- 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 - 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 - PTAB · Jun 16, 2020 · IPR2019-01393 · APJ Ryan H Flax · IPR · Rehearing
Granted Sand Revolution II, LLC’s rehearing request and instituted IPR of claims 1, 2, 4, 6–14, and 16–20 on two obviousness grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“As noted in Fintiv, we consider six factors when taking “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv, Paper 11 at 6. For the reasons discussed above, the Fintiv factors weigh against invoking our discretion to deny institution. Considering the Fintiv factors as part of a holistic analysis, we are not persuaded that the interests of the efficiency and integrity of the system would be best served by invoking our authority under 35 U.S.C. § 314(a) to deny institution of a potentially meritorious Petition. For the reasons discussed above, we modify our initial decision denying institution. On rehearing, after considering the factors outlined in the precedential order in Fintiv, we decline to deny institution under § 314(a). Accordingly, we grant Petitioner’s Request for Rehearing. We consider the merits of the Petition with respect to the threshold for institution below.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“demonstrating a reasonable likelihood that it would prevail in showing that claims of the ’740 patent are unpatentable. At this preliminary stage of the proceeding and on the record before us, Petitioner’s case is strong on most challenged claims. Fintiv, Paper 11 at 14–15 (“[I]f the merits of a ground raised in the petition seem particularly strong on the preliminary record, this fact has favored institution.”). Although we recognize the record can change during trial, as discussed in detail below, Petitioner has made a sufficiently persuasive showing, on the record presently before us, that the prior art references cited in the Petition teach or suggest all limitations of most challenged claims. We determine, on this preliminary record, that Petitioner has set forth a reasonably strong case for the obviousness of most challenged claims. Thus, this factor weighs in favor of not exercising discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“system” would have been readily understandable to the skilled artisan on its face, and the combination of these words into the recited phrase does not introduce any different meaning or ambiguity. The fact that the mobile storage module comprises the “integrated actuating system,” as well as the inclusion of the word “integrated” in this disputed term, each supports that such a system is a part of the module; in other words, it is built into the module as proposed by Petitioner. Because the fact that the actuating system is built into the mobile storage module is evident from the claim language itself, defining the claim term expressly to include this concept is unnecessary, as it would be redundant of the term’s plain meaning as understood by the skilled artisan. Nothing in the intrinsic record, or other evidence submitted by Petitioner, is inconsistent with this conclusion. Furthermore, regarding the proposed self-deployment concept, we also conclude it is unnecessary to add this concept to define the claim term in view of the plain meaning of “integrated actuating system.” Per the plain language of the claim term, the system that actuates the mobile storage module, i.e., moves it between a lowered and raised position, is integrated into the mobile storage module. The mobile storage module’s integrated components move, or actuate, the mobile storage module, per the plain meaning of the claim language. Thus, the system that is expressly recited as being a part of the module (integrated), actuates the module; the module actuates itself. Therefore, adding “self-deploying” to specially define the term “integrated actuating system” is unnecessary. Nothing in the intrinsic record is inconsistent with this conclusion. See Ex. 1002, 83–91 (arguing the characteristic of “self-deploying” invokes the inclusion of “an integrated actuating system,” but not the converse). Because Petitioner’s proposed construction of “integrated actuating system” would add unnecessary and undesirable redundancy to the claims, we determine that it is unnecessary to expressly construe this claim term at this stage of the proceedings.” slip op. at 32
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“V. CONCLUSION Petitioner demonstrates a reasonable likelihood of prevailing at trial in demonstrating that claims 1, 2, 4, 6–10, 12–14, and 16–20 of the ’740 patent would have been obvious over the prior art combinations set forth in Grounds 1 and 2. Our decision at this stage derives from our review of the preliminary record before us. This decision does not reflect a final determination on the patentability of the claims. ORDER Accordingly, it is hereby: ORDERED that, Petitioner’s Request for Reconsideration is granted; FURTHER ORDERED that, pursuant to 35 U.S.C. § 314, an inter partes review of claims 1, 2, 4, 6–14, and 16–20 of the ’740 patent, in accordance with Grounds 1 and 2 in the Petition, is hereby instituted; and” slip op. at 56
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 8,944,740 - Lornic Design, Inc. v. Humboldt B.V.No claims unpatentablePTAB · May 26, 2020 · IPR2019-00346 · APJ Hyun J Jung · IPR · Final written decision
Claims 1–5 and 7–22 were not shown unpatentable because Petitioner did not establish that Machacek, Breitschmid, or Plamper was analogous art.