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  • PTAB · May 23, 2019 · IPR2018-01270 · APJ Aaron W Moore · IPR · Rehearing

    The Board denied Apple’s rehearing request, leaving institution denied because Apple did not show Samsung disclosed the claimed notification and power-button silencing during an incoming call.

    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 the matters misapprehended or overlooked, and where each matter was addressed in a motion, opposition, or reply. Id. When reconsidering an institution decision, we look for an abuse of discretion, which may be found if there was (1) an erroneous interpretation of law, (2) a factual finding not supported by substantial evidence, or (2) unreasonable judgment in weighing relevant factors. See 37 C.F.R. § 42.71(c); Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); The Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2

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

      “1006, 32)). We found the cited portions of Samsung to describe (1) that if there was no call already in progress, the user could silence an incoming call with the power button, but neither the in-use information nor call waiting would cause the claimed notification, and (2) that if a call was already in progress, call waiting would display a notification for a new call, but there was nothing to indicate that the user could silence a ‘ring,’ or even the call waiting alert, using the power button. See Decision 16. In other words, the “in-use” notification was insufficient because it was not shown to be displayed while a call was incoming, and the “call waiting” notification was insufficient because it was not shown to be employed at a time a user could use the power button to silence a “ring.”” slip op. at 4

    • Strike new argumentNew argument disregardedDenied

      “New Evidence Petitioner asserts that the “new arguments provided in [the] Request [are] appropriate” because “Petitioners are permitted in a request for rehearing to address inaccurate characterizations that they may not be able” slip op. at 7

    • BurdenDecided for patent owner

      “distinction,” and the reference need not describe a “separate during incoming calls state.” Instead, the problem is that Samsung’s in-use display is described as showing information that one of skill in the art would expect to be shown after a call has been answered (i.e., the timer), and Petitioner failed to establish that the information would have been displayed before a call was answered. In this proceeding, “the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). With no showing that the in-use information would be displayed before the call was answered, Petitioner did not carry its burden.” slip op. at 4

    None
    Patents in suitUS 9,203,940
  • PTAB · Mar 18, 2019 · IPR2017-02058 · APJ Minn Chung · IPR · Rehearing

    The Board denied Google’s rehearing request and left in place the denial of institution for claims 1–3, 10–14, and 21 because the Petition did not sufficiently show the cited references taught the claimed limitations.

    RulingsRehearing decision
    • RehearingRehearing, deniedDenied

      “II. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the party challenging the decision,” and the challenging party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in a paper of record. 37 C.F.R. § 42.71(d). Because Petitioner seeks rehearing of our Decision denying institution of trial based on the Petition, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When 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., 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

      “certain teachings in Inoue about the claimed “WSARC.” Req. Reh’g 3. In the Decision, we found that, although the Petition appears to map Inoue’s file server to the claimed “WSARC” by mentioning “WSARC (Inoue’s file server)” (Dec. 16–17 (citing Pet. 17)), aside from that single mention, the Petition does not discuss the term “WSARC” or “website archive and review center” in relation to Inoue, and does not explain adequately why Inoue’s file server teaches or suggests the “WSARC” recited in the claims (id. at 17, 19 (citing Pet. 15–18)). Thus, based on the record presented, we determined that simply stating “a WSARC (Inoue’s file server)” in the Petition without any elaboration does not satisfy Petitioner’s burden required for institution of a review in this case (id. at 19–20 (citations omitted)).” slip op. at 3

    • Strike new argumentNew argument disregardedDecided for patent owner

      “At best, Petitioner’s arguments in its Request for Rehearing attempt to remedy the deficiencies in the Petition our Decision identified, by supplementing the arguments in the Petition. A request for rehearing is not a supplemental petition. Nor is it an opportunity to present new arguments or evidence that could have been presented and developed in the first instance in the Petition. As explained in the Decision (Dec. 19–20), it was Petitioner’s burden “from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (emphases added) (citing 35 U.S.C. § 312(a)(3)); see Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“[T]he expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute.” (emphases added)). The record shows that, rather than overlooking any teachings of Inoue or any “background” discussion by Dr. Madisetti, the Decision simply considered the arguments and explanations of the evidence Petitioner presented in the four corners of the Petition, and properly determined that the Petition did not meet this burden required on Petitioner. Dec. 19–20.” slip op. at 7

    • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

      “certain teachings in Inoue about the claimed “WSARC.” Req. Reh’g 3. In the Decision, we found that, although the Petition appears to map Inoue’s file server to the claimed “WSARC” by mentioning “WSARC (Inoue’s file server)” (Dec. 16–17 (citing Pet. 17)), aside from that single mention, the Petition does not discuss the term “WSARC” or “website archive and review center” in relation to Inoue, and does not explain adequately why Inoue’s file server teaches or suggests the “WSARC” recited in the claims (id. at 17, 19 (citing Pet. 15–18)). Thus, based on the record presented, we determined that simply stating “a WSARC (Inoue’s file server)” in the Petition without any elaboration does not satisfy Petitioner’s burden required for institution of a review in this case (id. at 19–20 (citations omitted)).” slip op. at 3

    § 103 obviousness
    Patents in suitUS 8,581,991
  • PTAB · Mar 14, 2019 · IPR2018-01280 · APJ Scott B Howard · IPR · Rehearing

    The Board denied Apple’s rehearing request, leaving in place the denial of institution because it had not overlooked or misapprehended material facts about Brown or the prosecution history.

