- VF Outdoor, LLC v. Cocona, Inc.Rehearing deniedPTAB · Dec 9, 2019 · IPR2018-00190 · APJ Kristina M Kalan · IPR · Rehearing
The Board denied VF Outdoor’s rehearing request, leaving intact the determination that claims 27, 28, 30, 32, 33, and 35–37 are unpatentable and claims 38 and 39 are not shown unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. THE REQUEST FOR REHEARING In pertinent part, 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. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. Moreover, “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).” slip op. at 2
- ExcludeOther
“We are not persuaded of good cause. First, during Petitioner’s opening portion of the Oral Hearing, we specifically questioned Petitioner about the combination’s MVTR, to which Petitioner replied “those MVTR ranges are disclosed by Dutta” and “the issue is when you switch out a different particle which is the same class of particles, they’re particles that adsorb or trap substances, they’re molecular filter particles, would there be a reasonable expectation of success? Our expert opined that it would be.” Tr. 25:15–23. Petitioner’s proposed new evidence addresses an element of Petitioner’s case-in-chief—whether Petitioner’s obviousness combination meets the MVTR limitation of claim 27. The panel’s questions about the MVTR limitation and Patent Owner’s responsive comments at the Oral Hearing are not good cause justifying submission of new evidence at the rehearing stage to fill a gap in Petitioner’s case-in-chief. Second, the evidence Petitioner seeks to submit, i.e., Dr. Haggquist’s testimony that “an active particle … may be replaced by any other active particle to obtain a substantially similar result” and that “all other active particles are capable of improving the transmission of vapor through the water-proof cured base material” does not explicitly address whether swapping Haggquist’s particles with Dutta’s particles would result in the claimed MTVR range. Req. 14–15. On the basis of the explanation presented in the Rehearing Request alone, we cannot properly ascertain the significance of this testimony as it relates to claim 27. Moreover, we view Petitioner’s request to introduce new evidence in its Rehearing Request as an attempt to supplement the arguments presented in the Petition. A request for rehearing is not a supplemental petition. Nor is it an opportunity to present new arguments or evidence that could have been presented and developed in the first instance in the Petition. For example, Petitioner had the opportunity in the Petition to present evidence regarding the MVTR of the proposed combination, but did not do so. It would be improper, at this stage in the proceeding, to allow Petitioner to introduce additional evidence, and explanations thereof, in an attempt to bolster its original argument in the Petition, which, as discussed previously, did not meet its burden of proof with regard to the MVTR limitation. See Dec. 36. Even if we were to allow Petitioner to submit its additional evidence, we are not persuaded that it would be sufficient to correct the deficiencies of the original Petition. Consequently, we are not persuaded there is good cause to allow Petitioner to submit Exhibit 1060, and we exercise our authority under 37 C.F.R. § 42.7(a) to expunge Exhibit 1060.” slip op. at 9
NonePatents in suitUS 8,945,287 - Opec Engineering Co., Ltd. D/B/A Opecmade, Inc. v. Berkenhoff GmbHInstitution deniedPTAB · Dec 9, 2019 · IPR2019-01090 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution because the petition showed a reasonable likelihood on only a limited portion of the challenges, making review of all claims and grounds inefficient.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“that we should exercise our discretion to deny institution under § 314(a). As discussed above, the present Petition challenges six of the claims of the ’789 patent on five asserted grounds, and Petitioner fails to carry its burden with respect to three of those grounds and five of those claims. This leaves two grounds that, between them, challenge a single claim of the ’789 patent. Were we to institute trial on either (or both) of the remaining grounds, we would be required to consider at trial not only the challenge that those grounds present to the remaining claim, but also the challenges to the five claims and three grounds on which Petitioner fails to show a reasonable likelihood of prevailing. SAS Inst. Inc. v. Iancu, 138 S. Ct. at 1356. In exercising discretion, we are guided by the philosophy embodied in the statutory requirement to promulgate regulations for inter partes review that further “the efficient administration of the Office [and] the ability of the Office to timely complete proceedings.” 