- Fujitsu Network Communications, Inc. v. Capella Photonics, Inc.Rehearing deniedPTAB · Dec 29, 2015 · IPR2015-00727 · APJ Josiah C Cocks · IPR · Rehearing
The Board denied Capella’s rehearing request, leaving in place its decision granting Fujitsu’s motion to submit supplemental information.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“2. Discussion When rehearing a decision on a motion, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(b). The party requesting rehearing has the burden of showing that the decision from which rehearing is sought should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d). Here, Capella contends the following in its Request for Rehearing:” slip op. at 2
- Expert testimonyDecided for petitioner
“it made in its Opposition to Fujitsu’s Motion. In our Decision, we were cognizant that paragraph 166 of Dr. Ford’s Declaration (Ex. 1037) was not identical to paragraph 166 of Dr. Drabik’s Declaration (Ex. 1016). In viewing the differences, however, we concluded that the changes were not substantive in nature, and instead simply encompassed expression of content that previously had been incorporated by reference. That Capella may disagree with our conclusion in that respect, does not show that we misapprehended or overlooked any matter in so reaching that conclusion. Moreover, although Capella generally contends that the expression of the material in paragraph 166 of Dr. Ford’s Declaration presents a new “rationale” applied to the combination of Bouevitch and Sparks that is an “attempt to remedy a deficiency in Dr. Drabik’s original declaration,” Cappela does not explain what the new rationale is or what deficiency allegedly now has been remedied. See Req. Reh’g 3–4.” slip op. at 3
None - Fujitsu Network Communications, Inc. v. Capella Photonics, Inc.Rehearing deniedPTAB · Dec 29, 2015 · IPR2015-00726 · APJ Josiah C Cocks · IPR · Rehearing
The Board denied Capella’s request for rehearing of its decision allowing Fujitsu to submit supplemental information.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“for an abuse of discretion. 37 C.F.R. § 42.71(b). The party requesting rehearing has the burden of showing that the decision from which rehearing is sought should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d). Here, Capella contends the following in its Request for Rehearing:” slip op. at 2
- Additional discoveryOther
“for an abuse of discretion. 37 C.F.R. § 42.71(b). The party requesting rehearing has the burden of showing that the decision from which rehearing is sought should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d). Here, Capella contends the following in its Request for Rehearing:” slip op. at 2
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“for an abuse of discretion. 37 C.F.R. § 42.71(b). The party requesting rehearing has the burden of showing that the decision from which rehearing is sought should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d). Here, Capella contends the following in its Request for Rehearing: First, the Board’s decision granting Fujitsu’s motion to submit supplemental information is not supported by substantial evidence. Second, the Board misapprehended or overlooked that substantive content was added to Dr. Ford’s declaration. Third, the Board’s continued reliance on Dr. Drabik’s declaration, where cross-examination is impossible, violates the rules of discovery, the rules of evidence, and curtails due process.” slip op. at 2
None - PTAB · Dec 22, 2015 · IPR2014-00963 · APJ David C Mckone · IPR · Rehearing
The Board denied Petitioner’s rehearing request, leaving intact its decision that claims 1–16 were not shown unpatentable over the asserted obviousness grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS The burden of showing that the Decision should be modified is on Petitioner, the party challenging the Decision. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Figure 6 is a detailed diagram of a TDM FIFO receiver. Ex. 1006, 10:34– 35. “The TDM slot counter 200 and enable DP-RAM 202 operate as for the TDM FIFO driver 180-1 shown in FIG. 5,2 to identify when the receiver 212 is to be active.” Id. at 10:36–39. When DP RAM Enable 202 of Figure 3 (or Figure 5) enables driver 208 to permit DP RAM Data 204 to assert data at a particular slot, the corresponding DP RAM Enable 202 of Figure 6 enables receiver 212 to remove data from the bus at the same time slot. Id. at 10:36–43. As with the DP RAM Enable 202 of Figure 3, the DP RAM Enable 202 of Figure 6 does not determine which slot is associated with which DSP. It simply allows data to pass through during an enabled