similarly, Apple Inc. filed petitions and motions for joinder requesting to join IPR2017-01667 and IPR2017-01668, which we also granted. IPR2017- 01667, Paper 29; IPR2017-01668, Paper 27.” slip op. at 3

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner

    “1. Instant Voice Message Independent challenged claims 3, 27, and 38 recite the term “instant voice message.” In particular, claim 3 recites a messaging system that “receives an instant voice message” from one of a plurality of instant voice the Patent Trial and Appeal Board,” 83 Fed. Reg. 51,340 (Oct. 11, 2018) (to be codified at 37 C.F.R. pt. 42). message client systems, “wherein the instant voice message includes an object field including a digitized audio file.” Claims 27 and 38 recite a client platform system for “generating an instant voice message and a messaging system for transmitting the instant voice message.” Claim 27 further requires an “instant voice messaging application” that “includes a document handler system for attaching one or more files to the instant voice message.” Certain of the challenged dependent claims recite additional limitations concerning, for example, additional fields included in the instant voice message (claims 4–8), storage, deletion, or retrieval of instant voice messages (claims 10, 14, 17, 28, 31), the generation of the instant voice messages (claims 13, 18, 32), encryption/decryption of instant voice messages (claims 19, 33), compression/decompression of instant voice messages (claims 20, 34), effects indicating receipt of instant voice messages (claims 23, 35), and display of instant voice messages (claim 30). Our Institution Decision in IPR2017-01667 noted Patent Owner’s arguments regarding the “instant voice message” centered on the scope of the term. 1667 Dec. on Inst. 18, 22–23. Patent Owner had argued an implied construction in which “instant voice message” encompasses only the voice message. Id. at 19, 23. The parties were invited to brief the claim construction during trial. Id. at 19–20, 23. In its Response in IPR2017-01667, Patent Owner proposed that an “instant voice message” is “an audio file recording voice data.” 1667 PO Resp. 11–13, 15. In particular, Patent Owner relied on the specification’s use of “i.e.” to indicate lexicography in equating the “instant voice message”” slip op. at 12

  Patent outcomesUS 8,724,622 mixed
  Claim constructioncites KSR · Graham
  Patents in suitUS 8,724,622
• C&D Zodiac, Inc. v. B/E Aerospace, Inc.All claims unpatentable
  PTAB · Oct 23, 2018 · IPR2017-01275 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 1, 3–10, and 12–17 are unpatentable as obvious over the Admitted Prior Art and Betts; Petitioner obtained partial adverse judgment on Ground 2.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentGranted

    “Ground 2 based on the Supreme Court’s decision in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018), Petitioner filed a Request for Partial Adverse Judgment against itself with respect to Ground 2, pursuant to 37 C.F.R. § 42.73(b). See Paper 30 (modifying institution decision to institute on all challenged grounds presented in Petition); Paper 33 (Petitioner’s Request for 1 Patent Owner filed two versions of the Preliminary Response: Paper 6, to which access is restricted to the parties and the Board; and Paper 7, a publicly available, redacted version of Paper 6. 2 Patent Owner filed two versions of the Patent Owner Response: Paper 20, to which access is restricted to the parties and the Board; and Paper 21, a publicly available, redacted version of Paper 20. Partial Adverse Judgment as to Ground 2). We granted Petitioner’s Request for Partial Adverse Judgment on July 5, 2018. Paper 36 (granting adverse judgment as to Ground 2).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; 4 Petitioner defines “Admitted Prior Art” as certain portions of the ’641 patent, including Figure 1. Pet. 11–12 (citing Ex. 1001, 1:21–22, Fig. 1; Ex. 1004 ¶ 86). 5 U.S. Patent No. 3,738,497, issued June 12, 1973 (Ex. 1005) (“Betts”). 6 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, took effect on March 18, 2013. Because the application from which the ’641 patent issued was filed before that date, any citations to 35 U.S.C. §§ 102 and 103 are to their pre-AIA version. prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner relies on the testimony of Alan Anderson, who testifies that a person with ordinary skill in the art “would have had a bachelor’s degree in mechanical engineering, industrial design, or a similar discipline, or the equivalent experience, with at least two years of experience in the field of aircraft interior design.” Pet. 29 (citing Ex. 1004 ¶¶ 27–29). Patent Owner does not address Petitioner’s proposal, or offer a competing proposal for a person of ordinary skill in the art. Based on our review of the record, we adopt Petitioner’s definition of the level of ordinary skill in the art.” slip op. at 8

