- Apple Inc. v. THL Holding Company, LLCRehearing deniedPTAB · Sep 27, 2024 · IPR2024-00399 · APJ Christopher M Kaiser · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no abuse of discretion in instituting review of claims 1–19 despite the later disclaimer of claims 1–10.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“be treated as never having existed, and because claim 1 is the only claim on which Petitioner has shown a reasonable likelihood of prevailing, we should overturn our decision instituting review. As noted above, when rehearing a decision on petition, we review the decision for an abuse of discretion, and 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.” 37 C.F.R. § 42.71(c); PPG Indus. Inc., 840 F.2d at 1567. But Patent Owner has not explained how we erred in any way in reaching our decision instituting review. Instead, Patent Owner’s argument is new and was not presented previously, and Patent Owner bases its rehearing argument on circumstances having changed since we issued our decision. Req. Reh’g 4 (stating statutory disclaimer was “filed following, and in view of, the Board’s guidance in the [decision on institution]”). For this reason, the Rehearing Request does not “identify [any] matters [Patent Owner] believes [we] misapprehended or overlooked,” nor does it “identify . . . 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). For this reason, we deny Patent Owner’s Request for Rehearing. In addition, we note that statutory disclaimers are “considered as part” slip op. at 4
- Adverse judgmentOther
“proposition that “[c]laims disclaimed under § 253(a) are treated as though they never existed.” Prelim. Resp. 3 (citing Vectra Fitness, 162 F.3d at 1383; Guinn, 96 F.3d at 1422). Neither Guinn nor Vectra Fitness involved a situation in which a determination about the patent, once made, was required to be unwound in light of a subsequent statutory disclaimer. Instead, Vectra Fitness related to a question of how to resolve post-disclaimer proceedings, and Guinn dealt with whether to apply a rule treating the disclaimer of all claims involved in an interference proceeding as a request for adverse judgment against the disclaiming party. Vectra Fitness, 162 F.3d at 1381 (disclaimer filed Feb. 16, 1990; reissue application at issue filed May 9, 1991; reissue patent issued Mar. 29, 1994; infringement suit filed Dec. 4, 1996); Guinn, 96 F.3d at 1420–21. In fact, contrary to the result that Patent Owner urges here of reversing our institution of review, Guinn held that it was appropriate to resolve an interference even after all the involved claims had been disclaimed. 96 F.3d at 1422 (“We hold that the Board had the authority and the responsibility pursuant to 35 U.S.C. § 135(a) to resolve the interference and render judgment against Guinn as a result of his disclaimer of claim 9 of the ’812 patent.”).” slip op. at 5
NonePatents in suitUS 11,350,246 - 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 - Vanguard Products Group, Inc., D/B/A Vanguard Protex Global v. Invue Security Products Inc.Rehearing deniedPTAB · May 26, 2020 · IPR2019-01209 · APJ Lynne E Pettigrew · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution because the Petition lacked adequate evidence and reasoning to support the proposed obviousness combination.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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. “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Id. § 42.71(c); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”). “An abuse of discretion is found if the decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact finding; or (4) involves a record that contains no evidence on which the Board could” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“As the Petition makes clear, the linchpin of Petitioner’s argument for modifying Brenner is that a person of ordinary skill in the art would have recognized reliability issues due to signal loss in the optical waveguide of Brenner’s device. See Pet. 21 (“Thus, a [person of ordinary skill in the art] would have recognized that the security device of Brenner is prone to reliability issues due to signal loss in the optical waveguide.”); id. at 34 (“A [person of ordinary skill in the art] would recognize that . . . the security device will likely suffer from reliability issues associated with signal loss within the optical waveguide.”); id. at 35 (“[T]he optical transceivers of the sensor unit and the base unit may not be able to reliably communicate with one another due to optical signal loss within the optical waveguide.”); id. 6 The Petition and our Decision refer to this book by its title (“Communications Standard Dictionary”), but Petitioner now refers