time slot to FIFO Data 214, which clocks data into the DSP associated with the enabled time slot. Id. In the Decision, we found that “Petitioner and Dr. Stark do not explain persuasively how simply reprogramming DP RAM Enable 202 would provide a different mapping between the data stored in DP RAM Data 204 and the DSPs.” Dec. 27. Simply reprogramming the corresponding DP RAM Enable 202 of Figure 6 to coincide with the mapping of DP RAM Enable 202 of Figure 3 does not address this deficiency. The Decision did not discuss Figure 6 explicitly. Nevertheless, because Petitioner’s proposed re-programming of its DP RAM Enable 202 mirrored that of Figure 3’s DP RAM Enable 202, we implicitly rejected Petitioner’s arguments regarding” slip op. at 7
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“frequency hopping. Req. 4–5 (citing Ex. 1023, 33:6–13, 34:3–14, 43:12– 44:1). Petitioner did not make this argument in the Reply. Indeed, Petitioner made the opposite argument—criticizing the same testimony for stating that the ’480 patent does not disclose implementing the optional frequency hopping portion of GSM. Reply 5–6. We find that Dr. Wells has testified consistently that the portion of the ’480 patent quoted above “actually means . . . that it can support GSM, and then it characterizes GSM as a frequency hopping standard. It doesn’t say that it supports frequency hopping.” Ex. 1023, 34:10–14; accord Ex. 2007 ¶ 78. We continue to credit Dr. Wells’s testimony.” slip op. at 5
- Strike new argumentNew argument disregardedDecided for patent owner
“LLC, 805 F.3d 1064 (Fed. Cir. 2015). Req. 2, 13–15. Belden addressed the Board’s denial of a motion to exclude reply expert testimony as beyond the proper scope of a reply, as informed by our Office Patent Trial Practice Guide.3 805 F.3d at 1077–78. In upholding the Board’s denial, the Federal Circuit noted that “[e]vidence admitted in rebuttal to respond to the patent owner’s criticisms will commonly confirm the prima facie case. That does not make it necessary to the prima facie case.” Id. at 1079. Petitioner argues that it should have been permitted to present responsive evidence confirming the prima facie case it presented in the Petition. Req. 13–14. Petitioner’s second theory for combining the ’480 patent and GSM 05.02, however, is not designed to support or confirm the prima facie case it presented in the Petition. As explained above (taking into account Petitioner’s Figure 6 argument), and in the Decision (at 25), the prima facie case presented in the Petition was that a skilled artisan would have modified the ’480 patent simply by reprogramming the DP RAM Enable 202 mappings. Petitioner’s second Reply argument was that a skilled artisan would have modified different components of the ’480 patent “without any modification to the memory (DP RAM Enable) mapping 3 “While replies can help crystalize issues for decision, a reply that raises a new issue or belatedly presents evidence will not be considered and may be returned. The Board will not attempt to sort proper from improper portions of the reply. Examples of indications that a new issue has been raised in a reply include new evidence necessary to make out a prima facie case for the patentability or unpatentability of an original or proposed substitute claim, and new evidence that could have been presented in a prior filing.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012). used.” Req. 14 (quoting Ex. 1022 (Stark Reply Decl.) ¶ 43).4 This is an attempt to argue an entirely new prima facie case. Thus, our refusal to consider Petitioner’s second reply argument was consistent with Belden and the Office Trial Practice Guide.” slip op. at 9
§ 103 obviousnessPatents in suitUS 6,952,408 - Njoy, Inc. / CB Distributors, Inc. et al. v. Fontem Holdings 1 B.V.Institution deniedPTAB · Dec 9, 2015 · IPR2015-01302 · APJ Donna M Praiss · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–4, 8–10, and 12–17 were obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“inter partes review may not be instituted “unless . . . 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). Upon considering the Petition and Preliminary Response, we determine that Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of claims 1–4, 8–10, and 12–17. Accordingly, we decline to institute an inter partes review of those claims.” slip op. at 2
- Skill levelOther