    RulingsRehearing decision
    • RehearingRehearing, deniedDenied

      “a panel will review the decision for an abuse of discretion.” 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, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d).” slip op. at 2

    • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

      “Dec. 8–9 (emphasis added). Similarly, when weighting the Becton factors, we explicitly found that although the Examiner originally rejected the claims based on Brown, “[f]ollowing an amendment to the claims adding the prompting step along with arguments by the applicant explaining why Brown did not teach that new limitation, the Examiner shifted to new references and no longer relied on Brown.” Id. at 14 (citing Ex. 1002, 142– 149, 156–168, 178–181). In other words, twice we explicitly acknowledged what Petitioner now argues we overlooked.” slip op. at 5

    • Strike new argumentNew argument disregardedOther

      “For the reasons explained above, we are not persuaded that we misapprehended or overlooked any material facts. Moreover, Petitioner never explicitly nor implicitly addressed the Becton factors in the Petition, and new arguments are not permitted in a request for rehearing absent exceptional circumstances, of which none have been identified here.” slip op. at 8

    Discretionary denial
    Patents in suitUS 7,844,037
  • PTAB · Dec 11, 2018 · IPR2017-00864 · APJ Daniel N Fishman · IPR · Rehearing

    The Board denied Patent Owner’s rehearing request, leaving claims 1, 3–5, 7–9, 11–15, and 18–21 unpatentable because their scope did not require the buffer to store the specified information.

    RulingsRehearing decision
    • RehearingRehearing, deniedDenied

      “party challenging the decision,” and, “[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 the record. 37 C.F.R. § 42.71(d). III. DISCUSSION Patent Owner’s Request does not identify any arguments that we “misapprehended or overlooked” let alone “specifically identify” all such matters. Thus, Patent Owner’s Request fails to comply with our rules. Despite this failure of Patent Owner’s Request, we address the substance of Patent Owner’s argument as follows.” slip op. at 2

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

      “misapprehended any argument. Furthermore, we are unpersuaded that our Decision was in error regarding independent claims 1, 3, 7, 18, and 23 because these claims have a different scope than claims 17, 22, and 24. As Patent Owner correctly noted, our construction of “dedicated USB connection” is “a USB connection that may include some shared physical communication path and includes a buffer for maintaining dedicated address, configuration and response information for the connection.” Dec. 33. Thus, a dedicated USB connection must include a buffer that is capable of storing/maintaining “dedicated address, configuration and response information” regardless of whether such data is actually stored/maintained therein.” slip op. at 3

    Claim construction
    Patents in suitUS 7,523,243
  • PTAB · Dec 11, 2018 · IPR2017-00861 · APJ Daniel N Fishman · IPR · Rehearing

    The Board denied Patent Owner’s rehearing request, leaving claim 25 unpatentable because its ACR data limitation did not distinguish its scope and the Board had not misapprehended or overlooked the controller argument.

    RulingsRehearing decision
    • RehearingRehearing, deniedDenied

      “party challenging the decision,” and, “[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 the record. 37 C.F.R. § 42.71(d). III. DISCUSSION Patent Owner’s Request does not identify any arguments that we “misapprehended or overlooked” let alone “specifically identify” all such matters. Thus, Patent Owner’s Request fails to comply with our rules. Despite this failure of Patent Owner’s Request, we address the substance of Patent Owner’s arguments below.” slip op. at 2

    • BurdenDecided for patent owner

      “party challenging the decision,” and, “[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 the record. 37 C.F.R. § 42.71(d). III. DISCUSSION Patent Owner’s Request does not identify any arguments that we “misapprehended or overlooked” let alone “specifically identify” all such matters. Thus, Patent Owner’s Request fails to comply with our rules. Despite this failure of Patent Owner’s Request, we address the substance of Patent Owner’s arguments below.” slip op. at 2

    None
    Patents in suitUS 7,627,708
  • PTAB · Mar 9, 2018 · IPR2017-01274 · APJ Scott A Daniels · IPR · Rehearing

    The Board denied C&D Zodiac’s rehearing request and left in place its denial of institution because the hypothetical forward wall limitation did not provide ascertainable claim scope.

