- Platform Science, Inc. v. Omnitracs, LLCRehearing grantedPTAB · Sep 3, 2021 · IPR2020-01612 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board granted rehearing and instituted IPR on all petition grounds for claims 1–4, 6–9, 11, 12, and 15, finding a reasonable likelihood of prevailing.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“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. 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 › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“preliminary stage, we determine that Petitioner demonstrates a reasonable likelihood of prevailing with respect to claim 1.” slip op. at 44
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The only dispute pertaining to claim construction at this stage of the proceeding is whether the phrase “a process for creating said response message,” recited in claim 1, is governed by 35 U.S.C. § 112 ¶ 6.6 Petitioner 6 As noted above, Petitioner raises a second claim construction issue in its Rehearing Request. See Req. Reh’g 12–15 (asserting that the claims require only one instance of copying information from a formatted message to a response message based on which formatted message was received). Petitioner did not raise this issue in the Petition, Patent Owner has not had an contends that the phrase should be interpreted as a means-plus-function limitation, whereas Patent Owner contends that it should not. Compare Pet. 2–7 (advocating for a means-plus-function construction), with Prelim. Resp. 9–11 (advocating for an ordinary and customary meaning). At this stage of the proceeding, the dispute between the parties regarding the construction of this claim phrase does not impact our Decision. Accordingly, we need not construe expressly any claim terms for the purpose of this Decision.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“VI. ANALYSIS Legal Standards – Anticipation “[A] claim is anticipated ‘if each and every limitation is found expressly or inherently in a single prior art reference.’” King Pharm., Inc. v. Eon Labs., Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998)). Anticipation is a question of fact, In re Gleave, 560 F.3d 1331, 1334–35 (Fed. Cir. 2009), assessed from the perspective of one of ordinary skill in the art, see Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (“the dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching that every claim element was disclosed in that single reference” (alteration in original) (quotation omitted)).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,925,308 - Miami International Holdings, Inc. / Miami International Securities Exchange, LLC et al. v. Nasdaq Ise, LLCRehearing grantedPTAB · Feb 15, 2019 · CBM2018-00021 · APJ Kristi L R Sawert · CBM · Rehearing
The Board granted rehearing on the ethics rules and granted Interrogatories 4 and 5 and Document Request 2, while denying rehearing on the remaining specified discovery requests.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters it believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision, we review the” slip op. at 2
- Additional discoveryAdditional discovery, grantedGranted in part
“Upon reconsideration, we agree with Patent Owner that the timing of Dr. Hendershott’s preparation and the editing of common paragraphs 18–36 is unclear on the current record. For example, Dr. Hendershott testified that he could not remember whether Fish suggested that he provide a history of Wall Street and the exchanges, which are embodied in paragraphs 18–36. See Ex. 1062, 53:14–19. Dr. Hendershott also testified that he received from Fish versions of his declaration containing edits, but did not remember whether any of those edits were substantive in nature. See id. at 51:19–25, 52:8–22. Dr. Hendershott also did not review the edits to his declarations and thus was arguably not prepared to testify as to the circumstances surrounding the creation and editing of the common paragraphs. See id. at 58:2–8. Thus, we grant Interrogatories 4 and 5 and Discovery Request 2, as relevant information only in the possession of Fish and Reed Smith (Bloomberg Factor 3). We deny Document Request 3, however, because we remain unpersuaded that it is relevant to showing that confidential information could have found its way from Fish to Reed Smith. Ord. 11. In particular, Document Request 3 relates to information flowing from Reed Smith to Dr. Hendershott, and is therefore not relevant to whether Fish used or revealed information to Reed Smith relating to its prosecution of the Nasdaq patents.” slip op. at 12
NonePatents in suitUS 6,618,707 - Miami International Holdings, Inc. / Miami International Securities Exchange, LLC et al. v. Nasdaq Ise, LLCRehearing grantedPTAB · Feb 15, 2019 · CBM2018-00020 · APJ Kristi L R Sawert · CBM · Rehearing
The Board granted rehearing on the ethics rules and three discovery requests, denied it on five others, and ordered additional responses and production.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters it believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision, we review the 2 The parties filed identical papers in CBM2018-00020, CBM2018-00021, and CBM2018-00031. Patent Owner requested to file motions for additional discovery in CBM2018-00029, CBM2018-00030, and CBM2018-00032 on the same basis. See Ex. 2016. We held that request in abeyance. See Paper 21. The requested additional discovery would be substantially the same in all of these proceedings, and, thus, we include CBM2018-00029, CBM2018- 00030, and CBM2018-00032 in this order as well. See Ex. 2016. For efficiency, we only refer to the papers filed in CBM2018-00021. decision for an abuse of discretion. 37 C.F.R. § 42.71(c). 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) (citations omitted).” slip op. at 2
