- Alpinestars S.P.A. / Alipinestars USA Inc. v. Dainese S.P.A.Rehearing deniedPTAB · Feb 9, 2026 · IPR2025-00750 · APJ Benjamin D M Wood · IPR · Rehearing
The Board denied rehearing, leaving institution denied because Petitioner did not show a reasonable likelihood of prevailing on claims 1–22 under the challenged obviousness grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Petitioner misstates the Decision’s reasoning. As is clear from the previous discussion, we determined that Petitioner’s articulated reasons for combining EP’536 with CN’180 lacked a rational underpinning, not because “EP’536 does not relate to ‘air bags,’” but because the means by which EP’536’s device inflates differs fundamentally from that of CN’180’s device. Dec. 17–18. Petitioner did not acknowledge this critical difference in the Petition, and continues not to do so in its Rehearing Request.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“EP’536 with CN’180 lacked a rational underpinning because EP’536’s inflation mechanism differs fundamentally from CN’180’s inflation mechanism. Dec. 17–18. As we stated, whereas CN’180’s fall-protection belt uses an airbag that requires an external source of pressurized air to inflate, EP’536’s garment does not need an external inflation device because “the gas generating agent 18 in each envelope automatically generates gas and inflates the envelopes in response to rising temperatures.” Id. at 18 (citing Ex. 1004 ¶ 15; Ex. 1005 ¶¶ 5, 19). This difference reflects the fundamentally different purposes of the two devices: CN’180’s device is designed to provide “fall protection” to, e.g., “elderly people,” (Ex. 1005 ¶ 1, 3), whereas EP’536’s device provides “adaptive thermal insulation” for, e.g., garments worn by fire fighters. Ex. 1004 ¶¶ 1–3, 250. Because of the different means by which EP’536’s and CN’180’s devices inflate and the different purposes for doing so, we were not persuaded that one of ordinary skill in the art would have combined the references as Petitioner proposed. Dec. 18. We further noted that the modification would not have improved the reusability of EP’536’s device “by having only one mechanism to recharge,” because EP’536’s “gas generating agent does not need any ‘mechanism to recharge.’” Dec. 18. Instead, we noted EP’536’s teaching that its gas generating agent “automatically recombines or condenses in response to a temperature decrease to return the envelopes, and therefore the garment, to its original thickness, at which point the gas generating agent is ready for subsequent reactivation.” Id. (citing Ex. 1004 ¶¶ 139–141). Finally, we determined that replacing EP’536’s envelopes with CN’180’s airbag “would have made EP’536’s invention unsuitable for its intended purpose: providing a protective garment with ‘adaptive thermal insulation.’” Dec. 19. We stated that “Petitioner does not suggest, and we have found nothing in the record to establish, that CN’180’s airbag would provide this feature.” Id. at 20.” slip op. at 3
- Obviousness (§103) › KSR rationalesMotivation not foundNot shown unpatentable
“rationales for combining EP’536 and CN’180. Reh’g Req. 6–7. First, Petitioner asserts that we “improperly rejected Petitioner’s ‘simple substitution’ evidence in view of [the Board’s] incorrect conclusion that EP’536 does not disclose an ‘external source of inflation [EP’536’s dosing aids].’” Id. at 6 (citing Dec. 18–19). This argument is unpersuasive at least because, as we discussed above, EP’536’s dosing aids do not constitute an external source of inflation. Petitioner further argues that we incorrectly evaluated its “obvious to try” rationale because, contrary to our analysis, Petitioner did in fact identify a problem to be solved by its “finite number of solutions”: “simplify[ing] the design and reduc[ing] the number of required inflation mechanisms.” Id. at 6–7. The Petition’s entire “obvious to try” discussion is as follows: [A] POSITA would have found it obvious to try a one-piece airbag 10 with strip-shaped inflation units 12 in the EP’536- CN’180 airbag system because it would have been a selection from a finite number of identified predictable solutions (i.e., using one chamber with connected individual inflation units 12 versus multiple individual envelopes 20). 