• Juniper Networks, Inc. v. Correct Transmission, LLCRehearing denied
  PTAB · Dec 16, 2021 · IPR2021-00814 · APJ Stephen E Belisle · IPR · Rehearing

  The Board denied Juniper’s rehearing request, leaving intact its denial of institution because the petition did not show a reasonable likelihood of prevailing on any challenged claim.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “because the Board was not persuaded by Petitioner’s arguments and evidence for purposes of institution does not mean that we overlooked or misapprehended Petitioner’s arguments and evidence, and importantly, a request for rehearing is not an opportunity merely to reargue one’s case or to express disagreement with the Board’s decision.” slip op. at 3

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “But Bruckman’s “trunk link” (or LAG as argued by Petitioner) is explicitly disclosed as a link to a core network, not as the links (or traces 34 on backplane 26) to subsidiary modules 24, as argued by Petitioner: “In network access systems, for example, a backplane may be used to connect a main module, having a trunk link to a core network, to a number of subsidiary modules, such as line cards, with ports serving network users. Ex. 1007, 1:25–30 (emphasis added); see id. at 1:61–2:4 (“The master module comprises a switch, which is typically used for linking the subsidiary modules via the connection lines to a network trunk.” (emphases added)); Dec. 25. Bruckman also explicitly discloses that “[a]t any given time, a number of the connection lines [between main module 22 and subsidiary modules 24, i.e., traces 34] are likely to be idle” (Ex. 1007, 2:2–4), which is contrary to a purpose of a LAG (see Ex. 1001, 2:10–16 (“The [LAG] forwarding entity usually attempts to distribute the load evenly over each physical output port of the aggregated logical link.” (emphasis added))). See Dec. 25–28. Thus, in the Decision, we found neither Petitioner nor its declarant had explained sufficiently, let alone with particularity, why the skilled artisan, but for hindsight, would have understood Bruckman to teach the Physical/Logical Link Limitations, of which the physical links are subject to the Designating Limitations, as recited, for example, in claim 1. Indeed, we were not persuaded by Petitioner’s arguments in its Petition as to the Physical/Logical Link Limitations, and having reviewed the Request, remain unpersuaded. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”).” slip op. at 4

  Nonecites KSR
  Patents in suitUS 7,768,928
• Google LLC v. Uniloc 2017 LLCRehearing denied
  PTAB · May 25, 2021 · IPR2020-00170 · APJ Lynne E Pettigrew · IPR · Rehearing

  The Board denied Google’s rehearing request, leaving institution denied for claims 1–14 and 17–20 because the petition did not adequately explain combining Hull and Barber.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “disclosure or that the Decision’s analysis of Hull is unsupported by substantial evidence. Petitioner does not point to any disclosure in Hull of descriptors that are not invariant to distortions such as those caused by translation, rotation, and scaling. See Req. Reh’g 2–8. Although Petitioner cites references in Hull to “other” or “alternative” embodiments, Petitioner does not identify, nor do we see, any descriptors other than distortion- invariant descriptors in those embodiments. See id. at 3–8. Nor does Petitioner cite any disclosure in Hull explicitly stating that distortion-invariant descriptors are “optional” or “exemplary,” as Petitioner contends. See id. at 1, 6, 8.” slip op. at 4

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “adequate showing in its obviousness analysis that a person of ordinary skill in the art would have combined the teachings of Hull1 and Barber2 in the manner proposed to achieve the claimed invention, which relates to a system and method for matching a target image to images stored in a database.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “adequate showing in its obviousness analysis that a person of ordinary skill in the art would have combined the teachings of Hull1 and Barber2 in the manner proposed to achieve the claimed invention, which relates to a system and method for matching a target image to images stored in a database.” slip op. at 2

  § 103 obviousness
  Patents in suitUS 6,253,201
• Metall Zug AG / Haag-Streit AG et al. v. Carl Zeiss Meditec AGRehearing denied
  PTAB · Mar 4, 2021 · IPR2020-01074 · APJ Grace Karaffa Obermann · IPR · Rehearing

