- 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 - Supercell OY v. Gree, Inc.All claims unpatentablePTAB · Aug 14, 2019 · PGR2018-00029 · APJ Michael W Kim · PGR · Final written decision
Claims 1–15 are unpatentable: the Board found them ineligible under § 101 and also found claims 1–15 unpatentable under § 112(a).
RulingsFinal written decision- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“division” to “way of managing a game and playing a game” does not alter our analysis, because “displaying a panel selection in a division” is no more than identifying high level details of a game that are substantively analogous to how “wagering game,” “dice game,” and “bingo game” are identified in the aforementioned cases. Accordingly, we find that independent claim 1 recites “managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions),” which, under the Guidance, is one of certain methods of organizing human activity and, thus, an abstract idea.” slip op. at 26
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“way of managing a game and playing a game involving displaying a panel selection in a division.” Accordingly, Petitioner is not required to account for any limitations within this characterization, at least for the purposes of determining whether a claim limitation is “well-understood, routine, conventional.” And when this framework is applied properly, we see how most of Patent Owner’s assertions fall away. First, Patent Owner argues that Petitioner has provided no evidence that the claimed use of panels is well-understood, routine, or conventional. PO Resp. 32–39 (citing Ex. 1001, 6:36–38, 6:42–46, 7:27, 7:36, 7:44–53. 7:55–56; Ex. 2002, ¶¶ 22–30). More specifically, Patent Owner asserts that the panels disclosed in the ’583 patent may “display a still image,” “display a movie when the panels are emphasized and displayed,” “zoom in,” and may have portions of frames, in which the panels are disposed, that “display the texts showing the sound effect and/or an effect display portion.” PO Resp. 32–33 (citing Ex. 1001, 7:27, 7:36, 7:44–53, 7:55–56). Patent Owner asserts that these elements provide an interactive and dynamic format using panels that was unique and unconventional. PO Resp. 34. However, Petitioner is not required to show that those properties of the panels described in the ’583 patent, whether in an interactive and dynamic format or otherwise, are well-understood, routine, and conventional, because these elements are not recited in any of the independent claims.11 Relatedly, Petitioner is not slip op. at 45
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable
“2. Analysis Petitioner asserts that the Specification of the ’583 patent fails to provide adequate written description support for the following limitations of representative claim 1:” slip op. at 58
- Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable
“Pet. Reply 25; see also Tr. 37:3–11 (continuing line of argument). Here, once again, Petitioner mistakes breadth, which is permitted, for indefiniteness. See In re Miller, 441 F.2d at 693. As admitted by Patent Owner, the limitation and, in particular the term “allowed,” is certainly broad. See Tr. 73:15–74:2. But as stated by Mr. Crane, a person of ordinary skill would have understood that “one character would not be allowed to dispose a panel . . . into a division that is occupied by a panel belonging to another character,” or if “an attempt is being made to dispose a panel into a space where the panel will not fit, it will also not be allowed to be disposed.” PO Sur-Reply 22–23 (citing Ex. 2002 ¶ 44; Ex. 1009, 107:24–108:4). Petitioner has not provided sufficient evidence or analysis to show that such an example from the ’583 patent is insufficient guidance to one of ordinary skill and compels a determination of indefiniteness.17 For these reasons, we are not persuaded that Petitioner has met its burden of showing that claims 1–15 are indefinite under 35 U.S.C. § 112(b).” slip op. at 69
Patent outcomesUS 9,636,583 unpatentable§ 101 eligibility§ 112 disclosurecites Alice · Enfish · Electric Power · NautilusPatents in suitUS 9,636,583 - Supercell OY v. Gree, Inc.Rehearing deniedPTAB · May 10, 2019 · PGR2018-00008 · APJ Michael W Kim · PGR · Rehearing