to it by the last name of its author (“Weik”). Compare Pet. 6, 19, with Req. Reh’g 2. For convenience and consistency with the Request for Rehearing, we refer to the book herein as “Weik.” Notably, Petitioner did not submit Weik as a prior art printed publication to be considered as part of an unpatentability ground, as set forth in 35 U.S.C. § 311(b) (2018). See Pet. 5. Rather, the Petition cites Weik as support for its proposed claim construction and as support for an alleged “well-known fact” that an optical waveguide subjected to bending or winding is prone to signal loss. Id. at 6, 19. skill in the art] to improve the reliability of the security device of Brenner . . . .”); see also Dec. 14–15, 17–18 (citing Pet. 21, 35). Because we determined in our Decision that Petitioner failed to show sufficiently that a person of ordinary skill in the art would have recognized reliability issues in Brenner’s device, we concluded Petitioner did not provide adequate reasoning with rational underpinning for why a person of ordinary skill in the art would have been motivated to modify Brenner as proposed. Dec. 16– 18.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“As the Petition makes clear, the linchpin of Petitioner’s argument for modifying Brenner is that a person of ordinary skill in the art would have recognized reliability issues due to signal loss in the optical waveguide of Brenner’s device. See Pet. 21 (“Thus, a [person of ordinary skill in the art] would have recognized that the security device of Brenner is prone to reliability issues due to signal loss in the optical waveguide.”); id. at 34 (“A [person of ordinary skill in the art] would recognize that . . . the security device will likely suffer from reliability issues associated with signal loss within the optical waveguide.”); id. at 35 (“[T]he optical transceivers of the sensor unit and the base unit may not be able to reliably communicate with one another due to optical signal loss within the optical waveguide.”); id. 6 The Petition and our Decision refer to this book by its title (“Communications Standard Dictionary”), but Petitioner now refers to it by the last name of its author (“Weik”). Compare Pet. 6, 19, with Req. Reh’g 2. For convenience and consistency with the Request for Rehearing, we refer to the book herein as “Weik.” Notably, Petitioner did not submit Weik as a prior art printed publication to be considered as part of an unpatentability ground, as set forth in 35 U.S.C. § 311(b) (2018). See Pet. 5. Rather, the Petition cites Weik as support for its proposed claim construction and as support for an alleged “well-known fact” that an optical waveguide subjected to bending or winding is prone to signal loss. Id. at 6, 19. skill in the art] to improve the reliability of the security device of Brenner . . . .”); see also Dec. 14–15, 17–18 (citing Pet. 21, 35). Because we determined in our Decision that Petitioner failed to show sufficiently that a person of ordinary skill in the art would have recognized reliability issues in Brenner’s device, we concluded Petitioner did not provide adequate reasoning with rational underpinning for why a person of ordinary skill in the art would have been motivated to modify Brenner as proposed. Dec. 16– 18.” slip op. at 4
- Strike new argumentNew argument disregardedDecided for patent owner
“We are not persuaded that we overlooked evidence from Weik relied on in the Petition. Our Decision considered Weik’s description of a “microbend loss” that was quoted in the Petition: “the optical power loss caused by a microbend, i.e., a small bend, kink, or abrupt discontinuity in the direction of the optical axis of fibers, in the core-cladding interface surface, or both, usually caused by cabling, wrapping the fiber around drums and (citing Pet. 34–35 (citing Ex. 1002, 576)). But Petitioner does not identify, nor do we see, any assertion in the Petition that Weik shows a microbend loss can cause a “total failure” of an optical signal to reach its destination. See Req. Reh’g 9; Pet. 19–20, 34–35. Petitioner’s Request for Rehearing also does not identify where the Petition addressed Weik’s statement that microbends can cause radiative loss. See Pet. 19–20, 34–35. Because these arguments were not presented in the first instance in the Petition, we could not have overlooked them in our Decision.” slip op. at 5
