- Apple Inc. v. Qualcomm IncorporatedNo claims unpatentablePTAB · Jan 22, 2020 · IPR2018-01252 · APJ Scott B Howard · IPR · Final written decision
Apple did not prove claims 1–6 and 8–20 unpatentable as obvious over Jin and Elias because it failed to show Jin teaches moving a card with directional contact.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“art include (1) educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 696–697 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed. Cir. 1983)). Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case. Id. Moreover, these factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. Ltd, Inc. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“[W]e need only construe those claim limitations ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Because the parties did not request the construction of any limitation and no express constructions are necessary to resolve a controversy, we do not construe any of the limitations. slip op. at 11
- Strike new argumentNew argument disregardedDecided for patent owner
“prima facie case of unpatentability.” Trial Practice Guide Update (August 2018), 14, available at https://www.uspto.gov/sites/default/files/documents/ 2018_Revised_Trial_Practice_Guide.pdf. As the Federal Circuit has explained, [i]t is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify “with particularity” the “evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3). “All arguments for the relief requested in a motion must be made in the motion. A reply may only respond to arguments raised in the corresponding opposition or patent owner response.” 37 C.F.R. § 42.23(b). Once the Board identifies new issues presented for the first time in reply, neither this court nor the Board must parse the reply brief to determine which, if any, parts of that brief are responsive and which are improper. As the Board noted, “it will not attempt to sort proper from improper portions of the reply.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012). Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016); see also Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 775 (Fed. Cir. 2018) (quoting same). Based on that standard, the Federal Circuit determined that the PTAB properly refused to consider a new theory raised for the first time in a reply brief:” slip op. at 23
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“preliminary,” “based on the evidentiary record developed thus far,” and that “[o]ur final decision will be based on the record as fully developed during trial.” Id. at 32. We further advised the parties that we were not “determin[ing] whether an individual asserted fact is indisputable or whether a preponderance of the evidence supports Petitioner.” Id. at 31. Having conducted the trial, for the reasons discussed below, our preliminary finding is not supported by the entirety of the record. Instead, we agree with Patent Owner that Jin does not teach or suggest “directional contact of moving the [selected] card along . . . the touch-sensitive display screen” and agree that the combination of Jin and Elias does not teach or suggest “dismissing the selected first card or second card from the touch-sensitive display screen in the second direction so that the corresponding first application or second application is closed” as recited in claim 1. Specifically, Petitioner has not sufficiently shown that Jin teaches or suggests that the processor responds to directional contact moving the selected card in the second direction on the display screen. Jin’s Figures 9C shows a finger moving along the screen—directional contact. Ex. 1005, Fig. 9C. However, Jin’s Figure 9C does not illustrate the card moving along with the finger. Id. Rather, Jin’s Figure 9E simply shows the cards in a new position without describing what happened on the display while the location of the cards were changed. See id. at Fig. 9E. Accordingly, Petitioner has not proven that Jin teaches directional contact moving the selected card in the second direction on the display screen.” slip op. at 29
Patent outcomesUS 8,683,362 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,683,362 - Apple Inc. v. Qualcomm IncorporatedNo claims unpatentablePTAB · Jan 2, 2020 · IPR2018-01279 · APJ Scott B Howard · IPR · Final written decision