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“Bonenberger has significant education and experience in industrial engineering and with snap-fit applications. Ex. 1012 ¶¶ 2–5; Ex. 1013; Ex. 2040, 63:24–64:11, 66:13–67:12. Mr. Bonenberger’s testimony about snap-fit connections and their application is potentially helpful in determining the scope of the knowledge of one of ordinary skill in the art and whether the asserted references could be combined. Regarding whether the testimony lacks sufficient basis in facts or data, Mr. Bonenberger’s declaration expressly indicates that Mr. Bonenberger is opining based on his knowledge and experience and providing his opinion of what one of ordinary skill in the art would have understood or would have done. See Ex. 1012 ¶¶ 11 (“I have also relied upon my education, training and experience in the fields of mechanical attachments in general and, in particular, snap-fit attachment development for product applications.”), 14 (“I agree that a PHOSITA will have a bachelor’s degree in mechanical engineering or equivalent work experience.”), 16 (“A PHOSITA would make no such distinction.”), 18 (“For example, there is nothing in the relative forces experienced by the snap-fit in the application of the ‘225 that would lead a PHOSITA to believe . . . ”), 19 (“A PHOSITA would have easily understood . . . ”), 20 (“A PHOSITA would have easily understood . . . ”), 21 (“A PHOSITA would have easily understood . . . ”), 22 (“Both of these are well within the understanding of a PHOSITA.”), 23 (“Such a construction would be well within the understanding of a PHOSITA . . . ”), 25 (“In reviewing Machacek, Breits[ch]mid and Plamper, there is nothing in these patents that would cause a PHOSITA to . . . ”); Ex. 2040, 68:14–21 (Mr. Bonenberger answering “yes” to the question “[s]o, this is an example of your talking from the perspective of what a PHOSITA would understand?”). Mr. Bonenberger has reliably applied the principles and methods to the facts of this proceeding. Furthermore, even if Mr. Bonenberger does not meet the parties’ definition of one of ordinary skill in the art, his testimony, in combination with other record evidence, is useful in determining what he believes one of ordinary skill in the art may have known at the relevant time period about snap-fit connections and their application. Thus, we deny Patent Owner’s Motion to Exclude with respect to Exhibit 1012.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on the full record before us, we see no reason to disturb our preliminary finding regarding the level of ordinary skill in the art. Accordingly, we maintain and reaffirm that one of ordinary skill in the art would have “a bachelor’s degree in mechanical engineering or with equivalent work experience.” Inst. Dec. 10–11 (citing Pet. 11; Ex. 1003 ¶ 46). This level of skill in the art is consistent with the disclosure of the ’225 patent and the prior art of record.” slip op. at 21
- Prior constructionPrior construction adoptedDecided for petitioner
“adopted the interpretations quoted above for “female receiving end,” “narrowed entrance,” “the receiving space being substantially larger than the narrowed entrance channel along the longitudinal axis of the whip,” and “the narrowed entrance channel is directed facing away from the profiled side of the whip.” Inst. Dec. 12. Patent Owner agrees with Petitioner that the terms listed in the Petition should have the same interpretations as determined by the district court. PO Resp. 5 (citing Pet. 12). As shown above in emphases, some interpretations include “during use of the brush element.” Petitioner argues that “[n]owhere does the Court require, nor did the Board adopt a definition that requires, that the ‘use’ be the specific cleaning of animal carcasses shown in the ’225 patent.” Pet. Reply 10. We do not need to decide whether the use is specific to cleaning animal carcasses because, even if the use were not so specific, for the reasons set forth below in Section G., we would still determine that Machacek, Breitschmid, and Plamper are not in the same field of endeavor as the ’225 patent, are not reasonably pertinent to the problem facing the inventor of the ’225 patent, and would not have logically commended themselves to the inventor’s attention in considering the problem of the ’225 patent. The full record before us, thus, provides no reason to modify our preliminary decision to adopt the district court’s interpretations for the terms listed and discussed above. We, therefore, continue to apply the above-identified district court’s interpretations for (1) “female receiving space,” (2) “narrowed entrance channel” and “narrowed entrance,” (3) “the receiving space being substantially larger than the narrowed entrance channel along the longitudinal axis of the whip,” and (4) “the narrowed entrance channel is directed facing away from the profiled side of the whip” to resolve the parties’ dispute. Pet. 12–14; Ex. 1011, 16.” slip op. at 23
- Obviousness (§103) › Analogous artNon analogous artNot shown unpatentable
“been brought to the attention of the ordinary skilled artisan, the application of Machacek to Debaere, despite the differences in male and female connections and the forces involved, would have been a matter of ordinary skill to a “person of ordinary creativity.” See Pet. 17–19; Pet. Reply 2–8; see also Tr. 45:6–47:2 (Patent Owner’s counsel addressing ordinary skill). However, Petitioner does not argue sufficiently or present sufficient evidence that Machacek logically would have commended itself to the inventor’s attention in considering the problem of the ’225 patent. See Pet. 17–19; Pet. Reply 2–8; Ex. 1003 ¶ 60. Specifically, Petitioner does not present sufficient argument and evidence why one of ordinary skill in the art would have looked to Machacek for a solution to the problem addressed by the ’225 patent or why Machacek’s pinwheel testing device that reduces the risk of transferring blood borne disease logically would have commended itself to an inventor’s attention when considering the problem of replacing brush elements attached to a rotatable body that imparts rotation to the brushes rotatably attached to it. Clay, 966 F.2d at 659. Even considering the structural similarities of Debaere and Machacek, which is Petitioner’s basis for combining the references, the full record does not explain why or how one of ordinary skill in the art would have considered Machacek at all so that the asserted structural similarities would have been perceived or Machacek would have prompted applying a particular connection to Debaere. Scientific Plastic Prods., Inc. v. Biotage AB, 766 F.3d 1355, 1359 (Fed. Cir. 2014) (“The pertinence of the reference as a source of solution to the inventor’s problem must be recognizable with the foresight of a person of ordinary skill, not with the hindsight of the inventor’s successful achievement.”).” slip op. at 47
Patent outcomesUS 9,433,225 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,433,225 - 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 - Microsoft Corporation v. Ipa Technologies Inc.Rehearing deniedPTAB · Apr 3, 2020 · IPR2019-00838 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Microsoft’s rehearing request, leaving institution denied under § 325(d) because Microsoft did not show the Board overlooked arguments made in the petition.