  The Board denied rehearing and left in place its denial of institution, finding no abuse of discretion in denying the follow-on petition under General Plastic.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “When resolving a rehearing request, the Board reviews a decision on institution “for an abuse of discretion” (37 C.F.R. § 42.71(c) (2019)), which occurs when a “decision was based on an erroneous conclusion of law,” “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) (citations omitted). Applying that standard, we deny the Rehearing Request.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for patent owner

    “Accordingly, the Board found, “Standing alone, the sheer number of petitions (five), taken together with Petitioner’s unexplained and significant delay in filing the four follow-on petitions, supports an exercise of our discretionary denial powers.” Dec. 4. The Board supported that finding by an analysis of the factors that bear on the discretionary denial inquiry as set forth in General Plastic Industrial Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential) (“General Plastic”). Dec. 4–10 (applying the General Plastic factors).” slip op. at 3

  Discretionary denial
  Patents in suitUS 8,690,330
• Mercedes-Benz USA, LLC v. Carucel Investments, L.P.Rehearing denied
  PTAB · Mar 3, 2021 · IPR2019-01298 · APJ Thomas L Giannetti · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving in place its decision that all challenged claims were unpatentable.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: The burden of showing a decision should be modified lies with the party challenging the decision. 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. A rehearing request is not an opportunity for the requesting party to reargue its case or merely to express disagreement with the Final Written Decision. Nor is it an opportunity for the moving party to present new arguments that were not in its original submissions.” slip op. at 3

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “As discussed further below, after considering all the evidence, we provided in the Final Written Decision a detailed analysis of Patent Owner’s arguments, and rejected Patent Owner’s proposed limitations for “mobile unit,” determining that the ordinary meaning should apply and no further construction was necessary. Final Dec. 14–26. D. The Final Written Decision Our analysis of “mobile unit” in the Final Written Decision was guided by Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Final Dec. 11. In summary, for the reasons that follow, we are not persuaded that our analysis of “mobile unit” under Phillips was incorrect, or that we overlooked or misapprehended Patent Owner’s arguments or evidence in that analysis.” slip op. at 5

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 7,221,904
• Mercedes-Benz USA, LLC v. Carucel Investments, L.P.Rehearing denied
  PTAB · Mar 3, 2021 · IPR2019-01404 · APJ Daniel J Galligan · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving claims 1, 4–11, and 14–23 unpatentable based on its construction of “mobile device” and findings on combining CDMA and TDMA.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “The burden of showing a decision should be modified lies with the party challenging the decision. 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. A rehearing request is not an opportunity for the requesting party to reargue its case or merely to express disagreement with the Final Written Decision. Nor is it an opportunity for the moving party to present new arguments that were not in its original submissions.” slip op. at 3

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “We disagree that we misapprehended or overlooked any matters in addressing Patent Owner’s proposed construction for “mobile device.” Rather, we provided a comprehensive analysis of the term “mobile device.” anything that was overlooked or misapprehended in this analysis, as required by 37 C.F.R. § 42.71(d). Instead, Patent Owner merely expresses its disagreement with our conclusions and proceeds to reargue points and evidence already considered and rejected in the Final Written Decision. This approach is not proper in a rehearing request. Furthermore, Patent Owner’s own arguments show the error in its proposed construction. For example, Patent Owner argues that the recited “mobile device” “must register with and be able to directly communicate with the cellular network.” PO Resp. 13; Req. Reh’g 1 n.1. Yet, Patent Owner acknowledges that “the claims of the ’023 Patent require the apparatus/movable base station to communicate directly with the cellular network (and not the ‘mobile device’).” Req. Reh’g 3 (emphasis added). As we pointed out in the Final Decision, the only claimed communication involving the mobile device is between the claimed “apparatus” (the mobile base station) and the mobile device, and Patent Owner acknowledges that this communication need not be cellular. Final Dec. 14 (citing PO Sur-reply 9). Thus, Patent Owner’s arguments undermine its proposed construction.” slip op. at 3