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

    “patent according to their broadest reasonable construction in light of the specification of the patent in which they appear.7 37 C.F.R. § 42.100(b). Consistent with the broadest reasonable construction, claim terms are presumed to have their ordinary and customary meaning as understood by a person of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 9

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

    “Based on our review of the evidence and arguments, we find that one of ordinary skill in the art would have been motivated to modify the Admitted Prior Art lavatory by replacing the flat forward wall with the contoured forward wall of Betts. Petitioner submits convincing argument based on the testimony of Mr. Anderson, that designers of airplane interiors were concerned about adding space to the cabin and that the Betts contoured wall increased interior space. Pet. 22–25 (citing Ex. 1004 ¶¶ 57–59). Betts itself backs up this testimony by stating that one of the goals of its design is “to provide more passenger room.” Ex. 1005, Abstract. We also agree with Petitioner’s assertion that Figure 1 of Betts depicts a passenger seat further aft in the cabin than it could have been if the wall were flat with no recess, and merely extended up from the bottom portion of the wall. See Betts Fig. 1; Pet. 23–24. Betts therefore depicts how the contoured wall and recess provide more passenger space when compared to a flat, vertical wall, and Betts discusses the ability of its design to save space. As such, Betts adequately supports the proposed modification of the prior art flat forward wall as shown in the Admitted Prior Art. Patent Owner’s argument that flat forward lavatory walls co-existed with the Betts design for years without modification, even if accurate, does not outweigh the more convincing evidence and argument supporting Petitioner’s position based on Betts and the Anderson Declaration. In addition, Patent Owner’s argument that one would need to “totally deconstruct” Betts in order to add a lavatory to Betts misapprehends Petitioner’s proposed modification. Petitioner proposes to replace a lavatory flat forward wall as shown in the Admitted Prior Art with the Betts contoured wall, not add a lavatory behind the Betts contoured wall. See Pet. 22, 24; Reply 4–5. Although we do not apply collateral estoppel for the reasons provided above, we note that our findings regarding the proposed combination and modification are consistent with the Federal Circuit’s decision in the related case. See B/E Aerospace, 709 F. App’x at 694 (rejecting Patent Owner’s argument that Petitioner’s combination required adding lavatory to Betts). Based on the foregoing, we find that one of ordinary skill in the art at the time of the invention would have been motivated to modify the lavatory flat forward wall in the Admitted Prior Art by replacing it with the contoured forward wall of Betts.” slip op. at 14

  Patent outcomesUS 9,073,641 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,073,641
• C&D Zodiac, Inc. v. B/E Aerospace, Inc.All claims unpatentable
  PTAB · Sep 28, 2018 · IPR2017-01276 · APJ Richard H Marschall · IPR · Final written decision

  Claims 8 and 10–16 are unpatentable as obvious over the Admitted Prior Art and Betts.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentGranted

    “Ground 2 based on the Supreme Court’s decision in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018), Petitioner filed a Request for Partial Adverse Judgment against itself with respect to Ground 2, pursuant to 37 C.F.R. § 42.73(b). See Paper 30 (modifying institution decision to institute on all challenged grounds presented in Petition); Paper 33 (Petitioner’s Request for 1 Patent Owner filed two versions of the Preliminary Response: Paper 6, to which access is restricted to the parties and the Board; and Paper 7, a publicly available, redacted version of Paper 6. 2 Patent Owner filed two versions of the Patent Owner Response: Paper 21, to which access is restricted to the parties and the Board; and Paper 22, a publicly available, redacted version of Paper 21. Partial Adverse Judgment as to Ground 2). We granted Petitioner’s Request for Partial Adverse Judgment on July 5, 2018. Paper 36 (granting adverse judgment as to Ground 2).” slip op. at 2