- Additional discoveryAdditional discovery, grantedGranted in part
“Upon reconsideration, we agree with Patent Owner that the timing of Dr. Hendershott’s preparation and the editing of common paragraphs 18–36 is unclear on the current record. For example, Dr. Hendershott testified that he could not remember whether Fish suggested that he provide a history of Wall Street and the exchanges, which are embodied in paragraphs 18–36. See Ex. 1062, 53:14–19. Dr. Hendershott also testified that he received from Fish versions of his declaration containing edits, but did not remember whether any of those edits were substantive in nature. See id. at 51:19–25, 52:8–22. Dr. Hendershott also did not review the edits to his declarations and thus was arguably not prepared to testify as to the circumstances surrounding the creation and editing of the common paragraphs. See id. at 58:2–8. Thus, we grant Interrogatories 4 and 5 and Discovery Request 2, as relevant information only in the possession of Fish and Reed Smith (Bloomberg Factor 3). We deny Document Request 3, however, because we remain unpersuaded that it is relevant to showing that confidential information could have found its way from Fish to Reed Smith. Ord. 11. In particular, Document Request 3 relates to information flowing from Reed Smith to Dr. Hendershott, and is therefore not relevant to whether Fish used or revealed information to Reed Smith relating to its prosecution of the Nasdaq patents.” slip op. at 12
NonePatents in suitUS 8,386,371 - Square, Inc. v. Think Computer CorporationRehearing grantedPTAB · Feb 9, 2016 · CBM2014-00159 · APJ Michael W Kim · CBM · Rehearing
The Board granted Patent Owner’s rehearing request insofar as it addressed the assertions in the decision, but denied it in all other respects; the prior analysis remained unchanged.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“A request for rehearing can only point out that which the Board misapprehended or overlooked, and will be reviewed for abuse of discretion. 37 C.F.R. § 42.71(d). Moreover, as the moving party, the burden of persuasion falls on Patent Owner. 37 C.F.R. § 42.20(c). The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and where each matter was previously addressed in a motion, an opposition, or a reply. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).” slip op. at 1
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“are unpersuaded that they would alter our construction. For example, Patent Owner asserts that the claim limitation “any particular transaction” requires that “bidirectional account” be construed as allowing an account to function simultaneously as both a merchant account and a purchaser account under all transactions. We disagree, primarily because we are unclear as to what Patent Owner means by “under all transactions.” The relevant limitation of independent claim 1 reads “wherein the first account and the second account are adapted to selectively function as either a merchant or a purchaser account during any particular transaction.” We find that “[a]ny particular transaction” means any specific transaction, and is not necessarily limited to all transactions going forward, and find further that, logically, an account need only function in “merchant mode” or “purchaser mode” for that particular transaction; otherwise the account would be in the awkward position of performing a transaction with itself. Moreover, we are unclear as to why the same account cannot function as both, depending on the transaction, as an account is merely a repository within which funds are held, and whether the account is in “merchant mode” (i.e., the ability to send funds from the account) or “purchaser mode” (i.e., the ability to send funds to the account) does not alter the fundamental repository nature of the account itself. A similar analysis of the cited portions of the prosecution history and Specification yields similar conclusions. For example, Patent Owner’s discussion of the prosecution history on pages 4 and 5 of the Request for Rehearing do not amount to Patent Owner providing an explicit definition of “selectively function,” “during any particular transition,” or any other claim term as meaning “simultaneously”; nor do Patent Owner’s statements rise to the level of a clear and unmistakable disclaimer with respect to the meaning of the claim terms.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“2. whether Dalzell fails to meet the claims’ requirements Based on Patent Owner’s proposed claim construction of “bidirectional accounts,” Patent Owner asserts that Dalzell does not disclose “bidirectional accounts.” Req. 7‒10. As we are unpersuaded, however, that the Board misapprehended or overlooked the items identified by Patent Owner in construing “bidirectional accounts,” we are unpersuaded that our analysis of Dalzell and “bidirectional accounts” set forth on pages 28 to 29 of the Final Written Decision should be modified in any way. See Dec. 29 (“[W]e find that a more logical reading of paragraph 59 of Dalzell is that a buyer, from a particular account, can add a seller feature to that particular account, without the need to create a whole new account. Such a finding is supported by extensive analysis and testimony by Dr. Sadeh-Koniecpol, with explicit citations to Dalzell, which we find credible, reasonable, and persuasive. Ex. 1002 ¶¶ 147-164 (citing Ex. 1006 ¶¶ 9, 27, 49, 57, 61, 82, 85, 87, 132, 163, Figs. 1A, 1B).”)” slip op. at 9
Claim construction§ 103 obviousnessPatents in suitUS 8,396,808
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.