- Google LLC v. Metarail, Inc.Rehearing deniedPTAB · Aug 25, 2025 · IPR2024-01271 · APJ Frances L Ippolito · IPR · Rehearing
The Board denied Google’s rehearing request, leaving institution denied for claims 1–21 because the petition did not show a reasonable likelihood that Belanger-Halevy taught limitation [1B].
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS 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 in a motion, an opposition, a reply or sur-reply.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id. We address Petitioner’s rehearing arguments below.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“variable data database’ as required by claim 1.” Dec. 22. We discussed and quoted extensively from Petitioner’s expert declaration of Dr. Fox and Patent Owner’s expert declaration of Dr. Malek. Id. at 22–26 (citing Ex. 1003 ¶ 94; Ex. 2001 ¶¶ 68, 70). In reviewing the parties’ submissions, we found that: Halevy’s disclosures are consistent with Patent Owner’s arguments and Dr. Malek’s testimony that Halevy does not teach mapping fields to one another or mapping of fields to one another through SO-properties. For example, as described, in Figure 6 and Halevy as a whole, Halevy does not teach or suggest mapping or linking different keywords to one another, rather the keywords are mapped to SO-properties.” slip op. at 5
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Dr. Fox states that “Halevy’s disclosure of a form database in which corresponding fields from different forms on different websites map to the same SO-properties based on the SO-class identified for the form would have been recognized by a POSA as what the ’342 patent refers to as a universal variable map.” Ex. 1003 ¶ 98 (citing Ex. 1001, 17:48– 52). Based on this conclusory opinion, Dr. Fox reasons that Halevy’s form database is a “universal variable map” that must also link computer-readable field identifiers from multiple different websites to each other in the form database, because field identifiers are mapped to the same SO-properties associated with an SO-class.” Id. (emphasis omitted). We observe first that Dr. Fox’s conclusion is not supported by the cited portions of the ’342 patent. In column 17, lines 48–52, the ’342 patent explains that fields or variables may be part of forms, and variations of the data fields or variables “may include a source form, a destination form, a single source to many destination form, many sources to one destination form, cascading forms (e.g., a first form links to a second form which links to a third form, etc.) and so on.” Ex. 1001, 17:48–52. While this portion of the ’342 patent indicates that forms may include variations on fields or variables, it does not describe linking or mapping variables to one another. Ex. 2001 ¶ 75 (“[T]hat portion of the specification does not have anything to do with the definition of a “universal variable map.” Rather, it merely discusses different types of variables and fields that might appear in different types of forms.”). Dec. 28–29. We again referred to the disclosure of the ’342 patent to address evidence in the Petition relied upon by Dr. Fox to support Petitioner’s position. Id. We credited Dr. Malek’s testimony over Dr. Fox’s testimony because Dr. Malek underlined the distinctions between the asserted Belanger-Halevy prior art combination and limitation [1B]. Dec. 28–31. In short, any confusion applying the prior art Belanger-Halevy references to the claim limitation is rooted in the Petition. The Board denied the Petition because the Petition did not demonstrate a reasonable likelihood of showing that Belanger-Halevy discloses or teaches limitation [1B] of the ’342 patent.” slip op. at 5
NonePatents in suitUS 10,262,342 - Google LLC v. Metarail, Inc.Rehearing deniedPTAB · Aug 25, 2025 · IPR2024-01270 · APJ Frances L Ippolito · IPR · Rehearing
The Board denied Google’s rehearing request, leaving in place the denial of institution because the Petition did not show a reasonable likelihood that Belanger-Halevy teaches limitation [1C] of claims 1–26.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS 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 in a motion, an opposition, a reply or sur-reply.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id. We address Petitioner’s rehearing arguments below.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“[m]issing, however, from Halevy’s disclosure is any teaching or suggestion that a ‘plurality of computer-readable field identifiers’ are mapped ‘to one another’ as required by claim 1.” Dec. 22. We discussed and quoted extensively from Petitioner’s expert declaration of Dr. Fox and Patent Owner’s expert declaration of Dr. Malek. Id. at 22–26 (citing Ex. 1003 ¶ 104; Ex. 2001 ¶¶ 69, 71). In reviewing the parties’ submissions, we found that: Halevy’s disclosures are consistent with Patent Owner’s arguments and Dr. Malek’s testimony that Halevy does not teach mapping fields to one another or mapping of fields to one another through SO-properties. For example, as described, in Figure 6 and Halevy as a whole, Halevy does not teach or suggest mapping or linking different keywords to one another, rather the keywords are mapped to SO-properties. slip op. at 5