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

    “Based on our review of the evidence and arguments, we find that one of ordinary skill in the art would have been motivated to modify the Admitted Prior Art lavatory by replacing the flat forward wall with the contoured forward wall of Betts. Petitioner submits convincing argument, based on the testimony of Mr. Anderson, that designers of airplane interiors were concerned about adding space to the cabin and that the Betts contoured wall increased interior space. Pet. 22–25 (citing Ex. 1004 ¶¶ 57–59). Betts itself backs up this testimony by stating that one of the goals of its design is “to provide more passenger room.” Ex. 1005, Abstract. We also agree with Petitioner’s assertion that Figure 1 of Betts depicts a passenger seat further aft in the cabin than it could have been if the wall were flat with no recess, and merely extended up from the bottom portion of the wall. See Betts Fig. 1; Pet. 23–24. Betts therefore depicts how the contoured wall and recess provide more passenger space when compared to a flat, vertical wall, and Betts discusses the ability of its design to save space. As such, Betts adequately supports the proposed modification of the prior art flat forward wall as shown in the Admitted Prior Art. Patent Owner’s argument that flat forward lavatory walls co-existed with the Betts design for years without modification, even if accurate, does not outweigh the more convincing evidence and argument supporting Petitioner’s position based on Betts and the Anderson Declaration. In addition, Patent Owner’s argument that one would need to “totally deconstruct” Betts in order to add a lavatory to Betts misapprehends Petitioner’s proposed modification. Petitioner proposes to replace a lavatory flat forward wall as shown in the Admitted Prior Art with the Betts contoured wall, not add a lavatory behind the Betts contoured wall. See Pet. 22, 24; Reply 4–5. Although we do not apply collateral estoppel for the reasons provided above, we note that our findings regarding the proposed combination and modification are consistent with the Federal Circuit’s decision in the related case. See B/E Aerospace, 709 F. App’x at 694 (rejecting Patent Owner’s argument that Petitioner’s combination required adding lavatory to Betts). Based on the foregoing, we find that one of ordinary skill in the art at the time of the invention would have been motivated to modify the lavatory flat forward wall in the Admitted Prior Art by replacing it with the contoured forward wall of Betts.” slip op. at 14

  • Obviousness (§103) › KSR rationalesUnpatentableDecided for petitioner

    “We agree with Patent Owner that use of common sense to supply a missing limitation must be carefully circumscribed and requires supporting evidence in the situation presented here, but disagree that Petitioner has failed to support its obviousness argument with proper reasoning and evidence. Patent Owner correctly notes that in K/S HIMPP, the court held that when a limitation “presents more than a peripheral issue,” determination of patentability requires a “core factual finding” that in turn requires “point[ing] to some concrete evidence in the record in support of these findings.” K/S HIMPP, 751 F.3d at 1365 (quoting In re Zurko, 258 F.3d 1379, 1386 (Fed. Cir. 2001)). Similarly, in Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361–62 (Fed. Cir. 2016), the Federal Circuit held that common sense, common wisdom, and common knowledge may be properly considered in an obviousness analysis, but “cannot be used as a wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the prior art references specified.” Arendi distinguished the situation involving a “central” limitation, at issue in 9 Patent Owner moves to exclude the three references and related testimony, which we deny for the reasons discussed below. See infra II.D. Arendi, from the situation in Perfect Web, where common sense was used to supply a missing limitation. See Perfect Web Techs., Ins. v. InfoUSA, Inc., 587 F.3d 1324 (Fed. Cir. 2009). In Perfect Web, the court affirmed a summary judgment decision finding claims invalid as obvious, where the lower court determined that a missing limitation would have been obvious based on common sense, even without reliance on record evidence such as expert testimony. See id. at 1329 (“[U]se of common sense does not require a ‘specific hint or suggestion in a particular reference,’ only a reasoned explanation that avoids conclusory generalizations.”), id. at 1330 (“No expert opinion is required to appreciate the potential value to persons of such skill in this art of [the missing limitation].”). We need not reach the issue of whether the “second recess” is so peripheral that Petitioner need not have pointed to evidence or expert opinions to support its argument that the missing limitation would have been obvious. Petitioner has supplied reasoned explanation and record evidence to support its position. Petitioner relies on the testimony of Mr. Anderson, who stated that a person of ordinary skill in the art would recognize that as a seat is moved further aft the seat support necessarily is also moved further aft. As the seat is moved aft the feet of the seat support may come into contact with the lower section of the wall. Creating one or more recesses to accommodate whatever portion(s) of the seat support that would contact the forward wall of the enclosure is the obvious solution to this known problem. Ex. 1004 ¶ 74; see also id. at ¶ 191.” slip op. at 19

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia with nexusDecided for patent owner