5 Petitioner also argues that dosing aids are “needed in order to make the disclosed device reusable.” Reh’g Req. 5–6. This is incorrect, as EP’536 conveys that the reusability of the device is a result of the gas generating agent condensing or recombining when temperatures fall. Ex. 1004 ¶¶ 139– 141. Even if it were true, however, it is unclear how it would support Petitioner’s argument. Pet. 16. As is evident, Petitioner did not identify a design need, market pressure, or other problem that would have been addressed by its identified “solutions,” and therefore we were not persuaded by this rationale. Dec. 19. Petitioner’s attempt to cure this deficiency in its Rehearing Request is tardy. We cannot misapprehend or overlook an assertion that Petitioner fails to make in the Petition. It is also insufficient. Petitioner does not provide any evidence of a known design need or market pressure to “simplify [EP’536’s] design” or reduce the number of “required inflation mechanism” it uses.” slip op. at 7
§ 103 obviousnessPatents in suitUS 12,012,065 - Tesla, Inc. v. Iqar Inc.Rehearing deniedPTAB · Nov 6, 2025 · IPR2024-00543 · APJ Sean P O’Hanlon · IPR · Rehearing
The Board denied Tesla’s rehearing request and left claims 8 and 18 not shown unpatentable under §103 over Hongo, Obradovich, Niki, and Newstrom.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we 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) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Petitioner’s counsel during the hearing or any of Petitioner’s arguments and evidence. As confirmed by Petitioner’s counsel, Petitioner relies solely on Newstrom’s disclosure of loading its spatial database 20 into solid state memory via a “wireless connection to [a] server” in asserting that the database “may be hosted on a server that is remote from a vehicle.” Pet. 83 (citing Ex. 1012, 8:26–38; Ex. 1003 ¶ 197). Column 8, lines 27–29 is the only disclosure in Newstrom of a “wireless connection.” Although Petitioner argues that Newstrom’s system communicates wirelessly with the geospatial database while the vehicle is being driven (see Dec. 38 (citing Pet. 83); Tr. 19:20–22), Petitioner relies solely on the single instance of “wireless” in Newstrom’s disclosure to satisfy the recitation that the database (which Petitioner maps to Newstrom’s geospatial database 20) is “remote.” In the Decision, we explained that Petitioner’s reliance on Newstrom’s “wireless connection” and its assertion that the geospatial database may be hosted on a remote server were not persuasive to satisfy Petitioner’s burden to prove the unpatentability of claims 8 and 18 by a preponderance of the evidence, especially given Newstrom’s express disclosure that the geospatial database is located on the vehicle. Dec. 40–42. For example, we stated: Petitioner does not explain adequately why Newstrom’s disclosure that, when first initializing the database manager, the geospatial database is loaded into solid state memory by, for example, wirelessly transferring data from a server means that the geospatial database is remote from the vehicle. Similarly, Petitioner does not explain adequately why Newstrom’s disclosure that the database manager can load new portions of the data into solid state memory as the vehicle location changes means that the geospatial database is remote from the vehicle. Nor does Petitioner’s conclusory contention that “the geospatial database 20 may be hosted on a server that is remote from a vehicle” (Pet. 83 (emphasis added)) apprise us of disclosure that Newstrom’s geospatial database is remote from the vehicle. Dr. Morellas’ testimony is substantially identical to the Petition (see Ex. 1003 ¶197) and, thus, also fails to provide adequate support for Petitioner’s assertions. During the hearing, counsel for Petitioner confirmed that it relied solely on Newstrom’s disclose of the database using a “wireless connection” by which the database manager communicates with the database in arguing that Newstrom’s geospatial database 20 is remote from vehicle 12. Tr. 19:14–24; see also Ex. 1012, 8:27–29. Petitioner, however, fails to explain adequately how such wireless communication indicates that the database is not located on vehicle, especially given Newstrom’s express disclosure (discussed above) that the database is onboard the vehicle.” slip op. at 5
- Strike new argumentNew argument disregardedDecided for patent owner
“Initially, Petitioner’s reliance on assertions made in its Reply, relying on Dr. Morellas’ second declaration, fail to persuade us that we overlooked or misapprehended any arguments made in the Petition. Such post-institution arguments attempting to bolster the Petition are untimely and, thus, improper. See Patent Trial and Appeal Board Consolidated Trial Practice Guide 73 (Nov. 2019).6 Even considering Petitioner’s Reply arguments, however, we are not” slip op. at 7