“For purposes of this Decision, we do not discern an appreciable difference between Petitioner’s and Patent Owner’s proposed levels of ordinary skill in the art that would impact our ultimate conclusions. We also consider the cited prior art as representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (finding the absence of specific findings on “level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“We find that these disclosures of an electronic atomization cigarette and other cigarette substitutes do not limit the shape, size, look, feel, or other sensations of the electronic cigarette of the invention beyond delivering atomization to satisfy the need for a user to experience an inhaling action. Accordingly, on the current record, we determine the broadest reasonable interpretation of the term “electronic cigarette” to be “a device for generating liquid droplets for inhalation by a user, where the device functions as a substitute for smoking, e.g., by providing nicotine without tar.”” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not found
“We are not persuaded, however, that these observations of the prior art provide a rational basis for combining the separate embodiments of Takeuchi, namely the intercommunicating pore structure 302 and the rod-like heater 74, together with the resistive wire coil of Counts, in the configuration required by independent claims 1 and 14. Where the claimed subject matter cannot be fairly characterized as involving the simple substitution of one known element for another, there must be a showing of “an apparent reason to combine the known elements in the fashion claimed . . . .” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)).” slip op. at 20
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 8,893,726 - Corning Optical Communications RF, LLC v. PPC Broadband, Inc.Rehearing deniedPTAB · Dec 9, 2015 · IPR2014-00736 · APJ Jacqueline Wright Bonilla · IPR · Rehearing
The Board denied Corning’s rehearing request, leaving intact dismissal of the petitions because Corning Inc. and Corning Optical Communications LLC were unnamed real parties in interest.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 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). 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).” slip op. at 3
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“proof on Petitioner.” Req. Reh’g. 9–10. As noted in our Decision, we placed the ultimate burden of proof, i.e., burden of persuasion, on Patent Owner, not Petitioner. Dec. 13–14 (stating that if “a patent owner raises the RPI issue after institution and after filing a response to the petition, and in the form of a motion . . . , the burden of proof is on the patent owner as the proponent of the motion”). As explained recently by the Federal Circuit, the “burden of persuasion ‘is the ultimate burden assigned to a party who must prove something to a specified degree of certainty,’ such as by a preponderance of the evidence.” Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (quoting Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)). Notwithstanding Patent Owner’s burden of persuasion, however, once it came forward with sufficient evidence indicating that Petitioner should have identified Corning Inc. and Corning NC as RPIs (as cited and discussed in Patent Owner’s Motion), a “shifting burden” came into play, i.e., a “burden of production” on Petitioner. Id. at 1379. To address that burden of production, Petitioner had an opportunity to “produc[e] additional evidence and present[] persuasive argument based on new evidence or evidence already of record” in its Opposition to Patent Owner’s Motion to Dismiss. Id. (citations omitted). It was in this capacity, only after determining that Patent Owner had made a sufficient showing regarding RPI, that we stated that Petitioner did not point “to credible evidence indicating that if interests of Corning Inc. and Petitioner ever diverged, Mr. Hulme and Mr. Vynalek, who are employees of Corning Inc. (Ex. 2100, 12– 14), would act in a matter contrary to Corning Inc.’s interests.” Dec. 22; Req. Reh’g. 9. Thereafter, based on all evidence before us, we concluded that Patent Owner had established by a preponderance of the evidence that Corning NC and Corning Inc. should have been named as RPIs in these proceedings. Dec. 13–14, 16, 25. Thus, Petitioner does not persuade us that we impermissibly placed the burden of persuasion on Petitioner.” slip op. at 5
Discretionary denialPatents in suitUS 6,676,446 - Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures I LLCAll claims unpatentablePTAB · Dec 9, 2015 · IPR2014-00921 · APJ Josiah C Cocks · IPR · Final written decision