§ 103 obviousnesscites KSRPatents in suitUS 10,062,253 - Vanguard Products Group, Inc., D/B/A Vanguard Protex Global v. Invue Security Products Inc.Rehearing deniedPTAB · May 26, 2020 · IPR2019-01206 · APJ Lynne E Pettigrew · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution because the Petition lacked sufficient evidence and reasoning to show a reasonable likelihood of prevailing on obviousness.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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. “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Id. § 42.71(c); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”). “An abuse of discretion is found if the decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact finding; or (4) involves a record that contains no evidence on which the Board could” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“ordinary skill in the art] to improve the reliability of the security device of Brenner . . . .”); see also Dec. 14–15, 18 (citing Pet. 21, 36–37). Because we determined in our Decision that Petitioner failed to show sufficiently that a person of ordinary skill in the art would have recognized reliability issues in Brenner’s device, we concluded Petitioner did not provide adequate reasoning with rational underpinning for why a person of ordinary skill in the art would have been motivated to modify Brenner as proposed. Dec. 16– 18.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“ordinary skill in the art] to improve the reliability of the security device of Brenner . . . .”); see also Dec. 14–15, 18 (citing Pet. 21, 36–37). Because we determined in our Decision that Petitioner failed to show sufficiently that a person of ordinary skill in the art would have recognized reliability issues in Brenner’s device, we concluded Petitioner did not provide adequate reasoning with rational underpinning for why a person of ordinary skill in the art would have been motivated to modify Brenner as proposed. Dec. 16– 18.” slip op. at 5
§ 103 obviousnesscites KSRPatents in suitUS 9,818,274 - Comcast Cable Commuications, LLC v. Rovi Guides, Inc.Rehearing deniedPTAB · Mar 25, 2020 · IPR2019-00292 · APJ William M Fink · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, leaving in place its denial of authorization to seek a stay or termination based on Arthrex.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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 7,937,394 - Comcast Cable Commuications, LLC v. Rovi Guides, Inc.Rehearing deniedPTAB · Mar 25, 2020 · IPR2019-00281 · APJ William M Fink · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests challenging the denial of authorization to seek a stay or termination based on Arthrex and the APA.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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 › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“(1) because the Federal Circuit’s mandate has not issued in Arthrex, the Administrative Patent Judges presiding over the instant proceedings remain unconstitutionally appointed and, therefore, the instant proceedings should be stayed (Reh’g Req. 6–8); (2) the proceedings should be stayed because the Arthrex remedy does not go far enough and violates the Administrative Procedure Act (APA) (id. at 9–13 (citing, e.g., Polaris Innovations Ltd. v. Kingston Tech. Co., No. 18-1768, Dkt. No. 90 at 2 (Fed. Cir. Nov. 8, 2019))); and (3) intervention from Congress and agency rulemaking may be necessary to remedy the defect identified in Arthrex, so termination of each of the instant proceedings is warranted (id. at 13–15). Patent Owner’s arguments have been addressed in our denials.6 See, e.g., IPR2019-00224, Paper 28 at 2 (PTAB Jan. 14, 2020) (quoting Arthrex, 941 F.3d at 1337 (“This as-applied severance . . . cures the constitutional violation”)); IPR2019-00224, Paper 39 at 4 (PTAB Feb. 18, 2020) (“[I]t is unclear how the issuance of the mandate in Arthrex would address the alleged APA defect.”). For these reasons, we also disagree with Patent Owner’s argument 6 In any event, the issuance of the mandate in Image Processing Techs. LLC v. Samsung Electronics Co. moots Patent Owner’s argument that Board judges are unconstitutionally appointed until the mandate in Arthrex issues. See Image Processing Techs. LLC v. Samsung Electronics Co., No. 2018- 2156 (Fed. Cir. Mar. 9, 2020), ECF No. 78; Mandate, Image Processing Techs. LLC v. Samsung Elecs. Co., Nos. 2019-1408, 2019-1485 (Fed. Cir. Mar. 9, 2020), ECF No. 75 (relying on Arthrex). Furthermore, in Arthrex, the Federal Circuit denied the petitions for panel rehearing and the petitions for rehearing en banc. Arthrex, Inc. v. Smith & Nephew, Inc., No. 2018-2140 (Fed. Cir. Mar. 23, 2020), ECF No. 115. that denying Patent Owner the opportunity for briefing “itself violates the [APA] because the denial lacks a reasoned basis.” Reh’g Req. 1. Accordingly, we deny Patent Owner’s Requests for Rehearing.” slip op. at 3