§ 103 obviousnessPatents in suitUS 10,882,399 - Alivecor, Inc. v. Apple Inc.Rehearing deniedPTAB · Jul 18, 2024 · IPR2024-00095 · APJ Hyun J Jung · IPR · Rehearing
The Board denied AliveCor’s rehearing request, finding no abuse of discretion in denying institution because the Petterson–Nakada combinations did not teach or suggest the claimed replacement of one user interface with another.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if substantial evidence does not support a factual finding, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000); see also Reh’g Req. 8 (citing 37 C.F.R. § 42.71(c)). Also, 37 C.F.R. § 42.71(d) sets forth, in relevant part that: rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Our determinations regarding Nakada did not support Petitioner’s argument that Nakada’s “system is returned to the beginning state of the routine, which in the case of Petterson would be FIG. 2B.” Pet. 71; Dec. 39–40. We also stated that “the proposed combination does not address adequately Nakada’s description of powering down its display.” Id. at 40 (citing Pet. 48–50; Prelim. Resp. 25–26; Ex. 1011, Fig. 4). We, thus, determined Petitioner failed to show sufficiently that either Petterson or Nakada teaches or suggests “replacing display of the second user interface with the first user interface.” Dec. 38–41 (citing Pet. 48–50, 68–69, 70–71; Ex. 1003 ¶¶ 379, 382; Ex. 1011, Fig. 4). The “totality of the combination” lacked replacing a user interface with any other user interface. Dec. 40–41 (determining “the asserted references neither individually nor combined as proposed would have, ‘in response to detecting that the first criteria are no longer met for a second period of time that is longer than the first period of time, replac[ed] display of the second user interface with the first user interface’”); Reh’g Req. 8 (arguing “the Board overlooked the totality of the combination and Petitioner’s arguments and supporting evidence regarding the modification of Petterson that would have been obvious . . . in view of Nakada”).” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“After considering the arguments and cited evidence of the Petition, we determined that Petitioner did not show a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’533 patent. Paper 7 (“Decision” or “Dec.”). Petitioner subsequently filed a Request for Rehearing. Paper 8 (“Reh’g Req.”). For the reasons stated below, Petitioner has not shown that we abused our discretion in denying the Petition, and thus, Petitioner’s Request for Rehearing is denied.” slip op. at 2
§ 103 obviousnessPatents in suitUS 10,568,533 - PTAB · Dec 8, 2021 · IPR2021-00608 · APJ Thu A Dang · IPR · Rehearing
The Board denied Samsung’s rehearing request, leaving institution denied under § 325(d) because the same or substantially the same arguments were previously presented and examiner error was not shown.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in its petition. Id. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Advanced Bionics, we exercised our discretion under 35 U.S.C. § 325(d) and determined not to institute inter partes review. Dec. 7−26 (citing Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte Gmbh, IPR2019- 01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential)). As to Part 1 of the Advanced Bionics framework, we determined that the same or substantially the same arguments were presented previously to the Office. Id. at 10−13. Under Part 2 of the Advanced Bionics framework, we determined that Petitioner failed to show that the Examiner erred by not realizing that Chu ’330 and Chu ’886 qualify as 35 U.S.C. § 102(b) prior art and are material to the patentability of the claims in the ’654 patent. Id. at 14−26.