- PTAB · Feb 9, 2021 · IPR2020-00892 · APJ Hyun J Jung · IPR · Rehearing
The Board denied Wildcat Licensing WI LLC’s rehearing request, finding no abuse of discretion or overlooked matter in granting institution of the challenges.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if substantial evidence does not support a factual finding, or if an unreasonable judgment is made 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). Also, 37 C.F.R. § 42.71(d) sets forth, in relevant part that: 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” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“As we determined in the Decision, Petitioner showed a reasonable likelihood of prevailing with respect to at least one of the challenged claims in its challenges based on IBM. Petitioner argued that “IBM’s ‘[H]all effect sensor’ indicates tool ‘TORQUE’ to IBM’s controller 6 so that IBM’s controller requires IBM’s tool to achieve the ‘set torque’ at each fastening location in the ‘correct process sequence.’” Pet. 35 (citing Ex. 1003, 81– 82). Petitioner also argued that IBM teaches that an operator “must also wait for the set torque to be achieved on each screw before moving onto the next screw.” Id. at 38 (citing Ex. 1003, 82) (emphases added). Petitioner’s declarant opined that “IBM’s microcontroller 6 measures the applied torque with ‘a [H]all effect sensor.’” Ex. 1002 ¶ 111 (citing Ex. 1003, 81–82). Petitioner’s arguments and declarant testimony found support in the preliminary record. As quoted in the Decision, IBM itself states that “controller circuit 6 . . . sense[s] when correct torque is achieved by linking As discussed in the Decision, IBM also states that that “[t]he problem is to ensure that four screws 5 fixing two product parts 3 & 4 together are tightened to a specific torque in a specific sequence.” Dec. 19–20 (quoting from Ex. 1003, 82) (emphasis added); see also Ex. 1002 ¶¶ 52–53 (asserting what IBM teaches). Also, the only figure of IBM shows “TORQUE” being sent to controller circuit 6. Ex. 1003, 81; see also Ex. 1002 ¶ 108 (“IBM diagrammatically illustrates the tool’s sensed ‘TORQUE’ as a signal input being received by IBM’s microcontroller 6 from the torque-sensing ‘[H]all effect sensor in the driver 11’ ([Ex. 1003] p. 82).”). Thus, Petitioner’s arguments, Petitioner’s declarant testimony, and IBM itself sufficiently showed at the preliminary stage that IBM senses or measures correct torque by linking into a Hall effect sensor in driver 11. Pet. 35–36; Ex. 1002 ¶¶ 52–53, 108; Ex. 1003, 82. Further, Patent Owner’s arguments for IBM raised a factual question regarding what IBM teaches or suggests to one of ordinary skill in the art, and such issues are best decided on a full record. See Prelim. Resp. 26–49. We agree that Patent Owner does not have a burden to show IBM does not measure torque; however, for purposes of institution, Petitioner sufficiently showed that IBM senses or measures torque.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019- 01469, Paper 6 at 7–11 (PTAB. Feb. 13, 2020) (Decision Denying Institution) (precedential). Req. Reh’g 13–15 (citing Prelim. Resp. 54–64; Dec. 27). Specifically, Petitioner contends that the Decision “conflates or overlooks the two separate requirements in the first part of Advanced Bionics’ framework (art or arguments)” because we concluded “only that ‘Petitioner’s arguments were not previously presented to the Office.’” Id. at 14. However, even assuming arguendo, that substantially the same art was previously presented to the Office, the record and Petitioner sufficiently show that the Examiner materially erred for the reasons discussed in the Board decision reversing the rejection based on Gass alone. The record also shows that the Examiner did not address that error subsequently before allowing the claims. Specifically, the Examiner failed to identify the Office. Additionally, as discussed in the Decision, Petitioner’s demonstration of a reasonable likelihood of prevailing on its challenges based on IBM, as well as the Federal Circuit’s determination in SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018) were considered in our analysis of determining whether to institute review. Dec. 28–29. We determined that our discretion to deny institution under 35 U.S.C. § 325(d) was not sufficiently implicated so that § 325(d)’s statutory purpose would be undermined by instituting on all of Petitioner’s challenges. Id. at 28–29. Further, even if exercise of our discretion under § 325(d) to deny the challenges based on Gass was warranted, the record provided no reason for extending our discretion under § 325(d) to the IBM-based challenges to deny the entire Petition under the circumstances presented in this proceeding. Id. at 29.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“The Decision also considered the prior Board decision regarding a rejection based on Gass. Dec. 30 (discussing Ex. 1018). As discussed above and in the Decision, the preliminary record did not indicate that Gass teaches away from the challenged claims. Thus, we do not agree that the Decision overlooked or misapprehended the prior Board decision regarding the rejection based on Gass and overlooked or misapprehended that Petitioner did not establish a reasonable likelihood of prevailing on its challenges based on Gass.” slip op. at 9
