- Alpinestars S.P.A. / Alipinestars USA Inc. v. Dainese S.P.A.Rehearing deniedPTAB · Feb 9, 2026 · IPR2025-00750 · APJ Benjamin D M Wood · IPR · Rehearing
The Board denied rehearing, leaving institution denied because Petitioner did not show a reasonable likelihood of prevailing on claims 1–22 under the challenged obviousness grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Petitioner misstates the Decision’s reasoning. As is clear from the previous discussion, we determined that Petitioner’s articulated reasons for combining EP’536 with CN’180 lacked a rational underpinning, not because “EP’536 does not relate to ‘air bags,’” but because the means by which EP’536’s device inflates differs fundamentally from that of CN’180’s device. Dec. 17–18. Petitioner did not acknowledge this critical difference in the Petition, and continues not to do so in its Rehearing Request.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“EP’536 with CN’180 lacked a rational underpinning because EP’536’s inflation mechanism differs fundamentally from CN’180’s inflation mechanism. Dec. 17–18. As we stated, whereas CN’180’s fall-protection belt uses an airbag that requires an external source of pressurized air to inflate, EP’536’s garment does not need an external inflation device because “the gas generating agent 18 in each envelope automatically generates gas and inflates the envelopes in response to rising temperatures.” Id. at 18 (citing Ex. 1004 ¶ 15; Ex. 1005 ¶¶ 5, 19). This difference reflects the fundamentally different purposes of the two devices: CN’180’s device is designed to provide “fall protection” to, e.g., “elderly people,” (Ex. 1005 ¶ 1, 3), whereas EP’536’s device provides “adaptive thermal insulation” for, e.g., garments worn by fire fighters. Ex. 1004 ¶¶ 1–3, 250. Because of the different means by which EP’536’s and CN’180’s devices inflate and the different purposes for doing so, we were not persuaded that one of ordinary skill in the art would have combined the references as Petitioner proposed. Dec. 18. We further noted that the modification would not have improved the reusability of EP’536’s device “by having only one mechanism to recharge,” because EP’536’s “gas generating agent does not need any ‘mechanism to recharge.’” Dec. 18. Instead, we noted EP’536’s teaching that its gas generating agent “automatically recombines or condenses in response to a temperature decrease to return the envelopes, and therefore the garment, to its original thickness, at which point the gas generating agent is ready for subsequent reactivation.” Id. (citing Ex. 1004 ¶¶ 139–141). Finally, we determined that replacing EP’536’s envelopes with CN’180’s airbag “would have made EP’536’s invention unsuitable for its intended purpose: providing a protective garment with ‘adaptive thermal insulation.’” Dec. 19. We stated that “Petitioner does not suggest, and we have found nothing in the record to establish, that CN’180’s airbag would provide this feature.” Id. at 20.” slip op. at 3
- Obviousness (§103) › KSR rationalesMotivation not foundNot shown unpatentable
“rationales for combining EP’536 and CN’180. Reh’g Req. 6–7. First, Petitioner asserts that we “improperly rejected Petitioner’s ‘simple substitution’ evidence in view of [the Board’s] incorrect conclusion that EP’536 does not disclose an ‘external source of inflation [EP’536’s dosing aids].’” Id. at 6 (citing Dec. 18–19). This argument is unpersuasive at least because, as we discussed above, EP’536’s dosing aids do not constitute an external source of inflation. Petitioner further argues that we incorrectly evaluated its “obvious to try” rationale because, contrary to our analysis, Petitioner did in fact identify a problem to be solved by its “finite number of solutions”: “simplify[ing] the design and reduc[ing] the number of required inflation mechanisms.” Id. at 6–7. The Petition’s entire “obvious to try” discussion is as follows: [A] POSITA would have found it obvious to try a one-piece airbag 10 with strip-shaped inflation units 12 in the EP’536- CN’180 airbag system because it would have been a selection from a finite number of identified predictable solutions (i.e., using one chamber with connected individual inflation units 12 versus multiple individual envelopes 20). 5 Petitioner also argues that dosing aids are “needed in order to make the disclosed device reusable.” Reh’g Req. 5–6. This is incorrect, as EP’536 conveys that the reusability of the device is a result of the gas generating agent condensing or recombining when temperatures fall. Ex. 1004 ¶¶ 139– 141. Even if it were true, however, it is unclear how it would support Petitioner’s argument. Pet. 16. As is evident, Petitioner did not identify a design need, market pressure, or other problem that would have been addressed by its identified “solutions,” and therefore we were not persuaded by this rationale. Dec. 19. Petitioner’s attempt to cure this deficiency in its Rehearing Request is tardy. We cannot misapprehend or overlook an assertion that Petitioner fails to make in the Petition. It is also insufficient. Petitioner does not provide any evidence of a known design need or market pressure to “simplify [EP’536’s] design” or reduce the number of “required inflation mechanism” it uses.” slip op. at 7
§ 103 obviousnessPatents in suitUS 12,012,065 - Tesla, Inc. v. Iqar Inc.Rehearing deniedPTAB · Nov 6, 2025 · IPR2024-00543 · APJ Sean P O’Hanlon · IPR · Rehearing
The Board denied Tesla’s rehearing request and left claims 8 and 18 not shown unpatentable under §103 over Hongo, Obradovich, Niki, and Newstrom.