35 U.S.C. § 316(b). We also are guided by the requirement to construe our rules to “secure the just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b). Consistent with these policies, Office guidance explains that we may consider the number of claims and grounds that meet the reasonable likelihood standard when deciding whether to institute inter partes review under 35 U.S.C. § 314(a). SAS Q&A’s, Part D, Effect of SAS on Future Challenges that Could Be Denied for Statutory Reasons (June 5, 2018), available at https://www.uspto.gov/ sites/default/files/documents/ sas_qas_20180605.pdf (“[T]he panel will evaluate the challenges and determine whether, in the interests of efficient administration of the Office and integrity of the patent system (see 35 USC § 316(b)), the entire petition should be denied under 35 USC § 314(a).”). Here, Petitioner fails to demonstrate a reasonable likelihood of prevailing on a majority of its asserted grounds of unpatentability and with respect to nearly all of its challenged claims. This raises at least some question as to whether instituting a trial with respect to all six claims and on all five grounds would be an efficient use of the Board’s time and resources. See, e.g., Chevron Oronite Co. v. Infineum USA L.P., IPR2018-00923, Paper 9 at 10–11 (PTAB Nov. 7, 2018). We must, therefore, decide whether the game is worth the candle; specifically, is resolving the question as to the patentability of claim 1 a sufficient reason to proceed to trial on claims 1 and 10–14? We assume, without deciding, that there may be situations in which resolving the patentability of one claim might justify trial as to six claims. For example, the Patent Owner in some cases may prefer to proceed to trial—and risk the patentability of the single claim—to gain the potential preclusive effect that would attach at the entry of a final written decision (see 35 U.S.C. § 315(e)) finding the remaining five claims not unpatentable. In other situations, the arguments against the patentability of that one claim may be so strong that we believe it is in the public interest to resolve them. Or it is possible the scope of the various claims challenged might merit review as to only some of them. For example, if a petition were to challenge a single, broad independent claim and a number of very narrow dependent claims, a reasonable likelihood of prevailing as to the independent claim alone may justify proceeding to trial on all claims, because a potential finding of unpatentability would significantly narrow the overall scope of the patent. Notably, none of these circumstances is present in the case at hand. Patent Owner has not expressed a preference that we proceed to trial so that it may have the benefit of estoppel under § 315(e). Nor is claim 1, the sole claim still potentially at issue in the case, significantly broader than claims 10–14. All the challenged claims are independent, and, indeed, it appears that claim 10 (directed to a sheath with an outer layer “consisting of a copper/zinc alloy comprising gamma and epsilon phases and predominantly containing a gamma phase”) has a broader scope than claim 1 (directed to a sheath with an outer layer “consisting of a copper/zinc alloy consisting of a gamma phase”). In other words, finding claim 1 unpatentable would not significantly narrow the scope of the ’789 patent. As a result, it is hard to discern how resolving the question as to the patentability of claim 1 would significantly benefit the public interest by narrowing the overall scope of the patent.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“In no case, however, does Petitioner offer sufficient argument or supporting evidence for the existence of a reason for a person of ordinary skill in the art to have combined the teachings of the references. With respect to the Briffod2/Groos ground, Petitioner asserts that “[t]he technologies in Briffod2, Groos and the ‘789 Patent are very closely related,” going on to demonstrate the existence of several similarities between the three patents. Pet. 55–56. This may be enough to show an analogous-art type relationship between the references, but there is a difference between proving that the references could have been combined and showing that a person of ordinary skill in the art would have had a reason to do so. Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010); see also In re Kahn, 441 F.3d 977, 987–88 (Fed. Cir. 2006) (noting that the inquiry as to whether a person of ordinary skill in the art would have sought to combine the references “picks up where the analogous art test leaves off”). The same flaw affects Petitioner’s arguments with respect to the Briffod2/Groos/Briffod1 ground and the Briffod2/Groos/Tominaga ground, both of which assert merely that “the technologies in [the references in question] are extremely closely related.” Pet. 57–58, 72. Because Petitioner fails to show why a person of ordinary skill in the art would have combined the teachings of the prior-art references asserted in Petitioner’s multi-reference obviousness grounds, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claim on any of those three grounds.