Claims 23, 24, 60, and 61 are unpatentable as obvious over Robertson and Ungerboeck; claims 23 and 60 were not shown anticipated by Palicot.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“It is clear from the record evidence before us that, in the context of the ’783 patent, a connection between two components is not one that is considered properly as “direct” if there is an interleaver between those components. We understand that an “interleaver” is a structure that provides extensive reordering of data. For instance, record evidence characterizes a particular interleaver as a “pseudorandom block scrambler” that reads out data “in a specified permuted order.” Ex. 1009, 29. Indeed, the ’783 patent itself characterizes an interleaver as a “pseudo-random block scrambler” that operates to output data “in a specified (fixed) random order.” Ex. 1001, 5:57–61. In that respect, it is further understood from the ’783 patent that there are extensive considerations that go into the design of interleavers and the effect that a given interleaver has on the configuration, order, and characteristics of data. See id. at 9:53–13:54. Thus, the operations of an interleaver appear to constitute complex data reordering schemes where the “pseudorandom” scrambling of data is, at least in some cases, the desired goal. As noted above, in the context of an inter partes review, the Board construes claim terms based on their broadest reasonable construction that is consistent with the underlying specification. Here, with that guidance in mind, we do not discern that Intellectual Ventures’s position that the claim terms in question should be construed narrowly to prohibit any intervening structure that performs any type of operation that may be regarded as manipulating data or changing the order of data in some aspect, regardless of the nature or extent of the data reordering. To that end, while the reordering operations provided by an interleaver are not encompassed by “directly” connecting elements, we are not satisfied that Intellectual Ventures has provided a suitable evidentiary basis for its position that any intervening data reordering, of any kind, is the benchmark for evaluating whether structures are directly connected to one another. It also is clear from the Specification of the ’783 patent, and as we observed in our Decision instituting trial (Inst. Dec. 12–13), that a direct connection does not prohibit some intervening structures, such as the intervening presence of a switch. In considering the totality of the record before us, we do not discern that there is cause to deviate from the construction we initially adopted for “directly coupled”/“signal directly from” as a part of the Decision to institute trial. Accordingly, for purposes of this Final Written Decision, we maintain the understanding that components that are “directly” coupled to one another, or which receive signals “directly” from one another, excludes the presence of an interleaver between those components, but does not prohibit any and all intervening structures, such as a switch.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for patent owner
“Thus, the declarants are largely in agreement as to the level of ordinary skill in the art, but for a slight difference of opinion as to the extent of education. While Mr. Lanning and Dr. Xiong take the view that a person of ordinary skill “would have at least a Bachelors or Masters level college degree in Electrical Engineering, Computer Science, Computer Engineering or equivalent training and experience,” Dr. Cimini opines that only a Bachelor’s degree would be insufficient. Dr. Cimini advanced that opinion on the theory that one with only a Bachelor’s degree would lack an appropriate “mathematical foundation.” On the record before us, it is not apparent that the possession of a Master’s degree as compared with possession of a Bachelor’s degree establishes a dividing line between a person who is of ordinary skill in the art, and a person who is not. Dr. Cimini does not explain persuasively why a person with a Bachelor’s degree in the noted areas, coupled for instance, with the noted “academic or industry experience” would lack the requisite “mathematical foundation.” To that end, we are cognizant of the level of ordinary skill to which all declarants have testified, but do not understand the record as establishing that a Master’s degree, to the exclusion of other equivalent experience, is a strict requirement of a skilled artisan in the pertinent field.