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Dr. Fox states that “Halevy’s disclosure of a form database in which corresponding fields from different forms on different websites map to the same SO-properties would have been recognized by a POSA as what the ’378 patent refers to as a universal variable map.” Ex. 1003 ¶ 108 (citing Ex. 1001, 17:42–46). Based on this conclusory opinion, Dr. Fox reasons that Halevy’s form database is a “universal variable map” that must also link computer-readable field identifiers (including parameter names) from multiple different websites to each other in the form database, because the field identifiers are mapped to the same SO-properties associated with an SO-class. Id. We observe first that Dr. Fox’s conclusion is not supported by the cited portions of the ’378 patent. In column 17, lines 42–46, the ’378 patent explains that fields or variables may be part of forms and variations of these data fields or variables “may include a source form, a destination form, a single source to many destination form, many sources to one destination form, cascading forms (e.g., a first form links to a second form which links to a third form, etc.) and so on.” Ex. 1001, 17:42–46. While this portion of the ’378 patent indicates that forms may include variations on fields or variables, it does not describe any linking or mapping of variables to one another. Ex. 2001 ¶ 76 (“[T]hat portion of the specification does not have anything to do with the definition of a “universal variable map.” Rather, it merely discusses different types of variables and fields that might appear in different types of forms.”). Dec. 28–29. We again referred to the disclosure of the ’378 patent to address evidence in the Petition relied upon by Dr. Fox to support Petitioner’s position. Id. We credited Dr. Malek’s testimony over Dr. Fox’s testimony because Dr. Malek underlined the distinctions between the asserted Belanger-Halevy prior art combination and limitation [1C]. Dec. 28–31. In short, any confusion applying the prior art Belanger-Halevy references to the claim limitation is rooted in the Petition. The Board denied the Petition because the Petition did not demonstrate a reasonable likelihood of showing that Belanger-Halevy discloses or teaches limitation [1C] of the ’378 patent.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Finally, with regard to the Reply and Sur-Reply submitted by the parties (Req. 9), we note that our Decision on Institution reviewed the parties’ discussion of claim construction, but ultimately determined that “[b]ased on our review of the preliminary record, we do not need to construe any terms expressly to reach our decision.” Dec. 11. Thus, we disagree with Petitioner that we misconstrued the mapping limitation where we did not find it necessary to construe any claim term for the purposes of our institution decision because we determined the Petition deficient for failing to meet our threshold requirements as discussed above and in detail in the Decision on Institution. See Req. 1–11.” slip op. at 7
Claim constructionPatents in suitUS 9,633,378 - PNC Bank N.A. v. United Services Automobile AssociationRehearing deniedPTAB · Mar 8, 2023 · IPR2021-01077 · APJ Juliet Mitchell Dirba · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving in place the final written decision finding claims 1–18 unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD FOR REHEARING 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 in a motion, an opposition, a reply, or a sur-reply.” 37 C.F.R. § 42.71(d). “The burden of showing a decision should be modified lies with the party challenging the decision.” Id.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“misapprehended or overlooked matters relevant to whether an ordinary artisan would have reasonably expected success in combining Garcia and Randle. Req. 1–5. We have reviewed and carefully considered all of the arguments presented, but determine Patent Owner fails to show that the Decision misapprehended or overlooked any material arguments or evidence. To provide context for our discussion, we begin with a targeted summary of the Decision, and then we turn to Patent Owner’s specific arguments.” slip op. at 2
§ 103 obviousnessPatents in suitUS 10,621,559 - Samsung Electronics America, Inc. v. Prisua Engineering Corp.Rehearing deniedPTAB · Mar 16, 2021 · IPR2017-01188 · APJ Barbara A Parvis · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding it had not shown that the Board overlooked or misapprehended its constitutional challenges.