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). 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.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Petitioner’s counsel during the hearing or any of Petitioner’s arguments and evidence. As confirmed by Petitioner’s counsel, Petitioner relies solely on Newstrom’s disclosure of loading its spatial database 20 into solid state memory via a “wireless connection to [a] server” in asserting that the database “may be hosted on a server that is remote from a vehicle.” Pet. 83 (citing Ex. 1012, 8:26–38; Ex. 1003 ¶ 197). Column 8, lines 27–29 is the only disclosure in Newstrom of a “wireless connection.” Although Petitioner argues that Newstrom’s system communicates wirelessly with the geospatial database while the vehicle is being driven (see Dec. 38 (citing Pet. 83); Tr. 19:20–22), Petitioner relies solely on the single instance of “wireless” in Newstrom’s disclosure to satisfy the recitation that the database (which Petitioner maps to Newstrom’s geospatial database 20) is “remote.” In the Decision, we explained that Petitioner’s reliance on Newstrom’s “wireless connection” and its assertion that the geospatial database may be hosted on a remote server were not persuasive to satisfy Petitioner’s burden to prove the unpatentability of claims 8 and 18 by a preponderance of the evidence, especially given Newstrom’s express disclosure that the geospatial database is located on the vehicle. Dec. 40–42. For example, we stated: Petitioner does not explain adequately why Newstrom’s disclosure that, when first initializing the database manager, the geospatial database is loaded into solid state memory by, for example, wirelessly transferring data from a server means that the geospatial database is remote from the vehicle. Similarly, Petitioner does not explain adequately why Newstrom’s disclosure that the database manager can load new portions of the data into solid state memory as the vehicle location changes means that the geospatial database is remote from the vehicle. Nor does Petitioner’s conclusory contention that “the geospatial database 20 may be hosted on a server that is remote from a vehicle” (Pet. 83 (emphasis added)) apprise us of disclosure that Newstrom’s geospatial database is remote from the vehicle. Dr. Morellas’ testimony is substantially identical to the Petition (see Ex. 1003 ¶197) and, thus, also fails to provide adequate support for Petitioner’s assertions. During the hearing, counsel for Petitioner confirmed that it relied solely on Newstrom’s disclose of the database using a “wireless connection” by which the database manager communicates with the database in arguing that Newstrom’s geospatial database 20 is remote from vehicle 12. Tr. 19:14–24; see also Ex. 1012, 8:27–29. Petitioner, however, fails to explain adequately how such wireless communication indicates that the database is not located on vehicle, especially given Newstrom’s express disclosure (discussed above) that the database is onboard the vehicle.” slip op. at 5
- Strike new argumentNew argument disregardedDecided for patent owner
“Initially, Petitioner’s reliance on assertions made in its Reply, relying on Dr. Morellas’ second declaration, fail to persuade us that we overlooked or misapprehended any arguments made in the Petition. Such post-institution arguments attempting to bolster the Petition are untimely and, thus, improper. See Patent Trial and Appeal Board Consolidated Trial Practice Guide 73 (Nov. 2019).6 Even considering Petitioner’s Reply arguments, however, we are not” slip op. at 7
§ 103 obviousnessPatents in suitUS 10,882,399 - Alivecor, Inc. v. Apple Inc.Rehearing deniedPTAB · Jul 18, 2024 · IPR2024-00095 · APJ Hyun J Jung · IPR · Rehearing
The Board denied AliveCor’s rehearing request, finding no abuse of discretion in denying institution because the Petterson–Nakada combinations did not teach or suggest the claimed replacement of one user interface with another.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if substantial evidence does not support a factual finding, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000); see also Reh’g Req. 8 (citing 37 C.F.R. § 42.71(c)). Also, 37 C.F.R. § 42.71(d) sets forth, in relevant part that: 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.