- Tripadvisor, LLC v. Mimzi, LLCAll claims unpatentablePTAB · Nov 12, 2020 · IPR2019-01080 · APJ Nabeel U Khan · IPR · Final written decision
Claims 1–4 and 7–18 are unpatentable over Roth and Ng; claims 1, 2, and 4, 7–18 are unpatentable over Roth and Fortescue; claim 3 and claims 1, 10, and 16 are not shown unpatentable on …
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“the invention, “would have (i) had a bachelor’s degree in Computer Science, Electrical Engineering, Computer Engineering, or a closely related field, and about 1–2 years of practical experience in that field; or (ii) had a master’s degree in Computer Science, Electrical Engineering, Computer Engineering or a closely related field.” Pet. 12 (citing Ex. 1004 ¶ 55). Patent Owner argues “POSITA must have some familiarity with social network databases (the technology at issue) in addition to Petitioner’s proposed general experience in Computer Science, Electrical Engineering, or Computer Engineering.” PO Resp. 15. On this record, we agree with Petitioner’s proposed definition of person of ordinary skill in the art, and adopt it for purposes of this Decision. Although the claims of the ʼ981 Patent recite searching a social network database, we find the fields of Computer Science, Electrical Engineering, and Computer Engineering would provide knowledge related to social networks and database search at a level commensurate with the disclosure of the ʼ981 Patent, and, thus, we adopt Petitioner’s proposed definition of the level of ordinary skill in the art. We note, however, that our analysis below” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Having considered the parties’ arguments and the fully developed trial record, we do not agree with Patent Owner’s proposed construction. The ʼ981 Patent describes metadata as data that includes “date data, time data, name data or location data.” Ex. 1001, 2:31–32. Figures 1 and 2 of the ʼ981 Patent list several examples of metadata, including, “Date of call, dictation or message,” “Start time,” “End Time,” Duration,” “Phone #,” “Phone # other party,” “Name,” “Name of other party,” “Date of Synopsis,” “Start time of Synopsis,” “End time of Synopsis,” “Duration of Synopsis,” “Location start,” “Location time 1,” “Location at end,” “Loc. Start synopsis,” and “Loc. End synopsis.” As can be seen, the ʼ981 Patent describes metadata broadly as encompassing a variety of data associated with various uses of the mobile device, such as calls, texts, dictation, photos, and the like. Patent Owner does not provide sufficient evidence that the word “associated” means “attached” in the context of the claim. The ʼ981 Patent does not use the term “attached” anywhere to describe the metadata associated with the spoken request, nor has Patent Owner identified the use of the term anywhere in the intrinsic evidence. Patent Owner cites Figures 1 and 2 of the ʼ981 Patent as supporting its construction but Figures 1 and 2 show that a time offset and location may be added to the transcript for each the time and location information. The claim, however, recites that metadata be associated with the spoken request, not that it be added to the transcript. Ultimately, we fail to see how these embodiments show that time and location are attached to the spoken request. In light of the parties’ arguments regarding unpatentability, we determine that we need not further construe the term “metadata associated with the spoken request.”” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Having considered the parties’ arguments and evidence and the fully developed trial record, we do not agree with Patent Owner’s construction. The ʼ981 Patent states that it discloses “[a] system and method for providing social-network (Centralized Community Search database)—provided outputs to a mobile-electronic-device user in response to the user’s spoken request.” Ex. 1001, Abstract. The ʼ981 Patent explains that a user may wish to transmit their “text messages, photos, videos, call and voice annotations or synopsis (with speech-recognized text and location data), to a Centralized Community Search database” and that the user may designate this content to be public and “be shared with anyone via the Internet.” Ex. 1001, 14:64– 15:6. The ʼ981 Patent calls the public sharing of information as “Location Blogging.” See Ex. 1001, 15:1–6. The ʼ981 Patent explains that the publicly shared content contributed to the Centralized Community Search database may include information such as “a review of a restaurant or business.” Ex. 1001, 15:7–15. The Centralized Community Search database “may be searched or mined based on social network or type of information, restaurant location.” Ex. 1001, 15:22–26. Although the ʼ981 Patent describes information being stored in a centralized community search database, it does not restrict the community in any way nor does it describe the database as storing interpersonal relationships between community members. We find insufficient support in the ʼ981 Patent for such a limitation. Moreover, we find no support for Patent