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. 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” slip op. at 2
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“Furthermore, the Federal Circuit’s decision in Arthrex addressed the first challenge. See 941 F.3d at 1337. As Patent Owner acknowledges (PO Reh’g Req. 11–12), the second challenge also has been addressed. See Ethicon Endo-Surgery, Inc. v. Covidien LP, 812 F.3d 1023, 1028–1033 (Fed. Cir. 2016). Accordingly, we decline to consider Patent Owner’s constitutional challenges any further.” slip op. at 5
NonePatents in suitUS 8,650,591 - GN Hearing A/S v. Oticon A/SRehearing deniedPTAB · Apr 16, 2019 · IPR2017-01927 · APJ Terrence W Mcmillin · IPR · Rehearing
The Board denied Oticon’s rehearing request, leaving claims 2 and 7 unpatentable based on the Dodge and Saltykov showing.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Decision is set forth in 37 C.F.R. § 42.71(d), which provides that 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 in a motion, an opposition, or a reply.” The party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“presented earlier in this proceeding—the Board improperly relied on a combination of the embodiments of Dodge. Request 2 (“The Board misapprehended the disclosure of various embodiments in Dodge and overlooked the complete lack of a motivation for the new combination of Dodge’s various embodiments.”), 4–5 (“The Board misapprehended the disclosure of Dodge and overlooked the lack of support in the record for a combination of multiple embodiments in Dodge’s figures.”), 6 (“There is no embodiment in Dodge that includes both a smooth, gradual curve on the first surface and an edge with a cross-sectional angle of less than ninety degrees.”), 12 (“The record is devoid of any support for an alleged combination of Dodge’s various embodiments.”). In its Request, Patent Owner fails to show that the Board misapprehended or overlooked these arguments earlier in the course of this proceeding. See generally Request. To the contrary and as noted above, Patent Owner failed to address the teachings of Figures 3 and 4 of Dodge and failed to address the combination of the teachings of the embodiments shown in those figures with the other teachings and embodiments in Dodge. Instead, Patent Owner ignored Figures 3 and 4 of Dodge in its Response to the Petition (see Paper 10, 29–34) and never contended it was improper to rely on Figures 3, 4, 5, and 6 of Dodge for teaching the elements of claims 2 and 7, as Petitioner did in its Reply (see Paper 14, 24–26) and the Board did in its Institution Decision (see Paper 7, 25–27). Patent Owner had notice that Figures 3 and 4 (and Figures 5 and 6) of Dodge were being relied upon and cited against claims 2 and 7 and, as also noted above, was given an opportunity file a Sur-Reply. In its Sur-Reply, Patent Owner acknowledged that Figures 3, 4, 5, and 6 of Dodge were being relied upon and cited against claims 2 and 7, but failed to provide any argument as to why Figures 3, 4, 5, and 6 of Dodge when considered together did not teach or suggest all the limitations relating to the claimed slit configuration. Paper 21, 23. At this stage of these proceedings, it is too late for Patent Owner to introduce and rely on new arguments.” slip op. at 6
§ 103 obviousnessPatents in suitUS 8,494,204 - PTAB · Oct 18, 2018 · IPR2018-00701 · APJ Terrence W Mcmillin · IPR · Rehearing
The Board denied rehearing and left institution denied for claims 1–9 and 12 because the petition did not sufficiently establish motivation to combine Barratt and Calderbank.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. See 37 C.F.R § 42.71(c). An abuse of discretion occurs 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. See 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). “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R § 42.71(d); accord Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must, in relevant part, “specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Petitioner’s arguments with these principles in mind.