- Kingston Technology Company, Inc. v. Polaris Innovations Ltd.Rehearing deniedPTAB · Apr 12, 2018 · IPR2016-01622 · APJ Ken B Barrett · IPR · Rehearing
The Board denied the Patent Owner’s rehearing request, leaving intact its denial of the motion to amend and its unpatentability determination for the challenged claims.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 3
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“Amend’s noncontingent request to cancel Claims 1 and 5-8.” Req. Reh’g 3. Patent Owner faults us for first determining—before moving on to consideration of Patent Owner’s Motion to Amend—whether Petitioner had met its burden to prove the unpatentability of the challenged and instituted claims. See id.3 In effect, Patent Owner faults us for not treating the two components of the single proposed amendment4 as severable and for not analyzing the motion in a piecemeal fashion.” slip op. at 7
- ExcludeGranted
“Rehearing. That exhibit appears to be an article published on the internet and is dated March 5, 2018, a month after the issuance of the Final Decision. Patent Owner cites the exhibit as “press coverage” regarding briefing being allowed by other panels in other cases involving motions to amend. Req. Reh’g 14. The filing of Exhibit 2015, which was not in the record at the time of the Final Decision, is unnecessary to deciding the merits of Patent Owner’s Request for Rehearing, and Patent Owner has not shown good cause for admitting the exhibit now. For these reasons, we expunge Exhibit 2015 pursuant to our authority under 37 C.F.R. § 42.7(a). See also Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012) (“Evidence not already of record at the time of the decision will not be admitted [with a Rehearing Request] absent a showing of good cause.”).” slip op. at 10
- Adverse judgmentOther
“5 In apparent contradiction to its implied assertion that the two aspects of its Motion to Amend stand independently of each other, Patent Owner’s arguments in the Request suggest it strategically tied together the proposed substitute claim to the cancelation of all the instituted claims in an attempt to avoid its actions being construed as a request for adverse judgment. See, e.g., Req. Reh’g 6–7 (implying that an entry of “adverse judgment” is only appropriate where the motion seeks cancelation of all challenged claims without proposing a substitute claim); see also 37 C.F.R. § §42.73(b)(2) (“Actions construed to be a request for adverse judgment include . . . [c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.”). moot by taking the canceled claims entirely out of the case.” Req. Reh’g 4. The cited Paper 27 of Liberty Mutual is a summary of a conference call where Patent Owner explicitly indicated to the panel the desire to immediately cancel three claims out of the fifty-nine challenged and where no substitute claim was being proposed. Liberty Mut. Ins. v. Progressive Cas. Ins., CBM2013-00002, Papers 27, 28 (the motion itself). In the case before us, Patent Owner did not simply move to immediately cancel claims, but tied to that a request to add a substitute claim, and then continued to maintain, after filing the Motion to Amend, that independent claim 1—a claim requested to be canceled—was patentably distinct over the prior art. We did not abuse our discretion in considering such arguments.” slip op. at 9
NonePatents in suitUS 6,850,414 - PTAB · Apr 26, 2017 · IPR2015-01953 · APJ William M Fink · IPR · Rehearing
The Board dismissed the petitioner’s request to correct the omission of claim 17 as moot after issuing an errata correcting the final written decision.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Written Decision in this case entered on March 23, 2017 (Paper 104 (“Confidential”); Paper 107 (“Public”)). Paper 108 (“Req. Reh’g”). Specifically, Petitioner requests the Board clarify a typographical mistake in the “Order” portion of the Decision, in which the Board inadvertently omitted claim 17 from its enumeration of claims determined to be unpatentable. See Req. Reh’g 1–2. Petitioner is correct with regard to the omission of claim 17 and we have issued an errata to correct this omission. Paper 109 (“Errata”). Consequently, as the Errata addresses the omission in the entered Decision, It is: ORDERED that Petitioner’s Request for Rehearing is dismissed as moot.” slip op. at 2
NonePatents in suitUS 6,714,966
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.