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“Patent Owner argues that we should deny institution of inter partes review under 35 U.S.C. § 325(d) because Briffod2, the only prior-art reference at issue in the two asserted single-reference grounds, as well as the primary reference at issue in the combination grounds, previously was presented to the Office during prosecution of the challenged patent. Prelim. Resp. 21–29. We need not consider that argument because we determine that we should exercise our discretion to deny institution under § 314(a). As discussed above, the present Petition challenges six of the claims of the ’789 patent on five asserted grounds, and Petitioner fails to carry its burden with respect to three of those grounds and five of those claims. This leaves two grounds that, between them, challenge a single claim of the ’789 patent. Were we to institute trial on either (or both) of the remaining grounds, we would be required to consider at trial not only the challenge that those grounds present to the remaining claim, but also the challenges to the five claims and three grounds on which Petitioner fails to show a reasonable likelihood of prevailing. SAS Inst. Inc. v. Iancu, 138 S. Ct. at 1356.” slip op. at 7
§ 103 obviousnessDiscretionary denial - NEC Corporation / Nokia Corporation et al. v. Neptune Subsea IP LimitedAll claims unpatentablePTAB · Nov 25, 2019 · IPR2018-01157 · APJ Jason W Melvin · IPR · Final written decision
Claims 13–20 are unpatentable as obvious over Yamamoto and Nishimoto; the Chowdhury and Webb grounds, with or without Tanaka162, do not establish unpatentability.
RulingsFinal written decision- BurdenFwd all claims unpatentableDecided for petitioner
“III. CONCLUSION For the foregoing reasons, we determine Petitioner has shown by a preponderance of the evidence that each of claims 13–20 is unpatentable.” slip op. at 26
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties submit and we agree that there is no need to construe any term to resolve the issues in this decision. See Pet. 7–9; PO Resp. 6; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“e. Summary For the reasons described above, we find that a person of ordinary skill in the art at the time of invention would have had reason to combine Yamamoto’s and Nishimoto’s teachings as asserted by Petitioner and that the combination teaches all of claim 13’s limitations. Accordingly, Petitioner has shown by a preponderance of the evidence that the subject matter of claim 13 would have been obvious over Yamamoto and Nishimoto.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“tunable compensators is a contingent argument, applicable only if one reads claim 13 to require a certain transmission rate. PO Resp. 21–25. We do not read Petitioner’s argument as so constrained. Rather, we understand Petitioner to argue that a desire for higher transmission speeds would drive skilled artisans to use solutions such as Nishimoto’s tunable compensators, particularly in light of Nishimoto’s guidance regarding the ability to achieve high speeds with the system. See Pet. 21–23. In that regard, we agree with Petitioner that the increase in transmission rates from Yamamoto’s to Nishimoto’s disclosures would have given skilled artisans reason to consider Nishimoto’s teachings. Pet. Reply 16–18 (citing Ex. 1005 8:9–11; Ex. 1007, 12:37–39). As Petitioner points out, Nishimoto specifically discloses that higher-speed transmissions were more sensitive to dispersion. Pet. Reply 17 n.9. Thus, we find the desire for higher transmission speeds and the need for techniques such as taught by Nishimoto would have given skilled artisans reasons to combine Nishimoto’s disclosure regarding dispersion compensation with Yamamoto’s system to achieve Yamamoto’s goals regarding the dispersion maps for multiple channels. Further, Petitioner does not rest entirely on the desire for high-speed operation. Petitioner argues also that using Nishimoto’s adjustable compensators and feedback control would “yield an improved WDM system capable of automatic compensation for degradation of the optical signal waveform caused by both wavelength dispersion and polarization mode dispersion of the optical transmission path, resulting in further reduced size and cost.” Pet. 16 (citing Ex. 1003 ¶¶ 99, 101; Ex. 1007, 3:41–60, 4:3–58, Figs. 17, 20, 21), 29–30 (quoting Ex. 1007, Abstract, 3:37–40, 6:56–64, 7:53–56, 11:41–46, 17:53–55, 17:59–60; citing Ex. 1003 ¶¶ 114–115); accord id. at 14 (quoting Ex. 1007, 3:19–25). Patent Owner recognizes that basis for the combination but argues that the record lacks evidence to support Petitioner’s claim of reduced size and cost. PO Resp. 25–26. Patent Owner does not contest that the modification would give Yamamoto’s system the ability to automatically compensate for signal degradation from dispersion. Nishimoto discloses