Claims 1–14 and 16–18 were not shown unpatentable because the asserted combinations did not teach composing a message after the incoming call; the contingent motion to amend was dismissed as moot.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“In our Institution Decision, we adopted Petitioner’s formulation. Inst. Dec. 17. Patent Owner does not challenge Petitioner’s formulation. See PO Resp. 12–13; Ex. 2004 ¶ 57 (Jeffay Decl.) (“[F]or the purposes of this declaration, I have applied Petitioner’s proposed level of skill.”). Accordingly, we adopt Petitioner’s proposed level of ordinary skill, except that we delete the qualifier “or more” to eliminate vagueness as to the amount of practical experience. The qualifier expands the range indefinitely without an upper bound, and thus precludes a meaningful indication of the the art would have had either (1) a Master of Science Degree in an academic area emphasizing electrical engineering, computer engineering, computer science, or an equivalent field (or a similar technical Master’s Degree, or higher degree) with a concentration in wireless communication and networking systems or (2) a Bachelor’s Degree (or higher degree) in an academic area emphasizing electrical engineering, computer engineering, or computer science and having two years of experience in wireless communication and networking systems. Moreover, additional education in a relevant field, such as computer engineering, or electrical engineering, or industry experience may compensate for a deficit in one of the other aspects of the requirements stated above.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“recited in claim 1 means generating a message and does not encompass using pre-composed messages. That construction is consistent with the language recited in the claims, the ’037 patent, and the use of “composing” in a related patent. We begin with the words of claim 1. Claim 1 recites “in response to receiving an incoming call, prompting a user of the first computing device to incoming call by composing, while not answering the incoming call, a message to a user of the second computing device.” Ex. 1001, 10:7–11. Based on the ordinary meaning of the claim language, the claim requires prompting a user to enter user input and that the entered user input “instructs the first computing device to handle the incoming call by composing . . . a message.” See id. That is, it is the user input—which itself is in response to an incoming call—which causes the composing to take place. Thus, the language of the claim requires that the composing takes place after the incoming call is received and the user input is entered. Therefore, the language of the claim precludes using content composed prior to the call and user input, i.e., a precomposed message. See Ex. 2004 ¶ 73 (Jeffay Decl.). This construction is also consistent with the written description of the ’037 patent. The ’037 patent describes two different ways of generating messages. First, the ’037 patent describes how a device may be configured to respond to all incoming calls with a precomposed message, such as “on vacation.” Ex. 1001, 5:18–23. However, claim 1 was amended during prosecution to exclude automatically responding with a precomposed message, thus excluding that embodiment from the scope of claim 1. See Ex. 1002, 157 (amendment to claim 1), 165–68 (prosecution history of the ’037 patent) (distinguishing prior art references which automatically responded with a precomposed message); see also Ex. 2004 ¶ 70 (Jeffay Decl.) (“Accordingly, the Applicant amended the claims to distinguish over Brown and clearly disclaimed claim scope corresponding to the embodiments in which an incoming call is automatically responded to with a message.” (citing Ex. 1002, 166–68)). response to a trigger—user input—from the user. See Ex. 1001, 5:24–54, 7:52–8:2, Fig. 4 (step 470 (“address message body”) is after steps 410 (“receive incoming call”) and 435 (“message response?”)). Because the message is generated in response to the user input, it does not exist prior to user input being entered. That is, a precomposed message is not being used.” slip op. at 11
- Strike new argumentNew argument disregardedDecided for patent owner
“Our rules require the Petition to include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” 37 C.F.R. § 42.22(a)(2) (2017). Additionally, the Petition “must identify . . . [h]ow the construed claim is unpatentable under must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4) (2017). Our rules further provide for a petitioner to file a reply to respond to arguments made in the patent owner’s response. See 37 C.F.R. § 42.23(b) (2019). Petitioner choose neither option to set forth its arguments regarding Mäkelä’s claim 28. We decline Petitioner’s invitation to consider arguments presented in papers outside of the Petition and Petitioner’s Reply. We treat Petitioner’s request that we consider arguments only presented in the Opposition to the Motion to Amend as a request for incorporation by reference. However, our rules prohibit “incorporat[ion] by reference from one document into another document.” 37 C.F.R. § 42.6(a)(3) (2019); see also DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (Incorporation “by reference amounts to a self-help increase in the length of the [ ] brief[,]” and “is a pointless imposition on the court’s time. A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”)). Petitioner has not persuasively argued why we should not apply Rule 42.6(a)(3) in these circumstances. See 37 C.F.R. § 42.5(b) (2019) (“The Board may waive or suspend a requirement of parts 1, 41, and 42 and may place conditions on the waiver or suspension.”). Although Petitioner may have intended to make the argument in both Petitioner’s Reply and the Opposition to the Motion to Amend (Tr. 58–59), it did not do so.8” slip op. at 17