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“contends that Robertson discloses all the features of claims 23 and 60 (Pet. 49–54) with the exception of those features directed to “multilevel modulation” (id. at 53). In that regard, Ericsson contends that Robertson is directed to “binary modulation” rather than “multilevel modulation,” but points to Ungerboeck as disclosing multilevel modulation. Id. Referencing the declaration testimony of Mr. Mark Lanning (Ex. 1003), Ericsson contends the following: As noted by Mr. Lanning, it would have been obvious to one of ordinary skill in the art to combine Robertson and Ungerboeck to replace the binary modulation in Roberton’s coding system with multilevel modulation taught by Ungerboeck because it would yield the predictable result–that more data bits correspond to a modulated symbol, thereby enhancing bandwidth efficiency. Id. at 53–54. To that end, we understand that Ericsson proposes, and Mr. Lanning testifies (Ex. 1003 ¶ 230), that one of ordinary skill in the art would have had reason to substitute Ungerboeck’s multilevel 8-PSK modulator for Robertson’s binary modulator so as to enhance bandwidth efficiency.” slip op. at 18
- Expert testimonyPatent owner expert discountedDecided for patent owner
“ordinary skill in the art, but for a slight difference of opinion as to the extent of education. While Mr. Lanning and Dr. Xiong take the view that a person of ordinary skill “would have at least a Bachelors or Masters level college degree in Electrical Engineering, Computer Science, Computer Engineering or equivalent training and experience,” Dr. Cimini opines that only a Bachelor’s degree would be insufficient. Dr. Cimini advanced that opinion on the theory that one with only a Bachelor’s degree would lack an appropriate “mathematical foundation.” On the record before us, it is not apparent that the possession of a Master’s degree as compared with possession of a Bachelor’s degree establishes a dividing line between a person who is of ordinary skill in the art, and a person who is not. Dr. Cimini does not explain persuasively why a person with a Bachelor’s degree in the noted areas, coupled for instance, with the noted “academic or industry experience” would lack the requisite “mathematical foundation.” To that end, we are cognizant of the level of ordinary skill to which all declarants have testified, but do not understand the record as establishing that a Master’s degree, to the exclusion of other equivalent experience, is a strict requirement of a skilled artisan in the pertinent field.” slip op. at 16
Patent outcomesUS 6,023,783 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,023,783 - Corning Optical Communications RF, LLC v. PPC Broadband, Inc.Rehearing deniedPTAB · Dec 9, 2015 · IPR2014-00440 · APJ Jacqueline Wright Bonilla · IPR · Rehearing
The Board denied Corning’s rehearing request, leaving in place dismissal of the petitions, termination of the reviews, and vacatur of the institution decisions for failure to identify all RPIs.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 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). 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).” slip op. at 3
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“Notwithstanding Patent Owner’s burden of persuasion, however, once it came forward with sufficient evidence indicating that Petitioner should have identified Corning Inc. and Corning NC as RPIs (as cited and discussed in Patent Owner’s Motion), a “shifting burden” came into play, i.e., a “burden of production” on Petitioner. Id. at 1379. To address that burden of production, Petitioner had an opportunity to “produc[e] additional evidence and present[] persuasive argument based on new evidence or evidence already of record” in its Opposition to Patent Owner’s Motion to Dismiss. Id. (citations omitted). It was in this capacity, only after determining that Patent Owner had made a sufficient showing regarding RPI, that we stated that Petitioner did not point “to credible evidence indicating that if interests of Corning Inc. and Petitioner ever diverged, Mr. Hulme and Mr. Vynalek, who are employees of Corning Inc. (Ex. 2100, 12– 14), would act in a matter contrary to Corning Inc.’s interests.” Dec. 22; Req. Reh’g. 9. Thereafter, based on all evidence before us, we concluded that Patent Owner had established by a preponderance of the evidence that Corning NC and Corning Inc. should have been named as RPIs in these proceedings. Dec. 13–14, 16, 25. Thus, Petitioner does not persuade us that we impermissibly placed the burden of persuasion on Petitioner.” slip op. at 5
- PTAB / AIA Trials › Motions to amend / substitute claimsDenied