§ 103 obviousnessDiscretionary denial - PTAB · Sep 16, 2020 · IPR2018-00755 · APJ Hyun J Jung · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1, 3, 5, 7, 10, and 25 unpatentable under each of three §103 combinations; claim 8 was not shown unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“the burden of showing a decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d); see also Req. Reh’g 1 (quoting from the rule). Therefore, Patent Owner bears the burden of establishing that we misapprehended or overlooked the matters that it requests that we review.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“Also, the body of independent claims 1 and 25 recite structurally complete inventions, and do not rely on the word “token,” from the preamble, for any antecedent basis of terms in the body of the claim. The deletion of this preamble language would not affect the structure of the claimed inventions and confirms that the language of the preamble, which names the machine or manufacture claimed as a token, and states its intended use, is not limiting. See Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358-59 (Fed. Cir. 2010). Further, because the bodies of the claims, reciting an “integrated circuit chip” (claim 1) and “storage section” (claim 25), fully define the structure of the claimed tokens and do not rely on the “token” name of the invention to recite the limitations of their structural components, the term the meaning of the claims. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). Because the term “token” does not require construction, and is of no significance in determining the meaning of the claim language, we did not adopt Patent Owner’s additional limitation of a token being required to begin play of a game. B. Whether the Board misapprehended Lee and the showing that the Board” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableDecided for petitioner
“Final Written Decision, which finds that each of the combinations (Levy and Lee, Katoh and Lee, and Mawle and Lee) discloses the limitations of claims 1, 3, 5, 7, 10, and 25 (Final Dec. 19–33, 36–48, 50–62, 64–65), that one of ordinary skill in the art would have combined the references in the manner asserted by Petitioner and as claimed (id. at 34–35, 48–49, 62–65), and thus,” slip op. at 6
Claim construction§ 103 obviousnessPatents in suitUS 7,338,377 - PTAB · Sep 16, 2020 · IPR2018-00754 · APJ Hyun J Jung · IPR · Rehearing
The Board denied Patent Owner’s rehearing request and left in place its determination that claim 9 was unpatentable over White and Lee under § 103(a).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The party filing a request for rehearing of a final written decision has the burden of showing a decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d); see also Req. Reh’g 1 (quoting from the rule). Therefore, Patent Owner bears the burden of establishing that we misapprehended or overlooked the matters that it requests that we review.” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“In our Final Written Decision, we explained that the Specification does not support Patent Owner’s proposed interpretation of the term “token” as being disk-shaped, and determined that “we need only determine that the term ‘token’ does not include an ‘action figure.’” Final Dec. 11–12. The full record indicated to us that, even if we adopted Patent Owner’s proposed interpretation of “token” as an “item required to begin play of a game,” Petitioner had still shown by a preponderance of the evidence that claim 9 is unpatentable over White and Lee. As described in our Final Written Decision, we found that “the teachings of White related to tag 5 in base portion 4a of character 4 used in the toy of Figure 1 support Petitioner’s argument that character 4 teaches a ‘game piece with built-in IC chip.’” Final Dec. 32. We understood that “Petitioner is proposing to modify White so that tag 5 is detachable and results in a ‘token with built-in IC chip,’” so that “the modified White character 4 would have base 4a with detachable tag 5 received in recessed portion 3.” Id. at 37 (citing Pet. 65–66; Dec. to Inst. 23; Pet. Reply 24); see also id. at 41–42 (determining that” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“We also found that “Lee . . . supports Petitioner’s declarant testimony that one of ordinary skill in the art would have modified White so that its tag 5 is detachable in the same manner as Lee so that ‘various action figures can be used with the token.’” Final Dec. 42 (citing Ex. 1002 ¶ 150). Petitioner, thus, showed by a preponderance of the evidence that Lee teaches or suggests a method of attaching a component to a figure that one of ordinary skill in the art would have applied to White’s tag 5 for the reason asserted by Petitioner.” slip op. at 9