The Board denied Supercell's rehearing request, leaving claims 1, 8, and 10–12 unpatentable under § 101 and claims 2–7 and 9 not shown unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Even assuming that the Board did overlook or misapprehend that the Petition articulated that “in a multi-player environment” was subsumed within “creating and applying a template of positions of one or more game contents,” we note that the aforementioned portion of the Petition also identifies, as additional details, “wherein a second player can also create and apply templates within the game space.” Neither the Petition nor the Request explains why these additional details should be considered a part of the claimed concept. Furthermore, delving into the merits of those latter additional details, we were, and continue to be, unpersuaded that a second player, that can both “create” and “apply” a template, is accounted for adequately in the Petition. Specifically, even if we were to agree the Petition accounts for a second player “applying” a template “in a multi-player environment” (see Req. 5, citing Pet. 6), the Petition makes no mention of the second player being able to also create the template. As discussed in the Final Written Decision, Petitioner did not provide sufficient evidence or analysis that a second player able to also create and apply templates is included in the claimed concept of “creating and applying a template of positions of one or more game contents.” Final Dec. 43. We could not have overlooked or misapprehended something not presented adequately in the Petition.” slip op. at 5
NonePatents in suitUS 9,597,594 - Supercell OY v. Gree, Inc.Rehearing deniedPTAB · Oct 26, 2018 · PGR2018-00039 · APJ Lynne H Browne · PGR · Rehearing
The Board denied GREE’s rehearing request, finding no abuse of discretion in instituting PGR of claims 1–8 based on the § 101 challenge.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“limitations. For example, as noted by Patent Owner, the full quotation is “[i]n a conventional battle game, however, during one battle, the user needs to select a command to determine the action of the player character many times . . . .” Ex. 1001, 1:41–43 (emphasis added). And by modeling that behavior in the future, the number of user operations are reduced. Accordingly, while we acknowledge that it is plausible, during trial, that Patent Owner will be able to show that such a disclosure is insufficient evidentiary support for “a second mode for executing the battle with fewer user operations received from the communication terminal than in the first mode,” we disagree that it has no factual bearing on the above limitation.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“not rest solely on our determination that the claim elements or combinations of elements analyzed on pages 32–39 of the Petition were well-understood, routine, and conventional to a skilled artisan in the field. Rather, our Decision was also based on the sufficiency of Petitioner’s arguments in totality with respect to the second step of Alice, for example, that for some limitations, “the claimed improvements identified by Patent Owner do not improve the technological field. Rather, they improve game play for the user.” Dec. 17. Further, as we explained, “the claims recite the use of conventional computer activity to determine the outcome of the procedure. Such claims ‘defining a desirable information-based result and not limited to inventive means of achieving the result, fail under § 101’” and that “claim 1 merely indicates that these steps are performed by a server without further details.” Dec. 12–13 (citing Elec. Power Group 830 F.3d 1351; Ex. 1001, 19:52–20:11. While that analysis does concern the first step of Alice, it, nevertheless, does have some bearing on the second step as well.” slip op. at 4
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptNot reached
“not rest solely on our determination that the claim elements or combinations of elements analyzed on pages 32–39 of the Petition were well-understood, routine, and conventional to a skilled artisan in the field. Rather, our Decision was also based on the sufficiency of Petitioner’s arguments in totality with respect to the second step of Alice, for example, that for some limitations, “the claimed improvements identified by Patent Owner do not improve the technological field. Rather, they improve game play for the user.” Dec. 17. Further, as we explained, “the claims recite the use of conventional computer activity to determine the outcome of the procedure. Such claims ‘defining a desirable information-based result and not limited to inventive means of achieving the result, fail under § 101’” and that “claim 1 merely indicates that these steps are performed by a server without further details.” Dec. 12–13 (citing Elec. Power Group 830 F.3d 1351; Ex. 1001, 19:52–20:11. While that analysis does concern the first step of Alice, it, nevertheless, does have some bearing on the second step as well.” slip op. at 4
- Expert testimonyPetitioner expert creditedDecided for petitioner