Owner’s argument that a social network database has a specific structure with relational tables and links between tables and between individuals, nor any support for the database being dynamic and two-way. We therefore decline to import such limitations into the claim. For purposes of this Decision, we do not consider whether the term “social network” should be given patentable weight. As explained below, even if we give the term patentable weight, when properly construed, the relied upon references teach a social network database. The ʼ981 Patent describes a centralized database that stores information, such as text messages, photos, videos, road warnings and restaurant reviews, accessible by anyone on the Internet, without disclosing or requiring the storage of interpersonal relationships. In light of the parties’ arguments regarding unpatentability, we need not further construe the term “social network database.”” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We find Petitioner has demonstrated that one of ordinary skill in the art would have been motivated to combine Roth with Fortescue. Both references relate to performing internet searches and both discuss searching for restaurants. On this record, we are persuaded by Petitioner that a person of ordinary skill would have considered adding Fortescue’s social network elements and the ability to rank based on various factors to benefit Roth’s that a skilled artisan would have been motivated to modify Fortescue to add Roth’s speech to text feature for additional convenience for the user.” slip op. at 29
Patent outcomesUS 9,128,981 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,128,981 - Google LLC v. Uniloc 2017, LLCRehearing deniedPTAB · Oct 16, 2020 · IPR2019-01584 · APJ Kevin F Turner · IPR · Rehearing
The Board denied Google’s rehearing request, finding no abuse of discretion in denying institution of review of claims 1–3, 5, 6, 8, 39, and 41 under its General Plastic analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When rehearing a decision on institution, we do not review the merits 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
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for patent owner
“petitions are only relevant if Petitioner was a party to the prior proceedings, or had a relationship with the prior petitioners. Reh’g Req. 7. But a review of the cited precedential decision does not reflect Petitioner’s suggestion. See General Plastic, Paper No. 19 at 15−19 (“Our intent in formulating the factors was to take undue inequities and prejudices to Patent Owner into account.”). General Plastic does not proscribe panels of the Board from considering whether a subsequent petitioner knew of the prior art cited in the subsequent petition at the time of filing of the first petition, per the second factor. Similarly, we are not barred, under General Plastic, from considering the length of time that elapsed between when a petitioner learned of the art and when the petition, based on that art, was filed, or whether petitioner provides an adequate explanation for the time elapsed between the filings of multiple petitions, per the fourth and fifth factors. Additionally, we are not persuaded that the factors enumerated in General Plastic, as viewed through the lens of Valve Corp., must all be limited by any possible relationship between the multiple petitioners. Although the discussion of the first factor in Valve Corp. makes clear that “any relationship between those petitioners when weighing the General Plastic factors” must be considered, the remaining factors take into account the knowledge of the second petitioner irrespective of a specific relationship. See Valve Corp., Paper 11 at 9−15. As such, the relationship between the different petitioners certainly has some bearing on what the second petitioner knew, when they knew it, and when they acted upon it, but the consideration of the second through seventh factors does not require a showing of a specific relationship between the petitioners to consider those factors.” slip op. at 5
Discretionary denialPatents in suitUS 6,519,005 - Ericsson Inc. v. Uniloc 2017, LLCRehearing deniedPTAB · Sep 9, 2020 · IPR2020-00420 · APJ Jameson Lee · IPR · Rehearing
The Board denied Ericsson’s rehearing request and left in place the discretionary denial of institution for claims 1–5, 7, and 17 under General Plastic.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When rehearing a decision on institution, we do not review the merits 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
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for patent owner