Claim construction§ 103 obviousnessPatents in suitUS 7,001,276 - Parrot S.A. / Parrot Drones S.A.S. et al. v. Qfo Labs, Inc.Rehearing deniedPTAB · Aug 11, 2020 · IPR2018-01690 · APJ Hyun J Jung · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 13–17 unpatentable and the motion to amend granted for claims 1–10 but denied for substitute claims 21–23.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified as set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: 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. See also Req. Reh’g. 4 (quoting, in part, 37 C.F.R. § 42.71(d)). With this in mind, we address Patent Owner’s arguments below.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Owner’s Motion to Amend in its Rehearing Request. Compare Mot. 11–12, with Req. Reh’g. 7. We considered these arguments in our Decision, and Patent Owner’s arguments express disagreement with our interpretation of “orientation control scheme” but do not show how an argument was overlooked or misapprehended. See Final Dec. 74, 84–86. Patent Owner supplements its prior arguments with contentions that we construed “position” as a verb, not a noun. See Req. Reh’g. 6. Patent Owner does not identify where these additional contentions were previously presented, as required under 37 C.F.R. § 42.71(d). Thus, Patent Owner has failed to show that we misapprehended or overlooked these arguments. See id. Even if the additional contentions had been previously presented, our Decision considered Patent Owner’s proposed interpretation of “orientation control scheme.” See Final Dec. 85 (“Even under Patent Owner’s proposed interpretation of ‘orientation control scheme’ (Mot. 11–12), Petitioner persuades us that Louvel and Nagamitsu teach the final recitation of proposed substitute claim 21.”). Patent Owner’s arguments do not show how an argument was overlooked or misapprehended. In any event, we remain convinced that “Patent Owner’s proposed interpretations are not the broadest reasonable interpretation in view of the Specification of the ’292 patent because the Specification does not use these terms or describe state vectors.” See Final Dec. 74.” slip op. at 4
- Expert testimonyPetitioner expert creditedDecided for petitioner
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“We decline to consider Patent Owner’s constitutional challenge because the issue has been addressed by the Federal Circuit in Arthrex, 941 F.3d at 1328 (expressly limiting its holding “to those cases where final written decisions were issued (prior to Arthrex)”). See also Caterpillar Paving Prod. Inc. v. Wirtgen Am., Inc., 957 F.3d 1342, 1342–1343 (May 6, 2020) (“The court in Arthrex considered and rejected that argument, expressly limiting its holding ‘to those cases where final written decisions were issued.’”) (quoting 941 F.3d at 1340). Our Decision was entered February 20, 2020, after the Federal Circuit issued its October 2019 decision in Arthrex (see 941 F.3d at 1320).” slip op. at 10
Claim constructionPatents in suitUS 9,904,292 - Choirock Contents Factory Co., Ltd. v. Spin Master Ltd.Rehearing deniedPTAB · Jun 22, 2020 · IPR2019-00901 · APJ Hyun J Jung · IPR · Rehearing
The Board denied Spin Master’s rehearing request and left institution of IPR on claims 1–5 in place, finding no overlooked or misapprehended matter or abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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 believed 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). We review our Decision under an abuse of discretion standard. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if based on an erroneous interpretation of law, if a factual finding is not supported by” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“(PTAB Apr. 2, 2019), Petitioner and the prior petitioner have a relationship (i.e., that Petitioner is a real party in interest (“RPI”), or is in privy, with the prior petitioner), and that relationship is relevant to the analysis of General Plastic factor 1. Decision 13. However, as also noted in the Decision, General Plastic does not mandate any particular weighing of the factors or that the Board deny institution when any specific factors weigh in favor of a patent owner. Id. at 14–15. Instead, General Plastic explicitly states that “there may be circumstances where multiple petitions . . . against the same claims of a patent should be permitted, and that such a determination is dependent on the facts at issue in the case.” General Plastic at 18. As indicated in the Decision: [I]n addition to the factors addressed above, Choirock’s Petition