NonePatents in suitUS 9,621,956 - Comcast Cable Commuications, LLC v. Rovi Guides, Inc.Rehearing deniedPTAB · Mar 25, 2020 · IPR2019-00239 · APJ William M Fink · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests seeking authorization to move to stay or terminate the proceedings based on Arthrex and the APA.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“(1) because the Federal Circuit’s mandate has not issued in Arthrex, the Administrative Patent Judges presiding over the instant proceedings remain unconstitutionally appointed and, therefore, the instant proceedings should be stayed (Reh’g Req. 6–8); (2) the proceedings should be stayed because the Arthrex remedy does not go far enough and violates the Administrative Procedure Act (APA) (id. at 9–13 (citing, e.g., Polaris Innovations Ltd. v. Kingston Tech. Co., No. 18-1768, Dkt. No. 90 at 2 (Fed. Cir. Nov. 8, 2019))); and (3) intervention from Congress and agency rulemaking may be necessary to remedy the defect identified in Arthrex, so termination of each of the instant proceedings is warranted (id. at 13–15). Patent Owner’s arguments have been addressed in our denials.6 See, e.g., IPR2019-00224, Paper 28 at 2 (PTAB Jan. 14, 2020) (quoting Arthrex, 941 F.3d at 1337 (“This as-applied severance . . . cures the constitutional violation”)); IPR2019-00224, Paper 39 at 4 (PTAB Feb. 18, 2020) (“[I]t is unclear how the issuance of the mandate in Arthrex would address the alleged APA defect.”). For these reasons, we also disagree with Patent Owner’s argument 6 In any event, the issuance of the mandate in Image Processing Techs. LLC v. Samsung Electronics Co. moots Patent Owner’s argument that Board judges are unconstitutionally appointed until the mandate in Arthrex issues. See Image Processing Techs. LLC v. Samsung Electronics Co., No. 2018- 2156 (Fed. Cir. Mar. 9, 2020), ECF No. 78; Mandate, Image Processing Techs. LLC v. Samsung Elecs. Co., Nos. 2019-1408, 2019-1485 (Fed. Cir. Mar. 9, 2020), ECF No. 75 (relying on Arthrex). Furthermore, in Arthrex, the Federal Circuit denied the petitions for panel rehearing and the petitions for rehearing en banc. Arthrex, Inc. v. Smith & Nephew, Inc., No. 2018-2140 (Fed. Cir. Mar. 23, 2020), ECF No. 115. that denying Patent Owner the opportunity for briefing “itself violates the [APA] because the denial lacks a reasoned basis.” Reh’g Req. 1. Accordingly, we deny Patent Owner’s Requests for Rehearing.” slip op. at 3
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“(1) because the Federal Circuit’s mandate has not issued in Arthrex, the Administrative Patent Judges presiding over the instant proceedings remain unconstitutionally appointed and, therefore, the instant proceedings should be stayed (Reh’g Req. 6–8); (2) the proceedings should be stayed because the Arthrex remedy does not go far enough and violates the Administrative Procedure Act (APA) (id. at 9–13 (citing, e.g., Polaris Innovations Ltd. v. Kingston Tech. Co., No. 18-1768, Dkt. No. 90 at 2 (Fed. Cir. Nov. 8, 2019))); and (3) intervention from Congress and agency rulemaking may be necessary to remedy the defect identified in Arthrex, so termination of each of the instant proceedings is warranted (id. at 13–15). Patent Owner’s arguments have been addressed in our denials.6 See, e.g., IPR2019-00224, Paper 28 at 2 (PTAB Jan. 14, 2020) (quoting Arthrex, 941 F.3d at 1337 (“This as-applied severance . . . cures the constitutional violation”)); IPR2019-00224, Paper 39 at 4 (PTAB Feb. 18, 2020) (“[I]t is unclear how the issuance of the mandate in Arthrex would address the alleged APA defect.”). For these reasons, we also disagree with Patent Owner’s argument 6 In any event, the issuance of the mandate in Image Processing Techs. LLC v. Samsung Electronics Co. moots Patent Owner’s argument that Board judges are unconstitutionally appointed until the mandate in Arthrex issues. See Image Processing Techs. LLC v. Samsung Electronics Co., No. 2018- 2156 (Fed. Cir. Mar. 9, 2020), ECF No. 78; Mandate, Image Processing Techs. LLC v. Samsung Elecs. Co., Nos. 2019-1408, 2019-1485 (Fed. Cir. Mar. 9, 2020), ECF No. 75 (relying on Arthrex). Furthermore, in Arthrex, the Federal Circuit denied the petitions for panel rehearing and the petitions for rehearing en banc. Arthrex, Inc. v. Smith & Nephew, Inc., No. 2018-2140 (Fed. Cir. Mar. 23, 2020), ECF No. 115. that denying Patent Owner the opportunity for briefing “itself violates the [APA] because the denial lacks a reasoned basis.” Reh’g Req. 1. Accordingly, we deny Patent Owner’s Requests for Rehearing.” slip op. at 3