“address Patent Owner’s countervailing evidence with respect to the above limitations, in particular, paragraphs 24 and 28–34 of Mr. Zyda’s Declaration. Req. 8–9. While we acknowledge that it was not expressly referenced in our Decision, it was taken into account and determined that, while it is worthy of some weight, Petitioner’s evidence and analysis presented a sufficient factual dispute for which trial is warranted. Given the Petition’s adequate analysis, at this stage of the proceeding, about the generic nature of the components recited in the ’308 patent and the lack of inventive means for achieving the results claimed (Pet. 32–39), we are unpersuaded that our Decision granting institution was an abuse of discretion.” slip op. at 5
§ 101 eligibilitycites BerkheimerPatents in suitUS 9,669,308 - Telebrands Corp. v. Tinnus Enterprises, LLCNo claims unpatentablePTAB · Oct 10, 2018 · PGR2017-00015 · APJ Kevin W Cherry · PGR · Final written decision
The Board held claims 1–4 not unpatentable: the obviousness grounds failed to establish the claimed elastic fastener limitation, and claim 3 was not shown indefinite or lacking written-description support.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We agree with Petitioner and determine that a POSA would have been a person having a general knowledge about, and experience with, expandable containers, including, without limitation, balloons, and at least an associate’s degree in mechanical engineering, or the equivalent. This level of skill is consistent with the types of problems and solutions described in the ’612 patent and cited prior art. For example, the ’612 patent describes a fluid inflatable system that uses elastic valve 20A (e.g., mechanical gasket, O-ring, etc.) for sealing fluid inside multiple containers (e.g., water balloons). See Ex. 1001, 1:22–24, 3:10–16. In any event, none of the issues in this case turn on the definition of a POSA, and the prior art of record provides ample evidence of the level of skill in the art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill was best determined by the references of record); see also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown”’) (internal citation omitted).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“1. Terms Construed in the Institution Decision We construed the term “elastic fastener” in our Decision on Institution, which is set forth in the following table. Inst. Dec. 14. Claim Term Construction in Institution Decision elastic fastener “an elastic element for attaching things together” Neither party disputes the language of this construction. See generally Prelim Resp. 17; Reply. We adopt them for this Final Written Decision. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015) (quoting Rodale Press, Inc. v. FTC, 407 F.2d 1252, 1256–57 (D.C. Cir. 1968)) (“‘an agency may not change theories in midstream without giving respondents reasonable notice of the change’ and ‘the opportunity to present argument under the new theory.’”)” slip op. at 14
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteNot shown unpatentable
“While the terms “unfilled state” and “filled state” describe the fullness for a container, we do not agree with Petitioner that the claim language requires determining the precise amount of fluid for each state. Section 112(b) requires that we read claim terms in the context of the surrounding claim language, not in isolation. Telebrands, 733 F. App’x at 1020. When we look at the entire claim phrase—“regardless whether the first and second ones of the plurality of containers are in a filled state or an unfilled state”— the plain language is clear that regardless of whether the balloons are in either state, the “at least first and second ones of the plurality of containers are disposed sufficiently close to each other such that they press against each other.” In other words, the exact volume of fluid or water needed to reach a “filled state” does not need to be determined in order to understand the metes and bounds of the claim so as to understand how to avoid infringement. We are further persuaded because this is consistent with the district court’s construction of this term. See Ex. 1023, 19–20.” slip op. at 17
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable
“Based upon our review of the specification, and consideration of the arguments and evidence presented, Petitioner’s position is not persuasive. We agree with Patent Owner that Petitioner has failed to show that the ’612 patent does not provide such adequate guidance to a person of ordinary skill in the art. On its face, Figure 1 of the ’612 patent (reproduced below) shows containers 18 in contact or pressing against one another with the reasonable clarity required by Vas–Cath Inc. Figure 1 of the ’612 patent is reproduced above. Although the ’612 patent describes, as Petitioner notes, that tubes 16 can be different lengths, we are not persuaded that the ’612 patent’s disclosure of an embodiment with different tube lengths detracts from the concurrent disclosure in Figure 1 of an embodiment, where it is difficult to describe containers 18 as being not in contact with each other. Additionally, we agree with Patent Owner that Petitioner has failed to show adequately that a person of ordinary skill would not have understood the ’612 patent as describing the containers in Figure 1 as pressing against one another in an unfilled state. The ’612 patent indicates Figure 1 shows elastic valve 20A in an open configuration when container 18A is attached to tube 16A to allow container 18A to fill with fluid. Ex. 1001, 3:14–18. In this open configuration, container 18A is to be filled with fluid, after which, “it may be removed from tube 16A, whereupon elastic valve 20A closes, thereby closing the neck of container 18A and sealing the fluid inside.” Id. at 3:18–21 (emphasis omitted). The ’612 patent refers to Figure 1 to describe an embodiment where elastic valve 20A is in an open configuration to fill a container that has not been filled (i.e., unfilled) and removed from tube 16A. Thus, we are persuaded that, at least, Figure 1 and this accompanying description of Figure 1 in the ’612 patent provides sufficient written description for the recited limitation that “at least first and second ones of the plurality of containers are disposed sufficiently close to each other such that they press against each other . . . in a filled state or an unfilled state.”” slip op. at 21
Patent outcomesUS 9,527,612 not shown unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites GrahamPatents in suitUS 9,527,612 - Telebrands Corp. v. Tinnus Enterprises, LLCRehearing deniedPTAB · Feb 7, 2018 · PGR2017-00024 · APJ Frances L Ippolito · PGR · Rehearing
The Board denied Telebrands’ rehearing request, leaving institution of post-grant review denied under § 325(d) because the arguments did not show the Board overlooked or misapprehended the record.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“review the decision for an “abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing [the] decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). 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” the briefing. Id.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“Dr. Kamrin’s testimony and Petitioner’s arguments presented in the Petition, but, ultimately, determined that the testimony and Petitioner’s arguments, as a whole, did not meaningfully distinguish the record from that present before the Examiner during prosecution. Dec. 8–14. As stated in the Decision, we considered Dr. Kamrin’s testimony, including his testimony regarding Donaldson’s disclosure (e.g., Figures 2–5). Dec. 12–13. Moreover, in our Decision, we discussed at length the Examiner’s review of the prior art of record, including Donaldson, during the prosecution of the ’779 patent. Dec. 10–14. In doing so, we explained that the Examiner considered the same exact issue, presented in the Petition, of whether the prior art references of record in prosecution (including Donaldson) expressly or inherently disclosed the “elastic ring” recited in the challenged claims. Id. at 12 (citing Ex. 1008, 87–88); see Ex. 1008, 87 (“Because it is not true that all elastic bands have the same elastic force as an inherent property, it cannot be presumed that all elastic bands would function the same way.”). More specifically, we noted that the Examiner reviewed and considered the Donaldson reference, and determined that “[n]one of the prior art teaches the subject matter” of the claimed “elastic ring.” Dec. 11; Ex. 1008, 87.” slip op. at 3
Discretionary denialPatents in suitUS 9,533,779 - Telebrands Corp. v. Tinnus Enterprises, LLCInstitution deniedPTAB · Nov 30, 2017 · PGR2017-00024 · APJ Frances L Ippolito · PGR · Institution