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Our determinations regarding Nakada did not support Petitioner’s argument that Nakada’s “system is returned to the beginning state of the routine, which in the case of Petterson would be FIG. 2B.” Pet. 71; Dec. 39–40. We also stated that “the proposed combination does not address adequately Nakada’s description of powering down its display.” Id. at 40 (citing Pet. 48–50; Prelim. Resp. 25–26; Ex. 1011, Fig. 4). We, thus, determined Petitioner failed to show sufficiently that either Petterson or Nakada teaches or suggests “replacing display of the second user interface with the first user interface.” Dec. 38–41 (citing Pet. 48–50, 68–69, 70–71; Ex. 1003 ¶¶ 379, 382; Ex. 1011, Fig. 4). The “totality of the combination” lacked replacing a user interface with any other user interface. Dec. 40–41 (determining “the asserted references neither individually nor combined as proposed would have, ‘in response to detecting that the first criteria are no longer met for a second period of time that is longer than the first period of time, replac[ed] display of the second user interface with the first user interface’”); Reh’g Req. 8 (arguing “the Board overlooked the totality of the combination and Petitioner’s arguments and supporting evidence regarding the modification of Petterson that would have been obvious . . . in view of Nakada”).” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“After considering the arguments and cited evidence of the Petition, we determined that Petitioner did not show a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’533 patent. Paper 7 (“Decision” or “Dec.”). Petitioner subsequently filed a Request for Rehearing. Paper 8 (“Reh’g Req.”). For the reasons stated below, Petitioner has not shown that we abused our discretion in denying the Petition, and thus, Petitioner’s Request for Rehearing is denied.” slip op. at 2
§ 103 obviousnessPatents in suitUS 10,568,533 - Arconic Technologies LLC v. Novelis Inc.Rehearing deniedPTAB · May 2, 2022 · DER2018-00004 · APJ James T Moore · DER · Rehearing
The Board denied Arconic’s rehearing request, leaving in place denial of institution because it had not shown sufficiently corroborated prior conception for derivation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs 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.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party requesting rehearing bears the burden of showing an abuse of discretion, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“documents cited by Petitioner for each of the six steps of claim 22 and explained why they were insufficient to corroborate Mr. Marinelli’s testimony. Id. at 16–22. We concluded that “[s]ubstantial evidence does not support Petitioner’s assertion that its inventors conceived of the inventions allegedly communicated to Respondent’s inventors (i.e., the six-step processes of each of Respondent’s claims)” and denied institution of a derivation proceeding. Id. at 23.” slip op. at 4
- Expert testimonyPetitioner expert discountedDecided for patent owner
“[w]e are not informed as to which of Mr. Marinelli, Mr. Dennis, and Mr. Shoemaker conceived what portions of the invention of claim 22 or how the three individuals jointly conceived of the recited process. Petitioner provides no explanation as to what the contributions of each individual were (other than that they were all “involved” in the development of the A951 process), the circumstances surrounding those contributions, or even when conception occurred. Indeed, Mr. Marinelli testifies that Petitioner began development of chromium-free aluminum pretreatments that provided the same performance characteristics of a chromate conversion coating in 1992 and that the development work spanned “the next two decades,” but does not explain when during that time he conceived of the process of claim 22 with Mr. Dennis and Mr. Shoemaker. Again, there is no meaningful information provided about what work was done by whom or the circumstances under which the claimed invention was conceived, other than a general assertion that it was Petitioner undertaking the work.” slip op. at 3
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted in part
“a trial, a party may file a motion to expunge confidential information from the record.” 37 C.F.R. § 42.56. The Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 21–22, available at https://www.uspto.gov/TrialPracticeGuideConsolidated (“Trial Practice Guide”), provides: Confidential information that is subject to a protective order ordinarily would become public 45 days after denial of a petition to institute a trial or 45 days after final judgment in a trial. There is an expectation that information will be made public where the existence of the information is referred to in a decision to grant or deny a request to institute a review or is identified in a final written decision following a trial. A party seeking to maintain the confidentiality of information, however, may file a motion to” slip op. at 13
NonePatents in suitUS 11,807,942 - Amazon.Com, Inc. / Amazon.Com LLC et al. v. VB Assets, LLCRehearing deniedPTAB · Apr 19, 2021 · IPR2020-01374 · APJ Sean P O’Hanlon · IPR · Rehearing
The Board denied rehearing, leaving institution denied because Petitioner did not show the panel misapprehended or overlooked a matter or abused its discretion.