- Expert testimonyPetitioner expert discountedDecided for patent owner
“With regard to the merits, we agree with Patent Owner that Petitioner has not sufficiently shown how Mäkelä teaches “composing . . . a message” as recited in claim 1. Neither the Petition nor Petitioner’s Reply specifically addresses when the reply message is prepared. See Pet. 16–17; Pet. Reply 14. Moreover, Dr. Mandayam—Petitioner’s expert witness— conceded that the messages in Mäkelä are composed and stored prior to the incoming call being received: Q. So I think just to repeat the question, is there any disclosure in Mäkelä that the message sent by the user in response to an incoming call is anything other than a message previously stored by the user before the incoming call? Yes or no, please. . . . that have been composed ahead -- previously by the user with the ability to choose them. . . . . Q. The modes of response listed in Claim 27, that is a voice message, an e-mail message, a facsimile, and an SMS message in the form of a character string are all limited to precomposed messages. Do you agree with that? . . . THE WITNESS: So the messages have been composed by the user and stored, as we have gone through this already a few times. So that is stored and composed and resides in the device. And the user is making the choice in response to a call to send whichever their preferred option is. And there is some dynamism if you read through the specifications where there are responses you can fine-tune based on the amount of time you want to be not disturbed or the amount of time your meeting is in session. So there are things like that. But this is the characterization, and I think this is something I agree. . . . Q. So I think we agree that the user selects a message that is to be transmitted in response to an incoming call. The question is would you agree that in Mäkelä the user’s selection of the message in response to an incoming call is limited to precomposed messages? . . .” slip op. at 19
Patent outcomesUS 7,844,037 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,844,037 - Apple Inc. v. Qualcomm Inc.Rehearing deniedPTAB · May 23, 2019 · IPR2018-01270 · APJ Aaron W Moore · IPR · Rehearing
The Board denied Apple’s rehearing request, leaving institution denied because Apple did not show Samsung disclosed the claimed notification and power-button silencing during an incoming call.
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 party must identify the matters misapprehended or overlooked, and where each matter was addressed in a motion, opposition, or reply. Id. When reconsidering an institution decision, we look for an abuse of discretion, which may be found if there was (1) an erroneous interpretation of law, (2) a factual finding not supported by substantial evidence, or (2) unreasonable judgment in weighing relevant factors. See 37 C.F.R. § 42.71(c); Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); The Arnold Partnership 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 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“1006, 32)). We found the cited portions of Samsung to describe (1) that if there was no call already in progress, the user could silence an incoming call with the power button, but neither the in-use information nor call waiting would cause the claimed notification, and (2) that if a call was already in progress, call waiting would display a notification for a new call, but there was nothing to indicate that the user could silence a ‘ring,’ or even the call waiting alert, using the power button. See Decision 16. In other words, the “in-use” notification was insufficient because it was not shown to be displayed while a call was incoming, and the “call waiting” notification was insufficient because it was not shown to be employed at a time a user could use the power button to silence a “ring.”” slip op. at 4
- Strike new argumentNew argument disregardedDenied
“New Evidence Petitioner asserts that the “new arguments provided in [the] Request [are] appropriate” because “Petitioners are permitted in a request for rehearing to address inaccurate characterizations that they may not be able” slip op. at 7
