- LG Electronics, Inc. v. Constellation Designs, LLCRehearing deniedPTAB · Aug 15, 2023 · IPR2022-01549 · APJ Brent M Dougal · IPR · Rehearing
The Board denied LG Electronics’ rehearing request, leaving in place its decision denying institution because the Petition did not explain how De Gaudenzi teaches maximizing parallel decode capacity.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Thus, a request for rehearing is not an opportunity to present new arguments or evidence or merely to disagree with the panel’s assessment of the arguments or weighing of the evidence. With this in mind, we address the arguments presented in turn.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“In our Decision, we faulted the Petition for “not sufficiently identify[ing] how De Gaudenzi1 teaches the ‘maximize’ limitation in the independent claims.” Dec. 17. For example, the Petition asserts that De Gaudenzi1 teaches constellation optimization by assignment of labels, but then when explaining how, only states that De Gaudenzi1 “discloses a labelling rule,” that “can be ‘Gray labelling’/‘Gray mapping,’ or ‘the pseudo-Gray labellings.’” Pet. 61; see also Dec. 13–14 (summarizing and quoting the positions in the Petition). As a result, we determined that the Petition “does not sufficiently explain why the existence of a labeling rule maximizes parallel decode capacity,” and that “the record lacks evidence of, and it is Petitioner’s burden to explain, how predetermined constellation point labels are assigned to maximize parallel decode capacity as required by the claim.” Dec. 16, 17.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“attempts to improperly supplement the Petition by advancing two new arguments in the Request: 1) that Gray mapping is “the only specific example labeling scheme disclosed by the ’980 Patent as ‘maximize[ing] the PD capacity’ used in ‘[a]ll the PD optimized PAM constellations.’ EX1001, 10:18-20;” and 2) that “Patent Owner’s expert, Dr. Caire, in his own work (EX1013 cited by De Gaudenzi1 and Petition) states that ‘we conjecture that Gray labeling maximizes BICM capacity.’ EX1013, 6.” Req. 12. Neither of these arguments are in the Petition. The Request does not cite to the Petition in making these arguments. The Request does later cite to pages 14 and 63 of the Petition, implying support for these arguments. However, neither page makes these arguments, or even cites to the portions of the references cited in the Request. Thus, we do not consider these new arguments, as Petitioner has not shown they were previously presented in the Petition.” slip op. at 3
NonePatents in suitUS 10,567,980 - Berkeley Lights, Inc. v. The University Of British ColumbiaRehearing deniedPTAB · Jul 20, 2023 · IPR2021-01249 · APJ Christopher L Ogden · IPR · Rehearing
The Board denied Berkeley Lights’ rehearing request, finding no abuse of discretion in its prior decision that claims 1, 6, 11, 16, 19, 24, 26, 27, and 30 were not shown unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(d) (2022). There is an abuse of discretion if we have made “a clear error of judgment in weighing relevant factors or in basing [our] decision on an error of law or on clearly erroneous factual findings.” Bayer CropScience AG v. Dow AgroSciences LLC, 851 F.3d 1302, 1306 (Fed. Cir. 2017) (quoting Mentor Graphics Corp. v. Quickturn Design Sys., Inc., 150 F.3d 1374, 1377 (Fed. Cir. 1998)). In a request for rehearing, “[t]he burden of showing a 1 We further refer to Patent Owner’s Response (Paper 18, “PO Resp.”), Petitioner’s Reply to the Patent Owner Response (Paper 22, “Pet. Reply”), and Patent Owner’s Sur-reply (Paper 29, “PO Sur-reply”). decision should be modified lies with the party challenging the decision,” and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the record. 37 C.F.R. § 42.71(d). slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“light of the background knowledge in the art. In particular, we found that Petitioner had not adequately shown that the background knowledge in the art would have been sufficient to inform a person of ordinary skill in the art how to apply the techniques such as “laser tweezers” that Dimov mentions briefly, in a way that would have allowed further analyses of cells outside Dimov’s device. See Dec. 29–31. We also found that Petitioner had not persuasively shown that modifying Dimov’s device to make its trenches accessible with a micropipette was within the background knowledge in the art at the time of the claimed invention. See Dec. 31–34.” slip op. at 4
