- PTAB · Feb 6, 2025 · IPR2024-00324 · APJ Michelle N Wormmeester · IPR · Rehearing
The Board denied Comcast’s rehearing request and left in place denial of institution after finding no abuse of discretion in its construction and compelling-merits analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s 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). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 90 (Nov. 2019) (hereinafter, “CTPG”).5 In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); CTPG 90.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“discretion to deny institution due to the advanced state of parallel litigation, taking into consideration the six factors identified in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential), as well as applying guidance set forth in a Memorandum regarding the “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” issued by the Director of the U.S. Patent and Trademark Office (hereinafter, “Guidance Memo”).6 Inst. Dec. 6–43. We determined that the first five Fintiv factors favor discretionary denial,7 and that the Petition presents compelling evidence of unpatentability as to independent claims 1, 12, and 17 under the sixth Fintiv factor. Id. at 15–16, 23–43. Because “the PTAB will not deny institution based on Fintiv if there is compelling evidence of unpatentability,” we declined to exercise our discretion to deny and instituted trial. Guidance Memo 5; Inst. Dec. 15–16. In our Rehearing Decision, however, we agreed with Patent Owner that we erred in determining the claim terms “first format” and “second format” are not limited to different formats, and determined that the proper construction of these claim terms indeed requires the two formats to be different formats. Reh’g Dec. 5–9, 19. Applying the proper construction, we further determined that none of Petitioner’s asserted challenges presents compelling merits of unpatentability as to any claim of the ’751 patent, 6 Available at https://www.uspto.gov/sites/default/files/documents/interim_ proc_discretionary_denials_aia_parallel_district_court_litigation_memo_20 220621_.pdf. 7 Our analysis of the first five Fintiv factors in our First Institution Decision remains undisturbed on rehearing. contrary to our initial determination in the Institution Decision. Id. at 19–20. Having determined that the first five Fintiv factors favor discretionary denial, and that the Petition does not meet the compelling merits standard of the Guidance Memo under the sixth Fintiv factor, we modified our decision and denied institution on rehearing. Id. at 20.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“Contrary to Petitioner’s position, Patent Owner met its burden of showing that our Institution Decision should be modified. In our Institution Decision, we relied on claim differentiation when we determined that claim 1 is not limited to different first and second formats. Inst. Dec. 31. We did not consider the prosecution history, which was part of the record. See Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (“[W]e have held that a court ‘should also consider the patent’s prosecution history, if it is in evidence.’”). As we noted in our Rehearing Decision, however, the Federal Circuit has explained that “[t]he prosecution history modifies the scope of a claim term if ‘the patentee distinguished that term from prior art on the basis of a particular embodiment, expressly disclaimed subject matter, or described a particular embodiment as important to the invention.” Reh’g Dec. 8 (quoting Sentry Protection Prods., Inc. v. Eagle Mfg. Co., 400 F.3d 910, 915 (Fed. Cir. 2005)). The Federal Circuit also has explained that “[a]lthough claim differentiation is a useful analytic tool, it cannot . . . relieve any claim of limitations imposed by the prosecution history.” Id. at 13 (quoting Fenner Invs., Ltd. v. Cellco P’Ship, 778 F.3d 1320, 1327 (Fed. Cir. 2015)). In other words, we erred in not considering the prosecution history, which led to our erroneous conclusion that claim 1 is not limited to different first and second formats. See Ex. 1104, 170 (prosecution history). Our Institution Decision was based on this erroneous conclusion of law, as Patent Owner argued, and we modified it accordingly.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“claim 1. As discussed above with respect to limitation 1D, Petitioner asserted that its proposed combination of Danciu and Mahajan would have provided a system where “Danciu’s remote control would translate commands associated with a first type of media playing application to a generic format, transmit them to the controlled device, which would translate them to a command associated with a second type of media playing application for execution.” Reh’g Dec. 12–13 (quoting Pet. 31). In other words, both Danciu’s remote control and controlled device translate commands. With respect to claim 5, Petitioner asserted that Mahajan’s abstraction module could operate at Danciu’s server. Pet. 43. Even if Mahajan’s abstraction module (which translates commands) could operate at Danciu’s server, Petitioner does not adequately explain why an ordinarily skilled artisan would have had reason to modify Danciu’s system to locate Mahajan’s abstraction module at the server, especially where both Danciu’s remote control and controlled device already translate commands. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). Petitioner does not point to anything in its analysis of claim 5 that demonstrates we misapprehended or overlooked a matter.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,048,751 - Quectel Wireless Solutions Co. Ltd. v. Koninklijke Philips N.V.Rehearing deniedPTAB · Mar 7, 2023 · IPR2021-00563 · APJ Kevin F Turner · IPR · Rehearing
The Board denied Patent Owner’s rehearing request and left claim 9 unpatentable as obvious over Agin and Chen under § 103.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c) (2020). 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). The party requesting rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, 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 a motion, an opposition, [or] a reply.” Id.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We do not agree with Patent Owner’s arguments. As stated in our Decision, Agin discloses that parameters may be determined based on statistics on power control results for a transmission period before said transmission interruption, including “the largest [of] the variations of a received signal power before the interruption. See Dec. 24; Ex. 1004, 6:9– 13. Thus, Agin acknowledges that variations are possible, and can be taken into account, even with a single base station. Chen discusses that a power control processor determines the correct power control command by use of averaging or weighted averaging from “each transmitter’s signal at the receiver.” Ex. 1005, 10:45–56. Thus, although Patent Owner is correct that those signals are received from multiple transmitters, in Chen, Agin demonstrates that variations can occur and can be compensated for with even a single transmitter, countering Patent Owner’s argument that there would be nothing to average over. Taking Agin and Chen together, as Petitioner has asserted, we remain persuaded that ordinarily skilled artisans would have applied the weighted average, disclosed in Chen, in Agin, even if a single transmitter/ base station is utilized. See Dec. 23–25. We remain persuaded that those of ordinary skill in the art would have been able to apply the concept of a weighted average to signals received from a single base station.” slip op. at 10
§ 103 obviousnessPatents in suitUS 8,195,216 - Impinj, Inc. v. NXP B.V.Rehearing deniedPTAB · Jul 2, 2021 · IPR2020-01422 · APJ Michelle N Wormmeester · IPR · Rehearing
The Board denied Impinj’s rehearing request, leaving institution denied on all challenged claims because the Petition did not sufficiently explain how MacLellan or Gallagher teaches “specific useful data.”
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We are not persuaded by Petitioner’s contentions. In sum, Petitioner argues in its Request for Rehearing that “specific useful data” could be comprised of all the “useful data.” Even if we were persuaded that “specific useful data” could be comprised of all the “useful data,” however, Petitioner did not make this argument in its Petition. As discussed in our Institution Decision, Petitioner instead argued that “MacLellan discloses that a specific set of ‘optional data’ is stored on a tag.” Pet. 23 (emphasis added) (cited by Inst. Dec. 12–13). The wording of this argument suggests that the “specific set” is comprised of a portion of all the optional data. Petitioner, however, relied on the same passage describing optional data 603 in MacLellan to support its contentions that MacLellan teaches both the recited “useful data” and the recited “specific useful data.” For instance, with respect to “useful data,” Petitioner asserted that MacLellan “discloses that optional data sent by the tag can be ‘any data stored on the Tag 102 that is always transmitted to the Interrogator 101 together with the Tag ID 602.’” Id. at 18–19 (quoting Ex. 1003, 8:30–32). As to “specific useful data,” Petitioner asserted that “MacLellan discloses that a specific set of ‘optional data’ is stored on a tag,” and cited again to MacLellan’s teaching that “Optional Data 603 . . . contain[s] any data stored on the Tag 102 that is always transmitted to the Interrogator 101.” Id. at 23 (citing Ex. 1003, 8:30–31). In our Institution Decision, we stated that Petitioner did not sufficiently explain how MacLellan teaches specific useful data. Inst. Dec. 12–13. In particular, we noted