- BurdenDecided for patent owner
“distinction,” and the reference need not describe a “separate during incoming calls state.” Instead, the problem is that Samsung’s in-use display is described as showing information that one of skill in the art would expect to be shown after a call has been answered (i.e., the timer), and Petitioner failed to establish that the information would have been displayed before a call was answered. In this proceeding, “the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). With no showing that the in-use information would be displayed before the call was answered, Petitioner did not carry its burden.” slip op. at 4
NonePatents in suitUS 9,203,940 - Hytera Communications Co. Ltd. v. Motorola Solutions, Inc.No claims unpatentablePTAB · May 13, 2019 · IPR2017-02183 · APJ Trevor M Jefferson · IPR · Final written decision
Claims 7 and 8 were not shown unpatentable under any of the three § 103 grounds because the cited combinations did not teach transmitting on a non-assigned timeslot.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for patent owner
“and the specification to determine whether they expressly or implicitly require a specific order. See Altiris, 318 F.3d at 1369–70. Here, we agree with Patent Owner that the language shows that the results of a step are used in the next step; that is, “step 7[b] ‘preparing to transmit a particular payload type in a timeslot’ [comes before] step 7[c] ‘determining whether the timeslot is a current desired timeslot for the TDMA system,’ because the transmitting device looks at the ‘the timeslot’ identified in the ‘preparing’ step to ‘determin[e]’ whether that timeslot is ‘a current desired timeslot.’” PO Sur-Reply 3–4 (quoting Ex. 1001, cl. 7).” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“We agree with Patent Owner that the ordered steps 7[c] to 7[e] require transmitting on an alternate timeslot, that is, a timeslot that is not an assigned timeslot. PO Resp. 7–9. The plain language of claim 7 states that the preparing step of limitation 7[b] is for “a timeslot,” indicating that it is broader than the assigned timeslot of the TDMA system. In limitation 7[c], the claim expressly requires a determination of whether the timeslot in the preparing step is the “current desired timeslot” (assigned timeslot) and selecting (limitation 7[d]) the appropriate synch pattern. The “selecting” step of claim 7[d] requires: “if the timeslot is the current desired timeslot, select[] a synchronization pattern selected from the first set of synchronization patterns . . . otherwise select[] a synchronization pattern selected from the second set of synchronization patterns . . . .” The synchronization pattern that is selected in limitation 7[d] is then used during transmission in limitation 7[e]. Thus, although the claims and specification do not explicitly refer to an alternate timeslot, the claim requires transmitting on the timeslot that is not the current desired timeslot (assigned timeslot). See PO Resp. 19–20; Ex. 2008 ¶ 89.” slip op. at 23
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia with nexusDecided for patent owner
“arguments are directed to products produced by Petitioner, rather than by Patent Owner, products that were found in an Initial Determination (“ID”) of the International Trade Commission (“ITC”) to infringe challenged claims 7 and 8 of the ’991 patent. Ex. 2009, 192–202. In addition, the Administrative Law Judge in that ID found that Petitioner intentionally copied Patent Owner’s patented technology. Id. at 226–228. That finding was based, in part, upon an adverse inference drawn from the repeated invocation of the Fifth Amendment when former employees of Patent Owner were questioned about allegations that they downloaded confidential documents of Patent Owner shortly before becoming employed by Petitioner. Id. at 241–242 (citing LiButti v. United States, 107 F.3d 110, 123–24 (2d Cir. 1997)). In addition to Patent Owner’s detailed discussion of how Petitioner’s products embody all limitations of the challenged claims, these specific administrative findings support Patent Owner’s position that there is sufficient nexus between its evidence and the challenged claims. PO Resp. 57–62; Institut Pasteur & Universite Pierre et Marie Curie v. Focarino, 738 F.3d 1337, 1347 (Fed. Cir. 2013).” slip op. at 27
- ExcludeMotion to exclude, deniedDenied