NonePatents in suitUS 7,779,011 - Comcast Cable Commuications, LLC v. Rovi Guides, Inc.Rehearing deniedPTAB · Mar 25, 2020 · IPR2019-00555 · APJ William M Fink · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests seeking authorization to move to stay or terminate the proceedings based on Arthrex and APA arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“(1) because the Federal Circuit’s mandate has not issued in Arthrex, the Administrative Patent Judges presiding over the instant proceedings remain unconstitutionally appointed and, therefore, the instant proceedings should be stayed (Reh’g Req. 6–8); (2) the proceedings should be stayed because the Arthrex remedy does not go far enough and violates the Administrative Procedure Act (APA) (id. at 9–13 (citing, e.g., Polaris Innovations Ltd. v. Kingston Tech. Co., No. 18-1768, Dkt. No. 90 at 2 (Fed. Cir. Nov. 8, 2019))); and (3) intervention from Congress and agency rulemaking may be necessary to remedy the defect identified in Arthrex, so termination of each of the instant proceedings is warranted (id. at 13–15). Patent Owner’s arguments have been addressed in our denials.6 See, e.g., IPR2019-00224, Paper 28 at 2 (PTAB Jan. 14, 2020) (quoting Arthrex, 941 F.3d at 1337 (“This as-applied severance . . . cures the constitutional violation”)); IPR2019-00224, Paper 39 at 4 (PTAB Feb. 18, 2020) (“[I]t is unclear how the issuance of the mandate in Arthrex would address the alleged APA defect.”). For these reasons, we also disagree with Patent Owner’s argument 6 In any event, the issuance of the mandate in Image Processing Techs. LLC v. Samsung Electronics Co. moots Patent Owner’s argument that Board judges are unconstitutionally appointed until the mandate in Arthrex issues. See Image Processing Techs. LLC v. Samsung Electronics Co., No. 2018- 2156 (Fed. Cir. Mar. 9, 2020), ECF No. 78; Mandate, Image Processing Techs. LLC v. Samsung Elecs. Co., Nos. 2019-1408, 2019-1485 (Fed. Cir. Mar. 9, 2020), ECF No. 75 (relying on Arthrex). Furthermore, in Arthrex, the Federal Circuit denied the petitions for panel rehearing and the petitions for rehearing en banc. Arthrex, Inc. v. Smith & Nephew, Inc., No. 2018-2140 (Fed. Cir. Mar. 23, 2020), ECF No. 115. that denying Patent Owner the opportunity for briefing “itself violates the [APA] because the denial lacks a reasoned basis.” Reh’g Req. 1. Accordingly, we deny Patent Owner’s Requests for Rehearing.” slip op. at 3
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“(1) because the Federal Circuit’s mandate has not issued in Arthrex, the Administrative Patent Judges presiding over the instant proceedings remain unconstitutionally appointed and, therefore, the instant proceedings should be stayed (Reh’g Req. 6–8); (2) the proceedings should be stayed because the Arthrex remedy does not go far enough and violates the Administrative Procedure Act (APA) (id. at 9–13 (citing, e.g., Polaris Innovations Ltd. v. Kingston Tech. Co., No. 18-1768, Dkt. No. 90 at 2 (Fed. Cir. Nov. 8, 2019))); and (3) intervention from Congress and agency rulemaking may be necessary to remedy the defect identified in Arthrex, so termination of each of the instant proceedings is warranted (id. at 13–15). Patent Owner’s arguments have been addressed in our denials.6 See, e.g., IPR2019-00224, Paper 28 at 2 (PTAB Jan. 14, 2020) (quoting Arthrex, 941 F.3d at 1337 (“This as-applied severance . . . cures the constitutional violation”)); IPR2019-00224, Paper 39 at 4 (PTAB Feb. 18, 2020) (“[I]t is unclear how the issuance of the mandate in Arthrex would address the alleged APA defect.”). For these reasons, we also disagree with Patent Owner’s argument 6 In any event, the issuance of the mandate in Image Processing Techs. LLC v. Samsung Electronics Co. moots Patent Owner’s argument that Board judges are unconstitutionally appointed until the mandate in Arthrex issues. See Image Processing Techs. LLC v. Samsung Electronics Co., No. 2018- 2156 (Fed. Cir. Mar. 9, 2020), ECF No. 78; Mandate, Image Processing Techs. LLC v. Samsung Elecs. Co., Nos. 2019-1408, 2019-1485 (Fed. Cir. Mar. 9, 2020), ECF No. 75 (relying on Arthrex). Furthermore, in Arthrex, the Federal Circuit denied the petitions for panel rehearing and the petitions for rehearing en banc. Arthrex, Inc. v. Smith & Nephew, Inc., No. 2018-2140 (Fed. Cir. Mar. 23, 2020), ECF No. 115. that denying Patent Owner the opportunity for briefing “itself violates the [APA] because the denial lacks a reasoned basis.” Reh’g Req. 1. Accordingly, we deny Patent Owner’s Requests for Rehearing.” slip op. at 3
NonePatents in suitUS 9,668,014 - Comcast Cable Commuications, LLC v. Rovi Guides, Inc.Rehearing deniedPTAB · Mar 25, 2020 · IPR2019-00290 · APJ William M Fink · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests challenging denial of authorization to seek a stay or termination based on Arthrex and APA arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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 7,937,394
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.