    “accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention.” Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010) (alteration and emphasis in original) (quoting In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995)). Patent Owner only addresses nexus in the context of its argument regarding commercial success. PO Resp. 37–38. Patent Owner argues that nexus here “is presumed” because “[t]here is no dispute that [Patent Owner’s] Spacewall product, which has been so commercially successful, is an embodiment of the patent.” Id. at 38 (citing Ex. 2093, 36:16–37:3). Patent Owner also asserts that other documents show that the commercial success of the Spacewall product stemmed from the “curved shape” of the lavatory forward wall or the “lavatory structure design.” Id. (citing Ex. 2078; Ex. 2090, 136:14–137:11). Such general allegations that Patent Owner’s product “is an embodiment of the patent” and led to sales due to a “curved design” ordinarily fail to establish that a product contains all of the limitations of the claim at issue, which is necessary to trigger a presumption of nexus. See WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1330 (Fed. Cir. 2016) (holding that nexus is presumed when patentee establishes that commercial product is an embodiment of the claimed invention). However, Petitioner did not address the presumption of nexus issue in the Petition or the Reply, and did not argue that Patent Owner’s Spacewall product was not covered by the challenged claims here. See Reply 15–16; Tr. 28:10–13, 93:1–2 (Petitioner acknowledging at the oral hearing that it did not dispute that Patent Owner’s product met the limitations of the challenged claims). Accordingly, we apply a presumption of nexus here. Petitioner argues that nexus cannot be established because all of the claim limitations were known in the prior art. See Pet. 62. Petitioner also argues that none of Patent Owner’s evidence ties the “second recess” to the secondary considerations. Reply 15–16. These arguments do not address the presumption of nexus issue, and improperly suggest that Patent Owner must tie the objective indicia to the supposedly new feature in the claims, the second recess. See WBIP, 829 F.3d at 1330 (“[P]roof of nexus is not limited to only when objective evidence is tied to the supposedly ‘new’ feature(s).”). The arguments also fail to rebut the presumption, which requires reliance on evidence of record to successfully rebut the presumption. See id. at 1329 (holding that the presumption of a nexus cannot be rebutted adequately by argument alone). Although we find a presumption of a nexus, we will consider Petitioner’s arguments regarding a lack of nexus, to the extent they also bear on the weight we give any alleged objective indicia, where appropriate below.” slip op. at 30

  Patent outcomesUS 9,440,742 unpatentable
  § 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,440,742
• Sony Corporation v. Arris Enterprises LLCOther
  PTAB · Jan 8, 2018 · IPR2017-01692 · APJ Jameson Lee · IPR · Order

  The Board granted the parties’ joint motion to terminate the proceedings before institution and granted both requests to keep the settlement agreements confidential.

  RulingsOther

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted

    “Under the circumstances, we grant the parties’ Motion to Terminate, Motion to File the Settlement Agreement as Confidential, and Motion to File the Final Settlement Agreement as Confidential in each proceeding. These proceedings are in their early stages: a decision on institution has not issued,” slip op. at 2

  None
  Patents in suitUS 6,138,147
• On Semiconductor Corporation / Semiconductor Components Industries, LLC (D/B/A On Semiconductor) v. Power Integrations, Inc.All claims unpatentable
  PTAB · Sep 22, 2017 · IPR2016-00809 · APJ Daniel N Fishman · IPR · Final written decision

  Claims 31, 32, 34, 38, 39, and 42 are unpatentable as obvious over Oda and Nakamura because the combination teaches the claimed features, including varying pulse frequency and on-time in the second feedback range.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “Panels of the Board have interpreted 315(b) (and our associated rule 37 C.F.R. § 42.101(b)) to mean that “it is only privity relationships up until the time a petition is filed that matter.” Synopsys, Inc. v. Mentor Graphics 5 Patent Owner entered the Merger Agreement into the record as Exhibit 2018. Corp., Case IPR2012-00042, slip op. at 12 (PTAB Feb. 19, 2014) (Paper 60); see also ARRIS Group, Inc. v. TQ Delta LLC, Case IPR2016-00430, slip op. at 6 (PTAB July 1, 2016) (Paper 9). Although not the exclusive factor for establishing privity, control of the requested review procedure is an important factor to establish privity in this context. Our Office Patent Trial Practice Guide explains that “[w]hether a party who is not a named participant in a given proceeding nonetheless constitutes a . . . ‘privy’ to that proceeding is a highly fact-dependent question.” 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012). “There are multiple factors relevant to the question of whether a non-party may be recognized as a . . . ‘privy.’” Id. “A common consideration is whether the non-party exercised or could have exercised control over a party’s participation in a proceeding.” Id. However, it is recognized that there is no definitive test regarding the degree of participation required to establish such control and, hence, to establish a privity relationship. Id.” slip op. at 11