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner’s arguments are new arguments raised for the first time in its Rehearing Request. Petitioner acknowledges that “NRG and Hollmer were not cited in the Petition.” Req. Reh’g 10. Nevertheless, Petitioner alleges that it “could not have anticipated the Patent Owner’s mischaracterization of the Droplets decision, nor the Board’s reliance on this mischaracterization,” and that Petitioner was not authorized to file a reply to the Patent Owner Preliminary Response. Id.; see also id. at 2−3, fn.1. Petitioner’s new arguments in connection with Hollmer and NRG are improper. As we discussed above, Patent Owner did not mischaracterize and we did not misapprehend Droplets. It was not necessary to authorize Petitioner to file a reply, as we were capable of determining whether Patent Owner mischaracterizes Droplets. As discussed above, Petitioner fails to recognize that the language relied upon by Patent Owner in Droplets is consistent with 37 C.F.R. § 1.57 and MPEP § 608.01(p). Although Petitioner relies on MPEP § 608.01(p) in its Petition, Petitioner now in its Rehearing Request for the first time suggests that we should ignore MPEP § 608.01(p) and the case law cited in MPEP § 608.01(p). Pet. 11–12; Req. Reh’g 6−7. A request for rehearing is not an opportunity to submit new arguments, after the decision has noted the deficiencies in the petitioner’s original analysis. 37 C.F.R. § 42.71(d). It is Petitioner’s burden to identify specifically all matters we misapprehended or overlooked in our Decision to Institute. We could not have misapprehended or overlooked the new arguments that were not presented in the record until after the Decision.” slip op. at 15
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“Contrary to Petitioner’s contentions, section 1.57 of Title 37 of the Code of Federal Regulations is not a “statute,” but a regulation that became effective on September 21, 2004. See 69 Fed. Reg. 56,482. The ’882 application, which incorporated Chu ’886 by reference, was filed on September 8, 1998, and issued as Chu ’330 on February 5, 2002. Ex. 1005, codes (21), (22), (45), (60), 6:1–7. The ’654 patent, which incorporated the ’882 application by reference, is a reissue of Application No. 09/312,199 (“the ’199 application”) filed on May 14, 1999, now U.S. Patent No. 6,634,777 (“the ’777 patent”), issued on November 4, 2003. Ex. 1001, codes (63), (64); 5:63–67. Both the ’882 application (issued as Chu ’330) and the ’199 application (reissued as the ’654 patent) were filed and issued as patents prior to the effective date, September 21, 2004, of 37 C.F.R. § 1.57. Petitioner does not explain why the applicant should have complied with 37 C.F.R. § 1.57, which did not exist at the time of filing of those applications or issuance of those patents that incorporated by reference Chu ’886 and the ’882 application. Pet. 7–8, 10−17; Req. Reh’g 1−12. We decline to apply 37 C.F.R. § 1.57 retroactively to the incorporation by reference statements submitted in the ’882 application and the ’199 application.” slip op. at 6
§ 102 anticipationDiscretionary denial - PTAB · Dec 2, 2021 · IPR2021-00607 · APJ Joni Y Chang · IPR · Rehearing
The Board denied Samsung’s rehearing request, leaving in place its § 325(d) denial of institution because it found no material examiner error.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). Under 37 C.F.R. § 42.71(d), a petitioner who requests rehearing of a decision denying institution must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in its petition. Id. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315−16 (Fed. Cir. 2000).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“In the Decision, after applying the two-part framework set forth in Advanced Bionics, we determined to exercise our discretion under 35 U.S.C. § 325(d) not to institute inter partes review. Dec. 6−22 (citing Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte Gmbh, IPR2019- 01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential); Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17−18, 24 (PTAB Dec. 15, 2017) (precedential as to Section III.C.5, first paragraph)). As to Part I of the Advanced Bionics framework, we determined that the same or substantially the same arguments were presented previously to the Office. Id. at 8−11. Under Part II of the Advanced Bionics framework, we determined that Petitioner failed to show that “[t]he Examiner erred by not realizing that Chu ’330 and Chu ’886 qualify as 35 U.S.C. § 102(b) prior art and are material to the patentability of the claims in the ’140 Patent.” Id. at 11−22.