“sufficient “good cause” exists to waive our rules to allow correction of the RPIs identified in the Petitions without a loss of original filing dates. Dec. 24–25 (citing Reflectix, Inc. v. Promethean Insulation Tech. LLC, Case IPR2015-00039, slip op. at 13–18 (PTAB April 24, 2015) (Paper 18)). Petitioner’s incorrect determination of RPIs in its Petition, as argued in its Opposition to Patent Owner’s Motion to Dismiss and its Request now, “did not arise out of some mistake of fact.” Reflectix, Case IPR2015-00039, slip. op at 14 (Paper 18). Rather, Petitioner asserted that it “designated itself as the only RPI in good faith at the time the Petitions were filed, based on the guidance in the [Trial Practice Guide] before the Board’s RPI decisions cited in the Decision even existed.” Req. Reh’g. 12, 14–15. In other words, Petitioner “misunderstood the law as it applies to the RPI determination.” Reflectix, Case IPR2015-00039, slip. op at 14 (Paper 18). We agree with our colleagues in Reflectix that the Trial Practice Guide provides notable guidance, “as it devotes over a page of the Federal Register to discussing RPI and privity, and cites to precedent including the Supreme Court decision in Taylor v. Sturgell.” Id. at 14–15 (citing 77 Fed. Reg. at 48,759 (citing 553 U.S. 880 (2008)). Furthermore, a number of relevant Board decisions concerning RPI had issued by March 2, 2015, when we authorized Patent Owner to file its Motion for Additional Discovery regarding whether Corning Inc. and Corning NC should have been listed as RPIs. Paper 31. Petitioner did not request authorization to correct its Petitions thereafter, but instead suggested the possibility of correction in its Opposition to Patent Owner’s Motion to Dismiss. Opp. 1, 22, 23, 25. Our determination that Petitioner’s Motion to Dismiss was timely did not undercut the significance of Petitioner’s actions here. Req. Reh’g. 14–15. We are not persuaded, given the facts of this case, that Petitioner’s failure to name all RPIs in its Petitions, and its failure to request authorization to correct its Petitions regarding RPIs during trial, constitute a type of “error” that warrants permitting correction at this stage, without altering filing dates of the Petitions, even assuming no evidence of bad faith by Petitioner exists. Req. Reh’g. 15, 14. In addition, regardless of whether Petitioner “erred” when preparing its Petitions, Petitioner continued to maintain strongly its position regarding RPIs, even after it had access to all facts and evidence before us when we issued our Decision, thereby indicating that its position was not an “error” on Petitioner’s part, but rather a strategic position. As stated in 35 U.S.C. § 312(a)(2) (emphasis added), a petition for inter partes review “may be considered only if— . . . the petition identifies all real parties in interest.” In view of Petitioner’s actions here, we are not persuaded that we abused our discretion in determining the appropriate remedy here was to grant Patent Owner’s Motions to Dismiss, terminate the instant proceedings, and vacate our Decisions on Institution.” slip op. at 12
Discretionary denialPatents in suitUS 8,597,041 - Njoy, Inc / CB Distributors, Inc. et al. v. Fontem Holdings 1 B.V.Institution deniedPTAB · Dec 9, 2015 · IPR2015-01304 · APJ Josiah C Cocks · IPR · Institution
The Board denied institution because the petition did not establish a reasonable likelihood of showing claims 1–3, 5–15, 17, and 18 unpatentable over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“and triggering of a light source such as an LED, the parties’ dispute, at its heart, centers on whether a skilled artisan would have known to “program” a controller to effect gradual change in luminance of an electronic cigarette. See Pet. 18–19; PO Resp. 21–22. Petitioner relies heavily on Dr. Nayfeh’s testimony at paragraph 62 of his Declaration in proposing that a person of ordinary skill would have had such knowledge. Upon review, however, we observe that the paragraph spanning pages 18 and 19 of the Petition (reproduced above) is taken verbatim from Dr. Nayfeh’s Declaration. The only proffered support for the premise that a skilled artisan would have known that “control programs could be loaded to configure the controller for control functions such as control of luminance,” is the disclosure in Mielordt that a controller is configured to control a heater, and the general statement in Mielordt that “software” can be used to adjust air temperature or a dire unit’s speed for a “particular smoking profile.” See Ex. 1004, 6:8–13. Petitioner does not explain adequately its leap in logic in advocating that a skilled artisan somehow also would have known from Mielordt’s teachings that a light source may be controlled as to present a gradual change in luminance. Petitioner’s reliance on Dr. Nayfeh’s testimony is unavailing in meeting its burden to cause the institution of trial based on Hongbin and Mielordt. Indeed, Dr. Nayfeh’s testimony is conclusory, and lacks little if any explanation for the positions to which he attests. Nothing requires a fact finder to credit unexplained testimony of an expert. See Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997).” slip op. at 12