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “Similarly, Patent Owner’s arguments regarding the Confidentiality Agreement (Ex. 2026) are insufficient to demonstrate that Fairchild exercised, or could have exercised, any control over this proceeding. PO Resp. 65. The mere exchange of unidentified confidential information and recitations of the Confidentiality Agreement that the parties could be joint defendants in the future, without more, do not provide sufficient evidence that Fairchild has exercised, or could have exercised, any control over this proceeding. Thus, the record lacks sufficient evidence to demonstrate even the opportunity to control this review and, thus, to establish privity between Petitioner and Fairchild.” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “In our Decision on Institution, we agreed with Petitioner that nothing in the claims or the specification of the ’079 patent limits the term “energy transfer element” to only transformers in a flyback architecture converter and, more specifically, nothing in the claims defines a particular direction of current flow through the terminals of the power switch. Dec. 15–16. Thus, we determined that, in accordance with the broadest reasonable interpretation, “energy transfer element” should not be construed so narrowly as to include only a transformer (flyback topology converter) and to exclude an inductor (buck topology converter). Id. at 16. Instead, we determined “energy transfer element” is at least as broad as to encompass either a transformer or an inductor as utilized in flyback and buck architecture power converters, respectively. Id. After considering all evidence and assertions anew, we discern no persuasive reason to alter our preliminary interpretation and conclude, for the reasons given in our Decision on Institution and this Decision, that “energy transfer element” is at least as broad as to encompass either a transformer or an inductor as utilized in flyback and buck architecture power converters, respectively. See id. at 14–16.” slip op. at 20

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

    “Thus, although we discern no need to expressly construe the phrase “corresponds to” as used in the claims, we determine “corresponds to” as used in the claims is at least as broad as to encompass non-overlapping first 9 Patent Owner’s narrow interpretation demands a one-to-one relationship between the feedback values and the pulse on-time values, i.e., a reversible function in mathematical terms. The ’079 patent Specification does not support such a narrow interpretation. and second ranges of feedback values corresponding to first and second ranges of on-time values regardless of overlap of feedback values in the first and second ranges of feedback values.” slip op. at 25

  Patent outcomesUS 6,212,079 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,212,079
• General Plastic Industrial Co., Ltd. v. Canon Kabushiki KaishaRehearing denied
  PTAB · Sep 6, 2017 · IPR2016-01361 · APJ Sheila F Mcshane · IPR · Rehearing

  The Board granted the expanded-panel request but denied rehearing, leaving in place the discretionary denial of institution in all five follow-on petitions.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “B. Requests for Rehearing A party requesting rehearing has the burden to show a decision should be modified by specifically identifying all matters the party believes were misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise 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. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 5

  • Other 314aInstitution denied discretionary otherInstitution denied

    “Our intent in formulating the factors was to take undue inequities and prejudices to Patent Owner into account. Thus, factor 3 is directed to Petitioner’s potential benefit from receiving and having the opportunity to study Patent Owner’s Preliminary Response, as well as our institution decisions on the first-filed petitions, prior to its filing of follow-on petitions. As discussed in our Decisions Denying Institution, we are concerned here by the shifts in the prior art asserted and the related arguments in follow-on petitions. See Dec. 11. Multiple, staggered petitions challenging the same patent and same claims raise the potential for abuse. The absence of any restrictions on follow-on petitions would allow petitioners the opportunity to strategically stage their prior art and arguments in multiple petitions, using our decisions as a roadmap, until a ground is found that results in the grant of review.14 All other factors aside, this is unfair to patent 14 The Board has addressed efficiency and potential prejudice induced by multiple petitions in multiple cases. See LG Electronics, slip op. at 12 (“The Board’s resources would be more fairly expended on first petitions rather than on a followon petition like the Petition in this case.”); Butamax Advanced Biofuels LLC v. Gevo, Case IPR2014-00581, slip op. at 12–13 (PTAB Oct. 14, 2014) (Paper 8) (“[T]he four obviousness grounds are ‘second bites at the apple,’ which use our prior decision as a roadmap to remedy Butamax’s prior, deficient challenge. owners and is an inefficient use of the inter partes review process and other post-grant review processes. Considering other factors (i.e., factors 2, 4, and 5) allows us to assess and weigh whether a petitioner should have or could have raised the new challenges earlier. We recognize that there may be circumstances where multiple petitions by the same petitioner against the same claims of a patent should be permitted, and that such a determination is dependent on the facts at issue in the case. The factors set forth above, in our view, represent a formulation of relevant considerations that permit the Board to assess the potential impacts on both the efficiency of the inter partes review process and the fundamental fairness of the process for all parties. We recognize, also, that additional factors may arise in other cases for consideration, where appropriate. However, the factors set forth above, at the very least, serve to act as a baseline of factors to be considered in our future evaluation of follow-on petitions.” slip op. at 17