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner’s arguments are new arguments raised for the first time in its Rehearing Request. Petitioner acknowledges that Hollmer and NRG were not cited in the Petition. Id. at 10. Nevertheless, Petitioner alleges that it “could not have anticipated the Patent Owner’s mischaracterization of the Droplets decision, nor the Board’s reliance on this mischaracterization,” and that Petitioner was not authorized to file a reply to the Patent Owner Preliminary Response. Id.; see also id. at 2−3 n.1. Petitioner’s new arguments in connection with Hollmer and NRG are improper. As we discussed above, Patent Owner did not mischaracterize, nor did we misapprehend, Droplets. It was not necessary to authorize Petitioner to file a reply, as we were capable of determining whether Patent Owner mischaracterizes Droplets. Petitioner fails to recognize that the language relied upon by Patent Owner in Droplets is consistent with 37 C.F.R. § 1.57 and MPEP § 608.01(p). Although Petitioner relies on MPEP § 608.01(p) in its Petition, Petitioner now in its Rehearing Request for the first time suggests that we should ignore MPEP § 608.01(p) and the case law cited in MPEP § 608.01(p). Pet. 12; Req. Reh’g 6−7. A request for rehearing is not an opportunity to submit new arguments, after the decision has noted the deficiencies in the petitioner’s original analysis. 37 C.F.R. § 42.71(d). We could not have misapprehended or overlooked the new arguments that were not presented in the record until after the Decision. Id.” slip op. at 13
- BurdenDecided for patent owner
“Under Part II of the Advanced Bionics framework, Petitioner has the burden to show that “the Examiner erred by not realizing that Chu ’330 and Chu ’886 qualify as 35 U.S.C. § 102(b) prior art and are material to the patentability of the claims in the ’140 Patent,” as Petitioner alleges in its § 325(d) analysis. Pet. 7−8. Upon consideration of Petitioner’s Request for Rehearing, we are not persuaded by Petitioner’s arguments.” slip op. at 4
Discretionary denial - ROKU, Inc. v. Universal Electronics, Inc.Rehearing deniedPTAB · Aug 17, 2021 · IPR2019-01615 · APJ Sharon Fenick · IPR · Rehearing
The Board denied Roku’s rehearing request, leaving intact its determination that claims 1, 3, 5, and 7 were not shown unpatentable over Chardon.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION On request for rehearing, “[t]he burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, reply, or a sur-reply.” Id. We have reviewed Petitioner’s Request and carefully considered all of the arguments presented. We are not persuaded that we misapprehended or overlooked any arguments or evidence, and thus we decline to modify the Decision.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“first communication method” and “second communication method” recited in claim 1 with Chardon’s “CEC command codes” and “IR command codes,” respectively, where Chardon’s command codes are stored in a database linked to the Extended Display Identification Data (EDID) for target devices. Dec. 20–21. We thus evaluated whether command codes in an EDID-linked database teach or suggest the claimed listing comprised of at least a first communication method and a second communication method, and determined that “the record falls short of providing evidence that one of ordinary skill in the art would have understood stored command codes to act as an identification of communication methods to be used.” Id. at 21–22. slip op. at 3
§ 103 obviousnessPatents in suitUS 9,716,853 - ROKU, Inc. v. Universal Electronics, Inc.Rehearing deniedPTAB · May 25, 2021 · IPR2019-01619 · APJ Minn Chung · IPR · Rehearing
The Board denied Roku’s rehearing request, leaving in place the denial of institution on claim 1 under § 325(d) because the petition did not show material Office error.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. Because Petitioner seeks rehearing of our Decision denying the Petition, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”). 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).” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“whether the art or arguments presented in the Petition are the same or substantially the same as those previously presented to the Office. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019- 01469, Paper 6 at 10 (PTAB Feb. 13, 2020) (designated precedential Mar. 24, 2020) (“Advanced Bionics”). Factors (c), (e), and (f) “relate to whether the petitioner has demonstrated a material error by the Office” in its prior consideration of that art or arguments. Id. Under a two-part framework set forth in Advanced Bionics, we first determine whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office by considering factors (a), (b), and (d). Id. at 8, 10. If “either condition of first part of the framework is satisfied”—that is, if “the same or substantially the same art previously was presented to the Office” or “the same or substantially the same arguments previously were presented to the Office,” we then consider factors (c), (e), and (f) to determine whether Petitioner has demonstrated a material error by the Office. Id. at 8, 10.” slip op. at 4
