- Polycom, Inc. v. Fullview, Inc.Rehearing deniedPTAB · Sep 10, 2019 · IPR2019-00647 · APJ Donna M Praiss · IPR · Rehearing
Denied Polycom’s rehearing request; the Board found no abuse of discretion in denying institution because the cited art did not show the independent claims’ intersecting inner-volume limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS When rehearing a decision on petition, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). 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
“We determined in the Decision that Petitioner did not demonstrate a reasonable likelihood that any of the challenged claims are unpatentable as anticipated by or obvious over the cited prior art references, particularly with respect to the claim requirement in the independent claims that a support member “intersect[] an inner volume” of reflective elements secured to a vertical support. Decision at 11–21. Petitioner’s Rehearing Request asserts that we misapprehended or overlooked the argument that dependent claims 3 and 12 would have been obvious over the combination of Yamazawa and Horn because our Decision addresses the failure of Yamazawa to disclose or suggest the support member intersecting an inner volume and does not address the arguments pertaining to Horn’s hollow shaft. Rehearing Request at 2–7. We did not overlook Petitioner’s arguments with respect to Horn and the modification of Yamazawa with Horn. See Decision at 20 (“Petitioner contends that a skilled artisan would have been motivated to modify Yamazawa with Horn’s shaft because it would have been beneficial for the wires associated with the many cameras used by Yamazawa to be enclosed in a compact manner and avoid entanglement and damages to the wires.”). The problem with Petitioner’s argument in both the Petition and the Rehearing Request is that Horn was not relied upon for teaching the claim element of the support member intersecting an inner volume of reflective elements. Petitioner emphasizes that Horn teaches a single hollow shaft (Rehearing Request at 5–7); however, Petitioner does not direct us to any evidence that it would have been obvious to configure the hollow shaft of Horn such that it intersects an inner volume of the reflective elements of Yamazawa as required by the independent claims from which claims 3 and 12 depend.” slip op. at 2
- Strike new argumentNew argument disregardedOther
“Petitioner’s Rehearing Request makes new arguments not made in the Petition, specifically, that the difference between Iwerks and Herndon, which was distinguished during prosecution of the ’143 patent, is that Iwerks’ cylindrical support 14 does not merely contact the reflective element, but also intersects an inner volume of the reflective element. Rehearing Request at 14–15. Petitioner also relies on case law, such as In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) and Ex parte Weideman, Appeal 2008-003454 (BPAI Jan. 27, 2009), that was not cited or relied upon in its brief. Rehearing Request at 8–9. Further, in support of its Rehearing Request, Petitioner submits multiple enlarged and annotated Figures from Iwerks and Herndon, which were not previously before us as part of the Petition. We could not have misapprehended or overlooked arguments or evidence not before us. See 37 C.F.R. 42.71(d). A request for rehearing is not an opportunity to supplement an initial filing and make arguments a party did not make earlier.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“new arguments and demonstrative evidence submitted by Petitioner, we determine that the portion of Iwerks’ yellow-colored support structure 14 does not “intersect” a volume formed by blue-colored reflective element 56 simply because it is allegedly “inside” element 56. As explained in our Decision, the term “support member intersecting an inner volume of a reflective [or pyramid shaped] element” recited in the ’143 patent claims is not satisfied by a support member making peripheral contact with a reflective or pyramid shaped element. Decision at 10. This disputed claim term was not defined in the Petition and, to the extent that Petitioner’s Rehearing Request seeks to construe “intersecting” to mean “inside,” Petitioner does not adequately explain why the term should be so broadly construed in light of the prosecution history of the ’143 patent.” slip op. at 4
Claim constructionPatents in suitUS 6,128,143 - Polycom, Inc. v. Fullview, Inc.Institution deniedPTAB · Jul 10, 2019 · IPR2019-00647 · APJ Donna M Praiss · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable, chiefly because the references did not show the claimed support member intersecting the reflective element’s inner volume.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314; see 37 C.F.R. § 42.4. After considering the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one claim challenged in the Petition. Accordingly, we deny the Petition, and do not institute an inter partes review for the reasons discussed below.