“considered whether Petitioner knew of prior art which disclosed the same material as what the allegedly recently discovered references disclose. Decision 10–11. The additional consideration was prompted by the Petition’s characterization of Alamouti as merely disclosing an “implementation detail” omitted by the Merakos and Kay. Pet. 28–29. Petitioner argues that the additional consideration of the criticality of the disclosure contained in the allegedly recently discovered prior art applies a new standard that is inconsistent with General Plastic. Reh’g Req. 11. We disagree. First, there is no inconsistency because General Plastic does not prohibit the consideration. Second, the consideration is not a new standard, because, in our view, it already is implicit in General Plastic. Typically, there is nothing to trigger it and an assumption is usually made that absence of the recently discovered reference is what kept Petitioner from filing the petition earlier. Here, the circumstance is different, because Alamouti, and Ling evidently as well, are used by Petitioner only to provide relatively less significant implementation details compared to what Merakos and Kay disclose. Third, Petitioner does not point to anything in General Plastic which approves a hypothetical petitioner’s possibly substituting a reference it has known for a long time with a recently obtained reference that discloses the same, to justify a delay in filing a petition. Thus, it is not” slip op. at 6
- BurdenDecided for patent owner
“every single document in the related litigation. It was incumbent upon Petitioner to submit and identify material to support its assertions. Although we were willing to inspect the Complaint and any Amended Complaint, we were not willing to go further. It matters not whether a plaintiff asserting patent infringement is required to identify all asserted claims in the its assertion, and we need not even have looked in the Complaint.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner’s accounting must begin from when it first learned that Patent Owner had filed suit accusing products designed and manufactured by Petitioner of infringing claims of the ’079 patent.” Decision 12. Rather than accounting for the entire 10 month period from March 26, 2019 to January 17, 2020, the Petition only addressed 4 months. Pet. 73. Now, in the Request for Rehearing, Petitioner provides for consideration an explanation that purportedly covers the entire 10 month period. Reh’g Req. 7–10. The discussion and change of focus from 4 months to 10 months arguments after the original arguments are rejected. Accordingly, we decline to consider the new explanation that purportedly accounts for the full 10 month period. C. slip op. at 5
Discretionary denialPatents in suitUS 6,868,079 - Apple Inc. v. Seven Networks, LLCInstitution deniedPTAB · Sep 1, 2020 · IPR2020-00507 · APJ Karl D Easthom · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood of proving claims 1–44 obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Patent Owner raises a valid point. Petitioner only alleges “the embedded credential is associated with the user’s account information” (Pet. 27) and fails to explain how merely associating the embedded credential with the user’s account information addresses how the second identifier is sent “in response to the received registration information” as limitation [1.4] requires. See Pet. 27–28 (citing Ex. 1005 ¶ 65; Ex. 1003 ¶ 44). In turn, at the cited paragraph, Dr. Wills testifies that “the redirect message from the identity provider to the service provider, as illustrated above, would automatically include the registration information associated with the particular user so that the service provider will have the necessary account information of the user in performing the requested service.” Ex. 1003 ¶ 44. Although Petitioner cites to this testimony, the Petition does not advance Dr. Wills’ theory that underlies the testimony. See Pet. 27 (citing 1003 ¶ 44). Even if we deem the Petition to properly incorporate Dr. Wills’ theory that “the redirect message from the identity provider . . . would automatically include the registration information,” the record does not support the theory, as Patent Owner argues. See Prelim. Resp. 33–34.5 Dr. Wills’ testimony cites to Yared’s paragraph 87 for support (Ex. 1003 ¶ 44), but that paragraph neither mentions Yared’s redirect procedures nor otherwise suggests that the redirect message includes the registration reliedupon information. See Ex. 1005 ¶ 87. Also, Dr. Wills’ testimony does not explain sufficiently how something that Yared’s identity provider (server) renders “automatically available to service providers” (see id.) means that the identity provider transmits that information in Yared’s redirect message or why this transmission would have been obvious.