- Intel Corporation v. VLSI Technology LLCRehearing deniedPTAB · Feb 19, 2021 · IPR2020-00527 · APJ Kimberly Mcgraw · IPR · Rehearing
The Board denied Intel’s rehearing requests and left in place its § 314(a) denial of institution in both proceedings based on the Fintiv factors.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“Petitioner has not shown that this change in circumstance warrants modifying (1) the determination that Fintiv factor 4 weighs in favor of exercising discretion to deny institution or (2) the determination, after weighing all factors and taking a holistic view of the relevant circumstances, to exercise discretion to deny institution. Several of the claims challenged in each Petition are still at issue in the parallel proceeding, and the combinations of references asserted by Petitioner in the district court largely overlap with the combinations of references asserted in the Petitions. Petitioner has not identified any differences among the claims that have been dropped and the claims that remain as a reason to modify our Decision. See Fintiv, Paper 11 at 13 (“if a petition involves the same prior art challenges but challenges claims in addition to those that are challenged in the district court, it may still be inefficient to proceed because the district court may resolve validity of enough overlapping claims to resolve key issues in the petition”).” slip op. at 5
Discretionary denialPatents in suitUS 6,633,187 - Intel Corporation v. VLSI Technology LLCRehearing deniedPTAB · Feb 19, 2021 · IPR2020-00526 · APJ Kimberly Mcgraw · IPR · Rehearing
The Board denied Intel’s rehearing requests, leaving institution denied in both proceedings based on its Fintiv analysis of the parallel litigation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“noted that, “[e]ven if Petitioner’s contentions are true, Petitioner has not shown these contentions will avoid adjudication of Intel’s invalidity defenses” in the related Western District of Texas litigation. Dec. Inst. 13. In light of the record at the time, we found that Petitioner’s arguments in connection with Fintiv factor 6 did not weigh against exercising our discretion to deny institution. Id. at 13–15. Accordingly, we maintain our finding that Petitioner’s argument does not weigh against exercising our discretion to deny institution.” slip op. at 4
Discretionary denialPatents in suitUS 6,633,187 - Intel Corporation v. VLSI Technology LLCRehearing deniedPTAB · Feb 11, 2021 · IPR2020-00582 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Intel’s rehearing request and maintained its discretionary denial of institution under Fintiv, despite weighing Factor 6 neutrally.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“The change in circumstances regarding the trial date does not persuade us to change our decision to exercise our discretion to deny institution. Even if we were to institute an inter partes review proceeding, the deadline for issuing a final written decision could be no earlier than February 2022. Thus, at this time, it appears likely that trial will occur many months before any final written decision would likely issue in this proceeding. Therefore, we maintain our finding that Fintiv Factor 2” slip op. at 4
Discretionary denialPatents in suitUS 7,292,485 - Netflix, Inc. v. Divx, LLCRehearing deniedPTAB · Dec 2, 2020 · IPR2020-00511 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied DivX’s rehearing request, leaving the institution decision in place because the rule remained effective and Dr. McDaniel’s testimony was supported on the record.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- Expert testimonyPetitioner expert creditedDecided for petitioner
“assertions regarding Dr. McDaniel’s testimony. Dr. McDaniel testified that (a) Chen teaches video data streams, (b) “[a]s was widely known in the art, for example as disclosed by Grab-333,[1] a [person of ordinary skill in the art] would have understood that video data streams were comprised of a series of video frames,” and (c) a person of ordinary skill in the art “would have understood that Chen teaches a plurality of frames of video are encrypted using at least one scrambling key/control word.” Ex. 1003 ¶ 112;” slip op. at 3
NonePatents in suitUS 9,184,920 - Cooler Master Co., Ltd. v. Aavid Thermalloy LLCRehearing deniedPTAB · Sep 17, 2020 · IPR2019-00338 · APJ Ken B Barrett · IPR · Rehearing