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundOther

    “[t]he Board erred in finding that that ‘CDMA and TDMA are not incompatible’ by improperly disregarding substantial evidence set forth by Patent Owner and its expert—that undermines any expectation of success and would have discouraged a [person of ordinary skill in the art] from attempting Petitioner’s combinations.” Req. Reh’g 14 (citing Final Dec. 79). Patent Owner does not attempt to identify any specific errors in citing pages from Patent Owner’s written submissions and testimony from its declarant. Req. Reh’g 14 n.31. We disagree that we misapprehended or overlooked any matters in this regard. Rather, we considered Patent Owner’s submissions and disagreed with them, finding instead that the record demonstrated that CDMA and TDMA can be combined, and we relied on, among other evidence, a prior art reference that expressly discloses a combination of CDMA and TDMA. Final Dec. 56–57 (citing Ex. 1033), 79. We further found that a person of ordinary skill in the art would have had reason to make the proposed combinations and would have had a reasonable expectation of success in doing so. Final Dec. 57–58, 79–81. slip op. at 6

  Claim construction§ 103 obviousness
  Patents in suitUS 7,979,023
• Amazon Web Services, Inc. v. Kove Io, Inc.Rehearing denied
  PTAB · Nov 12, 2020 · IPR2020-00276 · APJ Kamran Jivani · IPR · Rehearing

  The Board denied rehearing, leaving institution denied because Petitioner did not show RFC1034 disclosed the claimed unique identifier-to-entity relationship for claims 1, 3, 6, 10, 14, 17, 23, 24, 30, and 31.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW 37 C.F.R. § 42.71(d) provides that: A party dissatisfied with a decision may file a request for rehearing. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and where each matter was previously addressed in a motion, opposition, or a reply. See Office Trial Practice Guide (84 Fed. Reg. 64,280 (Nov. 21, 2019)) (emphasis added). 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” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “institute a requested review, our inquiry seeks to ascertain whether Petitioner has demonstrated a reasonable likelihood of success on the challenges set forth in the Petition. 35 U.S.C. § 314(a); SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). That inquiry is not limited to disputes presented in a Patent Owner Preliminary Response. Indeed, filing of a Patent Owner Preliminary Response is optional and does not impact our statutory obligation to review the Petition for a reasonable likelihood of success. 35 U.S.C. § 313; 37 C.F.R. § 42.107(a).” slip op. at 4

  • BurdenDecided for patent owner

    “upon does not remedy the deficiencies we identified in the Petition. As we stated, Dr. Weissman’s testimony “does not resolve the failure of Petitioner to account for the required relationship between a host computer (i.e., entity) and a domain name (i.e., identifier).” Dec. on Inst. 20–21 (citing Pet. 19–20, 22–23; Ex. 1002 ¶¶ 75, 88) (emphasis added). Thus, Petitioner fails to show that we misapprehended or overlooked arguments or evidence regarding the claimed “entity” because Petitioner did not clearly explain how a “host” as disclosed in RFC1034 meets the claimed entity and how a domain name (i.e., the “identifier”) identifies a single host. A rehearing request is not an opportunity to argue what should have been addressed in the Petition.” slip op. at 5

  None
  Patents in suitUS 7,233,978
• Google LLC v. Uniloc 2017, LLCRehearing denied
  PTAB · Oct 16, 2020 · IPR2019-01584 · APJ Kevin F Turner · IPR · Rehearing

  The Board denied Google’s rehearing request, finding no abuse of discretion in denying institution of review of claims 1–3, 5, 6, 8, 39, and 41 under its General Plastic analysis.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW When rehearing a decision on institution, we do not review the merits 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., 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