The Board denied institution on all challenged claims, finding the § 103 and written-description challenges previously considered under § 325(d), and the remaining written-description and indefiniteness challenges insufficient.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“We agree with Patent Owner that we should exercise our discretion in denying institution of review based on Petitioner’s § 103 challenges because the same art and arguments were considered by the Examiner during the original prosecution. There is no dispute that Saggio and Lee were expressly considered by the Examiner and discussed in the Examiner’s Reasons for Allowance in the May 24, 2016 Notice for Allowance. See Ex. 1008, 86–88. In the Notice of Allowance, the Examiner considered expressly the teachings of Saggio and Lee, and explained in detail that neither one of these disclosed the claimed “elastic fastener.” Id. Moreover, the Examiner expressly also considered Donaldson and found that it was “cumulative with Lee [ ] in that both references disclose that moving mechanical components must be used to detach the balloons.” Id. at 17.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Based on our review of the record, including the claim language and the Specification of the ’779 patent, we agree with Patent Owner’s position. Here, the restriction of the claimed elastic ring is limited such that the balloon, if filled with a sufficient amount of water, is detachable by (1) gravity or (2) by gravity combined with a manually applied acceleration of the tube. Further, we agree with Patent Owner’s explanation that a person of ordinary skill in the art would know when the amount of water has reached a “sufficient amount,” because the elastic rings would allow detachment by gravity or by gravity and manually applied acceleration of the tube. See Prelim. Resp. 42. Indeed, the claim language itself provides the conditions” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the effective filing date of the ’779 patent (“POSA”) was a person having general knowledge about, and experience with, expandable containers, including, without limitation, balloons, and at least an associate’s degree in a technical science or engineering. Pet. 19 (citing Ex. 1020 ¶¶ 10–14). For purposes of this Decision, we agree with Petitioner and determine that a POSA would have been a person having a general knowledge about, 2 Claims 38, 46, 54, and 60 issued as claims 4, 7, 10, and 13. and experience with, expandable containers, including, without limitation, balloons, and at least an associate’s degree in mechanical engineering, or the equivalent. This level of skill is consistent with the types of problems and solutions described in the ’779 patent and cited prior art.” slip op. at 14
- Expert testimonyOther
“Petitioner argues that the present record is different than the one before the Examiner. Pet. 80. In particular, Petitioner asserts that the testimony of Dr. Kamrin was not before the Examiner. Id. Petitioner contends that “one of the issues in this petition is inherency of the prior art references, which benefits from the consideration of expert testimony.” Id. at 81. Nonetheless, having reviewed the record, we disagree with Petitioner’s position. The technology here does not appear to be particularly complex, and the Examiner’s explanation shows that he expressly considered the issues of inherency, and offered detailed findings why the functional limitations related to the elastic fastener were not necessarily present in the art at issue. See Ex. 1008, 87–88. Although not referred to expressly in the Examiner’s explanation, the Information Disclosure Sheet considered by the Examiner includes the Petitions in PGR2016-00030 and PGR2016-00031, which contain similar explanations of inherency to those at issue in this case. See PGR2016-00031, Paper 2, 43–45 (Petition discussing inherency issue with respect to Lee). Although the Examiner’s explanation does not refer to those papers expressly, the fact that those papers were listed on an IDS is, nevertheless, circumstantial evidence that Petitioner’s inherency arguments were considered when the Examiner provided his explanation concerning inherency. See Ex. 1008, 87 (“Because it is not true that all elastic bands have the same elastic force as an inherent property, it cannot be presumed that all elastic bands would function the same way.”). Moreover, as Patent Owner notes, Dr. Kamrin fails to even address Donaldson’s use of a mechanical means, i.e., a spring, to release the balloon. Prelim. Resp. 32. Thus, we are not persuaded that Dr. Kamrin’s testimony meaningfully distinguishes the record that is before us from the record that was before the Examiner.” slip op. at 12