was filed on March 29, 2019, and a joint motion to terminate IPR2018-01672 was filed on April 16, 2019, which was granted on April 29, 2019. The sequence of events leading to the termination of IPR2018-01672 indicates that Patent Owner knew of Choirock’s instant Petition and, thus, should have filed updated mandatory notices in that proceeding to make the Board aware that there was a petition related to IPR2018- 01672, so that the Board could have better determined if termination as to all parties in IPR2018-01672 was appropriate. Patent Owner also filed its mandatory notices in this case the day before the parties in IPR2018-01672 filed a joint motion to terminate. Thus, based on the facts of this proceeding and IPR2018- 01672, we are not convinced that Choirock is engaged in abusive, strategic serial petitioning, the situation meant to be addressed by General Plastic. On balance, the factors weigh in favor of declining to exercise our discretion under § 314(a) to deny institution. Further, the facts of this proceeding and IPR2018-01672 do not persuade us that Patent Owner has been prejudiced. Decision 15 (emphasis added). Thus, despite the fact that there is a RPI or privy relationship between Petitioner and the prior petitioner, we considered the aforementioned facts of this proceeding, and concluded that General Plastic factor 1 did not weigh in favor of exercising our discretion to deny institution. Id. at 13, 15.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“The present paper presents a separate and distinct basis for denial of institution than application of the General Plastic factors. Whether a petitioner should be permitted to obtain institution of an IPR substantially the same as a prior-filed IPR—to which the party was an RPI or privy—is a fundamental basis for denial of institution, as discussed in detail below. Because Choirock was an RPI and privy with Mattel for the Mattel IPR, Choirock should be prohibited from obtaining institution of a second IPR. For purposes of a clear record, Spin Master brings a second basis for denial of institution under either or both of §§ 314(a) and 325(d) due to Choirock being an RPI and privy with Mattel for the Mattel IPR. As such, the arguments and evidence presented in this paper should be fully considered by the Board. (Paper 14 at 2). The Board overlooked this argument. In the Institution Decision, the Board only provided an analysis applying the General Plastic factors but failed to consider whether or not an RPI/privy should be permitted to file a substantially identical IPR Petition. (Paper 17 at 10-16). Reh. Req. 7–8 (emphasis added). We do not agree that we overlooked this argument. Instead, in the Decision, we rejected this argument and refused to adopt a per se rule that an RPI or privy of a previous petitioner is automatically barred from filing a substantially identical petition. Decision 13 (“Patent Owner does not point us to any rule or case law that prevents an RPI or privy of a previous petitioner, who is not barred under § 315(b), from filing its own petition or that prevents an RPI or privy from joining a proceeding.”).” slip op. at 10
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“On September 26, 2019, we issued a Decision Granting Institution of Inter Partes Review. Paper 17 (“Decision” or “Dec.”). In the Decision, we: (1) instituted an IPR of the ’508 patent; and (2) denied Petitioner’s Motion for Joinder because the proceeding which Petitioner sought to join (i.e., IPR2018-01672) had been terminated and was no longer pending before the Board.4 Id. at 2.” slip op. at 3
Discretionary denialPatents in suitUS 9,975,058 - Choirock Contents Factory Co., Ltd. v. Spin Master Ltd.Rehearing deniedPTAB · Jun 22, 2020 · IPR2019-00900 · APJ Hyun J Jung · IPR · Rehearing
The Board denied Spin Master’s rehearing request, leaving institution in place because it had not shown that the Board misapprehended or overlooked an issue or abused its discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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 believed the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“(PTAB Apr. 2, 2019), Petitioner and the prior petitioner have a relationship (i.e., that Petitioner is a real party in interest (“RPI”), or is in privy, with the prior petitioner), and that relationship is relevant to the analysis of General Plastic factor 1. Decision 13. However, as also noted in the Decision, General Plastic does not mandate any particular weighing of the factors or that the Board deny institution when any specific factors weigh in favor of a patent owner. Id. at 14–15. Instead, General Plastic explicitly states that “there may be circumstances where multiple petitions . . . against the same claims of a patent should be permitted, and that such a determination is dependent on the facts at issue in the case.” General Plastic at 18. As indicated in the Decision: [I]n addition to the factors addressed above, Choirock’s Petition was filed on March 29, 2019, and a joint motion to terminate IPR2018-01672 was filed on April 16, 2019, which was granted on April 29, 2019. The sequence of events leading to the termination of IPR2018-01672 indicates that Patent Owner knew of Choirock’s instant Petition and, thus, should have filed updated mandatory notices in that proceeding to make the Board aware that there was a petition related to IPR2018- 01672, so that the Board could have better determined if termination as to all parties in IPR2018-01672 was appropriate. Patent Owner also filed its mandatory notices in this case the day before the parties in IPR2018-01672 filed a joint motion to terminate. Thus, based on the facts of this proceeding and IPR2018- 01672, we are not convinced that Choirock is engaged in abusive, strategic serial petitioning, the situation meant to be addressed by General Plastic. On balance, the factors weigh in favor of declining to exercise our discretion under § 314(a) to deny institution. Further, the facts of this proceeding and IPR2018-01672 do not persuade us that Patent Owner has been prejudiced. Decision 15 (emphasis added). Thus, despite the fact that there is a RPI or privy relationship between Petitioner and the prior petitioner, we considered the aforementioned facts of this proceeding, and concluded that General Plastic factor 1 did not weigh in favor of exercising our discretion to deny institution. Id. at 13, 15.” slip op. at 6
- Other 314aDecided for petitioner
“We do not agree that we overlooked this argument. Instead, in the Decision, we rejected this argument and refused to adopt a per se rule that an RPI or privy of a previous petitioner is automatically barred from filing a substantially identical petition. Decision 13 (“Patent Owner does not point us to any rule or case law that prevents an RPI or privy of a previous petitioner, who is not barred under § 315(b), from filing its own petition or that prevents an RPI or privy from joining a proceeding.”). After considering Patent Owner’s arguments for rehearing, we determine Patent Owner has not carried its burden of showing that we misapprehended or overlooked any matter or that the Decision granting institution of inter partes review was an abuse of discretion.” slip op. at 11
Discretionary denialPatents in suitUS 9,868,073 - Choirock Contents Factory Co., Ltd. v. Spin Master Ltd.Rehearing deniedPTAB · Jun 22, 2020 · IPR2019-00897 · APJ Hyun J Jung · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no overlooked or misapprehended matter and no abuse of discretion in instituting review.
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 believed 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). We review our Decision under an abuse of discretion standard. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if based on an erroneous interpretation of law, if a factual finding is not supported by” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“(PTAB Apr. 2, 2019), Petitioner and the prior petitioner have a relationship (i.e., that Petitioner is a real party in interest (“RPI”), or is in privy, with the prior petitioner), and that relationship is relevant to the analysis of General Plastic factor 1. Decision 13. However, as also noted in the Decision, General Plastic does not mandate any particular weighing of the factors or that the Board deny institution when any specific factors weigh in favor of a patent owner. Id. at 14–15. Instead, General Plastic explicitly states that “there may be circumstances where multiple petitions . . . against the same claims of a patent should be permitted, and that such a determination is dependent on the facts at issue in the case.” General Plastic at 18. As indicated in the Decision: [I]n addition to the factors addressed above, Choirock’s Petition was filed on March 29, 2019, and a joint motion to terminate IPR2018-01672 was filed on April 16, 2019, which was granted on April 29, 2019. The sequence of events leading to the termination of IPR2018-01672 indicates that Patent Owner knew of Choirock’s instant Petition and, thus, should have filed updated mandatory notices in that proceeding to make the Board aware that there was a petition related to IPR2018- 01672, so that the Board could have better determined if termination as to all parties in IPR2018-01672 was appropriate. Patent Owner also filed its mandatory notices in this case the day before the parties in IPR2018-01672 filed a joint motion to terminate. Thus, based on the facts of this proceeding and IPR2018- 01672, we are not convinced that Choirock is engaged in abusive, strategic serial petitioning, the situation meant to be addressed by General Plastic. On balance, the factors weigh in favor of declining to exercise our discretion under § 314(a) to deny institution. Further, the facts of this proceeding and IPR2018-01672 do not persuade us that Patent Owner has been prejudiced. Decision 15 (emphasis added). Thus, despite the fact that there is a RPI or privy relationship between Petitioner and the prior petitioner, we considered the aforementioned facts of this proceeding, and concluded that General Plastic factor 1 did not weigh in favor of exercising our discretion to deny institution. Id. at 13, 15.