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Patent Owner raises a valid point. Petitioner only alleges “the embedded credential is associated with the user’s account information” (Pet. 27) and fails to explain how merely associating the embedded credential with the user’s account information addresses how the second identifier is sent “in response to the received registration information” as limitation [1.4] requires. See Pet. 27–28 (citing Ex. 1005 ¶ 65; Ex. 1003 ¶ 44). In turn, at the cited paragraph, Dr. Wills testifies that “the redirect message from the identity provider to the service provider, as illustrated above, would automatically include the registration information associated with the particular user so that the service provider will have the necessary account information of the user in performing the requested service.” Ex. 1003 ¶ 44. Although Petitioner cites to this testimony, the Petition does not advance Dr. Wills’ theory that underlies the testimony. See Pet. 27 (citing 1003 ¶ 44). Even if we deem the Petition to properly incorporate Dr. Wills’ theory that “the redirect message from the identity provider . . . would automatically include the registration information,” the record does not support the theory, as Patent Owner argues. See Prelim. Resp. 33–34.5 Dr. Wills’ testimony cites to Yared’s paragraph 87 for support (Ex. 1003 ¶ 44), but that paragraph neither mentions Yared’s redirect procedures nor otherwise suggests that the redirect message includes the registration reliedupon information. See Ex. 1005 ¶ 87. Also, Dr. Wills’ testimony does not explain sufficiently how something that Yared’s identity provider (server) renders “automatically available to service providers” (see id.) means that the identity provider transmits that information in Yared’s redirect message or why this transmission would have been obvious.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or the equivalent and 2-3 years of work experience with computer networks, or the equivalent.” Ex. 1003 ¶ 14. Patent Owner does not present a proposed level of ordinary skill. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill in the art, which comports with the teachings of the ’962 patent and the asserted prior art. C.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019). Under the same standard applied by district courts, claim terms take their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Based on the current record, no terms require explicit construction. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’. . . .” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). D.” slip op. at 7
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,243,962 - Emerson Electric Co. v. Sipco, LLCRehearing deniedPTAB · Aug 14, 2020 · IPR2019-00548 · APJ Lynne E Pettigrew · IPR · Rehearing
The Board denied Emerson’s rehearing request and the petition, finding Jubin insufficient to show claim 1’s required path determination occurs when transmitting to the site controller.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Request, but we do not reach a different result. As Petitioner admits, claim 1 requires that “determin[ing] a first communication path” in limitation [1.b] be performed by the first remote device “when transmitting to the site controller.” Ex. 1001, 20:56–57; see Req. Reh’g 8. According to Petitioner, Jubin’s first remote device (PR M in Petitioner’s example) selects a “first communication path” by updating its tier table with a new next PR (e.g., PR Q) for destination PR L when the direct path from PR M to PR L is “bad.” Pet. 32 (citing Ex. 1005, 24); see Req. Reh’g 4–5. Petitioner further asserts that updating the tier table occurs “[w]hen PR M attempts to transmit a packet to PR L,” i.e., “when transmitting to the site controller.” Pet. 32 (citing Ex. 1005, 24); Req. Reh’g 7–8. On the record before us, Petitioner does not show sufficiently that Jubin discloses “determin[ing] a first communication path between the first remote device and the site controller” by updating the tier table “when transmitting to the controller” as required by the claim language in limitation [1.b]. The cited section of Jubin discloses that “[w]hen the link quality to a neighboring PR (say the link from PR N to PR M) becomes ‘bad,’” PR N’s which PR M is the next PR in the route. Ex. 1005, 24. Thus, with reference to Petitioner’s Figure 6 scenario, PR M (the claimed first remote device) updates its tier table for destination PR L (the claimed site controller) when it becomes aware that the quality of the link from PR M to PR L has become bad. See Pet. 32; Ex. 1005, 24. Petitioner contends that PR M updates its tier table (i.e., determines a first communication path) when PR M is transmitting a packet to PR L, but Petitioner does not cite, nor do we see, a specific description in Jubin supporting this assertion. See Pet. 32; Ex. 1005, 24. Rather, Jubin discloses using Packet Radio Organization Packets (PROPs), which are broadcast by each PR every 7.5 seconds to announce information about the network, to determine link quality (“good” vs. “bad”) and to communicate link quality and “news of bad tier data” among PRs. Ex. 1005, 24; see id. at 23–24 (describing PROPs). Petitioner does not contend that Jubin’s broadcasting of PROPs satisfies the “when transmitting to the site controller” language in limitation [1.b]. See Pet. 32. Nor does Petitioner explain adequately how Jubin discloses that PR M in Figure 6 updates its tier table for destination PR L (i.e., “determine[s] a first communication path between the first remote device and the site controller”) when PR M is attempting to transmit a packet to PR L (i.e., “when transmitting to the site controller”) based on information that the link between PR M and PR L is “bad.” See id.