§ 112 disclosureDiscretionary denialPatents in suitUS 9,533,779 - Telebrands Corp. v. Tinnus Enterprises, LLCRehearing deniedPTAB · May 5, 2017 · PGR2016-00031 · APJ Frances L Ippolito · PGR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no abuse of discretion in instituting PGR despite the district court ruling, secondary-considerations evidence, and § 325(d) arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“I. LEGAL STANDARDS When rehearing a decision whether to institute post-grant review, we review the decision for an “abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing [the] decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). 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” the briefing. Id.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“§ 325(d), Req. Reh’g 7–11, we disagree. At bottom, § 325(d) is discretionary. See 35 U.S.C. § 325(d) (“the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments were presented to the Office.”) (emphasis added). Patent Owner’s argument amounts to a disagreement about how the panel viewed the Examiner’s treatment of the art and arguments from the related petition for post-grant review in PGR2015-00018. See Req. Reh’g 7–11. Patent Owner fails to point out anything in the prosecution history we overlooked or misapprehended. Id. Instead, the bulk of Patent Owner’s Request is devoted to new legal arguments, not found anywhere in the Preliminary Response, regarding how it believes we should interpret the standard for institution of post-grant review. A party seeking reconsideration “is not supposed to treat the [Board’s] initial decision as the opening of a dialogue in which that party may then use such a motion to advance new theories or adduce new evidence in response to the [Board’s] rulings.” Polsby v. St. Martin’s Press, Inc., No. 97 Civ. 690 (MBM), 2000 WL 98057, at *1 (S.D.N.Y. Jan 18, 2000). We decline to reweigh these same sections of the prosecution history or reconsider the meaning § 324(a) and § 325(d) based on new arguments advanced for the first time in a request for rehearing. Thus, we are not persuaded that we abused our discretion in applying § 325(d) to this case.” slip op. at 10
- Other 314aDecided for petitioner
“First, on this record, we are not persuaded that the district court’s preliminary injunction decision in Tinnus II controlled our independent review of the arguments and evidence submitted by the parties in our proceeding. To the contrary, our reviewing court has noted that a prior judicial opinion does not bind the Board’s review. Thus, generally, we are not required to reach the same conclusion as the district court. See Novartis AG v. Noven Pharms. Inc., No. 2016-1678, 1679, 2017 WL 1229742, at *3 (Fed. Cir. Apr. 4, 2017) (“Novartis alleges that a fundamental legal error pervades the PTAB’s Final Written Decisions: the PTAB unlawfully reached different conclusions than our court and the [district court], which addressed the ‘same’ arguments and the ‘same’ evidence and found the Asserted Claims nonobvious in two prior opinions. . . . [E]ven if the record were the same, Novartis’s argument would fail as a matter of law.”). Second, we do not agree with Patent Owner’s characterization that a district court’s standard of a “substantial question of validity” transfers so neatly to our institution standard of “more likely than not.” Req. Reh’g 4. Although “a showing of a substantial question of invalidity, requires less proof than the clear and convincing standard to show actual invalidity,” Erico Int’l Corp. v. Vutec Corp., 516 F.3d 1350, 1356 (Fed. Cir. 2008), it still requires a showing that “in light of the presumptions and burdens that will inhere at trial on the merits” the attacker has “a likelihood of success” in invalidating the patent, Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1364 (Fed. Cir. 1997); see also PPG Indus., Inc. v. Guardian Indus., Inc., 75 F.3d 1558 (Fed. Cir. 1996) (“The ultimate question, however, is whether the challenger’s evidence of invalidity is sufficiently persuasive that it is likely to overcome the presumption of patent validity.”). In contrast, there are no presumptions of validity to be overcome in proceedings before the Board. Third, on the record before us, we do not agree that “identical arguments and evidence” are at issue in our proceeding and before the district court as Patent Owner contends. Req. Reh’g 4. For example, the district court conducted a hearing where witnesses gave testimony and were subject to cross examination. Ex. 2003, 1 (noting hearing), 14 (noting testimony by an expert at hearing regarding invalidity). In contrast, at the pre-institution stage for a post-grant review, testimony submitted provided by the parties has not been cross-examined in our proceeding. Moreover, our rules require us to view disputed issues of material fact created by the testimony of the competing declarants in the light most favorable to the Petitioner. See 37 C.F.R. § 42.208(c). There is no similar requirement in a preliminary injunction ruling. Further, even if the same record were before us, this would not constrain our independent review of the arguments and evidence presented by the parties for the purposes of determining whether to institute a post-grant review. See Novartis AG, 2017 WL 1229742, at *3.” slip op. at 3