- Expert testimonyPetitioner expert discountedDecided for patent owner
“and triggering of a light source such as an LED, the parties’ dispute, at its heart, centers on whether a skilled artisan would have known to “program” a controller to effect gradual change in luminance of an electronic cigarette. See Pet. 18–19; PO Resp. 21–22. Petitioner relies heavily on Dr. Nayfeh’s testimony at paragraph 62 of his Declaration in proposing that a person of ordinary skill would have had such knowledge. Upon review, however, we observe that the paragraph spanning pages 18 and 19 of the Petition (reproduced above) is taken verbatim from Dr. Nayfeh’s Declaration. The only proffered support for the premise that a skilled artisan would have known that “control programs could be loaded to configure the controller for control functions such as control of luminance,” is the disclosure in Mielordt that a controller is configured to control a heater, and the general statement in Mielordt that “software” can be used to adjust air temperature or a dire unit’s speed for a “particular smoking profile.” See Ex. 1004, 6:8–13. Petitioner does not explain adequately its leap in logic in advocating that a skilled artisan somehow also would have known from Mielordt’s teachings that a light source may be controlled as to present a gradual change in luminance. Petitioner’s reliance on Dr. Nayfeh’s testimony is unavailing in meeting its burden to cause the institution of trial based on Hongbin and Mielordt. Indeed, Dr. Nayfeh’s testimony is conclusory, and lacks little if any explanation for the positions to which he attests. Nothing requires a fact finder to credit unexplained testimony of an expert. See Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997).” slip op. at 12
NonePatents in suitUS 8,899,239 - Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures I LLCSome claims unpatentablePTAB · Dec 9, 2015 · IPR2014-01149 · APJ William A Capp · IPR · Final written decision
Claims 18–22 and 43–44, 46–49 are unpatentable as obvious; claims 25–26, 55–59, and 62–63 were not shown unpatentable.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“The complete exclusion of Dr. Cimini’s testimony is not warranted or necessary here. Intellectual Ventures argues that the instant dispute concerning Dr. Cimini’s testimony should not affect the admissibility of his opinion, but merely the weight the Board accords his opinion. Paper 49, 12. This is the path we choose to follow. By shielding Dr. Cimini from the Robertson CMS reference so that he did not address it in his declaration and was unprepared to testify about it at this deposition, Intellectual Ventures deprived itself of an opportunity to respond to Ericsson’s case. Accordingly, we DENY Ericsson’s motion to exclude 60–65, 79, 80, and 93 of Dr. Cimini’s declaration testimony (Ex. 2009), but discount the weight to be given such testimony in light of the foregoing discussion.” slip op. at 9
- Adverse judgmentDenied
“Under 37 C.F.R. § 42.73, a party may obtain termination of a proceeding by requesting entry of adverse judgment. However, we do not interpret Ericsson’s request as a request for entry of adverse judgment. To the contrary, we view Ericsson’s motion as an effort to prevent entry of an adverse judgment under circumstances where Ericsson reserves the right to challenge the patentability of claims 55–59, in this or another forum. Finally, Ericsson relies on our extraordinary and discretionary powers under 37 C.F.R. § 42.5(a) as a basis for grant of the relief sought. In denying Ericsson’s previous motion to correct the petition, we considered whether it was an appropriate exercise of our extraordinary powers to allow Ericsson to correct its petition. Paper 31, 14–15. We concluded that it was not. Id. Many of the same considerations that informed our decision to deny Ericsson’s motion to correct its petition also militate against a grant of relief in the instant situation.” slip op. at 20
- BurdenFwd mixedNot shown unpatentable