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Patent Owner additionally argues: Spin Master presented a second argument, independent from the General Plastic analysis, that the present IPR should be denied because Choirock is an RPI/privy of Mattel and filed a substantially identical petition to Mattel: The present paper presents a separate and distinct basis for denial of institution than application of the General Plastic factors. Whether a petitioner should be permitted to obtain institution of an IPR substantially the same as a prior-filed IPR—to which the party was an RPI or privy—is a fundamental basis for denial of institution, as discussed in detail below. Because Choirock was an RPI and privy with Mattel for the Mattel IPR, Choirock should be prohibited from obtaining institution of a second IPR. For purposes of a clear record, Spin Master brings a second basis for denial of institution under either or both of §§ 314(a) and 325(d) due to Choirock being an RPI and privy with Mattel for the Mattel IPR. As such, the arguments and evidence presented in this paper should be fully considered by the Board. (Paper 14 at 2). The Board overlooked this argument. In the Institution Decision, the Board only provided an analysis applying the General Plastic factors but failed to consider whether or not an RPI/privy should be permitted to file a substantially identical IPR Petition. (Paper 17 at 10-16).” slip op. at 10
Discretionary denialPatents in suitUS 8,500,508 - Parrot S.A. / Parrot Drones, S.A.S. et al. v. Qfo Labs, Inc.Rehearing deniedPTAB · Jun 12, 2019 · IPR2018-01690 · APJ Hyun J Jung · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution of IPR on claims 1–10 and 13–17 unchanged because no overlooked or misapprehended matter was shown.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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.” slip op. at 2
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“patent for which review is sought is available for inter partes review and that the petitioner is not barred or estopped from requesting an inter partes review challenging the patent claims on the grounds identified in the petition.” As noted by Patent Owner, Petitioners certified that they were not barred or estopped from requesting inter partes review of the ’292 patent. Pet. 96; Prelim. Resp. 11; Reh’g Req. 8–9. Our rule 104(a) only requires a certification and does not require explanation, argument, or evidence to support the certification. Patent Owner properly raised the issue of standing in its Preliminary Response. Prelim. Resp. 10–18. The Decision, thus, analyzed and reviewed the record to determine if Petitioners are barred under § 315(a)(1) from requesting inter partes review of the ’292 patent for the reasons raised by Patent Owner. Dec. to Inst. 8–13. We determined that, as applied to the circumstances of this proceeding, 35 U.S.C. § 315(a)(1) does not bar Petitioners from challenging the ’292 patent. Id.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“First, Patent Owner does not identify where this argument previously was made, and our review of the Preliminary Response indicates only arguments based on § 315(a)(1) or case law regarding § 315(b) were presented. See, e.g., Prelim. Resp. 10–17. Patent Owner did not argue we should exercise our discretion under 35 U.S.C. § 325(d) (see Prelim. Resp. passim), and because this argument was not previously made, we could not have misapprehended or overlooked it (see 37 C.F.R. § 42.71(d)). Even if arguments based on § 325(d) had been previously presented, we would not have exercised our discretion under § 325(d) based on our previous Decision for Case IPR2016-01550 which determined that certain claims of the challenged patent were shown to be unpatentable and because the ’292 patent is subject to a terminal disclaimer in view of the patent challenged in IPR2016-01550. See Ex. 1002, 92–96 (terminal disclaimer filed and approved in the prosecution history file of the ’292 patent).” slip op. at 11