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“secondary considerations of nonobviousness. Req. Reh’g 5–7. We disagree. Initially, we note that aside from the fact that we must be careful in assigning definitive weight to evidence of secondary considerations at the institution stage before Petitioner has had a chance to respond, even when we evaluated that evidence preliminarily, we did not determine the arguments and evidence presented by Patent Owner in its Preliminary Response to be sufficient to preclude institution. See Dec. 32–33. As we pointed out in our Decision, we reviewed the evidence submitted by the Patent Owner, including evidence purported to show commercial success, copying, and praise. See Dec. 32. However, at that stage in the proceeding, we did not agree with Patent Owner’s arguments. Id. Thus, Patent Owner has not established that the Board overlooked some evidence it was required to consider for institution. A request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence.” slip op. at 7
§ 103 obviousnessDiscretionary denialPatents in suitUS 9,315,282 - Telebrands Corp. v. Tinnus Enterprises, LLCRehearing deniedPTAB · May 5, 2017 · PGR2016-00030 · APJ Kevin W Cherry · PGR · Rehearing
The Board denied Patent Owner’s request for rehearing, finding no abuse of discretion in its institution decision concerning the district court ruling, secondary considerations, or § 325(d).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“I. LEGAL STANDARDS When rehearing a decision whether to institute post-grant review, we review the decision for an “abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing [the] decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). 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” the briefing. Id.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“C. Improper Application of 35 U.S.C. § 325(d) As for Patent Owner’s arguments that we misapplied 35 U.S.C. § 325(d), Req. Reh’g 10–15, we disagree. At bottom, § 325(d) is discretionary. See 35 U.S.C. § 325(d) (“the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments were presented to the Office.”) (emphasis added). Patent Owner’s argument amounts to a disagreement about how the panel viewed the Examiner’s treatment of the art and arguments from the related petition for post-grant review in PGR2015-00018. See Req. Reh’g 10–11. Patent Owner fails to point out anything in the prosecution history we overlooked or misapprehended. Id. Instead, the bulk of Patent Owner’s Request is devoted to new legal arguments, not found anywhere in the Preliminary Response, regarding how it believes we should interpret the standard for institution of post-grant review. A party seeking reconsideration “is not supposed to treat the [Board’s] initial decision as the opening of a dialogue in which that party may then use such a motion to advance new theories or adduce new evidence in response to the [Board’s] rulings.” Polsby v. St. Martin’s Press, Inc., No. 97 Civ. 690 (MBM), 2000 WL 98057, at *1 (S.D.N.Y. Jan 18, 2000). We decline to reweigh these same sections of the prosecution history or reconsider the meaning § 324(a) and § 325(d) based on new arguments advanced for the first time in a request for rehearing. Thus, we are not persuaded that we abused our discretion in applying § 325(d) to this case.” slip op. at 13
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“Patent Owner also asserts that we misapprehended the evidence that it did present. Req. Reh’g 6–9. We disagree. Much of Patent Owner’s discussion amounts to little more than an effort to have us re-weigh the evidence that was before us. See Ahmed v. Ashcroft, 388 F.3d 247, 249 (7th Cir. 2004) (“A motion that merely republishes the reasons that had failed to convince the tribunal in the first place gives the tribunal no reason to change its mind.”). As we pointed out in our Decision, we accorded the evidence presented little weight because, aside from the fact that we must be careful in assigning definitive weight to evidence of secondary considerations at the institution stage before Petitioner has had a chance to respond, even when we evaluated that evidence preliminarily, we ascertained numerous problems with the evidence that significantly undercut the weight to be accorded. See Dec. 32–33. In particular, we discern that much of the testimony submitted consisted of vague and unsupported assertions deserving of little weight. Although Patent Owner is correct that there is no requirement that the testimony be corroborated, Req. Reh’g 9, a fact finder is entitled to take any corroboration (or lack thereof) into account in determining the weight that the testimony should be accorded. See, e.g., Nigro v. Sears, Roebuck & Co., 784 F.3d 495, 499 (9th Cir. 