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“a combination of Barratt and Calderbank. See DDI 5, 7. Petitioner argued motivation to combine on page 34 of the Petition (Paper 1, “Pet.”) which stated, “while Barratt does not disclose the specific mathematical operations that are performed on the orthogonal training sequences to calculate a remote terminal’s spatial signature in Barratt’s ‘calibration mode,’ a POSA would have recognized that this spatial signature should be calculated using well-known cross-correlation techniques, such as those described in Calderbank.” Pet. 34. In response to this argument, Patent Owner asserted, “the premise of Petition’s motivation to combine—that Barratt requires calculating spatial signatures from orthogonal training sequences but does not explain how to do so—is not supported by the Petition’s allegations and is instead false.” Paper 8 (Preliminary Response), 15–16. Barratt does not use “orthogonal training sequences to calculate a remote terminal’s spatial signature in Barratt’s ‘calibration mode.’” See Ex. 1003, 16:31–17:67 (discussing calibration mode using “predetermined calibration signals”); see also id. at 18:50–67 (discussing use of orthogonal training sequences in another “closed loop” embodiment). Barratt does disclose the specific mathematical operations that are used to calculate a remote terminal’s spatial signature in Barratt’s “calibration mode.” See id. at 16:60–17:32. Thus, as we determined in the Decision Denying Institution, the purported gap in the teachings of Barratt that Petitioner relies on as the basis for providing the motivation to combine Calderbank with Barratt does not exist. DDI 10. Institution was denied because we determined Petitioner failed to sufficiently establish a motivation to combine the relevant teachings of the” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“a combination of Barratt and Calderbank. See DDI 5, 7. Petitioner argued motivation to combine on page 34 of the Petition (Paper 1, “Pet.”) which stated, “while Barratt does not disclose the specific mathematical operations that are performed on the orthogonal training sequences to calculate a remote terminal’s spatial signature in Barratt’s ‘calibration mode,’ a POSA would have recognized that this spatial signature should be calculated using well-known cross-correlation techniques, such as those described in Calderbank.” Pet. 34. In response to this argument, Patent Owner asserted, “the premise of Petition’s motivation to combine—that Barratt requires calculating spatial signatures from orthogonal training sequences but does not explain how to do so—is not supported by the Petition’s allegations and is instead false.” Paper 8 (Preliminary Response), 15–16. Barratt does not use “orthogonal training sequences to calculate a remote terminal’s spatial signature in Barratt’s ‘calibration mode.’” See Ex. 1003, 16:31–17:67 (discussing calibration mode using “predetermined calibration signals”); see also id. at 18:50–67 (discussing use of orthogonal training sequences in another “closed loop” embodiment). Barratt does disclose the specific mathematical operations that are used to calculate a remote terminal’s spatial signature in Barratt’s “calibration mode.” See id. at 16:60–17:32. Thus, as we determined in the Decision Denying Institution, the purported gap in the teachings of Barratt that Petitioner relies on as the basis for providing the motivation to combine Calderbank with Barratt does not exist. DDI 10. Institution was denied because we determined Petitioner failed to sufficiently establish a motivation to combine the relevant teachings of the” slip op. at 3
§ 103 obviousnessPatents in suitUS 6,611,231 - Samsung Electronics America, Inc. v. Prisua Engineering Corp.Rehearing deniedPTAB · Jul 9, 2018 · IPR2017-01188 · APJ Matthew R Clements · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, declining to retroactively deny institution or extend the statutory deadline for the final written decision.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Patent Owner’s argument is not persuasive because it is predicated on the false assumption that, if we cannot determine the scope of a claim for § 112 reasons, then we must find it unpatentable under § 112. We are, therefore, not persuaded that we misapprehended or overlooked Cuozzo when denying Patent Owner’s request to deny institution retroactively or to terminate this proceeding at this stage, or that “good cause” exists to deny institution retroactively or to terminate on this record.” slip op. at 7
- Director reviewOther
“The standard operating procedure exemplifies some of the reasons for which the Chief Judge may expand a panel. PTAB SOP 1, 3 (§ III.A). For example, an expanded panel may be appropriate when “[t]he proceeding or AIA Review involves an issue of exceptional importance” or when “[c]onsideration by an expanded panel is necessary to secure and maintain uniformity of the Board’s decisions.” Id. (§ III.A.1, 2). In this case, the Chief Judge has considered Patent Owner’s suggestion for an expanded panel, but has determined that an expanded panel is not warranted.” slip op. at 6