The Board denied Cooler Master’s rehearing request, leaving intact the determination that claim 8 was not shown obvious over Morikawa and Takahashi because the petition did not establish the claimed top shoulder.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“that “Petitioner has not demonstrated that Morikawa discloses the recited [top shoulder limitation].” Final Dec. 45. In other words, our determination was that Petitioner had not met its burden of proving that a limitation was taught by the prior art, and therefore had not met its burden of proving that the challenged claim is unpatentable.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“In the Final Decision, we stated: Petitioner’s implied construction is that the claimed “shoulder” is the top end of a column. This is inconsistent with the claim language which recites that the “hollow column . . . has a top shoulder disposed near a top end” thus indicating that the top shoulder is not merely the top end of the column but a structure “near” and discernable from the top end of the hollow column.” slip op. at 8
- Strike new argumentNew argument disregardedDecided for patent owner
“based on a misapprehension of the arguments associated with a figure . . . [from page 57] in the Petition,” and that “the Board incorrectly inferred Petitioner’s ‘implied construction’ for the term, ‘[a top] shoulder,’ in claim 8 of the ’680 patent as ‘the top end of a column.’” Req. Reh’g 1 (citing Final Dec. 45). Petitioner further argues that it “has always and consistently pointed to the corner portions located around the top outer rim of the hollow column as meeting the limitation of ‘a top shoulder,’ as shown [in the two figures from pages 56 and 57 of Petition and reproduced above].” Id. at 5–6.” slip op. at 8
Claim construction§ 103 obviousnessPatents in suitUS 7,100,680 - Cooler Master Co., Ltd. v. Aavid Thermalloy LLCRehearing deniedPTAB · Sep 16, 2020 · IPR2019-00334 · APJ Linda E Horner · IPR · Rehearing
The Board denied Petitioner’s rehearing request, leaving in place its determination that claim 1 was not shown unpatentable over Morikawa, Takahashi, and Nakamura.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
- Expert testimonyPatent owner expert creditedDecided for patent owner
“criticism of Morikawa’s heat pipe in its Reply, Petitioner failed to provide any expert testimony to support its argument as to how a person of ordinary skill in the art would understand Nakamura. Instead, Petitioner argued that “Nakamura describes some of its advantages over Morikawa’s ‘metal pipe 6’ only” and that “Nakamura is not describing any disadvantages at all associated with Morikawa’s ‘conventional spacer’ by ‘welding and fixing a metal column to upper and lower inner surfaces of the panel.” Pet. Reply 31–32 (citing Nakamura at 4; Morikawa, 4:31‒33). Patent Owner, however, provided expert testimony as to how a person having ordinary skill spacers. PO Resp. 57 (citing Ex. 2002 ¶ 160). We credited this testimony in our Final Decision. Final Dec. 47 (citing PO Resp. 58); id. at 47–48 (agreeing with Patent Owner’s argument).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“improvement to Morikawa’s heat pipe, and, in fact, found that Nakamura’s teaching of an improvement and criticism of Morikawa’s configuration would have led one having ordinary skill in the art to replace all of Morikawa’s spacers with Nakamura’s concavities. See Final Dec. 47–48 (agreeing with Patent Owner’s arguments as to the manner in which Morikawa would have been modified in light of Nakamura’s disclosure); id. at 69–70 (finding, in the context of independent claim 3, that Petitioner provided adequate reasoning, premised on Nakamura’s criticism, to substitute Nakamura’s concavity for the pipe of Morikawa). Petitioner’s citation to pages 58–59 is misplaced to the extent Petitioner relies on this portion of the Petition for a reason to modify Morikawa to replace only some of Morikawa’s spacers with Nakamura’s concavities. Pages 58–59 of the Petition address Petitioner’s proposed modification of Morikawa to substitute Nakamura’s concavities for Morikawa’s pipes to meet the “depression” limitation found earlier in claim 1. See Pet. 55, 62–63 (Petitioner explaining that the proposed combination is the modification of Morikawa’s pipes “to solve these problems.”). The “spacer” limitation appears later in claim 1 and, similarly, Petitioner’s purported reasoning associated with that spacer limitation appears later in the Petition. See Pet. 71–75. The Petition’s discussion of the earlier “depression” limitation does not include a reason to replace only some of Morikawa’s spacers with Nakamura’s concavities.” slip op. at 5
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,100,680 - Cooler Master Co., Ltd. v. Aavid Thermalloy LLCRehearing deniedPTAB · Sep 16, 2020 · IPR2019-00337 · APJ Linda E Horner · IPR · Rehearing