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for patent owner

    “petitions are only relevant if Petitioner was a party to the prior proceedings, or had a relationship with the prior petitioners. Reh’g Req. 7. But a review of the cited precedential decision does not reflect Petitioner’s suggestion. See General Plastic, Paper No. 19 at 15−19 (“Our intent in formulating the factors was to take undue inequities and prejudices to Patent Owner into account.”). General Plastic does not proscribe panels of the Board from considering whether a subsequent petitioner knew of the prior art cited in the subsequent petition at the time of filing of the first petition, per the second factor. Similarly, we are not barred, under General Plastic, from considering the length of time that elapsed between when a petitioner learned of the art and when the petition, based on that art, was filed, or whether petitioner provides an adequate explanation for the time elapsed between the filings of multiple petitions, per the fourth and fifth factors. Additionally, we are not persuaded that the factors enumerated in General Plastic, as viewed through the lens of Valve Corp., must all be limited by any possible relationship between the multiple petitioners. Although the discussion of the first factor in Valve Corp. makes clear that “any relationship between those petitioners when weighing the General Plastic factors” must be considered, the remaining factors take into account the knowledge of the second petitioner irrespective of a specific relationship. See Valve Corp., Paper 11 at 9−15. As such, the relationship between the different petitioners certainly has some bearing on what the second petitioner knew, when they knew it, and when they acted upon it, but the consideration of the second through seventh factors does not require a showing of a specific relationship between the petitioners to consider those factors.” slip op. at 5

  Discretionary denial
  Patents in suitUS 6,519,005
• Flex Logix Technologies, Inc. v. Venkat KondaRehearing denied
  PTAB · Sep 16, 2020 · IPR2020-00261 · APJ Jo-Anne M Kokoski · IPR · Rehearing

  The Board denied Patent Owner’s rehearing requests, leaving institution of review of claims 1–7, 11, 15–18, 20–22, 32, and 47 in place.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d). Patent Owner, as the party challenging the Decisions, has the burden of showing that the Decisions should be modified. Id. When rehearing a decision on a petition, the Board reviews the decision for an abuse of discretion. Id. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of the law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “in our Decision on Institution. In the Decision, we directly addressed Patent Owner’s arguments that Dr. Baker is not qualified to testify in this proceeding because he is neither a person of ordinary skill in the art, nor an expert in the relevant art. See Dec. 7–8. In particular, we explained that there is no requirement “that the expert’s experience perfectly match the relevant field, or that the expert is a person of ordinary skill in the art.” Id. at 7. We also explained that Dr. Baker testifies as to his education and qualifications and provides his curriculum vitae. See Ex. 1002 ¶¶ 3–12; Ex. 1003. At this preliminary stage, we cannot say that Dr. Baker’s scientific, technical, and other specialized knowledge will not be helpful in understanding the evidence. See Fed. R. Evid. 702(a). On this record, we are not persuaded that Dr. Baker’s testimony should be disregarded. Id. at 8. Therefore, even if Dr. Baker were not a person of ordinary skill in the art as Patent Owner contends, it does not follow that he is unqualified to testify in these proceedings. Nothing was misapprehended or overlooked in considering Dr. Baker’s testimony.” slip op. at 6

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(Ex. 2001). In the Preliminary Response, Patent Owner cited the Konda Declaration when discussing the experience and qualifications of the named inventor of the ’523 patent. Prelim. Resp. 8–9. The education level of the inventor, however, is just one of several factors that we may consider in determining the level of ordinary skill in the art. See Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (enumerating six factors that “may be considered in determining the level of ordinary skill in the art” (quoting Evt’l Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696 (Fed. Cir. 1983))). And, as Patent Owner noted in the Preliminary Response, “these factors are merely a guide to determining the level of ordinary skill in the art.” Prelim. Resp. 7–8 (citing Daiichi Sankyo, 501 F.3d at 1256). In any event, in the Decision we also considered Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art, noted the differences between them, and stated that “[o]ur determination regarding Petitioner’s challenge does not turn on the differences between Petitioner’s and Patent Owner’s definitions.” Dec. 7. Therefore, our evaluation of Petitioner’s challenges and Dr. Baker’s testimony in support thereof would have been the same under Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art. See id. (“[W]e note that our conclusions would be same under either definition.”).” slip op. at 7