NonePatents in suitUS 8,650,591 - Dali Wireless Inc. v. Commscope Technologies LLCRehearing deniedPTAB · Jan 9, 2018 · IPR2017-01324 · APJ Terrence W Mcmillin · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution for claims 1–5 and 7–17 because the petition did not show the references taught the sample-rate limitation or provide adequate motivation to combine.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Petitioner’s new claim construction argument was not made in the Petition. See Pet. 10 (“Claim Construction”). In the Request for Rehearing, Petitioner does not cite to the Petition or make any showing that this argument was made explicitly or implicitly in the Petition. Req. Reh’g 4–6. As an initial matter, we could not have overlooked or misapprehended a claim construction that Petitioner did not argue in the Petition. Moreover, Petitioner’s only support for its newly proposed construction is the wording of the claims themselves and a claim differentiation argument based on dependent claim 6 which recites that the “sample rate is proportional to the bandwidth.” Id. Petitioner fails to persuade us that its proposed construction is supported adequately by the wording of the claims, the Specification, and the file history. We also conclude that Petitioner’s “somehow related to” construction of “based on” is unreasonable and overly broad. Based on this record, we decline to adopt Petitioner’s proposed construction. Thus, Petitioner fails to show that it argued this construction in the Petition or that its construction is demonstrably correct in view of the claim language, the Specification, the file history, or other evidence. Further, as stated in the Decision Denying Institution, we do not believe the express construction of “sample rate based on the bandwidth” is necessary for this Decision. See DDI 6. As shown below, Petitioner has failed to establish the applied art teaches or suggests basing the sample rate, directly on the bandwidth or that the sample rate is somehow related to the bandwidth.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We interpret claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b). In applying a broadest reasonable construction, claim terms generally are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Petitioner’s new claim construction argument was not made in the Petition. See Pet. 10 (“Claim Construction”). In the Request for Rehearing, Petitioner does not cite to the Petition or make any showing that this argument was made explicitly or implicitly in the Petition. Req. Reh’g 4–6. As an initial matter, we could not have overlooked or misapprehended a claim construction that Petitioner did not argue in the Petition. Moreover, Petitioner’s only support for its newly proposed construction is the wording of the claims themselves and a claim differentiation argument based on dependent claim 6 which recites that the “sample rate is proportional to the bandwidth.” Id. Petitioner fails to persuade us that its proposed construction is supported adequately by the wording of the claims, the Specification, and the file history. We also conclude that Petitioner’s “somehow related to” construction of “based on” is unreasonable and overly broad. Based on this record, we decline to adopt Petitioner’s proposed construction. Thus, Petitioner fails to show that it argued this construction in the Petition or that its construction is demonstrably correct in view of the claim language, the Specification, the file history, or other evidence. Further, as stated in the Decision Denying Institution, we do not believe the express construction of “sample rate based on the bandwidth” is necessary for this Decision. See DDI 6. As shown below, Petitioner has failed to establish the applied art teaches or suggests basing the sample rate, directly on the bandwidth or that the sample rate is somehow related to the bandwidth.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“With regard to the combination of Bellers and Farhan, in the Petition, Petitioner cited paragraphs 117–120 of the Bims Declaration (Ex. 1002) as providing support for combining the teachings of these references. Pet. 11. As discussed in the Decision Denying Institution, however, the cited paragraphs relate to different subject matter. DDI 14. In the Request for Rehearing, Petitioner now relies upon paragraphs 104–107 of the Bims Declaration. Req. Reh’g 14. Petitioner did not rely upon these paragraphs in the Petition, and Petitioner provides no explanation for this change of argument and evidence in its Request for Rehearing. Id. With regard to the combination of the teachings of Ichiyoshi and Farhan, in the Petition, Petitioner cited paragraph 254 of the Bims Declaration. Pet. 12. As discussed in the Decision Denying Institution, the cited paragraph relates to different subject matter. DDI 15. In the Request for Rehearing, Petitioner now relies upon paragraphs 255–258 of the Bims Declaration. Req. Reh’g 9. Petitioner did not rely upon these paragraphs in the Petition, and Petitioner provides no explanation for this change of argument and evidence in its Request for Rehearing. Id. As noted