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) (2019). 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
NonePatents in suitUS 8,886,536 - Sports Nutrition Research, Ltd. v. Chemi NutraRehearing deniedPTAB · Apr 3, 2020 · DER2013-00001 · APJ Jameson Lee · DER · Rehearing
The Board denied rehearing and left in place its denial of institution because Petitioner showed no abuse of discretion in finding insufficient evidence of derivation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“On request for rehearing, the burden of showing a decision on whether to institute trial should be modified lies with the party challenging the decision. 37 C.F.R. § 42.71(d). When rehearing a decision on petition, a panel will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). 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. 37 C.F.R. § 42.71(d). After considering the Request for Rehearing, we determine that Petitioner has not demonstrated that we abused our discretion in denying institution. For reasons discussed below, we decline to modify the Decision. Accordingly, the Request for Rehearing is denied.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In essence, Petitioner is arguing that a derivation proceeding should always be instituted no matter how deficient is the initial evidence presented by Petitioner in the Petition, because both Petitioner and Respondent can submit evidence after institution of trial. We disagree. In the above-quoted argument, Petitioner is referring to hypothetical evidence “to be” developed during trial. We cannot make a decision on whether to institute trial based on non-existent evidence. We properly reviewed the evidence submitted by Petitioner and determined that that evidence does not meet the substantial evidence standard for instituting a derivation proceeding.” slip op. at 5
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for patent owner
“The constitutional arguments are without merit. The Federal Circuit has held that there is “no constitutional infirmity in [an] institution decision as the statute clearly bestows such authority on the Director pursuant to 35 U.S.C. § 314.” Arthrex, 941 F.3d at 1340. Arthrex’s reasoning likewise applies to derivation proceedings under the AIA. See 35 U.S.C. § 135(a)(1). The Decision will not be vacated. Nor will a new panel be appointed.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“of the MPEP. Paper 17, 4. These authorities, however, articulate general principles and do not support Petitioner’s assertion that the specific wherein clause at issue here represents merely an intended result and thus should not be accorded weight in determining patentability. Indeed, in Hoffer, the Court upheld the district court’s reading of the “whereby clause” at issue there as an actual limitation and not merely an intended result.3 Hoffer, 405 F.3d at 1330. “[W]hen the ‘whereby’ clause states a condition that is material to patentability, it cannot be ignored in order to change the substance of the invention.” Id. at 1329.” slip op. at 9
Claim constructionPatents in suitUS 10,869,843 - Facebook, Inc. / Instagram, LLC et al. v. Blackberry LimitedRehearing deniedPTAB · Mar 24, 2020 · IPR2019-00940 · APJ Robert L Kinder · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution of review of claims 1, 5, 8–10, 13, and 16 on all asserted grounds in place.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“petition decision is 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). 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 in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d) (emphasis added). The party seeking rehearing has the burden of showing the decision should be modified. Id. The primary basis for Patent Owner’s Request for Rehearing was the district court’s decision finding overlapping claims of the ’929 patent invalid for claiming unpatentable subject matter under § 101. See Exs. 1033, 3001; Req. Reh’g 1–2. Based on Exhibit 1040, that district court’s decision has been “vacated,” and the entire case involving the ’929 patent has been “dismissed with prejudice.” Ex. 1040, 2. Accordingly, Patent Owner’s Request for Rehearing is denied because the district court’s invalidity decision under § 101 has been “vacated” and the action has been dismissed with prejudice. See Exhibit 1040. With the dismissal of the district court action, Patent Owner’s arguments requesting that we exercise discretion pursuant to § 314(a) are no longer applicable to this IPR proceeding. Further, we cannot abuse our discretion by failing to consider evidence not properly presented to us before we issued our Decision on Institution.” slip op. at 11