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted

    “panels to authorize, an expanded panel. See generally 35 U.S.C. § 6; 37 C.F.R. §§ 41.1–42.412; see also AOL Inc. v. Coho Licensing LLC, Case IPR2014-00771, slip op. at 2 (PTAB Mar. 24, 2015) (Paper 12) (“[P]arties are not permitted to request, and panels do not authorize, panel expansion.”). Our standard operating procedures, however, provide the Chief Judge with discretion to expand a panel to include more than three judges. PTAB SOP 1, 1–3 (§§ II, III) (Rev. 14); see id. at 1 (introductory language explaining that the Director has delegated to the Chief Judge the authority to designate panels under 35 U.S.C. § 6); see also In re Alappat, 33 F.3d 1526, 1532 (Fed. Cir. 1994) (providing that Congress “expressly granted the Commissioner the authority to designate expanded Board panels made up of more than three Board members.”). The Chief Judge may consider panel expansions upon a “suggestion” from a judge, panel, or party in a post-grant review. Id. at 3–4; see also Apple Inc. v. Rensselaer Polytechnic Inst., Case IPR2014-00319, slip op. at 2 n.1 (PTAB Dec. 12, 2014) (Paper 20) (expanded panel) (per curiam). The standard operating procedure exemplifies some of the reasons for which the Chief Judge may expand a panel. PTAB SOP 1, 3 (§ III.A). For example, an expanded panel may be appropriate when “[t]he proceeding or AIA Review involves an issue of exceptional importance.” Id. (§ III.A.1). In these cases, the Chief Judge has considered whether expansion is warranted, and has decided to expand the panel due to the exceptional nature of the issues presented.4 As we discuss further below, follow-on petitions have been at issue in multiple cases before the Board. The Chief Judge has determined that an expanded panel is warranted to provide a discussion of factors that are considered in the exercise of the Board’s discretion under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a).” slip op. at 4

  Discretionary denial
  Patents in suitUS 8,909,094
• General Plastic Industrial Co., Ltd. v. Canon Kabushiki KaishaRehearing denied
  PTAB · Sep 6, 2017 · IPR2016-01359 · APJ Sheila F Mcshane · IPR · Rehearing

  The Board denied rehearing of the institution denials in IPR2016-01357 through IPR2016-01361, finding no abuse of discretion or overlooked issue; it granted the request for an expanded panel.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “B. Requests for Rehearing A party requesting rehearing has the burden to show a decision should be modified by specifically identifying all matters the party believes were misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise 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. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 5

  • Other 314aInstitution denied discretionary otherDecided for patent owner

    “Our intent in formulating the factors was to take undue inequities and prejudices to Patent Owner into account. Thus, factor 3 is directed to Petitioner’s potential benefit from receiving and having the opportunity to study Patent Owner’s Preliminary Response, as well as our institution decisions on the first-filed petitions, prior to its filing of follow-on petitions. As discussed in our Decisions Denying Institution, we are concerned here by the shifts in the prior art asserted and the related arguments in follow-on petitions. See Dec. 11. Multiple, staggered petitions challenging the same patent and same claims raise the potential for abuse. The absence of any restrictions on follow-on petitions would allow petitioners the opportunity to strategically stage their prior art and arguments in multiple petitions, using our decisions as a roadmap, until a ground is found that results in the grant of review.14 All other factors aside, this is unfair to patent 14 The Board has addressed efficiency and potential prejudice induced by multiple petitions in multiple cases. See LG Electronics, slip op. at 12 (“The Board’s resources would be more fairly expended on first petitions rather than on a followon petition like the Petition in this case.”); Butamax Advanced Biofuels LLC v. Gevo, Case IPR2014-00581, slip op. at 12–13 (PTAB Oct. 14, 2014) (Paper 8) (“[T]he four obviousness grounds are ‘second bites at the apple,’ which use our prior decision as a roadmap to remedy Butamax’s prior, deficient challenge. owners and is an inefficient use of the inter partes review process and other post-grant review processes. Considering other factors (i.e., factors 2, 4, and 5) allows us to assess and weigh whether a petitioner should have or could have raised the new challenges earlier.” slip op. at 17