that as transmission speeds increase, “changes in wavelength dispersion characteristics due to temperature changes of optical fiber; and the influence by polarization mode dispersion” both “can not be neglected,” therefore requiring a system for automatically compensating for wavelength dispersion and polarization mode dispersion,” as taught by Nishimoto. Ex. 1007, 1:34–41. We find that a skilled artisan would have had reason to make the combination because the system would gain capability for automatic compensation. Regarding reduced size and cost resulting from the combination, Patent Owner does not provide any contrary evidence and we conclude that Nishimoto’s statements regarding the benefit of its invention also would have motivated skilled artisans to make the combination. See Ex. 1007, 3:17–26 (“to thereby provide a dispersion compensating apparatus of reduced sizes at a reduced cost”).” slip op. at 18
Patent outcomesUS 8,351,798 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,351,798 - American Express Company / American Express Travel Related Services Company, Inc. v. Signature Systems, LLCAll claims unpatentablePTAB · Oct 30, 2019 · CBM2018-00035 · APJ Frances L Ippolito · CBM · Final written decision
Claims 1, 2, 5, 6, 9, 10, 13, and 14 are unpatentable under § 101; proposed substitute claims 17–20 are unpatentable under § 101, and the contingent motion to amend is denied.
RulingsFinal written decision- Skill levelOther
“F. Level of Skill in the Art Petitioner asserts that a person of ordinary skill in the art (“POSITA”)” slip op. at 32
- Expert testimonyOther
“For the above reasons, we are persuaded that Petitioner has met its” slip op. at 62
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for petitioner
“1. Principles of Law Use of the word “means” in a claim gives rise to a rebuttable” slip op. at 12
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“Further, based on the entirety of the record, we determine that proposed substitute claims 17–20 are unpatentable by a preponderance of the evidence based on 35 U.S.C. § 101. Motion to Amend Outcome Claims Substitute Claims: Proposed in the Amendment 17–20 Substitute Claims: Motion to Amend Denied 17–20” slip op. at 101
Patent outcomesUS 8,423,402 unpatentableClaim construction§ 101 eligibilitycites Alice · Mayo · Bilski · Berkheimer · EnfishPatents in suitUS 8,423,402 - Neptune Generics, LLC v. Aventis Pharma S.A.Rehearing deniedPTAB · Oct 15, 2019 · IPR2019-00136 · APJ Timothy G Majors · IPR · Rehearing
The Board denied Neptune’s rehearing request and left in place its discretionary denial of institution for claims 1 and 2 under § 325(d).
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). Moreover, 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 / argumentsInstitution denied 325dInstitution denied
“example, that the C-7 and C-10 positions on taxanes were available and/or attractive sites for substitution. Dec. 31–32. Petitioner does not demonstrate persuasively why comparing, for purposes of a § 325(d) analysis, one reliedon reference that discloses potential sites for molecular substitutions to a collection of background references that provide substantially the same teaching is “error” on the record here.5 The POSA’s understanding is informed by all the relevant background knowledge and art, not a figure culled from one reference purporting to summarize otherwise known substitution sites. Dec. 11. Moreover, in reaching our conclusion, we did not overlook or misunderstand Commerçon’s Figure 2 or its other teachings. Quite the opposite, the Decision provides a detailed discussion on Commerçon, and Commerçon’s Figure 2 is itself reproduced in the Decision. Id. at 10–12. As noted in the Decision, Commerçon relates primarily to synthesis of docetaxel and docetaxel side-chain analogs. Id. Indeed, insofar as Commerçon actually describes changes that should be made or investigated, Commerçon’s focus is at the C-3' side-chain position—not individual, much less simultaneous changes to C-7 and C-10 of paclitaxel. In other words, the” slip op. at 10
Discretionary denialPatents in suitUS 5,847,170 - PTAB · Oct 10, 2019 · IPR2019-00538 · APJ Frances L Ippolito · IPR · Rehearing
The Board denied rehearing and maintained denial of institution because the evidence did not overcome the prior art’s disparagements for the asserted obviousness grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, the Board will 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)Institution denied meritsInstitution denied
“requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayNot shown unpatentable