“We are not persuaded by this argument. Petitioner’s arguments go to the weight that should accorded to the ID, not to its admissibility. See Liquid Dynamics Corp. v. Vaughan Co., 449 F.3d 1209, 1221 (Fed. Cir. 2006) (“Vaughan’s challenge goes to the weight of the evidence rather than the admissibility of Lueptow’s testimony and analysis.”). As Patent Owner responds, the ITC “determined not to review the portions of the ID’s findings regarding the ’991 patent.” Paper 43, 4. And we agree with Patent Owner that Petitioner’s argument that the Final Determination is subject to approval by the President lacks merit because the President did not act on the Final Determination within the period specified by 19 U.S.C. § 1337(j)(2). Id. at 4–5. The ID recounts evidence that has been considered and evaluated by an objective and disinterested judge, and articulates findings that are relevant to whether there is a sufficient nexus between the challenged claims and Patent Owner’s evidence regarding Petitioner’s products. The ID is also relevant to the issue of copying by Petitioner. Although Petitioner asserts that the ID is prejudicial or confusing, it provides insufficient argument to support those assertions. With respect to Exhibits 2010, 2012–2019, and 2021, Petitioner contends that these exhibits are Hytera advertising and marketing documents, which do not supply sales numbers or third-party praise to prove commercial success. Paper 40, 3–4. Again, this argument relates to the weight to be accorded to that evidence, not to its admissibility. As we note above, we agree with Petitioner that these factors impact the appropriate weight to be accorded to the evidence, and we have accounted for that impact. Finally, we deny Petitioner’s request that Exhibit 2020 should be excluded under Fed. R. Evid. 401 and 402 because Patent Owner’s demonstrative slides in Exhibit 2020 rely on Exhibits 2010, 2012–2019, and 2021. As the Board reminded the parties in its Order granting oral argument, “[d]emonstrative exhibits are not evidence.” Paper 44, 3. Exhibit 2020 is merely a demonstrative and is not evidence.” slip op. at 32
Patent outcomesUS 8,279,991 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,279,991 - Google LLC v. Alex Is The Best, LLCRehearing deniedPTAB · Mar 18, 2019 · IPR2017-02058 · APJ Minn Chung · IPR · Rehearing
The Board denied Google’s rehearing request and left in place the denial of institution for claims 1–3, 10–14, and 21 because the Petition did not sufficiently show the cited references taught the claimed limitations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the party challenging the decision,” and the challenging party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in a paper of record. 37 C.F.R. § 42.71(d). Because Petitioner seeks rehearing of our Decision denying institution of trial based on 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 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“certain teachings in Inoue about the claimed “WSARC.” Req. Reh’g 3. In the Decision, we found that, although the Petition appears to map Inoue’s file server to the claimed “WSARC” by mentioning “WSARC (Inoue’s file server)” (Dec. 16–17 (citing Pet. 17)), aside from that single mention, the Petition does not discuss the term “WSARC” or “website archive and review center” in relation to Inoue, and does not explain adequately why Inoue’s file server teaches or suggests the “WSARC” recited in the claims (id. at 17, 19 (citing Pet. 15–18)). Thus, based on the record presented, we determined that simply stating “a WSARC (Inoue’s file server)” in the Petition without any elaboration does not satisfy Petitioner’s burden required for institution of a review in this case (id. at 19–20 (citations omitted)).” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“At best, Petitioner’s arguments in its Request for Rehearing attempt to remedy the deficiencies in the Petition our Decision identified, by supplementing the arguments in the Petition. A request for rehearing is not a supplemental petition. Nor is it an opportunity to present new arguments or evidence that could have been presented and developed in the first instance in the Petition. As explained in the Decision (Dec. 19–20), it was Petitioner’s burden “from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (emphases added) (citing 35 U.S.C. § 312(a)(3)); see Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“[T]he expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute.” (emphases added)). The record shows that, rather than overlooking any teachings of Inoue or any “background” discussion by Dr. Madisetti, the Decision simply considered the arguments and explanations of the evidence Petitioner presented in the four corners of the Petition, and properly determined that the Petition did not meet this burden required on Petitioner. Dec. 19–20.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“certain teachings in Inoue about the claimed “WSARC.” Req. Reh’g 3. In the Decision, we found that, although the Petition appears to map Inoue’s file server to the claimed “WSARC” by mentioning “WSARC (Inoue’s file server)” (Dec. 16–17 (citing Pet. 17)), aside from that single mention, the Petition does not discuss the term “WSARC” or “website archive and review center” in relation to Inoue, and does not explain adequately why Inoue’s file server teaches or suggests the “WSARC” recited in the claims (id. at 17, 19 (citing Pet. 15–18)). Thus, based on the record presented, we determined that simply stating “a WSARC (Inoue’s file server)” in the Petition without any elaboration does not satisfy Petitioner’s burden required for institution of a review in this case (id. at 19–20 (citations omitted)).” slip op. at 3