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 › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“and the prior art relied upon in Petitioner’s challenges to the ’128 patent, Petitioner did not address 35 U.S.C. § 325(d) in the Petition (Paper 1). Instead, Petitioner made two critical representations—(1) that the Examiner of the ’128 patent “did not have FIPA97 before him, or any other FIPA reference for that matter” (Pet. 1) and (2) that despite there being seven “Parts” to FIPA97, “FIPA97 was made publicly available as a single document” and was “developed and published as a single, integrated work.” Pet. 20 (citing Ex. 1055 (FIPA97 Table of Contents for Parts 1–7)); Ex. 1026, 5 (Foundation for Intelligent Physical Agents, “Resolution of Munich meeting”). In the Petition (Paper 1), Petitioner never contended that FIPA97 was published or available as separate and distinct parts, such that access to one part might not mean access to each other part. Rather, Petitioner’s sole statement regarding separate parts was that it filed FIPA97 as seven separate exhibits “due to its size and numbering schedule.” Id. at 20. Accordingly, on the record presented, we agreed with Petitioner’s representation and we found that FIPA97 (Exs. 1006–1012) constitutes a single document, which we then found was involved during examination of the ’128 patent application. Inst. Dec. 15.” slip op. at 3
Discretionary denialPatents in suitUS 7,036,128 - Microsoft Corporation v. Ipa Technologies Inc.Rehearing deniedPTAB · Apr 3, 2020 · IPR2019-00839 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Microsoft's rehearing request, leaving institution denied under § 325(d) because it did not show the Board overlooked arguments about FIPA97 or misweighed the Becton factors.
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 › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“and the prior art relied upon in Petitioner’s challenges to the ’128 patent, Petitioner did not address 35 U.S.C. § 325(d) in the Petition (Paper 1). Instead, Petitioner made two critical representations—(1) that the Examiner of the ’128 patent “did not have FIPA97 before him, or any other FIPA reference for that matter” (Pet. 1) and (2) that despite there being seven “Parts” to FIPA97, “FIPA97 was made publicly available as a single document” and was “developed and published as a single, integrated work.” Pet. 20 (citing Ex. 1055 (FIPA97 Table of Contents for Parts 1–7)); Ex. 1026, 5 (Foundation for Intelligent Physical Agents, “Resolution of Munich meeting”). In the Petition (Paper 1), Petitioner never contended that FIPA97 was published or available as separate and distinct parts, such that access to one part might not mean access to each other part. Rather, Petitioner’s sole statement regarding separate parts was that it filed FIPA97 as seven separate exhibits “due to its size and numbering schedule.” Id. at 20. Accordingly, on the record presented, we agreed with Petitioner’s representation and we found that FIPA97 (Exs. 1006–1012) constitutes a single document, which we then found was involved during examination of the ’128 patent application. Inst. Dec. 15.” slip op. at 3
Discretionary denialPatents in suitUS 7,036,128 - Mylan Pharmaceuticals Inc. v. Sanofi-Aventis Deutschland GmbHAll claims unpatentablePTAB · Apr 2, 2020 · IPR2018-01670 · APJ Hyun J Jung · IPR · Final written decision
Claim 1 is unpatentable as obvious over Burroughs and Steenfeldt-Jensen; Petitioner’s motion to exclude is denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for patent owner
“preliminary finding regarding the level of ordinary skill in the art. Accordingly, we maintain and reaffirm that one of ordinary skill in the art “would have had at least a bachelor’s degree in mechanical engineering, or an equivalent degree” and “would have understood the basics of medical-device design and manufacturing, and the basic mechanical elements (e.g., gears, pistons) involved in drug-delivery devices.” Dec. to Inst. 15 (quoting Pet. 15).” slip op. at 11
- ExcludeMotion to exclude, deniedDenied
“Therefore, we are not persuaded to exclude the exhibits or expressly limit their purpose pursuant to FRE 105 and Petitioner’s Motion is denied with respect to these exhibits.” slip op. at 93
Patent outcomesUS 8,679,069 unpatentableNonecites Phillips · KSR · GrahamPatents in suitUS 8,679,069 - Bedra Inc. / Berkenhoff GmbH et al. v. Ki-Chul SeongRehearing deniedPTAB · Mar 27, 2020 · IPR2018-01415 · APJ Ryan H Flax · IPR · Rehearing