“[a]lthough Farrington notes certain concerns with shaft-mounted systems, such as swing effects, aesthetics, and the attachment mechanism’s gripping capability, it was known in the art, and within the POSA’s ability, how to adequately address and alleviate those concerns. See EX1011, ¶5; EX1009, ¶¶95-96. For instance, Hackman teaches providing a shaft-mounted system that does not interfere with the golfer’s swing, see EX1012, 4:7- 30 (acknowledging need for golfer to “swing in a normal manner”), and the POSA would have been aware of readily-available accelerometers, gyroscopes, and other sensors, that were sufficiently light and compact so that any impact on a swing would be negligible. EX1009, ¶¶97-98. In addition, for aesthetics, the POSA would have been aware of the wide variety of choices known in the art and would have understood how to design the removable unit for a certain “look and feel”. Id., ¶99. As for grip concerns, Hackman demonstrates the numerous mechanical options available to the POSA that would allow IMU attachment to the club’s shaft without loosening or moving during a swing. See, e.g., EX1012, 10:10-18 (teaching frictional engagement that “is sufficient to hold the analyzer 10 in place during swinging”), FIGS. 1, 4, 7-10; EX1009, ¶¶100-01.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“evidence of disparagement. Pet. 71–73 (citing Ex. 1009 ¶¶ 203– 219). Neither Petitioner nor Dr. Paradiso explains persuasively, however, why a person of ordinary skill in the art would have been persuaded to ignore Kirby’s disparagement of the use of accelerometers for swing measurement. Id. Dec. 28 (emphasis added); see id. at 25 (noting that “Petitioner argues that a person of ordinary skill in the art would have had reason to use an accelerometer-based device like that taught by Kimber and optionally by Kirby, located adjacent to the grip of a golf club, as taught by Kirby, rather than adjacent to the head of the golf club, as taught by Kimber. Pet. 71–73.”) (emphasis added). Thus, as indicated in the Decision, the panel considered all of the arguments and evidence presented by Petitioner in the Petition. However, the panel determined that these arguments and evidence did not establish a reasonable likelihood that Petitioner would prevail in showing the unpatentability of the challenged claims.” slip op. at 9
§ 103 obviousnessPatents in suitUS 8,589,114 - PTAB · Oct 7, 2019 · IPR2019-00537 · APJ John R Kenny · IPR · Rehearing
The Board denied Petitioner’s rehearing request, leaving in place the denial of institution because the cited evidence did not overcome the references’ teachings against the proposed modifications.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A request for rehearing must identify specifically all matters the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundMotivation not foundDecided for patent owner
“As our Decision noted, however, the only support Dr. Paradiso cited for these propositions is a portion of Hackman and a portion of Exhibit 1017. Ex. 1008 ¶¶ 99–100; Dec. 17. In its Request for Rehearing, Petitioner identifies nothing from its evidence of the general knowledge of an ordinarily skilled artisan, background art, or reasonable expectation of success that provides any further support for these propositions. Req. Reh’g 4–7. Instead, Petitioner merely argues that an ordinarily skilled artisan would have recognized some benefits to using a shaft mounted system with a golf club and would have had a reasonable expectation of success for adding such a system to Farrington’s golf club. Id. None of that evidence, however, suffices to overcome Farrington’s disparagement. The mere fact that, for general purposes, externally mounted systems may have benefits or could be successfully added to Farrington’s golf club does not demonstrate that, as Dr. Paradiso testified, the weight, drag or other swing-related issues highlighted by Farrington associated with such a system would be readily overcome. Accordingly, we are not persuaded that we overlooked evidence that would overcome Farrington’s disparagement of using a swing analysis device mounted on the outside of its golf club. Background Art, and Reasonable Expectation of Success Petitioner argues that we overlooked evidence regarding the general knowledge of an ordinarily skilled artisan, background art, and reasonable expectation of success when we determined, for Ground 3 (based on Kirby and Kimber), that Petitioner made an insufficient showing to overcome Kirby’s disparagement of using accelerometers, gyroscopes and angular sensors for swing analysis and to overcome Kimber’s disparagement of placing a swing measurement device near the grip. Req. Reh’g 7–12. None of the evidence cited by Petitioner regarding the level of skill in the art, background art, or a reasonable expectation of success, however, would overcome Kirby’s and Kimber’s disparagements. Id. The mere fact that, for general purposes, accelerometers may have some benefits or that there would be a reasonable expectation that they could be successfully added to Kirby’s golf club does not mean that such a modification would avoid the speed and cost issues noted by Kirby or outweigh them. Similarly, the mere fact that for general purposes there may be some advantages to placing an accelerometer near a grip and reasonable expectation that one could be successfully added near a grip would not overcome Kimber’s disparagement of placing a swing measurement device near the grip or outweigh that concern. Accordingly, we are not persuaded that we overlooked evidence that would overcome Kirby’s disparagement of using accelerometers, gyroscopes and angular sensors for swing analysis and Kimber’s disparagement of placing a swing measurement device near the grip.” slip op. at 6