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“Petitioner points to only one brief mention, in its Petition, of piercing the top layer of Dimov’s device to retrieve cells with a micropipette. Id. at 6 (citing Pet. 40). That argument was not backed by any evidence other than a conclusory statement by Dr. Meinhart repeating the argument in the Petition. Pet. 40; Ex. 1002 ¶ 120. We do not credit that testimony because it lacks factual support. Xerox Corp v. Bytemark, Inc., IPR2022-00624, Paper 9 (PTAB Aug. 24, 2022) (precedential) (the testimony of a declarant that merely repeats, verbatim, conclusory assertions from a petition, without citing additional supporting evidence or providing technical reasoning to support the testimony, is entitled to little weight). In particular, to the extent that Petitioner argues on rehearing that Dimov’s top layer could have been pierced successfully by a micropipette because it was only 40 microns thick, Petitioner did not properly make this argument during trial or provide adequate evidentiary support.” slip op. at 6
- Strike new argumentNew argument disregardedDecided for patent owner
“Although Dr. Meinhart briefly mentions this in his declaration (see Ex. 1039 ¶ 192), Petitioner has not shown that it made this argument during trial, except to the extent that Petitioner improperly incorporated it by reference from Dr. Meinhart’s declaration. See Reply 24 (citing Ex. 1039 ¶¶ 190–196); 37 CFR § 42.6(a)(3). In any event, we do not credit Dr. Meinhart’s testimony on this point because he provides no factual support. See Ex. 1039 ¶ 192; 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). As Patent Owner pointed out in its Sur-Reply, Dr. Meinhart acknowledged at deposition that increasing the spot size would have reduced the lateral gradient force of the levitation laser. PO Sur-reply 23 (citing Ex. 2013, 344:18–345:5). We agree with Patent Owner that “Dr. Meinhart . . . did not consider how this reduction in force would have affected the laser’s ability to levitate a cell in Park’s well successfully (especially with cultured cells through Park’s recirculation pattern).” Id.” slip op. at 12
§ 103 obviousnessPatents in suitUS 10,087,408 - Apple Inc. v. Identity Security LLCRehearing deniedPTAB · Dec 15, 2022 · IPR2022-00171 · APJ Sharon Fenick · IPR · Rehearing
The Board denied Apple’s rehearing request, leaving the denial of institution for claims 1–4, 12, and 13 unchanged because Apple showed no abuse of discretion or overlooked matter.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. THE REQUEST FOR REHEARING 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, a reply, or a surreply.” Id. Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”” slip op. at 2
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“conclusions on the basis that Dr. Russ’s testimony is conclusory. Id. at 11. We disagree. We indicated in the Decision Denying Institution that Dr. Neuman’s testimony is conclusory. Dec. 22. For instance, Dr. Neuman testifies that the modifications that would have been needed for Petitioner’s proposed combination would have been “straightforward.” Ex. 1003 ¶ 81. Dr. Neuman’s testimony, however, is simply a conclusory statement without persuasive, supporting explanation or evidence. Id. As we indicated in the Decision Denying Institution, “Petitioner does not indicate or provide evidence supporting that the proposed modifications would have been made without introducing complexities.” Dec. 24. “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Decision to Institute as relating to only convenience. Req. 1–2, 8–11. In the Decision Denying Institution, we explained that Petitioner’s reasons to combine are insufficient because “Petitioner does not address the full teachings of Gullman.” Dec. 22, 25. We stated “[c]ontrary to Petitioner’s assertion (Pet. 33; Ex. 1003 ¶ 81) and consistent with Patent Owner’s position and Dr. Russ’s testimony that Gullman’s system eliminates the risk of the biometric template and input from being stolen during transmission (Ex. 2001 ¶ 119), Gullman describes its system as ‘secure,’ providing ‘secure identification,’ and, importantly, as providing ‘[t]ransmission security.’” Dec. 22–23 (citing Ex. 1004, 6:46–56). We particularly noted (id. at 23) Gullman’s teachings as follows: The method and apparatus of the present invention have significant advantages over known security systems. Reliable and secure identification is provided which eliminates the need for the user to memorize a code or carry a printed memorandum of the code. Transmission security is provided which is convenient, secure and useful on existing access devices of host systems in current use. In particular, the method and apparatus obviate the need for specially-designed hardware additions or modifications to existing access devices. Ex. 1004, 6:46–56. As we noted in the Decision to Institute, the Petition did not address Gullman’s teaching that its system provides “significant advantages” over known, more complex systems, which might have led an ordinarily skilled artisan away from using Padgett’s more complicated hashing process. Dec. 23–24.” slip op. at 4
§ 103 obviousnessPatents in suitUS 8,020,008 - Peddinghaus Corporation v. Ficep CorporationRehearing deniedPTAB · Oct 8, 2021 · IPR2020-01707 · APJ Jameson Lee · IPR · Rehearing
The Board denied Peddinghaus’s rehearing request, finding no abuse of discretion in denying institution on claims 1–14 because Hashimoto did not disclose the claimed intersection parameters.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Reh’g Req. 7–8. Although Petitioner avers that the “identifying” of intersection parameters, or connecting holes, is completed in Hashimoto by the member totaling module before any order list is prepared, the order list is pertinent evidence for that assertion and there is nothing inappropriate in discussing that evidence. We recognize no other evidence which was identified by the Petitioner in the Petition, and Petitioner points to no such other evidence that we overlooked. Indeed, Petitioner states: “The Petition references the order list depicted in Figure 19 as merely providing a summary of the information (the ‘total’) that was previously identified and extracted by the member totaling module.” Id. at 8 (emphasis added). As we stated in our Decision, Petitioner points to no description or disclosure in Hashimoto that its member totaling module recognizes the difference between a connecting hole, or intersection parameter, from a nonconnecting hole. Dec. 27. Hashimoto’s member totaling module “automatically totals, by cross section or length, the information including the shape, length, quantity, hole shape and the hole position (design drawing information) of all the light gauge sheet steel used for the steel house existing in the CAD system” and “[b]ased on this total, an order list (steel member order list) is prepared (FIG. 19).” Ex. 1005 ¶ 101. Nowhere in this exhaustive list of hole information, however, is mentioned any data that identifies the difference between a connecting hole, or intersection parameter, and a non-connecting hole. Further, Petitioner’s statement on page 8 of the Rehearing Request that “hole shape” and “hole position” constitute intersection parameters is not persuasive because, from this information, it is unknown how the hole is intended to be used. Moreover, the order list of Figure 19 – which “merely shows the number of holes and the die numbers and positions of where those holes are formed”1 – is the only indicated output of the member totaling module.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for patent owner
“meaning of “fastening holes” changes from the first to second embodiment.3 For example, in the Background section of Hashimoto, “fastening holes” are defined generally as holes formed “in the light gauge shape steel for the fastening tools.” Ex. 1005 ¶ 4. The same Background paragraph provides examples of “fastening tools such as a tapping screw and a one-side rivet.” Id. (Emphasis added). Thus, this definition does not strictly limit fastening holes to connecting holes, since it does not foreclose the likely possibility of fastening tools including wires or wiring. Moreover, a “machine for forming the fastening holes” is also disclosed in the Background, the same “non-stationary fastening hole forming machine 5” discussed in Figures 20-21 of the second embodiment. Id. ¶ 5. Thus, when “fastening holes for passing the electrical wiring” (emphasis added) are disclosed in the discussion of Figures 20-21 in Hashimoto’s paragraph 154, there is no evidence suggesting that a different type of “fastening hole” other than what has been generally described in the