Discretionary denialPatents in suitUS 9,904,292 - PTAB · Apr 12, 2018 · IPR2017-01576 · APJ James J Mayberry · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, holding that it considered the preliminary responses and could institute on all claims in a ground after finding the threshold likelihood for at least one claim.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When considering a request for rehearing a decision instituting trial, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the 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. 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). We further note that 37 C.F.R. § 42.71(d) states: 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.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Director may not authorize an inter partes review unless a petition demonstrates “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (emphasis added); see ’1574 Req. Reh’g 4. In our ’1574 Decision, we analyzed a representative claim for each of the seven grounds asserted in the ’1574 Petition. See ’1574 Dec. on Inst., 15–37. Similarly, in our ’1576 Decision, we analyzed a representative claim for each of the four grounds asserted in the ’1576 Petition. See ’1576 Dec. on Inst., 15–36. In its Requests, Schlumberger does not dispute that Halliburton has established a reasonable likelihood of prevailing at trial with respect to at least one of the claims challenged for each of the instituted grounds in each proceeding. Schlumberger fails to explain persuasively how the language of 35 U.S.C. §§ 313 and 314 guarantees more than an analysis of one claim in our institution decision, given the plain reading of § 313 and § 314(a) or how we abused our discretion based on our interpretation of 35 U.S.C. § 313 and § 314(a).” slip op. at 4
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“We are also unpersuaded by Schlumberger’s arguments that we somehow “violate[d] . . . due-process guarantees by instituting this proceeding without performing a meaningful analysis of Patent Owner’s substantive arguments” and “failed to provide Patent Owner with notice of the facts and arguments that support the[] decision to institute trial.” ’1574 Req. Reh’g 7. As noted above, Schlumberger does not dispute that Halliburton has established a reasonable likelihood of prevailing at trial with respect to the representative claims for each ground on which trial was instituted. Also, Schlumberger does not assert that our Decisions failed to address any of its arguments directed to those representative claims. Schlumberger has an opportunity to be heard with respect to other instituted claims (and, indeed, the claims expressly addressed in the Decisions) in its Patent Owner Responses in these two proceedings. Our not addressing arguments directed to claim 26 in IPR2017-01574 or claim 41 in IPR2017- 01576 does not deprive Schlumberger from making the same (or different) arguments with respect to these two claims in the respective Patent Owner Responses. Further, as to “notice of the facts and arguments” with respect to claim 26 in IPR2017-01574 or claim 41 in IPR2017-01576, the Petitions and supporting evidence in these proceedings provide Schlumberger with the requisite notice as to these claims.” slip op. at 6
NonePatents in suitUS 9,322,260 - PTAB · Feb 9, 2018 · IPR2017-01577 · APJ Jeremy M Plenzler · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, leaving institution in place because Petitioner showed a reasonable likelihood of prevailing on at least one challenged claim in each petition.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“III. STANDARD OF REVIEW When considering a request for rehearing, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the 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. 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). We further note that 37 C.F.R. § 42.71(d) states: 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.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedDecided for petitioner
“have the right to file a preliminary response to the petition . . . that sets forth reasons why no inter partes review should be instituted based upon the failure of the petition to meet any requirement of this chapter” (35 U.S.C. § 313) and that trial cannot be instituted “unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition” (35 U.S.C. § 314(a)).” slip op. at 4
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“We are also unpersuaded by Patent Owner’s argument that we somehow “violate[d] . . . due-process guarantees by instituting this proceeding without performing a meaningful analysis of Patent Owner’s substantive arguments” and “failed to provide Patent Owner with notice of the facts and arguments that support the[] decision to institute IPR.” Req. Reh’g 10. As noted above, there is no dispute that Petitioner has established a reasonable likelihood of prevailing at trial on the challenges to claim 26 of the ’543 patent or claims 1 and 28 of the ’133 patent, or that our Decisions failed to address any argument directed to those claims. That is the basis for our Decisions (i.e., Petitioner has established a reasonable likelihood of success at trial on at least its challenges to claim 26 of the ’543 patent and claims 1 and claim 28 of the ’133 patent).” slip op. at 5
NonePatents in suitUS 8,905,133
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.