The Board denied the Patent Owner’s rehearing request, leaving in place its final decision that claims 1–13 and 15 were unpatentable as obvious based on Tomalin.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Final Decision 49. Although Dr. Medlin’s testimony on such issues was rife with equivocation (“probably”), we are not persuaded that what he otherwise testified to is not a certainty, i.e., that the starting materials and processing steps of Tomalin’s Example 1 would necessarily result in an EDM wire with a cracked surface with grains of α, γ, and ε brass materials, as claimed. See supra cites to Final Decision and evidence of record. Patent Owner has presented no arguments or facts in its Request for Rehearing that persuade us that we have misapprehended or overlooked any evidence, or misapplied any law, or that our Final Decision is otherwise incorrect. For the reasons set forth above, Patent Owner’s Request for Rehearing is denied.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
§ 103 obviousnessPatents in suitUS 8,822,872 - Firstspear, LLC v. Lineweight, LLCRehearing deniedPTAB · Mar 25, 2020 · IPR2019-01170 · APJ Patrick R Scanlon · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because Petitioner did not show that combining Fegen and Stevens would have made the claimed openings compatible with the asserted properties.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“37 C.F.R. § 42.71(d), which provides: A party dissatisfied with a decision may file a single request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. 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. We review our Decision under an abuse of discretion standard. 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 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“motivated to adhere Fegen’s exterior garment layer to a substrate in order to provide a substrate material having water-proofing or scent blocking properties as taught by Stevens.” Pet. 31–32 (citing Ex. 1002 ¶ 55; Ex. 1006, 2:1–4, 3:50–53). In addition, the Petition asserts that one of ordinary skill in the art “would understand that the slits in Fegen extend all the way through the exterior layer and the substrate in order to permit attachments to be more easily secured to Fegen’s garment.” Id. at 35 (citing Ex. 1002 ¶ 62; Ex. 1005, Fig. 3). In the Decision, we determined that Petitioner had failed to establish sufficiently that it would have been obvious to one of ordinary skill in the art to combine Fegen and Stevens in the manner proposed. Dec. 14–16. In particular, we determined that providing slits or openings in the substrate of the proposed combination of Fegen and Stevens “would defeat, or at least greatly diminish, any water-proofing or scent blocking properties of the substrate.” Id. at 15. Thus, we disagreed with Petitioner’s contention that one of ordinary skill in the art would have been motivated to add a substrate to Fegen’s garment for the purpose of providing water-proofing or scent blocking properties. Id.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We disagree with this broad assertion because the Petition does not demonstrate sufficiently why providing openings in the substrate, as the claims require, would not have led one of ordinary skill in the art to consider such openings detrimental to the rationale of providing water-proofing or scent blocking properties. Petitioner’s assertion also ignores the fact that the corresponding openings in the substrate would allow sweat and odor to pass through freely, thereby decreasing the effectiveness of water-proofing and scent blocking properties. Although no evidence of record appears to state expressly that openings of the size claimed would allow sweat and odor to pass freely through the substrate, this fact would have been readily apparent to one of ordinary skill in the art. Thus, the Rehearing Request fails to demonstrate that a reasonable fact finder could not have arrived at this fact, such that our determination is supported by substantial evidence. See OSI Pharm., 939 F.3d at 1381–82.” slip op. at 4
- BurdenDecided for patent owner
“Petitioner also argues that “[t]here is no evidence supporting a difference in effectiveness of the water-proofing and scent blocking properties of the substrate whether the substrate is a solid sheet of material or the substrate contains slots or openings in the same location as the exterior layer.” Reh. Req. 3. This argument, however, attempts to improperly shift the burden of persuasion away from Petitioner. “In an [inter partes review], 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) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). The burden of persuasion rests with Petitioner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). Thus, Petitioner has the burden of presenting evidence supporting its assertion that there is no difference in effectiveness of the water-proofing and scent blocking properties of the substrate with or without openings.” slip op. at 5
§ 103 obviousnessPatents in suitUS 9,173,436
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.