above, we could not overlook or misapprehend arguments that Petitioner did not make or evidence upon which it did not rely. Thus, contrary to Petitioner’s assertion, we did not overlook argument or evidence presented in the Petition relating to motivation to combine. Moreover, we have reconsidered Petitioner’s reasons to combine for the combinations of (1) Bellers and Farhan; and (2) Ichiyoshi and Farhan provided in the Petition (Pet. 11–12) in light of the additional citations provided in the Request for Rehearing and find, as we did in the Decision Denying Institution (Dec. 13–15) that Petitioner has failed to show a reasonable likelihood of establishing a reason to combine the relevant teachings of these references. As we indicated in the Decision Denying Institution (id.), the reasons to combine in the Petition for all of the asserted combinations of references were brief and conclusory. With regard to the combination of Bellers and Farhan, the Petition states, “[i]t was commonly understood that flexible ADCs could have a sampling rate adapted to the associated bandwidth of their analog input signal.” Pet. 11 (emphasis added). With regard to the combination of Ichiyoshi and Farhan, the Petition states, “POSITAS would have been motivated to combine Ichiyoshi’s sampling system with Farhan’s broadband communications system based on POSITA’s commonly understood knowledge that optimizing RF signal sampling rates can further improve bandwidth efficiency.” Pet. 12 (emphasis added). Neither the Petition nor the Bims Declaration provide adequate support for the assertions as to what was “commonly understood” by persons of skill in the art. The only support given in the Bims Declaration for these assertions are quotations from the art cited in the Petition (see Ex. 1002, ¶¶ 104, 255), which fall far short of establishing what was “commonly understood” as of the date of filing the” slip op. at 10
- BurdenNot shown unpatentable
“2. Bellers (Ex. 1006)3 Petitioner argues Bellers teaches “selecting the sample rate based on bandwidth.” Req. Reh’g 9–13. As noted by Petitioner (id. at 10–11), Bellers states: “[r]eceiver 101 includes a sampling mechanism 104 which samples the analog video input signal at a frequency modulated by or dependent upon the spatial frequency of the sampled content” (Ex. 1006, 3:11–14) and “[t]he present invention employs a sampling rate which is modulated based upon the spatial frequencies of the content being sampled. Higher sampling rates, and larger sample densities, are employed for content having high spatial frequencies while lower sampling rates are employed for content having low spatial frequencies” (id. at 4:14–19 (emphasis added)). Bellers expressly defines spatial frequencies, as follows: “[t]he spatial frequency or frequencies of an image are the rates of pixel change per unit distance, usually expressed in cycles per degree or radian.” Id. at 1:11–13. Thus, Bellers teaches modulating the sampling rate based on the rates of pixel change per unit distance. Petitioner has not shown that Bellers teaches or suggests a “sample rate selected based on the bandwidth.” Petitioner has not directed our attention, either in the Petition or the Request for Rehearing, 3 U.S. Patent No. 8,446,530 B2. to teachings or suggestions in Bellers of selecting the sample rate based on the bandwidth. 3. Ichiyoshi (Ex. 1009)4 In both the Petition (Pet. 83, 86, 90, 95–96) and the Request for Rehearing (Req. Reh’g 7–8), Petitioner argues the following passages in Ichiyoshi teach or suggest selecting the sample rate based on bandwidth. The sampling frequency fs is normally set to fs = NΔf where Δf represents a channel frequency interval. The sampling frequency fs is generated independently in the transmission device 81 and the reception device 82. Ex. 1009, 6:3–6. . . . signal combining circuit 91 includes a sampling timing generator 1 for generating a signal of the sampling frequency fs, and N A/D converter 3 for sampling N independent information signals with the sampling frequency fs . . . Id. at 6:9–13. These passages, however, do not relate to selecting the sample rate based on bandwidth. Petitioner provides no adequate explanation or other support in the Petition (Pet. 83) or the Request for Rehearing (Req. Reh’g 7– 8) for concluding these passages in Ichiyoshi teach or suggest selecting the sample rate based on bandwidth. Indeed, in the Petition, the Petitioner quoted these two passages, but failed to provide any explanation or to cite any further support for finding Ichiyoshi taught or suggested selecting the sample rate based on bandwidth. See Pet. 83. B. Reason to Combine” slip op. at 8
Claim construction§ 103 obviousnessPatents in suitUS 7,848,747 - Hamilton Beach Brands, Inc. v. F’Real Foods, LLCRehearing deniedPTAB · Sep 25, 2017 · IPR2017-00756 · APJ Elizabeth M Roesel · IPR · Rehearing