- Other 314aOther
“The primary basis for Patent Owner’s Request for Rehearing was the district court’s decision finding overlapping claims of the ’929 patent invalid for claiming unpatentable subject matter under § 101. See Exs. 1033, 3001; Req. Reh’g 1–2. Based on Exhibit 1040, that district court’s decision has been “vacated,” and the entire case involving the ’929 patent has been “dismissed with prejudice.” Ex. 1040, 2. Accordingly, Patent Owner’s Request for Rehearing is denied because the district court’s invalidity decision under § 101 has been “vacated” and the action has been dismissed with prejudice. See Exhibit 1040. With the dismissal of the district court action, Patent Owner’s arguments requesting that we exercise discretion pursuant to § 314(a) are no longer applicable to this IPR proceeding. Further, we cannot abuse our discretion by failing to consider evidence not properly presented to us before we issued our Decision on Institution.” slip op. at 11
Discretionary denialPatents in suitUS 8,676,929 - Intel Corporation v. Hera Wireless S.A.Rehearing deniedPTAB · 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 KSRPatents in suitUS 8,737,377 - Intel Corporation v. Hera Wireless S.A.Rehearing deniedPTAB · Nov 8, 2019 · IPR2018-01686 · APJ Jacqueline T Harlow · IPR · Rehearing
The Board denied Intel’s rehearing request, leaving in place the denial of institution on claims 1–6 because the obviousness combinations relied on hindsight and did not show a reasonable likelihood of success.
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
“contention, rather than ignoring or misapprehending the obviousness standard set forth in KSR, the Decision discusses KSR throughout as a basis for our determination that Petitioner had failed to demonstrate a reasonable likelihood of prevailing on its obviousness challenge. See, e.g., Dec. 11, 24, 25, 28. Indeed, the Decision properly applies KSR, including its instruction that the factfinder should be mindful “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning,” KSR, 550 U.S. at 421, in finding that the Petition relies improperly on hindsight in its obviousness arguments. Dec. 24–25, 28. Petitioner’s argument that KSR was “overlooked” is merely an attempt to reargue its case, which is not a proper ground for rehearing.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for patent owner
“contention, rather than ignoring or misapprehending the obviousness standard set forth in KSR, the Decision discusses KSR throughout as a basis for our determination that Petitioner had failed to demonstrate a reasonable likelihood of prevailing on its obviousness challenge. See, e.g., Dec. 11, 24, 25, 28. Indeed, the Decision properly applies KSR, including its instruction that the factfinder should be mindful “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning,” KSR, 550 U.S. at 421, in finding that the Petition relies improperly on hindsight in its obviousness arguments. Dec. 24–25, 28. Petitioner’s argument that KSR was “overlooked” is merely an attempt to reargue its case, which is not a proper ground for rehearing.” slip op. at 3
- 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 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. 5 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. 18–28. 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 KSRPatents in suitUS 8,737,377 - PTAB · Mar 25, 2019 · IPR2017-01294 · APJ James T Moore · IPR · Rehearing
The Board denied Edwards Lifesciences’ rehearing request, finding it had not shown that the Board overlooked its new argument about claim 20’s “inflatable means” limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. See 37 C.F.R § 42.71(c). An abuse of discretion occurs 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 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); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R § 42.71(d); accord Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must, in relevant part, “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); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Petitioner’s arguments with these principles in mind.” slip op. at 2
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner does not inform us where this argument was made or this position was previously asserted. In an abundance of caution, we have carefully reviewed the Petition for this argument, and find it to be absent.” slip op. at 4
NonePatents in suitUS 6,371,962
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.