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDecided for patent owner

    “ii. Applying the Factors in These Cases As summarized above, supra Section II.B.2, we find that, in these cases, six of the seven factors weigh against institution. Petitioner disputes our findings on the issue of whether Petitioner “should have known” of the art asserted in the follow-on petitions under factor 2. We disagree with Petitioner’s characterization that invariably factor 2 could not be met because “patents or printed publications” necessarily “must be locatable by a reasonably diligent search.” Req. Reh’g 8. The relevant issue under factor 2 is not, as Petitioner has framed it, whether the prior art references relied on in the follow-on petitions constitute printed publications, but whether they could have been found with reasonable diligence. Thus, even for printed publications, a petitioner is free to explain why a reasonably diligent search could not have uncovered the newly applied prior art. See Apotex Inc. v. Wyeth LLC, IPR2015-00873, slip op. at 6 (Sept. 16, 2015) (Paper 8) (describing “[w]hat a petitioner ‘could have raised,’” as including “prior art which a skilled searcher conducting a diligent search reasonably could have been expected to discover.”). Here, the record is devoid of any explanation why Petitioner could not have found the newly asserted prior art in any earlier search(es) through the exercise of reasonable diligence.” slip op. at 19

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted

    “panels to authorize, an expanded panel. See generally 35 U.S.C. § 6; 37 C.F.R. §§ 41.1–42.412; see also AOL Inc. v. Coho Licensing LLC, Case IPR2014-00771, slip op. at 2 (PTAB Mar. 24, 2015) (Paper 12) (“[P]arties are not permitted to request, and panels do not authorize, panel expansion.”). Our standard operating procedures, however, provide the Chief Judge with discretion to expand a panel to include more than three judges. PTAB SOP 1, 1–3 (§§ II, III) (Rev. 14); see id. at 1 (introductory language explaining that the Director has delegated to the Chief Judge the authority to designate panels under 35 U.S.C. § 6); see also In re Alappat, 33 F.3d 1526, 1532 (Fed. Cir. 1994) (providing that Congress “expressly granted the Commissioner the authority to designate expanded Board panels made up of more than three Board members.”). The Chief Judge may consider panel expansions upon a “suggestion” from a judge, panel, or party in a post-grant review. Id. at 3–4; see also Apple Inc. v. Rensselaer Polytechnic Inst., Case IPR2014-00319, slip op. at 2 n.1 (PTAB Dec. 12, 2014) (Paper 20) (expanded panel) (per curiam). The standard operating procedure exemplifies some of the reasons for which” slip op. at 4

  Claim constructionDiscretionary denial
  Patents in suitUS 8,909,094
• General Plastic Industrial Co., Ltd. v. Canon Kabushiki KaishaRehearing denied
  PTAB · Sep 6, 2017 · IPR2016-01358 · APJ Sheila F Mcshane · IPR · Rehearing

  The Board denied rehearing of the institution denials in five follow-on petitions, concluding that its discretionary denials under § 314(a) were not an abuse of discretion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “B. Requests for Rehearing A party requesting rehearing has the burden to show a decision should be modified by specifically identifying all matters the party believes were misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise 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. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 5