The Board denied the petitioner’s rehearing request, leaving claim 11 not shown unpatentable because the petition did not adequately explain why only some Morikawa spacers would be replaced with Nakamura depressions.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“As explained in the Final Decision, upon review and consideration of the arguments and evidence submitted by the parties, Petitioner failed to show that the combined teachings of Morikawa and Nakamura would have led one having ordinary skill in the art to the combination of conventional spacers, as discussed in Morikawa, and depressions formed by Nakamura’s concavities, as recited in claim 11. Petitioner’s arguments in the Request for Rehearing do not persuade us that we erred in our application of the facts as presented by Petitioner to the standard for determining obviousness, as set forth in KSR, in finding that Petitioner failed to show unpatentability of claim 11. C. Conclusion For the foregoing reasons, Petitioner has not shown that we misapprehended or overlooked Petitioner’s arguments or evidence in determining that Petitioner did not show by a preponderance of evidence that challenged claim 11 of the ’240 patent is unpatentable.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“not in accordance with the law.” Request 2; see also id. at 6 (arguing that “Petitioner need only provide ‘a reason’ as to why a [person having ordinary skill in the art] would substitute Nakamura’s depressions for some, but not all, of Morikawa’s columns in Morikawa’s device.”). Petitioner discusses the proposed replacement of Morikawa’s “through path” spacers with Nakamura’s concavities, but Petitioner does not discuss why Morikawa’s remaining spacers would also not be similarly replaced. In other words, as explained above, Petitioner provided no reason in its Petition to explain why one would have modified Morikawa by substituting only some spacers with Nakamura’s concavities, when Nakamura teaches making all of its spacers using abutting concavities. Pet. 88‒89 (citing Pokharna ¶ 93, which cross-references itself); Final Dec. 57 (describing Nakamura). As explained in the Final Decision, upon review and consideration of the arguments and evidence submitted by the parties, Petitioner failed to show that the combined teachings of Morikawa and Nakamura would have led one having ordinary skill in the art to the combination of conventional spacers, as discussed in Morikawa, and depressions formed by Nakamura’s concavities, as recited in claim 11. Petitioner’s arguments in the Request for Rehearing do not persuade us that we erred in our application of the facts as presented by Petitioner to the standard for determining obviousness, as set forth in KSR, in finding that Petitioner failed to show unpatentability of claim 11.” slip op. at 11
- BurdenNot shown unpatentable
“2. Petitioner’s Burden As also explained in the Final Decision, “Petitioner bears the burden of proving unpatentability of the claims challenged in the Petition, and that burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner must establish by a preponderance of the evidence that the challenged claims are unpatentable. 35 U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d) (2018).” Final Dec. 9.” slip op. at 5
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,066,240 - Boragen, Inc. v. Syngenta Participations AGRehearing deniedPTAB · Aug 10, 2020 · IPR2020-00124 · APJ Timothy G Majors · IPR · Rehearing
The Board denied Boragen’s rehearing request and left in place the denial of institution under § 325(d), finding no abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“whether to institute trial for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be found if there was an erroneous interpretation of law, a factual finding not supported by substantial evidence, or an unreasonable judgment in weighing relevant factors. 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). “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). The rehearing request “must specifically identify all matters the [requesting] party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for patent owner
“Petitioner contends the Board “failed to exercise its discretion under 325(d)” (Req. 2), but this is plainly inconsistent with the Decision, because we did exercise discretion under § 325(d) and denied the Petition because it was based on substantially the same prior art as already considered by the Office. See Dec. 6–35 (analyzing, inter alia, the asserted prior art, the prosecution history, declarant testimony, and the precedential Becton, Dickinson factors under a framework explained further in Advanced Bionics, in route to denial under § 325(d)).1 Petitioner continues, arguing the Board “improperly” slip op. at 3
- Expert testimonyPetitioner expert discountedDecided for patent owner