that Petitioner did not sufficiently explain how optional data 603 on a tag is a “specific set” of the same optional data 603. See id. Because Petitioner’s arguments and evidence focused on MacLellan’s optional data as satisfying both “useful data” and “specific useful data” limitations, it was incumbent upon Petitioner to explain its claim scope position regarding these two terms. Alternatively, it was Petitioner’s burden to explain how MacLellan’s optional data would satisfy both limitations despite the claim utilizing different terms. In other words, if Petitioner considers a “specific set” of optional data to be all the optional data, Petitioner needed to state that position in the Petition and provide sufficient explanation with supporting evidence in light of the ’092 patent’s teachings that distinguish useful data from specific useful data.” slip op. at 8
NonePatents in suitUS 7,257,092 - Supercell OY v. Gree, Inc.Rehearing deniedPTAB · Nov 18, 2020 · PGR2020-00041 · APJ Lynne H Browne · PGR · Rehearing
The Board denied Supercell’s rehearing request, upholding denial of institution based on the Fintiv factors and the risk of duplicated efforts and inconsistent results.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“this factor or that we misapprehended the trial date. At the time of our Decision, trial was scheduled in the parallel proceeding for December 7, 2020, approximately nine months before our final written decision would have been due, if we were to institute trial. Dec. 10–11. As such, this gap in timing created a cognizable risk of inconsistent results and duplication of efforts, which weighed toward denying institution. Id. at 7, 11. Additionally, the Decision notes that some uncertainty exists regarding trial dates, as Petitioner again argues in its Request. Id. at 11; Req. Reh’g 4. However, the Decision goes on to determine that even if trial in the parallel proceeding was delayed by two months, consistent with Petitioner’s prior requested delay, the proximity of the trial date to our final written decision would still favor denying institution. Dec. 12 (citing Ex. 2002, 2). As such, Petitioner has not shown that the Board misapprehended the trial date.” slip op. at 5
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“contentions. In our Decision, we relied in part upon Dr. Claypool’s testimony from related litigation between the parties in determining that Petitioner failed to meet its burden of demonstrating that Mastermind was” slip op. at 8
- BurdenDecided for patent owner
“Petitioner was provided an opportunity to respond to this evidence to address any “time-based distinctions in Dr. Claypool’s testimony,” however, Petitioner declined to address this testimony in its Preliminary Reply, despite having the opportunity to do so. Prelim. Reply 5–7. We decline to consider now, on rehearing, arguments that Petitioner failed to make in its pre-institution papers. It is Petitioner’s burden to demonstrate that Mastermind was publicly accessible. As we stated in our Decision, this prior testimony casts serious doubt on Petitioner’s ability to satisfy that burden. Dec. 25. We also decline to consider new testimonial evidence submitted on rehearing on this issue, as Petitioner does not show good cause for admitting this new evidence. See Huawei Device Co. v. Optics Cellular Tech., LLC, IPR2018-00816, Paper 19 (PTAB Jan. 8, 2019) (precedential) (showing of “good cause” required prior to filing a rehearing request or in the request itself for new exhibits to be admitted). We could not have misapprehended or overlooked evidence and arguments that were not made before our Decision.” slip op. at 9
§ 102 anticipationDiscretionary denialPatents in suitUS 10,307,677 - Motorola Mobility LLC v. Intellectual Ventures II LLCRehearing deniedPTAB · Jul 22, 2020 · IPR2014-00504 · APJ Patrick R Scanlon · IPR · Rehearing
The Board denied Motorola’s rehearing request, leaving intact the remand decision that claims 1–4, 7, and 18 were not shown unpatentable on the instituted grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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.” slip op. at 3
- Expert testimonyPatent owner expert creditedDecided for patent owner