The Board denied rehearing, leaving institution denied on all grounds; Petitioner did not show an abuse of discretion in the Board’s finding that the Sato–Oberg combination was inadequately explained.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The Petition is ambiguous as to whether Petitioner relies on Sato or Oberg to teach a “rinse chamber.” On the one hand, Petitioner asserts that a “PHOSITA would have understood that Sato suggests rinsing within an enclosure” ([Pet.] 42) and “Sato discloses ‘a rinse chamber’” (id. at 43). On the other hand, Petitioner’s claim chart relies on Oberg alone as disclosing a “rinse chamber.” Id. at 47–48.” slip op. at 3
NonePatents in suitUS 7,144,150 - PTAB · Aug 1, 2017 · IPR2016-01565 · APJ Toni R Scheiner · IPR · Rehearing
The Board denied Mylan’s rehearing request, leaving claims 6–8, 10–18, 24, and 25 uninstituted because the Petition did not show the Januvia Label and Huettner were printed publications.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS 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 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 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” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“a trial is based on “the information presented in the petition.” 35 U.S.C. § 314(a). Under 35 U.S.C. § 311(b), in an inter partes review, a petitioner may only challenge the claims of a patent based on “prior art consisting of patents or printed publications,” and the petitioner has the initial burden of production to show that an asserted reference is prior art to the challenged claims under a relevant subsection of 35 U.S.C. § 102. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379 (Fed. Cir. 2015); Dec. 16. As explained in our Decision, we have often required a petitioner to make a threshold showing that the reference relied upon was publicly accessible as a printed publication prior to the effective filing date of a challenged patent to satisfy the initial burden of production. See, e.g., Apple Inc. v. DSS Tech. Mgmt., Inc., Case IPR2015-00369, slip op. at 5 (PTAB Aug. 12, 2015) (Paper 14) (noting that petitioner has the burden to make a threshold showing that a reference is “printed publication” prior art under 35 U.S.C. §§ 102 and 311(b)); Frontier Therapeutics, LLC v. Medac Gesellschaft Für Klinische Spezialpräparate MBH, Case IPR2016-00649, slip op. at 22 (PTAB September 1, 2016) (Paper 10). We further explained that “[a] given reference is ‘publicly accessible’ ‘upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.’” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006) (citing In re Wyer, 655 F.2d 221, 226 (CCPA 1981)); Dec. 17.” slip op. at 4
- Expert testimonyPetitioner expert discountedDecided for patent owner
“To the extent Petitioner now argues that “the declaration testimony of Dr. Davidson and the facial indicia on Huettner are sufficient” to make a threshold showing that Huettner was publically accessible as of the relevant date (Reh’g Req. 13), we are not persuaded. We note that Dr. Davidson testifies, without elaboration, that “Huettner was published in June 2007.’” Ex. 1002 ¶ 56. Petitioner, however, did not rely on Dr. Davidson’s testimony on this issue in the Petition. Moreover, even if Dr. Davidson’s testimony had been relied on, Petitioner does not point to any evidence—nor can we discern any in Dr. Davidson’s Declaration—that would reasonably suggest that Dr. Davidson has personal knowledge as to when and how Huettner was made available to the public. Accordingly, Dr. Davidson’s conclusory declaration of Huettner’s publication date is entitled to little or no weight. See Dell, Inc. v. Selene Commc’n Techs., LLC, Case IPR2014- 01411, slip op. at 22–23 (PTAB Feb. 26, 2015) (Paper 23) (explaining that an expert declaration is not enough to prove a prior art reference’s publication date where the expert declaration merely repeats assertions made by the petitioner).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied merits
“Decision on Institution, and Petitioner’s Request for Rehearing, we are not persuaded that we erred in declining to institute trial on claims 6–8, 10–18, 24, and 25. Petitioner, having failed to meet its burden of providing a threshold showing that the Januvia Label and Huettner are printed publications under 35 U.S.C. §§ 102 and 311(b), did not demonstrate a reasonable likelihood of prevailing in its assertion that the subject matter of claims 6–8, 10–18, 24, and 25 of the ’156 patent would have been obvious over the Januvia Label, Huettner, and Mikhail or the Knowledge of one of ordinary skill in the art..” slip op. at 8
§ 102 anticipationPatents in suitUS 8,853,156
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.