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“On the record before us, Petitioner does not show sufficiently that Jubin discloses “determin[ing] a first communication path between the first remote device and the site controller” by updating the tier table “when transmitting to the controller” as required by the claim language in limitation [1.b]. The cited section of Jubin discloses that “[w]hen the link quality to a neighboring PR (say the link from PR N to PR M) becomes ‘bad,’” PR N’s which PR M is the next PR in the route. Ex. 1005, 24. Thus, with reference to Petitioner’s Figure 6 scenario, PR M (the claimed first remote device) updates its tier table for destination PR L (the claimed site controller) when it becomes aware that the quality of the link from PR M to PR L has become bad. See Pet. 32; Ex. 1005, 24. Petitioner contends that PR M updates its tier table (i.e., determines a first communication path) when PR M is transmitting a packet to PR L, but Petitioner does not cite, nor do we see, a specific description in Jubin supporting this assertion. See Pet. 32; Ex. 1005, 24. Rather, Jubin discloses using Packet Radio Organization Packets (PROPs), which are broadcast by each PR every 7.5 seconds to announce information about the network, to determine link quality (“good” vs. “bad”) and to communicate link quality and “news of bad tier data” among PRs. Ex. 1005, 24; see id. at 23–24 (describing PROPs). Petitioner does not contend that Jubin’s broadcasting of PROPs satisfies the “when transmitting to the site controller” language in limitation [1.b]. See Pet. 32. Nor does Petitioner explain adequately how Jubin discloses that PR M in Figure 6 updates its tier table for destination PR L (i.e., “determine[s] a first communication path between the first remote device and the site controller”) when PR M is attempting to transmit a packet to PR L (i.e., “when transmitting to the site controller”) based on information that the link between PR M and PR L is “bad.” See id.” slip op. at 5
- BurdenNot shown unpatentable
“On the record before us, Petitioner does not show sufficiently that Jubin discloses “determin[ing] a first communication path between the first remote device and the site controller” by updating the tier table “when transmitting to the controller” as required by the claim language in limitation [1.b]. The cited section of Jubin discloses that “[w]hen the link quality to a neighboring PR (say the link from PR N to PR M) becomes ‘bad,’” PR N’s which PR M is the next PR in the route. Ex. 1005, 24. Thus, with reference to Petitioner’s Figure 6 scenario, PR M (the claimed first remote device) updates its tier table for destination PR L (the claimed site controller) when it becomes aware that the quality of the link from PR M to PR L has become bad. See Pet. 32; Ex. 1005, 24. Petitioner contends that PR M updates its tier table (i.e., determines a first communication path) when PR M is transmitting a packet to PR L, but Petitioner does not cite, nor do we see, a specific description in Jubin supporting this assertion. See Pet. 32; Ex. 1005, 24. Rather, Jubin discloses using Packet Radio Organization Packets (PROPs), which are broadcast by each PR every 7.5 seconds to announce information about the network, to determine link quality (“good” vs. “bad”) and to communicate link quality and “news of bad tier data” among PRs. Ex. 1005, 24; see id. at 23–24 (describing PROPs). Petitioner does not contend that Jubin’s broadcasting of PROPs satisfies the “when transmitting to the site controller” language in limitation [1.b]. See Pet. 32. Nor does Petitioner explain adequately how Jubin discloses that PR M in Figure 6 updates its tier table for destination PR L (i.e., “determine[s] a first communication path between the first remote device and the site controller”) when PR M is attempting to transmit a packet to PR L (i.e., “when transmitting to the site controller”) based on information that the link between PR M and PR L is “bad.” See id.” slip op. at 5
NonePatents in suitUS 9,439,126 - Square, Inc. v. 4361423 Canada Inc.Rehearing deniedPTAB · Jul 17, 2020 · IPR2019-01651 · APJ Jameson Lee · IPR · Rehearing
The Board denied Square’s rehearing request; all claims remain in trial on all asserted grounds, including obviousness of claims 1 and 4 over Bear and Vrotsos.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“At this stage of the proceeding, whether our statement was correct is of no moment, because we instituted review of all challenged claims on all asserted grounds of unpatentability. Dec. 38. As explained in the Decision,” slip op. at 2
NonePatents in suitUS 9,443,239 - 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 - Ericsson Inc. v. Uniloc 2017 LLCInstitution deniedPTAB · Jun 18, 2020 · IPR2020-00420 · APJ Jameson Lee · IPR · Institution
The Board denied institution on all challenged claims because the General Plastic factors and additional circumstances favored discretionary denial under § 314(a).