“that Dr. Tewfik’s testimony is not credible because he has “no personal knowledge” and “merely parrots the inventor’s claim chart.” Req. 6. We disagree, because we considered and analyzed expressly Petitioner’s argument and the basis for Dr. Tewfik’s testimony. Remand Dec. 27, 30. We determined that Dr. Tewfik’s testimony was credible, in that it was testimony concerning his opinion with respect to the claim chart, and also that his testimony was based, at least in part, on his personal experience with Windows 98 and its functionalities. Id. at 30. Indeed, the Federal Circuit noted that the rule of reason requires us to consider all pertinent evidence, and then noted explicitly that Dr. Tewfik’s testimony was one example of such pertinent evidence that needed to be considered. See Intellectual Ventures II, 692 F. App’x at 627–628. For these reasons, we are not persuaded that we misapprehended or overlooked the credibility of Dr. Tewfik’s testimony.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“not have changed the outcome of our Decision. In Figure 4, Kellerer shows a block with a central control unit, address management, routing, an application server, and network managers. Exhibit 1007, 45. This block diagram, however, does not specifically address whether or not Internet access requires an external service controller. Moreover, Petitioner provides no citations to any passages that describe the functions of the central control unit, address management, routing, the application server, and the network managers. See generally Req. 9–13. We are not persuaded that Kellerer teaches all of the components that are necessary to enable Internet access based on Figure 4 alone. That these components are located inside the car, as shown in Figure 3, also does not specifically address whether or not Internet access requires an external service controller. Accordingly, we are not persuaded that Figures 3 and 4 render the stand-alone system limitation obvious.” slip op. at 12
§ 103 obviousnessPatents in suitUS 7,382,771 - Google LLC v. Uniloc 2017, LLCRehearing deniedPTAB · Jul 7, 2020 · IPR2019-01541 · APJ Jameson Lee · IPR · Rehearing
The Board denied Google’s rehearing request, leaving in place the denial of institution for claims 1, 2, 4, and 9 because Google did not show an abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“of the decision de novo, but instead review the 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). The party requesting rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, 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 a motion, an opposition, or a reply.” Id.” slip op. at 2
NonePatents in suitUS 7,016,676 - DISH Network L.L.C. v. Multimedia Content Management LLCRehearing deniedPTAB · Mar 9, 2020 · IPR2019-01015 · APJ Matthew J Mcneill · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution, finding the Petition did not adequately explain the proposed combination for claim 1.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Petitioner has not persuaded us that we misapprehended or overlooked in the Petition the argument that Petitioner now sets forth. In the Decision, we explained that the Petition relies on a combination of Hoang ’980’s bidirectional and unidirectional systems to meet the limitations of claim 1. Dec. 12. We explained that the Petition “relies on the unidirectional embodiment that employs a central controlling server to generate subscription data packets to be transmitted to client’s set top boxes for the limitation ‘a controller node coupled to the service provider network.’” Id. at 12‒13 (citing Pet. 20‒25). We explained that the Petition “relies on the bidirectional embodiment that transmits content requests to the cable system service provider network for the limitation ‘at least a second processor coupled to the second one or more network interfaces, wherein the second processor is to selectively transmit content requests to the service provider network in accordance with the controller instructions.’” Id. at 13 (citing Pet. 37‒44). Petitioner’s argument that we misapprehended its reliance on bidirectional access control techniques is unpersuasive because the cited portions of the Petition indeed rely on an embodiment incorporating bidirectional access techniques (see Pet. 37‒44), not merely a bidirectional link as Petitioner now proposes (see Req. Reh’g 2‒9).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Petition specifically relies on the “demand that server provide requested client specific data” of Hoang ’980’s bidirectional system as part of the “access selected DOD service” at step 706 of Hoang ’980’s unidirectional access system. Pet. 42. The “demand that server provide requested client specific data” step in Hoang ’980’s bidirectional access system is part of a back-and-forth process of bidirectional communication involving both the client and the server, as described in more detail in Hoang ’980’s description of the prior art bidirectional systems. See Ex. 1006 ¶¶ 15‒ 25. In this process, the DOD server makes a determination as to whether a client is authorized to receive the requested data. Id. ¶ 21. In other words, combining these embodiments in the manner set forth in the Petition would result in redundant access control, as noted in the Decision. See Dec. 16‒17.” slip op. at 5
NonePatents in suitUS 8,799,468 - DISH Network L.L.C. v. Multimedia Content Management LLCRehearing deniedPTAB · Mar 9, 2020 · IPR2019-01014 · APJ Matthew J Mcneill · IPR · Rehearing