§ 103 obviousnessPatents in suitUS 8,581,991 - Apple Inc. v. Qualcomm IncorporatedRehearing deniedPTAB · Mar 14, 2019 · IPR2018-01280 · APJ Scott B Howard · IPR · Rehearing
The Board denied Apple’s rehearing request, leaving in place the denial of institution because it had not overlooked or misapprehended material facts about Brown or the prosecution history.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“a panel will review the decision for an abuse of discretion.” The party requesting rehearing has the burden of showing that the decision from which rehearing is sought should be modified and “[t]he 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.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Dec. 8–9 (emphasis added). Similarly, when weighting the Becton factors, we explicitly found that although the Examiner originally rejected the claims based on Brown, “[f]ollowing an amendment to the claims adding the prompting step along with arguments by the applicant explaining why Brown did not teach that new limitation, the Examiner shifted to new references and no longer relied on Brown.” Id. at 14 (citing Ex. 1002, 142– 149, 156–168, 178–181). In other words, twice we explicitly acknowledged what Petitioner now argues we overlooked.” slip op. at 5
- Strike new argumentNew argument disregardedOther
“For the reasons explained above, we are not persuaded that we misapprehended or overlooked any material facts. Moreover, Petitioner never explicitly nor implicitly addressed the Becton factors in the Petition, and new arguments are not permitted in a request for rehearing absent exceptional circumstances, of which none have been identified here.” slip op. at 8
Discretionary denialPatents in suitUS 7,844,037 - Delphi Technologies, LLC v. Microchip Technology Inc.Rehearing deniedPTAB · Dec 11, 2018 · IPR2017-00864 · APJ Daniel N Fishman · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1, 3–5, 7–9, 11–15, and 18–21 unpatentable because their scope did not require the buffer to store the specified information.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“party challenging the decision,” and, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the record. 37 C.F.R. § 42.71(d). III. DISCUSSION Patent Owner’s Request does not identify any arguments that we “misapprehended or overlooked” let alone “specifically identify” all such matters. Thus, Patent Owner’s Request fails to comply with our rules. Despite this failure of Patent Owner’s Request, we address the substance of Patent Owner’s argument as follows.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“misapprehended any argument. Furthermore, we are unpersuaded that our Decision was in error regarding independent claims 1, 3, 7, 18, and 23 because these claims have a different scope than claims 17, 22, and 24. As Patent Owner correctly noted, our construction of “dedicated USB connection” is “a USB connection that may include some shared physical communication path and includes a buffer for maintaining dedicated address, configuration and response information for the connection.” Dec. 33. Thus, a dedicated USB connection must include a buffer that is capable of storing/maintaining “dedicated address, configuration and response information” regardless of whether such data is actually stored/maintained therein.” slip op. at 3
Claim constructionPatents in suitUS 7,523,243 - Delphi Technologies, LLC v. Microchip Technology Inc.Rehearing deniedPTAB · Dec 11, 2018 · IPR2017-00861 · APJ Daniel N Fishman · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claim 25 unpatentable because its ACR data limitation did not distinguish its scope and the Board had not misapprehended or overlooked the controller argument.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“party challenging the decision,” and, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the record. 37 C.F.R. § 42.71(d). III. DISCUSSION Patent Owner’s Request does not identify any arguments that we “misapprehended or overlooked” let alone “specifically identify” all such matters. Thus, Patent Owner’s Request fails to comply with our rules. Despite this failure of Patent Owner’s Request, we address the substance of Patent Owner’s arguments below.” slip op. at 2