“expert” may opine on the unpatentability of the challenged claims generally represents one factor that we account for in exercising our discretion under § 325(d) (e.g., insofar as it may comprise “additional evidence” addressing prior art that the Office may have already considered). Becton, Dickinson at 17–18. It is not, however, a super-factor that overrides others in the manner urged by Petitioner that would, in effect, require we institute inter partes review so long as the challenge is accompanied by “new” testimony slip op. at 4
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“precedential after the Petition was filed, and requests “additional briefing to directly address the Advanced Bionics factors” if this Request is denied. Req. 1 n.1. Petitioner’s request for additional briefing is denied. Additional briefing is unnecessary because the arguments and evidence already submitted by the parties is sufficient for us to make a determination based on the two-part framework in Advanced Bionics. Furthermore, we have reviewed the arguments based on Advanced Bionics submitted by Petitioner on rehearing and do not find them persuasive. Req. 8–10 (“Petitioner highlights such errors herewith separately under the guidelines set forth in Advanced Bionics”). Moreover, Advanced Bionics became precedential six weeks before we denied institution in this case, where discretionary denial” slip op. at 10
Discretionary denialPatents in suitUS 10,130,096 - PTAB · Jul 9, 2020 · IPR2019-01393 · APJ Ryan H Flax · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no misapprehended or overlooked issue and no abuse of discretion in instituting review of all challenged claims on Grounds 1 and 2.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing of a Board decision has the burden to show that the decision should be modified. Pursuant to 37 C.F.R. § 42.71(d), the rehearing request must identify, specifically, 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. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c) (2019). 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 an unreasonable judgment is made in weighing relevant factors. In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Here, a new and relevant Board decision in Fintiv was entered subsequent to our Denial Decision and during the course of the Board’s consideration of the Petitioner’s Request for Rehearing; a decision that has been designated precedential and is now controlling. Fintiv, Paper 11. The Board has regularly considered intervening case law in reconsidering a decision on institution. See Shenzhen Zhiyi Tech. Co. Ltd. v. iRobot Corp., IPR2017-02061, Paper 11 (PTAB May 1, 2018) (granting a request rehearing when considering the intervening Supreme Court decision in SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018)); Comcast Cable Comm., LLC v. Realtime Adaptive Streaming LLC, IPR2019-00760, Paper 45 (PTAB Jan. 17, 2020) (granting-in-part patent owner’s motion to terminate an instituted inter partes review in view of the intervening precedential decision in GoPro, Inc. v. 360Heros, Inc., IPR2018-01754, Paper 38 (PTAB Aug. 23, 2019) (precedential)). Foundationally, “administrative agencies possess inherent authority to reconsider their decisions, subject to certain limitations, regardless of whether they possess explicit statutory authority to do so.”” slip op. at 5
Discretionary denialPatents in suitUS 8,944,740 - Microsoft Corporation v. Ipa Technologies Inc.Rehearing deniedPTAB · Apr 3, 2020 · IPR2019-00840 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Microsoft’s rehearing request, leaving institution denied because it did not show error in the Board’s § 325(d) analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for patent owner
“Petitioner did not argue, in the Petition, that FIPA97 was released as individual parts. Petitioner’s Rehearing Request (page 8) cites to the Petition at page 20 and Exhibit 1054. Page 20 of the Petition, however, contains Petitioner’s argument that FIPA97 was made publicly available as a single document, as discussed above. It does not include any argument or suggestion that FIPA97 was released as individual parts. Additionally, Exhibit 1054 is not cited on page 20 of the Petition in the discussion of FIPA97 nor does it appear that Exhibit 1054 was cited anywhere in the Petition. Thus, because Petitioner did not argue, in the Petition, that FIPA97 was released as individual parts, we could not have overlooked that argument. Petitioner’s contention of error in our determination that FIPA97 was involved during examination of the ’128 patent application is premised upon finding that FIPA97 existed as individual parts. Because Petitioner fails to demonstrate that we overlooked an argument that was not made, we are not persuaded of error.” slip op. at 4
Discretionary denialPatents in suitUS 7,036,128
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.