- PTAB · Feb 6, 2025 · IPR2024-00324 · APJ Michelle N Wormmeester · IPR · Rehearing
The Board denied Comcast’s rehearing request and left in place denial of institution after finding no abuse of discretion in its construction and compelling-merits analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s 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). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 90 (Nov. 2019) (hereinafter, “CTPG”).5 In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); CTPG 90.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“discretion to deny institution due to the advanced state of parallel litigation, taking into consideration the six factors identified in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential), as well as applying guidance set forth in a Memorandum regarding the “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” issued by the Director of the U.S. Patent and Trademark Office (hereinafter, “Guidance Memo”).6 Inst. Dec. 6–43. We determined that the first five Fintiv factors favor discretionary denial,7 and that the Petition presents compelling evidence of unpatentability as to independent claims 1, 12, and 17 under the sixth Fintiv factor. Id. at 15–16, 23–43. Because “the PTAB will not deny institution based on Fintiv if there is compelling evidence of unpatentability,” we declined to exercise our discretion to deny and instituted trial. Guidance Memo 5; Inst. Dec. 15–16. In our Rehearing Decision, however, we agreed with Patent Owner that we erred in determining the claim terms “first format” and “second format” are not limited to different formats, and determined that the proper construction of these claim terms indeed requires the two formats to be different formats. Reh’g Dec. 5–9, 19. Applying the proper construction, we further determined that none of Petitioner’s asserted challenges presents compelling merits of unpatentability as to any claim of the ’751 patent, 6 Available at https://www.uspto.gov/sites/default/files/documents/interim_ proc_discretionary_denials_aia_parallel_district_court_litigation_memo_20 220621_.pdf. 7 Our analysis of the first five Fintiv factors in our First Institution Decision remains undisturbed on rehearing. contrary to our initial determination in the Institution Decision. Id. at 19–20. Having determined that the first five Fintiv factors favor discretionary denial, and that the Petition does not meet the compelling merits standard of the Guidance Memo under the sixth Fintiv factor, we modified our decision and denied institution on rehearing. Id. at 20.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“Contrary to Petitioner’s position, Patent Owner met its burden of showing that our Institution Decision should be modified. In our Institution Decision, we relied on claim differentiation when we determined that claim 1 is not limited to different first and second formats. Inst. Dec. 31. We did not consider the prosecution history, which was part of the record. See Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (“[W]e have held that a court ‘should also consider the patent’s prosecution history, if it is in evidence.’”). As we noted in our Rehearing Decision, however, the Federal Circuit has explained that “[t]he prosecution history modifies the scope of a claim term if ‘the patentee distinguished that term from prior art on the basis of a particular embodiment, expressly disclaimed subject matter, or described a particular embodiment as important to the invention.” Reh’g Dec. 8 (quoting Sentry Protection Prods., Inc. v. Eagle Mfg. Co., 400 F.3d 910, 915 (Fed. Cir. 2005)). The Federal Circuit also has explained that “[a]lthough claim differentiation is a useful analytic tool, it cannot . . . relieve any claim of limitations imposed by the prosecution history.” Id. at 13 (quoting Fenner Invs., Ltd. v. Cellco P’Ship, 778 F.3d 1320, 1327 (Fed. Cir. 2015)). In other words, we erred in not considering the prosecution history, which led to our erroneous conclusion that claim 1 is not limited to different first and second formats. See Ex. 1104, 170 (prosecution history). Our Institution Decision was based on this erroneous conclusion of law, as Patent Owner argued, and we modified it accordingly.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“claim 1. As discussed above with respect to limitation 1D, Petitioner asserted that its proposed combination of Danciu and Mahajan would have provided a system where “Danciu’s remote control would translate commands associated with a first type of media playing application to a generic format, transmit them to the controlled device, which would translate them to a command associated with a second type of media playing application for execution.” Reh’g Dec. 12–13 (quoting Pet. 31). In other words, both Danciu’s remote control and controlled device translate commands. With respect to claim 5, Petitioner asserted that Mahajan’s abstraction module could operate at Danciu’s server. Pet. 43. Even if Mahajan’s abstraction module (which translates commands) could operate at Danciu’s server, Petitioner does not adequately explain why an ordinarily skilled artisan would have had reason to modify Danciu’s system to locate Mahajan’s abstraction module at the server, especially where both Danciu’s remote control and controlled device already translate commands. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). Petitioner does not point to anything in its analysis of claim 5 that demonstrates we misapprehended or overlooked a matter.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,048,751 - Comcast Cable Communications, LLC v. Touchstream Technologies, Inc.Rehearing grantedPTAB · Oct 9, 2024 · IPR2024-00324 · APJ Michelle N Wormmeester · IPR · Rehearing
Patent Owner’s rehearing request was granted; the Petition was denied and no trial instituted because the challenges did not meet the compelling-merits standard under Fintiv.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s 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). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed board ownDecided for patent owner
“Our reviewing court has explained that “[t]he prosecution history modifies the scope of a claim term if ‘the patentee distinguished that term from prior art on the basis of a particular embodiment, expressly disclaimed subject matter, or described a particular embodiment as important to the invention.’” Sentry Protection Prods., Inc. v. Eagle Mfg. Co., 400 F.3d 910, 915 (Fed. Cir. 2005) (quoting CCS Fitness, Inc. v. Brunswick Corp., 228 F.3d 1359, 1366–67 (Fed. Cir. 2002)).” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“discretion to deny institution due to the advanced state of parallel litigation, taking into consideration the six factors identified in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential), as well as applying guidance set forth in a Memorandum regarding the “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” issued by the Director of the U.S. Patent and Trademark Office (hereinafter, “Guidance Memo”).5 Inst. Dec. 6–43. We determined that the first five Fintiv factors favor discretionary denial,6 and that the Petition presents compelling evidence of unpatentability as to independent claims 1, 12, and 17 under the sixth Fintiv factor. Id. at 15–16, 23–43. Because “the PTAB will not deny institution based on Fintiv if there is compelling evidence of unpatentability,” we declined to exercise our discretion to deny. Guidance Memo 5; Inst. Dec. 15–16.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“those arguments. See Inst. Dec. 45–47. As to Petitioner’s arguments on the claimed first and second formats of limitation 1D in particular, we found the record provided “some support” for Petitioner’s position that “it would have been obvious to a [person of ordinary skill in the art] that one or more RTS Media Abstraction Modules could operate at a server, such as in [Aldrey’s] Service Provider Network 103,” even though Petitioner asserted that Mahajan teaches command conversion at the client. Id. at 45–46 (citing Pet. 66–67). Yet assuming Mahajan’s RTS Media Abstraction Module could have operated at a server, as Petitioner argued, it is not readily apparent why an ordinarily skilled artisan would have considered locating the RTS Media Abstraction Module at a server based on Mahajan’s disclosure of command conversion at a client. See also Pet. 66 (“[I]t would have been obvious to a [person of ordinary skill in the art] that the RTS Media Abstraction Module could be located on the client or server.” (emphasis added)). Nor did Petitioner adequately explain why an ordinarily skilled artisan would have considered locating Mahajan’s RTS Media Abstraction Module at a server. We note Petitioner further argued that combining Mahajan and Aldrey would have provided a system where “Aldrey’s end terminal would translate commands associated with a first type of media playing application to a command associated with a second type of media playing application on a STB.” Pet. 68; see also id. at 67 (“Mahajan’s server-command teachings could be implemented on Aldrey’s end terminal remote control.”). Arguing that Aldrey’s end terminal would translate commands seems inconsistent with Petitioner’s earlier argument for locating command conversion at Aldrey’s network service provider. See id. at 66–68. Moreover, it is not readily apparent how command translation by Aldrey’s end terminal––rather than Aldrey’s network service provider––teaches or suggests the format of a command sent from the end terminal to the network service provider is different from the format of a command sent from the network service provider to the STB. Petitioner did not close these logical gaps, leaving its case short of compelling.” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 11,048,751 - Ykk Corporation v. 3M Innovative Properties Co.Rehearing deniedPTAB · Feb 10, 2022 · IPR2020-00699 · APJ Matthew S Meyers · IPR · Rehearing