Background is being mentioned. Id. ¶ 154. The same applies for the 3 The statement made in footnote 3 on pages 11–12 of the Rehearing Request that the only holes in Figure 18 are joints only establishes that the holes in Figure 18 may be connecting holes, not all “fastening holes” in Hashimoto. disclosure that “fastening hole information includ[es]…[where] the wiring holes [are] formed in the stud” in paragraph 156 and how character c in Figure 23 “designates a hole for electrical wiring or a fastening hole for mounting the stud on the structural face plate” (emphasis added) in paragraph 157. Id. ¶¶ 156–157. Thus, it is a much more reasonable reading that in all embodiments of Hashimoto, the definition of “fastening holes” includes both connecting holes and non-connecting holes – such as those for wiring.” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“As we stated in our Decision, Petitioner points to no description or disclosure in Hashimoto that its member totaling module recognizes the difference between a connecting hole, or intersection parameter, from a nonconnecting hole. Dec. 27. Hashimoto’s member totaling module “automatically totals, by cross section or length, the information including the shape, length, quantity, hole shape and the hole position (design drawing information) of all the light gauge sheet steel used for the steel house existing in the CAD system” and “[b]ased on this total, an order list (steel member order list) is prepared (FIG. 19).” Ex. 1005 ¶ 101. Nowhere in this exhaustive list of hole information, however, is mentioned any data that identifies the difference between a connecting hole, or intersection parameter, and a non-connecting hole. Further, Petitioner’s statement on page 8 of the Rehearing Request that “hole shape” and “hole position” constitute intersection parameters is not persuasive because, from this information, it is unknown how the hole is intended to be used. Moreover, the order list of Figure 19 – which “merely shows the number of holes and the die numbers and positions of where those holes are formed”1 – is the only indicated output of the member totaling module.” slip op. at 3
Claim construction§ 102 anticipationPatents in suitUS 7,974,719 - Shenzhen Mediatek Tong Technology Co., Ltd. v. The Noco CompanyRehearing deniedPTAB · May 17, 2021 · IPR2020-01387 · APJ Jameson Lee · IPR · Rehearing
The Board denied rehearing, leaving in place the denial of institution on claims 1–3, 5, 8–17, 19–21, and 23 because Petitioner did not show an abuse of discretion.
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
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not reached
“We recognize that Paragraph 50 of Zhang describes two ways to measure the voltage “at the two terminals” of the vehicle battery, and the other way is by the small teeth of the output power clip. Ex. 1006 ¶ 50. But Zhang describes the two ways as occurring “at the same time,” and not as alternative implementations. Thus, measurements at both points are taken to obtain the voltage at the two terminals of the vehicle battery. Dr. Hartup does not address or explain how a measurement can be taken at the input terminal of the DC contactor that would be indicative of the voltage of the external vehicle battery connected to the output terminal of the DC contactor, if the DC contactor is not already closed. Ex. 1003 ¶ 59. The Petition does not address Zhang’s disclosure of measuring the voltage of the vehicle battery on the input side of the DC contactor at the same time a measurement is taken by the small teeth of the output power clip. Paper 9, 33 (emphasis added).” slip op. at 3
- BurdenDecided for patent owner
“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
§ 102 anticipationPatents in suitUS 9,007,015 - ZTE (USA), Inc. / LG Electronics Inc. v. Cywee Group Ltd.Rehearing deniedPTAB · Nov 4, 2020 · IPR2019-01203 · APJ Christopher L Ogden · IPR · Rehearing
The Board denied CyWee’s rehearing request, leaving intact its decision allowing joined petitioner LGE to oppose CyWee’s revised motion to amend.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). A 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.” Id.” slip op. at 3
- PTAB / AIA Trials › Motions to amend / substitute claimsDecided for petitioner