“Ericsson concedes that the mistake in its Petition with respect to claims 55–59 is a “fatal flaw” and, consequently, it wants to remove those claims from the proceeding. Tr. 74:3–8, a copy/paste error that originated in Mr. Lanning’s Declaration resulted in a deficient analysis of independent claims 55 and its dependent claims 56–59 . . . [a]t this point in the trial, both Patent Owner and Petitioner agree that the Petition is defective with respect to claim 55–59. Paper 52, 5–6. In view of the foregoing, we find that Ericsson has failed to carry its burden of proof with respect to the unpatentability of independent claim 55 and claims 56–59 that depend therefrom.” slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“In our Decision to Institute, we construed “systematic convolutional encoder” on a preliminary basis, as an encoder that may output both encoded data and also original data (or its equivalent). In the Decision to Institute, we criticized Ericsson’s proposed construction because it focused on what it means for a coding system to be systematic to the exclusion of how the adjective “convolutional” also modifies the word “encoder.” DI 8–9. Similarly, we criticized Intellectual Ventures’s proposed construction because it focused on what it means for a coding system to be “convolutional,” to the exclusion of what it means to be “systematic.” Id. at 9. In the Decision to Institute, we admonished the parties to give 18 Claim 18 claims a “systematic recursive convolutional encoder.” Ex. 1001, 25:49. 19 Claim 43 is a method claim that claims “systematic convolutional encoded output elements.” Ex. 1001, 29:57. 20 Claim 55 is a method claim that claims “systematic convolutional encoded intermediate output elements.” Ex. 1001, 30:61–62. 21 Claim 62 is a method claim that claims “systematic convolutional encoded output elements.” Ex. 1001, 31:60–61. attention to our points of criticism in their respective Patent Owner’s Response and Petitioner’s Reply. Id. We instituted a trial on less than all challenged claims. DI. In particular, we did not institute a trial on claim 6. DI 14. In its Patent Owner’s Response, Intellectual Ventures indicated that the Board need not construe this term to resolve the instituted grounds. PO Resp. 13. In its Petitioner’s Reply, Ericsson simply states that it agrees with the Board’s claim construction in the Decision to Institute. Reply 6. The parties’ respective positions, as developed in Intellectual Ventures’s Patent Owner’s Response and Ericsson’s Reply do not rely on competing constructions of this term. Accordingly, we do not modify the construction of this term as set forth in our Decision to Institute. 2. “coded output elements” - “encoded output elements” (Claims 18, 19,” slip op. at 24
Patent outcomesUS 6,023,783 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,023,783 - Corning Optical Communications RF, LLC v. PPC Broadband, Inc.Rehearing deniedPTAB · Dec 9, 2015 · IPR2014-00441 · APJ Jacqueline Wright Bonilla · IPR · Rehearing
The Board denied rehearing, leaving intact dismissal of the petitions, termination of the proceedings, and vacatur of institution decisions for failure to identify all real parties in interest.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 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). 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).” slip op. at 3
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“Notwithstanding Patent Owner’s burden of persuasion, however, once it came forward with sufficient evidence indicating that Petitioner should have identified Corning Inc. and Corning NC as RPIs (as cited and discussed in Patent Owner’s Motion), a “shifting burden” came into play, i.e., a “burden of production” on Petitioner. Id. at 1379. To address that burden of production, Petitioner had an opportunity to “produc[e] additional evidence and present[] persuasive argument based on new evidence or evidence already of record” in its Opposition to Patent Owner’s Motion to Dismiss. Id. (citations omitted). It was in this capacity, only after determining that Patent Owner had made a sufficient showing regarding RPI, that we stated that Petitioner did not point “to credible evidence indicating that if interests of Corning Inc. and Petitioner ever diverged, Mr. Hulme and Mr. Vynalek, who are employees of Corning Inc. (Ex. 2100, 12– 14), would act in a matter contrary to Corning Inc.’s interests.” Dec. 22; Req. Reh’g. 9. Thereafter, based on all evidence before us, we concluded that Patent Owner had established by a preponderance of the evidence that Corning NC and Corning Inc. should have been named as RPIs in these proceedings. Dec. 13–14, 16, 25. Thus, Petitioner does not persuade us that we impermissibly placed the burden of persuasion on Petitioner.” slip op. at 5
Discretionary denialPatents in suitUS 8,562,366
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.