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“element” which is recited in claims 10 and 11. Pet. 15. Petitioner provides citations to the Specification to support the proposed meaning of “an element with three or more sides, excluding the base.” Id. (citing Ex. 1001, 5:30–31, 5:36–38). Patent Owner does not dispute Petitioner’s proposed construction for the term “pyramid shaped element,” but, rather, contends that the term “a support member intersecting an inner volume of the reflective element” (claim 1) or “a support member intersecting an inner volume of the pyramid shaped element” (claim 10) is the “crux of the disagreement” between the parties. Prelim. Resp. 7. According to Patent Owner, the words “inner volume” were emphasized during prosecution and would be construed by a person having ordinary skill in the art as “a ‘non-peripheral volume’ of the ‘reflective element.’” Id. at 8–9 (quoting Ex. 2002 ¶ 35). Patent Owner argues that “[e]very ‘inner volume’ of a ‘reflective element’ is within the volume bounded by all [of] its reflective facets, as in Figure 17 of the ’143 [patent]” such that the “support member” is above a plane touching all of the “reflective” facets and “reach[es] in” to the interior of these reflective facets. Id. at 10–11 (quoting Ex. 2002 ¶ 36). Stated another way, Patent Owner contends that the term “requires more than, and is not satisfied by, the mere showing of ‘a support member making contact with a reflective element.’” Id. at 9 (quoting Ex. 1003, 301–302). After reviewing the parties’ arguments and evidence, we determine that only the term “a support member intersecting an inner volume of a reflective [or pyramid shaped] element” of the ’143 patent requires express construction for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). On the present record, including considering the prosecution history, we agree with Patent Owner that the disputed claim term is not satisfied by a support member making peripheral contact with a reflective or pyramid shaped element because “intersecting an inner volume” requires an intersection of the support member through a volume of space defined and bounded by the reflective element. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015), overruled on other grounds by Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc), (“The PTO should also consult the patent’s prosecution history in proceedings in which the patent has been brought back to the agency for a second review”); Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc) (citations omitted) (A patent’s prosecution history “consists of the complete record of the proceedings before the [US]PTO,” and “provides evidence of how the [US]PTO and the inventor understood the patent.”).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Owner that Yamazawa does not describe the element highlighted in red by Petitioner as intersecting the pyramidal mirror elements highlighted in yellow by Petitioner. In particular, Petitioner does not adequately explain why a person having ordinary skill in the art would understand the vertical lines highlighted in red to intersect an inner volume of Yamazawa’s reflective pyramidal mirror. Yamazawa does not describe such an arrangement in its text, and Yamazawa’s “cross-sectional view” in annotated Figure 1 above does not disclose the presence of the alleged support internal to the reflective element with either continued lines or dotted lines through the pyramidal mirrors highlighted in yellow by Petitioner. Therefore, Yamazawa is ambiguous as to how it is supported. See Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1284 (Fed. Cir. 2017) (“Ambiguous references do not anticipate a claim.”).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Based on the record before us, Petitioner does not show sufficiently that a skilled artisan would have had reason to intersect an inner volume of Nalwa’s panoramic viewer with Horn’s support shaft. Neither the Petition nor the Fantone Declaration adequately explains why a skilled artisan would have arranged the combined teachings of Nalwa and Horn such that Horn’s support intersects an inner volume of Nalwa’s reflective element rather than connect Nalwa’s viewer to Horn’s support at the top of the support as shown in Horn’s Figure 1. Petitioner’s rationale that it would have been obvious to secure Nalwa’s panoramic viewer to Horn’s shaft in a manner that would not interfere with the field of view does not explain why it would have been obvious to position the reflective element in the claimed manner relative to Horn’s support rather than on the top surface of the support. In addition, both Horn and Herndon illustrate connecting devices to the top surface of a support. Ex. 1007, Fig. 1; Ex. 2003, Fig. 10. For this reason, Petitioner’s challenge to the patentability of claim 1 over the combination of Nalwa and Horn is cumulative to the rejection over Herndon based on the connection between the reflective element and the support. Accordingly, Petitioner has not demonstrated a reasonable likelihood that claim 1 of the ’143 patent would have been obvious over the combination of Nalwa and Horn. Petitioner relies on the same arguments and evidence for this claim element in connection with independent claim 10 and dependent claims 2, 3, 11, and 12 as well. Pet. 62–72 (citing Ex. 1007, Abstract, 1:5–7, 3:10–31, Figs. 1–3; Ex. 1006, 1:53–2:10; Ex. 1002 ¶ 148). Therefore, Petitioner has not demonstrated a reasonable likelihood that any of claims 2, 3, 10, 11, and 12 would have been obvious over the combination of Nalwa and Horn for the same reasons discussed above for claim 1.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 6,128,143
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.