The Board denied rehearing, leaving claim 12 not shown unpatentable under Grounds 8 and 9 because the petition lacked evidence tying the claimed shear strength to the required loop basis weight.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. LEGAL STANDARDS A party requesting rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d). The party must specifically identify all matters it believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. A request for rehearing, therefore, is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. See, e.g., Presidio Components, Inc.v. AVX Corporation, IPR2015-01332, Paper 21, 4 (PTAB Feb. 21, 2016) (“Patent Owner’s arguments in this regard amount to a mere disagreement with our analysis or conclusion. But mere disagreement with our analysis or conclusion is not a sufficient basis for rehearing. It is not an abuse of discretion to provide analysis or conclusion with which Patent Owner disagrees.”)” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Id. at 9. As to Petitioner’s first and second arguments, we specifically addressed Petitioner’s argument that the proposed combination of Petersen-1 and Busam would meet the shear strength limitation of claim 12. Dec. 69– 73. After reviewing the evidence and arguments presented by both parties, we agreed with Patent Owner’s position. As to Petitioner’s third argument, that we overlooked Busam’s disclosure of an overlapping loop basis weight range, that disclosure was never in dispute. Petitioner argues that “Patent Owner attempted to shift the focus of the Board to the unrelated issue of whether Busam explicitly discloses an anticipating example.” Req. Reh. 11. Petitioner seems to be implying that we applied an anticipation standard to its obviousness arguments, but we did not. Instead, our decision was based 6 on a lack of record evidence of obviousness. See, e.g., Dec. 72–73 (“Petitioner does not point us to any evidence that Busam’s female loop material is capable of engaging with a male fastening portion with a shear strength that was ‘reported to be greater than 500 grammes’ and has ‘a fiber basis weight in a range from 20 grams per square meter to 30 grams per square meter,’ as claim 12 requires.”). We also agreed with Patent Owner that the Petitioner had impermissibly relied on new obviousness theories in its Reply that were not presented in the Petitioner. Dec. 73 (“Petitioner does not explain why the arguments made in its Reply relating to claim 12 could not have been presented in the first instance in the Petition or how the arguments in the Reply are responsive to Patent Owner’s arguments in the Patent Owner Response”).” slip op. at 6
- Strike new argumentNew argument disregardedDecided for patent owner
“Id. at 9. As to Petitioner’s first and second arguments, we specifically addressed Petitioner’s argument that the proposed combination of Petersen-1 and Busam would meet the shear strength limitation of claim 12. Dec. 69– 73. After reviewing the evidence and arguments presented by both parties, we agreed with Patent Owner’s position. As to Petitioner’s third argument, that we overlooked Busam’s disclosure of an overlapping loop basis weight range, that disclosure was never in dispute. Petitioner argues that “Patent Owner attempted to shift the focus of the Board to the unrelated issue of whether Busam explicitly discloses an anticipating example.” Req. Reh. 11. Petitioner seems to be implying that we applied an anticipation standard to its obviousness arguments, but we did not. Instead, our decision was based 6 on a lack of record evidence of obviousness. See, e.g., Dec. 72–73 (“Petitioner does not point us to any evidence that Busam’s female loop material is capable of engaging with a male fastening portion with a shear strength that was ‘reported to be greater than 500 grammes’ and has ‘a fiber basis weight in a range from 20 grams per square meter to 30 grams per square meter,’ as claim 12 requires.”). We also agreed with Patent Owner that the Petitioner had impermissibly relied on new obviousness theories in its Reply that were not presented in the Petitioner. Dec. 73 (“Petitioner does not explain why the arguments made in its Reply relating to claim 12 could not have been presented in the first instance in the Petition or how the arguments in the Reply are responsive to Patent Owner’s arguments in the Patent Owner Response”).” slip op. at 6
§ 103 obviousnessPatents in suitUS 10,165,833 - Helmerich & Payne International Drilling Company / Helmerich & Payne Technologies, LLC et al. v. Nabors Drilling Technologies USA, Inc.Rehearing deniedPTAB · Jan 21, 2022 · IPR2021-01018 · APJ Sean P O’Hanlon · IPR · Rehearing
The Board denied rehearing and upheld denial of institution, finding the Petition did not show a reasonable likelihood that any challenged claim was unpatentable.