- BurdenNot reached
“Ground 3 (obviousness over Kirby and Kimber) that Kirby alone would have rendered claims 1, 6–7, 9–12, 14, 16, and 18–19 obvious. Reh’g Req. 2–3. Ground 4 (obviousness over Kirby, Kimber, and Nusbaum) that Kirby and Nusbaum by themselves would have rendered claim 13 obvious. Id. at 3. Petitioner, however, does not identify where in the Petition it contended that Kimber alone would have rendered claims 1, 6–7, 9–12, 14, 16, and 18–19 obvious or that Kirby and Nusbaum by themselves would have rendered claim 13 obvious. Id. at 2–3. To the contrary, according to the Petition, the basis for Ground 3 is “Obvious under §103(a) over the combination of U.S. Patent Application Publication 2007/0206837 (‘Kirby,’ EX1013) and Great Britain Patent Application Publication 2430890 (‘Kimber,’ EX1014).” Pet. 4. Similarly, the basis for Ground 4 is “Obvious under §103(a) over the combination of Kirby, Kimber, and Nusbaum.” Id. at 5. Accordingly, we are not persuaded that we overlooked any contention that Kirby alone or Kirby and Nusbaum by themselves would have rendered claims 1, 6–7, 9– 12, 13, 14, 16, and 18–19 obvious.” slip op. at 4
§ 103 obviousnessPatents in suitUS 8,831,905 - Unified Patents, Inc. v. Mv3 Partners LLCRehearing deniedPTAB · Sep 20, 2019 · IPR2019-00474 · APJ Jean R Homere · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution in place for claims 1–6, 8, 10–21, 23–38, 40, 42–53, and 55–61.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“than Patent Owner expressing its disagreement with our Decision rather than identifying any issues we overlooked or misapprehended. A request for rehearing is not an opportunity to provide rebuttal arguments. 37 C.F.R. § 42.71(d). Rather, it is a medium to point out errors arising from the Board misapprehending or overlooking an issue previously raised in the parties’ papers. Id. As correctly noted by Petitioner, in our Decision on Institution, we found Petitioner provided sufficient explanation at this stage to support its proposed modification to Wang. Opp. 7–8. In particular, we noted the following:” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied discretionary otherDenied
“also the defendant in the concurrent district court case raising in both the IPR petition and the district court the same invalidity contentions based on the very same prior art. Opp. 2; see NHK Spring at 19–20. The panel in NHK Spring found that, under § 314(a), institution would be inefficient because the district court trial would resolve the same invalidity issues raised in the IPR six months before the statutory deadline for the Board to issue its final written decision. Opp. 3 (citing NHK Spring at 19–20). By contrast, the facts in the current proceeding do not support denial of institution. As correctly noted by Petitioner, in NHK Spring, the advanced state of the district court proceeding that would resolve the very same issues raised between the very same parties six months prior to the final written decision deadline weighed in favor of institution denial, whereas the present proceeding involves different parties and different issues and is not at such an advanced stage. Id. at 4.” slip op. at 9
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“related district court proceeding and the current IPR. Petitioner is Unified Patents, Inc. and the defendant in the related district court litigation is Roku. We noted the following in our Decision on Institution: The record also contains no evidence of client-specific or pre-filing communications between Unified and Roku regarding this proceeding or the preparation of the Petition filed in this proceeding. There is also no specific evidence that the Petition was filed at Roku’s behest. In particular, we are not persuaded that the mere fact that Roku asserted invalidity based on Wang in the district court litigation (after the filing of the Petition in this proceeding) is enough, without more, to show that Roku is an unnamed [real party in interest] as Patent Owner contends. Dec. 43 (citation omitted).” slip op. at 9
Discretionary denialPatents in suitUS 8,863,223 - L’Oréal USA, Inc. v. Liqwd, Inc.Some claims unpatentablePTAB · Jul 30, 2019 · PGR2018-00025 · APJ Timothy G Majors · PGR · Final written decision
Claims 1–13, 19–23, 29, and 30 are unpatentable as obvious; claims 14–16, 18, and 24–28 were not shown unpatentable.