2015) (noting certain testimony was admissible “though absent corroboration, it may have limited weight”); United States v. Ibisevic, 675 F.3d 342, (4th Cir. 2012) (noting jury entitled to give different weight to corroborated and uncorroborated testimony); United States v. Parry, 649 F.2d 292, 296 (5th Cir. 1981) (noting a “defense discounted by the jury when standing alone, may have been believed when bolstered by corroborative testimony”). Our assessment giving corroborated testimony greater weight is additionally supported by the lack of cross-examination of these witnesses. See Martin–Mendoza v. INS, 499 F.2d 918, 921 (9th Cir. 1974) (approving the hearing officer’s determination that the “weight [of a sworn statement] is necessarily impaired by the fact that the affiant could not be presented for cross-examination”). Moreover, we have broad discretion to determine what weight to give the evidence before us. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding that Board has discretion to give weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“[A]ccord[ing] little weight to broad conclusory statements [in expert testimony before the Board] that it determined were unsupported by corroborating references [was] within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate.”). We are not persuaded by Patent Owner’s contentions that we erred in weighing its evidence.” slip op. at 8
§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 9,242,749 - Telebrands Corp. v. Ragner Technology CorporationInstitution deniedPTAB · Nov 23, 2016 · PGR2016-00026 · APJ Michael W Kim · PGR · Institution
The Board denied institution because the petition did not show that claims 1–25 were more likely than not unpatentable for indefiniteness or obviousness over Berardi and Gladfelter.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“may be instituted only if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Person of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art at the time of the effective filing date of the ’057 patent “would have been a person having general knowledge about and experience with the manufacture and/or use of hoses and with fluid mechanics and materials science as they relate to hoses and how hoses work generally. The person of ordinary skill has at least an associate’s degree in science or engineering.” Pet. 17 (citing Ex. 1005). Patent Owner does not challenge Petitioner’s assertion. On these facts, we determine that Petitioner’s articulation of a person of ordinary skill in the art is credible.” slip op. at 7
- Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable
“’057 patent defines the following relevant claim terms: “extended length” and “maximum stretched length.” Petitioner does not dispute that these claim terms are defined expressly by the ’057 patent, nor does Petitioner indicate that these claim terms are indefinite. Next, each independent claim recites expressly that the “stretched length” is longer than the “extended length,” which we construed above as “the length the hose or those components extend to when the hose is pressurized with a fluid and no extension forces are applied other than fluid pressure.” Finally, the term “maximum stretched length,” both by the use of the word “maximum” and the express definition set forth in the ’057 patent, indicates that it constitutes an upper bound for the term “stretched length.” Accordingly, through transitive analysis, we determine that the recited term “stretched length” is a relative length intermediate the explicitly defined terms “extended length” and “maximum stretched length.” Relative claim terminology is acceptable if one of ordinary skill would have understood what is claimed, in light of the Specification. Seattle Box Co., Inc. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984).” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“those components extend to when the hose is pressurized with a fluid and no extension forces are applied other than fluid pressure,” and also determined that “stretched length” is a relative length intermediate the explicitly defined terms “extended length” and “maximum stretched length.” When considered in the aggregate, we see that “extended length” is a length of a hose attributable to only fluid pressure, while “stretched length” is a length of a hose attributable to any force other than fluid pressure. Accordingly, a discussion of the prior art must acknowledge the interplay between the length of the hose, fluid pressure, and other forces, in order to meet the aforementioned claim limitation.” slip op. at 17
§ 102 anticipation§ 112 disclosurePatents in suitUS 9,182,057
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.