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) (2020). 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 relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsNot shown unpatentable
“overlooked any matter in the Institution Decision. As we explained, the Petition “does little more than cite to its annotated version of Haci Figure 3 and the Schaaf Declaration, which in large measure presents the same conclusory assertions advanced in the Petition.” Inst. Dec. 17 (citing Pet. 43–46; Ex. 1005 ¶¶ 126–133). We explained that neither Petitioner nor its declarant addressed Haci’s full disclosure or attempted to reconcile the disclosure with the assertion that Haci’s “small dots” are toolface orientation data, and we provided several examples of the disclosure Petitioner and its declarant failed to consider. Id. at 17–20. For example, we noted that Petitioner and its declarant failed to reconcile Haci’s discussion of toolface orientation omitting reference to Haci’s graphical display 113 and the discussion of the graphical display omitting reference to the “small dots” relied upon by Petitioner. Id. at 17. We also noted the failure of Petitioner and its declarant to explain how any useful information could be conveyed by the “small dots” relied upon by Petitioner. Id. at 18. For example, Petitioner does not present an example case of the “small dots” conveying a specific tool face orientation at any given time. To the contrary, it appears that any vertical line passing through the “small dots”—during times of both rotary drilling and slide drilling— would intersect multiple dots. Moreover, as we noted in the Institution Decision, both Petitioner and its declarant failed to explain how the 242° tool face orientation disclosed via tool face indicator 73 in Figure 3 is conveyed by the “small dots” relied upon by Petitioner. Id. at 18. In essence, Petitioner argues in the Petition that because Haci’s graphical display 113 shows a toolface degree legend on the Y-axis in Figure 3, the “small dots” relied upon by Petitioner must be toolface orientation data. As explained in the Institution Decision, however, we disagree with this presumption. At best, the Y-axis legend suggests that toolface orientation data could be presented via the graphical display, but does not imply that the “small dots” relied upon by Petitioner are that data. By failing to reconcile Haci’s full disclosure with its assertions of what is conveyed in Figure 3, the Petition merely speculates about what is disclosed in Figure 3. However, “[s]uch speculation is inadequate to support Petitioner’s contentions.” Inst. Dec. 17.” slip op. at 3
NonePatents in suitUS 7,802,634 - Intuitive Surgical, Inc. v. Ethicon Endo-Surgery, Inc.Rehearing deniedPTAB · Jun 11, 2019 · IPR2018-00938 · APJ Matthew S Meyers · IPR · Rehearing
The Board denied Intuitive Surgical’s rehearing request, leaving institution denied because the petition did not show a reasonable likelihood of prevailing on the challenged grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. See 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 3 In the Petition, Petitioner asserts the claims 1–7, 9–14, 19, and 20 are anticipated by Hooven. Pet. 13–50 (citing Exs. 1001, 1003, 1004). 4 In the Petition, Petitioner further asserts that claims 2–4, 9–15, and 18 are obvious over Hooven and Knodel (Ground 2 – Pet. 51–67 (citing Exs. 1001, 1003, 1004, 1005)); claim 8 is obvious over Hooven and Bays (Ground 3 – Pet. 67–70 (citing Exs. 1003, 1006)); and claims 1–8 and 19 are obvious over Hooven, Knodel and/or Bays, and Wales (Ground 4 – Pet. 70–73 (citing Exs. 1003, 1007)). relevant factors. See Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). 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.” 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 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Nonetheless, we have reconsidered our determination in light of Petitioner’s Request for Rehearing, but are not persuaded that that we misapprehended or overlooked Petitioner’s position or cited evidence. Instead, we maintain that the Petition and Dr. Knodel’s Declaration lack a discussion as to whether the proposed combination modifies Hooven’s flexible-elongated shaft 41 to utilize Wales’ rigid-elongated second/third links, in conjunction with its fourth link in the form of the end effector (see Ex. 1007, 5:11–18, 29–33), or if the proposed combination simply modifies Hooven’s flexible-elongated shaft 41 by adding an “articulation joint.” Cf. Pet. 71 (citing Figs. 1, 4). And, while the Petition and Dr. Knodel assert that the proposed combination is simply the use of “a known technique to improve similar devices” and “would have yielded predictable results without significantly altering or hindering the functions performed by Hooven’s device” (Pet. 72–73 (citing Ex. 1003 ¶¶ 168–170)), neither Petitioner nor Dr. Knodel provides any persuasive analysis, fact-based or otherwise to establish how the proposed combination discloses or suggests the “articulation joint” recited in independent claims 1 and 19. Dec. 38–39. Disagreement with the Board’s analysis and conclusions is not a sufficient basis on which to request rehearing. It is not an abuse of discretion to have made an analysis or conclusion with which a party disagrees. Accordingly, the Decision did not misapprehend or overlook any arguments or evidence presented by Petitioner. We did not abuse our discretion in determining that the Petitioner did not adequately establish a reasonable likelihood of prevailing on the proposed combination of Hooven, Wales, Knodel, and/or Bays.” slip op. at 10