- BurdenDecided for patent owner
“argument by Petitioner that “the detailed mapping in the Petition” demonstrated material error by the Examiner by showing that Herz discloses various limitations of claim 1, including “limitations [1.0]–[1.3], and [1.5].” Req. 5–6. But Petitioner did not present such an argument in the Petition or the Reply. See Pet. 46–48; Reply 1–5. In addition, Petitioner did not explain how its mapping of Herz to disclose certain limitations of claim 1 demonstrates material error by the Examiner. See Advanced Bionics, 9 (“If reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability.”). That is, Petitioner did not meaningfully connect its obviousness mapping to a demonstration of Examiner error during the Reexamination Proceeding. See Pet. 15–48; Reply 1–5. We could not have misapprehended or overlooked arguments or evidence that were not presented or developed in the Petition or the Reply.” slip op. at 11
Discretionary denialPatents in suitUS 7,782,309 - ROKU, Inc. v. Universal Electronics, Inc.Rehearing deniedPTAB · May 13, 2021 · IPR2019-01595 · APJ Minn Chung · IPR · Rehearing
The Board denied rehearing of its decision denying institution on claims 1 and 2, finding no abuse of discretion on priority entitlement or motivation to combine Darbee and Golender.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the party challenging the decision,” and the challenging party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in a 1 Petitioner also filed a request for the Precedential Opinion Panel (“POP”) to review the Decision (Paper 13 (Notification of Receipt of POP Request)), which the POP denied (Paper 14 (Order)). paper of record. 37 C.F.R. § 42.71(d). Because Petitioner seeks rehearing of our Decision denying institution of trial based on the Petition, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”). 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). 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 that could have been presented in the Petition.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“issue upon which the priority determination turns—what the priority applications reasonably would have conveyed to a person of ordinary skill in the art—because Dr. Medvidovic did not provide any testimony on that issue. And we did not overlook or misapprehend any testimony of Dr. Medvidovic regarding what the priority applications reasonably would have conveyed to a person of ordinary skill in the art because we could not have overlooked or misapprehended any testimony that was not presented in the Medvidovic Declaration. As discussed above, Dr. Medvidovic’s testimony based on what is expressly disclosed in or necessarily follows from the disclosures of the priority applications was insufficient because Dr. Medvidovic did not explain adequately why the disclosures in the priority applications would not reasonably have conveyed to a person of ordinary skill in the art the subject matter of the User Action Limitation. Thus, Dr. Medvidovic’s testimony was insufficient to raise a genuine issue of material fact on the issue of what the priority applications reasonably would have conveyed to a person of ordinary skill in the art. Although Patent Owner’s declarant, Mr. Bear, provided detailed testimony and explanations regarding how a person of ordinary skill in the art would have understood the priority applications to describe the subject matter recited in the User Action Limitation (see Ex. 2001 ¶¶ 111–122, 126–127), Dr. Medvidovic did not provide adequate testimony or explanations to the contrary on the issue (see Ex. 1010 ¶¶ 53–63).” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“misapprehend or overlook 37 C.F.R. § 42.108(c). The mere fact that Dr. Medvidovic provided testimony different from the testimony of Mr. Bear does not by itself raise a genuine issue of material fact. See Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325–26 (Fed. Cir. 2016) (“The mere existence in the record of dueling expert testimony does not necessarily raise a genuine issue of material fact.”). As the Request acknowledges, Dr. Medvidovic in his Declaration (Ex. 1010, “Medvidovic Declaration”) testified that the subject matter of the User Action Limitation is “neither expressly disclosed [in] nor necessarily follows from” the descriptions in the priority applications about event journal data. Req. 3 (emphases added) (citing Ex. 1010 ¶¶ 57–62). As discussed above, however, the test for determining compliance with the written description requirement under 35 U.S.C. § 112 is whether the original disclosure of the earlier-filed application reasonably would have conveyed to a person of ordinary skill in the art that the inventor had possession of the claimed subject matter at the time of the earlier-filed application. Ariad Pharm., 598 F.3d at 1351. The record shows that Dr. Medvidovic did not provide any testimony in his Declaration as to what the disclosures in the priority applications reasonably would have conveyed to a person of ordinary skill in the art. See Ex. 1010 ¶¶ 53–63. Nor did Dr. Medvidovic explain adequately in his Declaration why the disclosures in the priority applications would not reasonably have conveyed to a person of ordinary skill in the art the subject matter of the User Action Limitation. See id.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Under Petitioner’s definition of the level of ordinary skill in the art, however, “less education can be remedied with additional work experience (e.g., 5–6 years).” Pet. 7 (citing Ex. 1010 ¶¶ 64–67). As stated in the Bear Declaration, Mr. Bear’s work experience includes at least 9 years of computer software programming using a variety of coding languages, such as BASIC, Pascal, C, C++, and 68000 Assembly Language. See Ex. 2001 ¶¶ 10–12. Thus, Mr. Bear is qualified to testify from the perspective of a person of ordinary skill in the art under Petitioner’s definition of a person of ordinary skill in the art. As discussed in the Decision, although we did not find the parties’ proposals for the level of ordinary skill in the art to be materially different, to the extent the testimony from the parties’ declarants on the level of ordinary skill in the art raised a genuine issue of material fact, we adopted and applied Petitioner’s definition for purposes of the Decision, being mindful of the rule that “a genuine issue of material fact created by such testimonial evidence will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review.” Dec. 9 (citing 37 C.F.R. § 42.108(c)). Thus, the record shows that, under Petitioner’s definition of the level of ordinary skill in the art adopted in consideration of § 42.108(c), the Decision appropriately credited Mr. Bear’s testimony on what the priority applications reasonably would have conveyed to a person of ordinary skill in the art.” slip op. at 11
§ 103 obviousness§ 112 disclosurePatents in suitUS 8,015,446 - Amazon.Com, Inc. / Amazon.Com LLC et al. v. VB Assets, LLCRehearing deniedPTAB · Apr 19, 2021 · IPR2020-01374 · APJ Sean P O’Hanlon · IPR · Rehearing
The Board denied rehearing, leaving institution denied because Petitioner did not show the panel misapprehended or overlooked a matter or abused its discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d) (2019). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004).” slip op. at 2
NonePatents in suitUS 8,886,536 - Intel Corporation v. VLSI Technology LLCRehearing deniedPTAB · Feb 19, 2021 · IPR2020-00527 · APJ Kimberly Mcgraw · IPR · Rehearing
The Board denied Intel’s rehearing requests and left in place its § 314(a) denial of institution in both proceedings based on the Fintiv factors.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“Petitioner has not shown that this change in circumstance warrants modifying (1) the determination that Fintiv factor 4 weighs in favor of exercising discretion to deny institution or (2) the determination, after weighing all factors and taking a holistic view of the relevant circumstances, to exercise discretion to deny institution. Several of the claims challenged in each Petition are still at issue in the parallel proceeding, and the combinations of references asserted by Petitioner in the district court largely overlap with the combinations of references asserted in the Petitions. Petitioner has not identified any differences among the claims that have been dropped and the claims that remain as a reason to modify our Decision. See Fintiv, Paper 11 at 13 (“if a petition involves the same prior art challenges but challenges claims in addition to those that are challenged in the district court, it may still be inefficient to proceed because the district court may resolve validity of enough overlapping claims to resolve key issues in the petition”).” slip op. at 5
Discretionary denialPatents in suitUS 6,633,187
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.