- BurdenDecided for patent owner
“party challenging the decision,” and, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the record. 37 C.F.R. § 42.71(d). III. DISCUSSION Patent Owner’s Request does not identify any arguments that we “misapprehended or overlooked” let alone “specifically identify” all such matters. Thus, Patent Owner’s Request fails to comply with our rules. Despite this failure of Patent Owner’s Request, we address the substance of Patent Owner’s arguments below.” slip op. at 2
NonePatents in suitUS 7,627,708 - Apple Inc. v. Saint Lawrence Communications, LLCRehearing deniedPTAB · Dec 26, 2017 · IPR2017-01244 · APJ Daniel N Fishman · IPR · Rehearing
The Board denied Apple’s rehearing request, leaving in place the denial of institution because Petitioner did not show a reasonable likelihood of proving claims 1–21 and 29–42 unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“review the decision for an “abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision,” and, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the record. 37 C.F.R. § 42.71(d). A request for rehearing is not an opportunity to present new arguments. See id. 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. U.S., 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 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We discern no teaching or suggestion in this text of Salami that the preemphasized signal is used on a perceptual weighting filter. We find no support in the cited portions of Salami for Petitioner’s assertion that the preemphasized signal is first applied to LP analysis and then the same preemphasized signal is perceptually weighted (i.e., applied to a perceptually weighted filter). Petitioner’s argument in the Petition does not explain specifically how the cited text teaches the identified claim limitations and, thus, amounts to little more than an unsupported conclusory remark. Dr. Cohen merely repeats the same argument without providing any further explanation.” slip op. at 4
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We discern no teaching or suggestion in this text of Salami that the preemphasized signal is used on a perceptual weighting filter. We find no support in the cited portions of Salami for Petitioner’s assertion that the preemphasized signal is first applied to LP analysis and then the same preemphasized signal is perceptually weighted (i.e., applied to a perceptually weighted filter). Petitioner’s argument in the Petition does not explain specifically how the cited text teaches the identified claim limitations and, thus, amounts to little more than an unsupported conclusory remark. Dr. Cohen merely repeats the same argument without providing any further explanation.” slip op. at 4
NonePatents in suitUS 6,807,524 - Semiconductor Components Industries, LLC (D/B/A On Semiconductor) v. Power Integrations, Inc.Rehearing deniedPTAB · Dec 21, 2017 · IPR2016-00995 · APJ Daniel N Fishman · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 26 and 27 unpatentable as anticipated by MC33362.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“review the decision for an “abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision,” and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the record. 37 C.F.R. § 42.71(d). A request for rehearing is not an opportunity to present new arguments. See id. 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 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for petitioner
“arguments. Our claim construction made clear in interpreting “multi-function circuit” that we agree with Patent Owner that the circuit is separate and distinct from the recited “control circuit” in the sense that the claim recites two distinct elements. Dec. 18. However, our interpretation further determined that although we agree “that the multi-function circuit and the control circuit are separate and distinct components in the claims, the claim language does not require that the functions performed by the two distinct circuits must be similarly separate and distinct.” Id. at 22. We further observed that, contrary to Patent Owner’s assertions, the Specification of the ’908 patent mentions certain functions of the multi-function circuit that are clearly tightly coupled to the “core regulation” function of the recited “control circuit.” Id. at 24–25 (e.g., shutting down the power supply in response to detecting over-voltage or under-voltage conditions). Thus, our Decision is consistent with our interpretation of “multi-function circuit” and expressly disagrees with Patent Owner’s arguments that the functions of the two circuits must also be separate and distinct.” slip op. at 3
Claim constructionPatents in suitUS 6,538,908
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.