RulingsFinal written decision- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“combination of Pratt and Tanabe teaches or suggests all of claim 1’s limitations, and that the skilled artisan had a sufficient reason to combine the art as proposed with a reasonable expectation of success in arriving at the bleaching method that is claimed. Before reaching a conclusion of obviousness, however, we consider the parties’ argument and evidence related to alleged objective indicia of nonobviousness. WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1328 (Fed. Cir. 2016).” slip op. at 35
- ExcludeMotion to exclude, deniedMixed
“those exhibits) as discussed above in the context for which they were offered (objective indicia of nonobviousness as to alleged unexpected results and industry skepticism). We gave the exhibits little weight on those issues for the reasons explained, and ultimately found in Petitioner’s favor—that objective indicia of nonobviousness did not outweigh the evidence of obviousness on this record. Thus, excluding this evidence would not change the result. Accordingly, we dismiss Petitioner’s motion to exclude Exhibits 2038 and 2041 as moot.” slip op. at 85
Patent outcomesUS 9,668,954 mixed§ 103 obviousnesscites KSRPatents in suitUS 9,668,954 - PTAB · Jul 1, 2019 · IPR2018-01743 · APJ Michael W Kim · IPR · Rehearing
The Board denied rehearing of its decision denying institution of inter partes review of claims 1–25, finding Petitioner had not shown an abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3); see also Dec. 11 (citing statute). Petitioner also has the burden to “specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d).” slip op. at 3
- Prior constructionPrior construction not adoptedDecided for patent owner
“Petition for the limitation of “application . . . that include interactive services.” See generally Req. Our own review of the Petition results in the same. See generally Pet. Pages 12–17 of the Petition provide constructions for several terms, including “application,” but not for the entirety of the limitation identified above. Indeed, Petitioner relied on the Board’s previous decisions for both explicit and implicit constructions of other claim limitations. See Pet. 13–15, 86, 93, 96, 104 (citing Ex. 1004, 40–41, 137– 138, 146–147, 151–152, 157–158, 161, 171). Noticeably absent, however, is the same for “application . . . that include interactive services.” We could not have misapprehended or overlooked a claim construction that was not made. Even if we delve somewhat into the cited portion of the Board’s previous decision, however, we remain unpersuaded. Specifically, while Petitioner’s quotation of the Decision is correct, the Decision later states: “We agree that the body of claim 4 does not require applications with interactive services, but ‘interactive services’ must be one kind of application that can be requested.” Ex. 1004, 136. So, while our analysis may have been altered somewhat, we are unpersuaded that Petitioner has met its burden of showing that maintaining the same result, denial of institution on this basis, would have been an abuse of discretion.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“and, Orbitz, LLC (“Petitioner”) filed a Petition to institute an inter partes review of claims 1–25 of U.S. Patent 7,072,849 B1 (Ex. 1002, “the ’849 Patent”). Paper 2 (“Pet.”). International Business Machines Corp. (“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). On March 19, 2019, we issued a Decision Denying Institution of Inter Partes Review. Paper 8 (“Decision”). On May 1, 2019, Petitioner filed a Request for Rehearing. Paper 11 (“Req.”).1” slip op. at 2
Claim constructionPatents in suitUS 7,072,849
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.