- Proppant Express Investments, LLC / Proppant Express Solutions, LLC v. Oren Technologies, LLCRehearing grantedPTAB · May 20, 2020 · IPR2017-02103 · APJ Kevin W Cherry · IPR · Rehearing
Petitioner’s rehearing request was granted in part: claims 7, 10, 12, 15, 18, and 19 were held unpatentable; claim 4 was not shown unpatentable.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“the burden of showing a decision should be modified, and 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 its papers. 37 C.F.R. § 42.71(d). Therefore, Petitioner bears the burden of establishing that we misapprehended or overlooked the matters that it requests that we review.” slip op. at 4
- Expert testimonyPetitioner expert creditedDecided for petitioner
“evidence quantifying how much additional weight Smith’s container could hold if reinforced as Petitioners proposed,” Opp. 3, we also find it unpersuasive. We determine that Dr. Wooley’s testimony, by itself, supports our conclusion that Smith’s container, as Petitioner proposes to modify and combine it with the other pieces of prior art, would meet the “at least 30,000 pounds” limitation. Ex. 1001 ¶¶ 132–141. In this testimony, Dr. Wooley provided a detailed explanation of how much proppant the modified Smith container could hold. See id. We have reviewed that testimony and agree with Dr. Wooley’s conclusion and reasoning. Thus, we disagree with Patent Owner’s argument that Petitioner has failed to provide “any” evidence to support our conclusion that Smith’s modified container can hold “at least 30,000 pounds” as required by claims 4, 7, 10, 12, 15, 18, and 19.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“however, the failure to show the “at least 30,000 pounds” limitation was the sole basis for our finding that Petitioner had failed to prove that claims 7, 10, 12, 15, 18, and 19 were unpatentable. See Final Dec. 33–36, 42–43, 59. We find that the Petitioner has shown all of the limitations of these claims are accounted for in the proposed combinations and that Petitioner has provided an adequate rationale for why a person of ordinary skill would have been motivated to combine the references in the manner proposed with a reasonable expectation of success. See generally Final Dec. (addressing all of Patent Owner’s remaining arguments); Pet. 34–58 (providing mapping for claims 7, 10, 12), 69–70 (claim 15), 79–82 (claims 18 and 19). Accordingly, we modify our Final Decision and find that claims 7, 10, 12, 15, 18, 19 have been shown to be unpatentable.” slip op. at 9
§ 103 obviousnessPatents in suitUS 9,511,929 - Milwaukee Electric Tool Corporation / Techtronic Industries Co. Ltd. et al. v. Irwin Industrial Tool CompanyRehearing grantedPTAB · Jan 15, 2016 · IPR2015-01462 · APJ Michael L Woods · IPR · Rehearing
The Board granted rehearing and instituted trial on claims 21–30 under Ground 2, as obvious over Redford, alongside the grounds previously instituted.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Specifically, Petitioner acknowledges that the Petition (Paper 2, “Petition”) included a “typo[graphical error] in the heading [that] might have caused the Board to overlook claims 21–30 in Ground 2 of the Petition.” Id. at 2–3; Paper 2, 26 (listing claims 1–5, 14–20, and 32–34 in the heading of Ground 2 of the Petition). Upon reviewing the record before us, we agree with Petitioner that the typographical error in the Petition caused us to “overlook the fact that claims 21–30 were included in Ground 2 of the Petition.” Req. Reh’g 2. Furthermore, based on our review of Petitioner’s explanations and supporting evidence, we are also persuaded that Petitioner has established a reasonable likelihood of prevailing in its challenge of claims 21–30 under Ground 2, in addition to claims 1–5, 14–20, and 32–34, as obvious over Redford. See Paper 2, 4, 26–31; see also Paper 7, 19–20 (instituting review of claims 1–5, 14–20, and 32–34 under Ground 2 in the Decision).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Upon reviewing the record before us, we agree with Petitioner that the typographical error in the Petition caused us to “overlook the fact that claims 21–30 were included in Ground 2 of the Petition.” Req. Reh’g 2. Furthermore, based on our review of Petitioner’s explanations and supporting evidence, we are also persuaded that Petitioner has established a reasonable likelihood of prevailing in its challenge of claims 21–30 under Ground 2, in addition to claims 1–5, 14–20, and 32–34, as obvious over Redford. See Paper 2, 4, 26–31; see also Paper 7, 19–20 (instituting review of claims 1–5, 14–20, and 32–34 under Ground 2 in the Decision).” slip op. at 2
NonePatents in suitUS 8,579,555
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.