The Board denied rehearing and maintained denial of institution because the Petition’s Hoang combination would create redundant access control and lacked adequate motivation to combine.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“On request for rehearing, the burden of showing a decision on whether to institute trial should be modified lies with the party challenging the decision. 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “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.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Petition specifically relies on the “demand that server provide requested client specific data” of Hoang ’980’s bidirectional system as part of the “access selected DOD service” at step 706 of Hoang ’980’s unidirectional access system. Pet. 52. The “demand that server provide requested client specific data” step in Hoang ’980’s bidirectional access system is part of a back-and-forth process of bidirectional communication involving both the client and the server, as described in more detail in Hoang ’980’s description of the prior art bidirectional systems. See Ex. 1006 ¶¶ 15‒25. In this process, the DOD server makes a determination as to whether a client is authorized to receive the requested data. Id. ¶ 21. In other words, combining these embodiments in the manner set forth in the Petition would result in redundant access control, as noted in the Decision. See Dec. 16.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“The Petition specifically relies on the “demand that server provide requested client specific data” of Hoang ’980’s bidirectional system as part of the “access selected DOD service” at step 706 of Hoang ’980’s unidirectional access system. Pet. 52. The “demand that server provide requested client specific data” step in Hoang ’980’s bidirectional access system is part of a back-and-forth process of bidirectional communication involving both the client and the server, as described in more detail in Hoang ’980’s description of the prior art bidirectional systems. See Ex. 1006 ¶¶ 15‒25. In this process, the DOD server makes a determination as to whether a client is authorized to receive the requested data. Id. ¶ 21. In other words, combining these embodiments in the manner set forth in the Petition would result in redundant access control, as noted in the Decision. See Dec. 16.” slip op. at 5
§ 103 obviousnessPatents in suitUS 9,465,925 - 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 - Toyota Motor Corporation v. General Electric CompanyRehearing deniedPTAB · Jun 14, 2019 · IPR2019-00018 · APJ Joni Y Chang · IPR · Rehearing
The Board denied Toyota’s rehearing request, leaving the denial of institution on claims 16–19 in place because the Petition did not explain how the proposed combination supplied the claimed second DC/DC conversion device.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Mitsutani’s inverter also should be included in its proposed combination of Robinson and Mitsutani. Req. Reh’g 4. Petitioner admits that “the Petition did not call it out separately.” Id. However, a request for rehearing is not an opportunity to supplement the Petition, or submit new arguments that were not made in the Petition, after the Decision has noted the deficiencies in the Petitioner’s original analysis. See 37 C.F.R. § 42.71(d).” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“proposed prior art combination teaches or suggests “a second DC/DC conversion device coupleable to an internal charging device,” as recited in independent claim 16. Dec. 11−15. In its Petition, Petitioner asserts that Robinson discloses the claimed “second DC/DC conversion device.” Pet. 31−32 (citing Ex. 1006 ¶ 145, Fig. 4). Petitioner modifies Robinson’s Figure 4 to “include an additional 4−34 V scavenger power converter for device port 4.” Id. Petitioner’s modified Figure 4 of Robinson is reproduced below with annotations added by Petitioner (id.).” slip op. at 3
- BurdenDecided for patent owner
“The burden to prove unpatentability is on the petitioner, not on the patent owner or the Board. Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1380 (Fed. Cir. 2015) (noting that the petitioner in an inter partes proceeding has the initial burden of production and the burden” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“internal charging device” to device port 4 (light pink). Pet. 31. Petitioner asserts that “[t]his second 4−34V scavenger power converter is ‘coupleable to an internal charging device,’ as claimed, because the combined Robinson/Mitsutani system teaches a motor generator that is internal to the vehicle and would be connected to Robinson’s device port 4.” Id. at 32 (citing Ex. 1002 ¶ 76) (emphases added). slip op. at 4
§ 103 obviousnessPatents in suitUS 9,821,668
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.