  • Other 314aInstitution denied discretionary otherInstitution denied

    “Our intent in formulating the factors was to take undue inequities and prejudices to Patent Owner into account. Thus, factor 3 is directed to Petitioner’s potential benefit from receiving and having the opportunity to study Patent Owner’s Preliminary Response, as well as our institution decisions on the first-filed petitions, prior to its filing of follow-on petitions. As discussed in our Decisions Denying Institution, we are concerned here by the shifts in the prior art asserted and the related arguments in follow-on petitions. See Dec. 11. Multiple, staggered petitions challenging the same patent and same claims raise the potential for abuse. The absence of any restrictions on follow-on petitions would allow petitioners the opportunity to strategically stage their prior art and arguments in multiple petitions, using our decisions as a roadmap, until a ground is found that results in the grant of review.14 All other factors aside, this is unfair to patent 14 The Board has addressed efficiency and potential prejudice induced by multiple petitions in multiple cases. See LG Electronics, slip op. at 12 (“The Board’s resources would be more fairly expended on first petitions rather than on a followon petition like the Petition in this case.”); Butamax Advanced Biofuels LLC v. Gevo, Case IPR2014-00581, slip op. at 12–13 (PTAB Oct. 14, 2014) (Paper 8) (“[T]he four obviousness grounds are ‘second bites at the apple,’ which use our prior decision as a roadmap to remedy Butamax’s prior, deficient challenge. owners and is an inefficient use of the inter partes review process and other post-grant review processes. Considering other factors (i.e., factors 2, 4, and 5) allows us to assess and weigh whether a petitioner should have or could have raised the new challenges earlier. We recognize that there may be circumstances where multiple petitions by the same petitioner against the same claims of a patent should be permitted, and that such a determination is dependent on the facts at issue in the case. The factors set forth above, in our view, represent a formulation of relevant considerations that permit the Board to assess the potential impacts on both the efficiency of the inter partes review process and the fundamental fairness of the process for all parties. We recognize, also, that additional factors may arise in other cases for consideration, where appropriate. However, the factors set forth above, at the very least, serve to act as a baseline of factors to be considered in our future evaluation of follow-on petitions.” slip op. at 17

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for patent owner

    “As we discussed above, § 314(a) recites “may not” when referring to authorization for inter partes review, and does not specify any particular Allowing similar, serial challenges to the same patent, by the same petitioner, risks harassment of patent owners and frustration of Congress’s intent in enacting the Leahy-Smith America Invents Act. See H.R. Rep. No. 112-98, pt.1, at 48 (2011).”); Conopco, slip op. at 5 (“We are not persuaded that we erred by adopting a more flexible approach that assesses each case on its particular facts to achieve a result that promotes the efficient and economical use of Board and party resources, and reduces the opportunity for abuse of the process.”); Travelocity.com L.P. v. Cronos Tech., LLC, Case CBM2015-00047, slip op. at 13 (PTAB June 15, 2015) (Paper 7) (“Moreover, a decision on a petition . . . is not simply part of a feedback loop by which a petitioner may perfect its challenges through a subsequent filing.”). circumstance in which review must be authorized. That means institution of review is committed to the Director’s discretion, which, in turn, has been delegated to the Board. See 35 U.S.C. § 314(a); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016); 37 C.F.R. § 42.4(a). Similarly, under § 325(d), whether “the same or substantially the same prior art or arguments previously were presented to the Office” is an issue that “may” be taken into account in considering institution, also manifesting the discretionary nature of application of § 325(d). As such, § 325(d) is not intended to be the sole factor in the exercise of discretion under § 314(a). We, therefore, do not agree with Petitioner that our Decisions Denying Institution conflict with the “express wording” of § 325(d), or render the aforementioned provision superfluous or meaningless. We also do not agree that the legislative history indicates an intent to limit discretion under § 314(a), such that it is subordinate to or encompassed by § 325(d). Additionally, although the legislative history reflects recognition of a desire for a “safety valve” to alleviate backlog, it does not limit the exercise of discretion under 35 U.S.C. § 314(a) to only circumstances in which there is a high volume of pending proceedings. See 157 CONG. REC. S1377 (Mar. 8, 2011). In any event, no such restriction appears in the language of 35 U.S.C. § 314(a), and we decline to read into 35 U.S.C. § 314(a) such a restriction.” slip op. at 18

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted

    “In these cases, the Chief Judge has considered whether expansion is warranted, and has decided to expand the panel due to the exceptional nature of the issues presented.4 As we discuss further below, follow-on petitions have been at issue in multiple cases before the Board. The Chief Judge has determined that an expanded panel is warranted to provide a discussion of factors that are considered in the exercise of the Board’s discretion under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a).” slip op. at 4

  Discretionary denial
  Patents in suitUS 9,046,820

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.