“In our Rehearing Decision, we determined that “the adversarial system is better served if we allow a Petitioner to raise [statutory, regulatory, or patentability] issues in response to CyWee’s Revised Motion to Amend.” Reh’g Dec. 8. Therefore, we held that LGE may present arguments and evidence, independently from ZTE, in response to CyWee’s Revised Motion to Amend, and that LGE may request an oral hearing limited solely to the issues raised in the Revised Motion to Amend. Id. at 9.” slip op. at 3
NonePatents in suitUS 8,441,438 - ZTE (USA), Inc. / LG Electronics Inc. v. Cywee Group Ltd.Rehearing deniedPTAB · Nov 4, 2020 · IPR2019-00143 · APJ Christopher L Ogden · IPR · Rehearing
The Board denied CyWee’s rehearing request, leaving in place its decision allowing joined petitioner LGE to oppose the Revised Motion to Amend.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). A 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.” Id.” slip op. at 3
NonePatents in suitUS 8,441,438 - 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 - PTAB · Sep 15, 2020 · IPR2020-00282 · APJ Christopher L Ogden · IPR · Rehearing
The Board denied Samsung’s rehearing request, leaving in place the denial of institution because the petition did not show a reasonable likelihood of proving any challenged claim unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“a party requests rehearing on a decision on whether to institute inter partes review, we “review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c) (2019). There is an abuse of discretion if we have made “a clear error of judgment in weighing relevant factors or in basing [our] decision on an error of law or on clearly erroneous factual findings.” Bayer CropScience AG v. Dow AgroSciences LLC, 851 F.3d 1302, 1306 (Fed. Cir. 2017) (quoting Mentor Graphics Corp. v. Quickturn Design Sys., Inc., 150 F.3d 1374, 1377 (Fed. Cir. 1998)). In a request for rehearing, “[t]he burden of showing a decision should be modified lies with the party challenging the decision,” and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the record. 37 C.F.R. § 42.71(d).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We disagree. Nowhere in the cited passages in the Petition does Samsung argue that we should construe the term “row wrap-around connections” according to the explicit construction that Samsung now suggests for the plain and ordinary meaning. See Pet. 10–11, 25–30. Rather, Samsung argued that “Petitioners do not believe any term requires explicit construction.” Pet. 10–11. In the Reply, Samsung argued that all of the terms in the challenged claims should be construed according to their plain and ordinary meaning. See Reply 1, 4–5. However, apart from arguing that Samsung had proposed construing limitation 1C in the co-pending district court proceeding according to its plain and ordinary meaning,3 Samsung did not propose any specific construction for the phrase “row wrap-around connection,” or point to any evidence as to what the ordinary and customary meaning of that phrase was to a person of ordinary skill in the art. Therefore, we decline to adopt Samsung’s new proposed construction on rehearing.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We determined that Samsung had not provided sufficient evidence of its proposed motivation to combine the two references. See Dec. 16 (“[N]either Samsung nor Dr. Wolfe supports this conclusion with any evidence on the preliminary record.” (citing In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016); 35 U.S.C. § 322(a)(3))). In particular, we found that “Dr. Wolfe does not explain how or why the combination of Barkan and Tagg would minimize RC delay or allow for the use of lengthier columns and rows of electrodes, or cite to any facts, data, or authorities to support that opinion.” Dec. 17. We stated that “there is no evidence in the record suggesting that RC delay was a recognized problem . . . or that a person of ordinary skill in the art would have understood that a connection to both sides of a row of electrodes would be a solution to that problem.” Id. We also stated that Dr. Wolfe does not “provide any detail as to how a person of ordinary skill in the art would have modified Barkan’s leads 160 to incorporate external connections such as those in Tagg.” Id. (citing Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017)).” slip op. at 13
Claim construction§ 103 obviousnessPatents in suitUS 7,821,502 - 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
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.