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petitioner’s position or cited evidence. Petitioner cites pages 70–73 of the Petition, and paragraphs 166–170 of Dr. Knodel’s Declaration, in its Request. Req. Reh’g. 11–13. At the outset, we note that our Decision expressly addressed Petitioner’s arguments and evidence along with “Dr. Knodel’s discussion in support.” See Dec. 31–39. Furthermore, as Patent Owner points out in its Preliminary Response, Dr. Knodel’s Declaration simply parrots Petitioner’s arguments and provides little if any analysis of the evidence that he and Petitioner cite in support. See Prelim. Resp. 35–37; Compare Ex. 1003 ¶¶ 166–170, with Petition at 70–73. Nonetheless, we have reconsidered our determination in light of Petitioner’s Request for Rehearing, but are not persuaded that that we misapprehended or overlooked Petitioner’s position or cited evidence. Instead, we maintain that the Petition and Dr. Knodel’s Declaration lack a discussion as to whether the proposed combination modifies Hooven’s flexible-elongated shaft 41 to utilize Wales’ rigid-elongated second/third links, in conjunction with its fourth link in the form of the end effector (see Ex. 1007, 5:11–18, 29–33), or if the proposed combination simply modifies Hooven’s flexible-elongated shaft 41 by adding an “articulation joint.” Cf. Pet. 71 (citing Figs. 1, 4). And, while the Petition and Dr. Knodel assert that the proposed combination is simply the use of “a known technique to improve similar devices” and “would have yielded predictable results without significantly altering or hindering the functions performed by Hooven’s device” (Pet. 72–73 (citing Ex. 1003 ¶¶ 168–170)), neither Petitioner nor Dr. Knodel provides any persuasive analysis, fact-based or otherwise to establish how the proposed combination discloses or suggests the “articulation joint” recited in independent claims 1 and 19.” slip op. at 9
NonePatents in suitUS 9,113,874 - PTAB · Oct 17, 2018 · IPR2018-00651 · APJ Meredith C Petravick · IPR · Rehearing
The Board denied rehearing and denied institution because Petitioner did not show a reasonable likelihood of prevailing on challenged claims 23–25, 33, 35, 36, 39, 40, 42, and 44.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A. Standard of Review When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. See 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. See Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). 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.” 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
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Statute, however, provides that: [t]he Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition. 35 U.S.C. § 314(a) (emphasis added). Here, we have determined that the information presented in the Petition fails to show a reasonable likelihood that Petitioner would prevail with respect to at least one of challenged claims 23–25, 33, 35, 36, 39, 40, 42, and 44. Pursuant to § 314(a), we may not institute an inter partes review in this proceeding.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“in light of the disclosure at column 6, lines 32–37 of the ’296 Patent, but still determine that Petitioner’s proposed construction is unreasonably broad. Petitioner’s reliance on the disclosure at column 6, lines 32–37 is misplaced. When reviewed in a wider context, the ’296 Patent’s disclosure is consistent with our construction adopted in the Decision. Starting at column 5, line 58, the ’296 Patent describes a process or procedure “[f]or a given position of breast 102, such as a positon that is the same or similar to the CC position for a conventional mammogram.” The process or procedure includes moving the x-ray source, relative to the immobilized breast, to different angular positons, including conventional mammogram imaging positions and tomosyntheseis imaging positions. See Ex. 1003, 5:58–21. The ’296 Patent then states: Thus, two types of images can be produced in accordance with the currently preferred embodiment while breast 102 is immobilized in the same position. One type is the same or is at least similar to a conventional mammogram, which can be read and interpreted in the manner familiar to health professionals. The other type is tomosynthetic images reconstructed from the image data and displayed either separately or as an adjunct to the display of the image that is the same or similar to a conventional mammogram. The process described above for one position of breast 102 can be repeated for another position. For example one process can be for a breast position in a manner that is the same or similar to positioning the breast for a conventional CC view, the breast can then be released, the support 204 and C-arm 200 rotated to other angular positions and the breast repositioned in a manner that is the same and similar to the position for an MLO view, and the procedure repeated. Ex. 1001, 6:21–37 (emphases added). Consistent with our statement in the Decision that “[t]he ’296 patent does not describe decompressing the breast between imaging positions” (Dec. 9), but describes decompressing the breast between processes or procedures, in other words between exams. Id. at 6:32–37. As can be seen from the discussion above, the ’296 Patent discloses moving the source to conventional mammogram imaging positions and tomosynthesis imaging positions while the breast remains immobilized during one process, procedure, or exam. Id. at 5:58–6:37.” slip op. at 5
Claim constructionPatents in suitUS 7,831,296
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.