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot reached

    “Moreover, in the Decision, we directly addressed Patent Owner’s argument with respect to whether the ’394 provisional and ’605 PCT provided support for the claim limitation “said routing network comprising a plurality of stages y, in each sub-integrated circuit block, starting from the lowest stage of 1 to the highest stage of y, where y≧1” when y=1. Dec. 14. In particular, we found that Patent Owner’s arguments, as we understand them, are directed only to the disclosure of a network with only one stage (y=1). [Prelim. Resp.] at 15–39. Patent Owner does not address the other limitations of claim 1, and does not point to any disclosures in the priority applications that describe a sub-integrated circuit block with only one stage that also comprises pluralities of forward connecting links and backward connecting links as required by claim 1. Id. Thus, we did not overlook Patent Owner’s arguments, but rather evaluated the disclosures in the ’394 provisional and ’605 PCT and determined, on the record at this stage of the proceeding, that they do not provide sufficient written description support for the challenged claims. The parties will have the opportunity to further develop the record on these issues during trial, and the Board will evaluate the fully-developed record at the close of the evidence. D. Public Availability of the ’394 provisional” slip op. at 9

  § 102 anticipation§ 112 disclosure
  Patents in suitUS 8,269,523
• Flex Logix Technologies, Inc. v. Venkat KondaRehearing denied
  PTAB · Sep 16, 2020 · IPR2020-00260 · APJ Jo-Anne M Kokoski · IPR · Rehearing

  The Board denied the Patent Owner’s rehearing requests, leaving institution in place for claims 1–7, 11, 15–18, 20–22, 32, and 47.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d). Patent Owner, as the party challenging the Decisions, has the burden of showing that the Decisions should be modified. Id. When rehearing a decision on a petition, the Board reviews the decision for an abuse of discretion. Id. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of the law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2

  • Strike new argumentNew argument disregardedOther

    “Consolidated Trial Practice Guide, 90. The Consolidated Trial Practice Guide goes on to state that “[a]bsent a showing of ‘good cause’ prior to filing the request for rehearing or in the request for rehearing itself, new evidence will not be admitted.” Id. (citing Huawei, Paper 19 at 4).” slip op. at 4

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Dr. Baker testifies as to his education and qualifications and provides his curriculum vitae. See Ex. 1002 ¶¶ 3–12; Ex. 1003. At this preliminary stage, we cannot say that Dr. Baker’s scientific, technical, and other specialized knowledge will not be helpful in understanding the evidence. See Fed. R. Evid. 702(a). On this record, we are not persuaded that Dr. Baker’s testimony should be disregarded. Id. at 8. Therefore, even if Dr. Baker were not a person of ordinary skill in the art as Patent Owner contends, it does not follow that he is unqualified to testify in these proceedings. Nothing was misapprehended or overlooked in considering Dr. Baker’s testimony.” slip op. at 6

  • Skill levelOther

    “(Ex. 2001). In the Preliminary Response, Patent Owner cited the Konda Declaration when discussing the experience and qualifications of the named inventor of the ’523 patent. Prelim. Resp. 8–9. The education level of the inventor, however, is just one of several factors that we may consider in determining the level of ordinary skill in the art. See Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (enumerating six factors that “may be considered in determining the level of ordinary skill in the art” (quoting Evt’l Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696 (Fed. Cir. 1983))). And, as Patent Owner noted in the Preliminary Response, “these factors are merely a guide to determining the level of ordinary skill in the art.” Prelim. Resp. 7–8 (citing Daiichi Sankyo, 501 F.3d at 1256). In any event, in the Decision we also considered Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art, noted the differences between them, and stated that “[o]ur determination regarding Petitioner’s challenge does not turn on the differences between Petitioner’s and Patent Owner’s definitions.” Dec. 7. Therefore, our evaluation of Petitioner’s challenges and Dr. Baker’s testimony in support thereof would have been the same under Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art. See id. (“[W]e note that our conclusions would be same under either definition.”).” slip op. at 7