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“relationship” for purposes of analyzing follow-on petitions between different petitioners can be created by a subsequent petitioner who uses the former petitioner’s work as a menu or roadmap to arrive at the follow-on petition, citing Ericsson Inc. v. Uniloc 2017, LLC, IPR2019-01550, Paper 8 at 12 (PTAB Mar. 17, 2020). Prelim. Resp. 10. Based on the record before us, and as explained below, we find that Petitioner did use the Petition in IPR038 as a menu or roadmap in preparing the Petition here, but disagree that that fact creates a “significant relationship.”” slip op. at 8
- Other 314aInstitution denied discretionary otherInstitution denied
“for the third time, particularly on the same ground for which review was instituted for claim 17 in IPR038. Note that “if the PTAB institutes a trial, the PTAB will institute on all challenges raised in the petition.” See USPTO, Guidance on the Impact of SAS on AIA Trial Proceedings (April 26, 2018) (available at https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial) (“USPTO Guidance”). Petitioner has not demonstrated a need for an additional petition which challenges claim 17 for a third time, where both earlier petitions resulted in institution of trial and where the alleged ground of unpatentability for claim 17 here is the same as that raised in one of the two earlier petitions.11 The inclusion of claim 17 in the Petition undermines Petitioner’s argument that it should be entitled to challenge claims 2–5 and 7 which were not challenged in any previous petition. Indeed, the inclusion of claim 17 is unnecessary for any petition challenging claims 1–5 and 7.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“Having considered all of the factors discussed above, we deny institution under 35 U.S.C. § 314(a). III. CONCLUSION For the foregoing reasons, we exercise our delegated discretion not to institute review. IV. ORDER Accordingly, it is: ORDERED that the Petition is denied, and no inter partes review is instituted on any claim over any alleged ground of unpatentability.” slip op. at 16
Discretionary denialPatents in suitUS 6,868,079 - Comcast Cable Communications, LLC v. Rovi Guides, Inc.Rehearing deniedPTAB · Jun 10, 2020 · IPR2019-01431 · APJ Jameson Lee · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no overlooked matter or abuse of discretion in instituting review of claims 1–20.
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. Inc., 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 8,272,019 - Comcast Cable Communications, LLC v. Rovi Guides, Inc.Rehearing deniedPTAB · Jun 9, 2020 · IPR2019-01416 · APJ Wesley B Derrick · IPR · Rehearing
The Board denied Rovi’s rehearing request, finding no overlooked or misapprehended matter and no abuse of discretion in instituting review of claims 1–16.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“On this record, Patent Owner neither persuades us that we overlooked or misapprehended any matter, nor sufficiently shows that instituting an inter partes review of claims 1–16 of the ’107 patent was an abuse of discretion. IV. ORDER For the reasons given, it is: ORDERED that Patent Owner’s Request for Rehearing is denied.” slip op. at 4
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“The Federal Circuit’s mandate has now issued. Arthrex, Inc. v. Smith & Nephew, Inc., No. 2018-2140, Dkt. No. 119 (Fed. Cir. April 6, 2020) (Ex. 3001). As to the contended insufficiency in the remedy set forth in Arthrex, Patent Owner’s position is contrary to that decision by our reviewing court. See Arthrex, 941 F.3d at 1337 (“This as-applied severance . . . cures the constitutional violation.”). Further, as set forth in the Decision, we determined that Arthrex did not warrant terminating or staying this case. Dec. 42. First, we set forth that “Arthrex indicates that there is ‘no constitutional infirmity’ in an institution decision.” Id. (citing Arthrex, 941 F.3d at 1340). Second, we set forth that “the Board generally declines to stay proceedings pending an appeal to the Federal Circuit or the Supreme Court.” Id. (citing Askeladden LLC v. Purple Leaf, LLC, IPR2016-1720, Paper 22 at 2 (PTAB Sept. 11, 2017). Patent Owner’s disagreement with Arthrex and the sufficiency of its remedy does not meet Patent Owner’s burden here. In sum, Patent Owner’s arguments do not identify any matter” slip op. at 3
NonePatents in suitUS 7,735,107
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.