  § 102 anticipation§ 112 disclosure
  Patents in suitUS 8,269,523
• Intel Corporation v. Hera Wireless S.A.Rehearing denied
  PTAB · Nov 8, 2019 · IPR2018-01687 · APJ Jacqueline T Harlow · IPR · Rehearing

  The Board denied Intel’s rehearing request, leaving institution denied for claims 1–6 because the proposed obviousness combinations relied on hindsight and lacked sufficient support.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “ANALYSIS Pursuant to 37 C.F.R. § 42.71(d): A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. 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. 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 exists where 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).” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “the proposed combination of Hansen and Ramasubramanian manifests hindsight reasoning, as it would abandon the receiver-based channel estimation techniques central to Ramasubramanian in favor of an incompatible transmitter-based threshold control system that mirrors the disclosures of the challenged patent, but is neither suggested by the prior art, nor supported by the background knowledge possessed by a person having ordinary skill in the art. Id. at 18–19; see also id. at 27–28 (explaining that the same reasoning applies to the combination of Mujtaba and Ramasubramanian). More particularly, the Decision finds that Petitioner discounts the core disclosures of Ramasubramanian, and argues instead that an ordinarily skilled artisan would have been motivated, based on the problem identified by Ramasubramanian, to pursue an undisclosed solution wholly incompatible with the solution Ramasubramanian proposes. In view of Ramasubramanian’s teachings concerning the advantages of the disclosed receiver-based channel estimation system and method, and Hansen’s silence regarding smoothing, we are not persuaded by Petitioner’s argument.” slip op. at 4

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner

    “the proposed combination of Hansen and Ramasubramanian manifests hindsight reasoning, as it would abandon the receiver-based channel estimation techniques central to Ramasubramanian in favor of an incompatible transmitter-based threshold control system that mirrors the disclosures of the challenged patent, but is neither suggested by the prior art, nor supported by the background knowledge possessed by a person having ordinary skill in the art. Id. at 18–19; see also id. at 27–28 (explaining that the same reasoning applies to the combination of Mujtaba and Ramasubramanian). More particularly, the Decision finds that Petitioner discounts the core disclosures of Ramasubramanian, and argues instead that an ordinarily skilled artisan would have been motivated, based on the problem identified by Ramasubramanian, to pursue an undisclosed solution wholly incompatible with the solution Ramasubramanian proposes. In view of Ramasubramanian’s teachings concerning the advantages of the disclosed receiver-based channel estimation system and method, and Hansen’s silence regarding smoothing, we are not persuaded by Petitioner’s argument.” slip op. at 4

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “instances,” we improperly “adopted Dr. Sharony’s factual position despite conflicting testimony from Dr. Wicker” (Req. Reh’g. 9). In deciding whether to institute, we are required by our rules to view testimonial evidence “in the light most favorable to the petitioner” only where there is a genuine issue of material fact created by the testimony. See 37 C.F.R. § 42.108 (c). The rule, however, does not require us to accept the testimony 5 of any expert. The Board has broad discretion to assign weight to be accorded expert testimony. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010). Aside from identifying the evidence relied upon by the parties, and describing their positions regarding the level of ordinary skill in the art, our Decision does not refer to Drs. Wicker or Sharony or discuss, much less rely on, their testimony. See Dec. 7–9. Our determination that Petitioner failed to carry its burden to demonstrate a reasonable likelihood of establishing the unpatentability of at least one claim of the ’377 patent is premised on the inadequacy of Petitioner’s showing, and our finding that Petitioner’s proposed obviousness combinations reflect improper hindsight bias. See Dec. 17–28. Moreover, acceptance of Petitioner’s contention that the Board must automatically adopt the reasoning of a petitioner’s expert in deciding whether to institute inter partes review––irrespective of the sufficiency of that testimony––would compel institution in every case where expert testimony is presented. Petitioner’s argument is another instance of a disagreement with our Decision and not a proper basis for rehearing.” slip op. at 5

  § 103 obviousnesscites KSR
  Patents in suitUS 8,737,377

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.