    RulingsRehearing decision
    • RehearingRehearing, deniedDenied

      “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 burden of showing a decision should be modified lies with the party challenging the decision[,]” which party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each slip op. at 2

    • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

      “In the Institution Decision, we explained that we were unable to determine the metes and bounds of the hypothetical enclosure unit limitation required by all the challenged claims. Inst. Dec. 7–12. Specifically, we found that “[a]s a whole, the claim language does not in any comprehensible way tie the relative position of the seat support to the shape of the wall, be it “substantially not flat” or, hypothetically speaking, “substantially flat.”” Inst. Dec. 10. In light of this uncertainty, we found that “Petitioner has not provided sufficient information for a determination of the scope of certain limitations, such as the ‘additional space’ and, therefore, we cannot conduct the necessary factual inquiry for determining whether the prior art meets this limitation.” Id. at 16.” slip op. at 3

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

      “In the Institution Decision, we explained that we were unable to determine the metes and bounds of the hypothetical enclosure unit limitation required by all the challenged claims. Inst. Dec. 7–12. Specifically, we found that “[a]s a whole, the claim language does not in any comprehensible way tie the relative position of the seat support to the shape of the wall, be it “substantially not flat” or, hypothetically speaking, “substantially flat.”” Inst. Dec. 10. In light of this uncertainty, we found that “Petitioner has not provided sufficient information for a determination of the scope of certain limitations, such as the ‘additional space’ and, therefore, we cannot conduct the necessary factual inquiry for determining whether the prior art meets this limitation.” Id. at 16.” slip op. at 3

    Claim constructioncites Markman
    Patents in suitUS 9,365,292
  • PTAB · Mar 8, 2018 · IPR2017-01273 · APJ Jennifer S Bisk · IPR · Rehearing

    The Board denied rehearing of its decision denying institution because Petitioner did not show an abuse of discretion in finding claims 1–6 indefinite in scope.

    RulingsRehearing decision
    • RehearingRehearing, deniedDenied

      “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 burden of showing a decision should be modified lies with the party challenging the decision[,]” which party “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). slip op. at 2

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

      “In the Institution Decision, we explained that we were unable to determine the metes and bounds of the hypothetical enclosure unit limitation required by all the challenged claims. Inst. Dec. 7–9. Specifically, we found that the claim language “leaves us to compare the claimed enclosure unit with a configuration that we know nothing about, except that it has an alternative hypothetical enclosure unit with ‘a substantially flat front wall located in the substantially the same position in the cabin as the forward wall.’” Inst. Dec. 8. In light of this uncertainty, we found that “Petitioner has not provided sufficient information for a determination of the scope of the hypothetical enclosure unit limitation and, therefore, we cannot conduct the necessary factual inquiry for determining whether the prior art meets this limitation.” Id. at 9.” slip op. at 3

    • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

      “determine the metes and bounds of the hypothetical enclosure unit limitation required by all the challenged claims. Inst. Dec. 7–9. Specifically, we found that the claim language “leaves us to compare the claimed enclosure unit with a configuration that we know nothing about, except that it has an alternative hypothetical enclosure unit with ‘a substantially flat front wall located in the substantially the same position in the cabin as the forward wall.’” Inst. Dec. 8. In light of this uncertainty, we found that “Petitioner has not provided sufficient information for a determination of the scope of the hypothetical enclosure unit limitation and, therefore, we cannot conduct the necessary factual inquiry for determining whether the prior art meets this limitation.” Id. at 9.” slip op. at 3

    Claim construction
    Patents in suitUS 9,434,476
  • PTAB · Feb 21, 2018 · IPR2016-01264 · APJ Michael J Fitzpatrick · IPR · Rehearing

    The Board denied the Patent Owner’s rehearing request, leaving claims 1–3, 5–7, and 9 unpatentable as obvious over Zhang, Ding, and Sun.

    RulingsRehearing decision
    • RehearingRehearing, deniedDenied

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

    • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

      “PO Resp. 55. In this argument, Patent Owner is either (A) implying that Zhang teaches upper surfaces only of pure tantalum, which is erroneous (see Ex. 1004, 3:50–62)) or (B) talking past (and not rebutting) Petitioner’s asserted combination of prior art teachings, which relies on Zhang’s explicit teaching of nitrogen in the upper surface. In our Decision, we reasonably interpreted Patent Owner to be arguing the former (i.e., that Zhang exclusively teaches or requires pure tantalum in the upper surface), because the latter would be non-responsive to the obviousness challenge as raised by Petitioner.” slip op. at 5

    § 103 obviousness
    Patents in suitUS 6,538,324
  • PTAB · Feb 21, 2018 · IPR2016-01249 · APJ Michael J Fitzpatrick · IPR · Rehearing

    The Board denied Patent Owner’s rehearing request, leaving claims 1–3, 5–7, and 9 and proposed substitute claims 11 and 12 unpatentable as obvious over Ding in view of Zhang.

    RulingsRehearing decision
    • RehearingRehearing, deniedDenied

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

    • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

      “We agree, as Patent Owner argues, that Zhang teaches a “desirability” of, and not a requirement for, an upper surface of pure tantalum. But, it cannot reasonably be disputed that Zhang also teaches a desirability for nitrogen in the upper surface. Ex. 1004, 3:57–62; see also id. at Abstract (“The nitrogen percentage for the second portion (32) is lower than the nitrogen atomic percentage for the first portion (22).”). It is this latter teaching, and not that of pure tantalum, on which Petitioner’s obviousness challenge was premised. See, e.g., Pet. 14–15 (arguing that Zhang’s upper surface includes nitrogen and a person of ordinary skill in the art “would have found it obvious to modify the top tantalum film in Ding to purposely add a small content of nitrogen therein, as taught in Zhang”).” slip op. at 5

    • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

      “Our Decision states: As discussed above, all of the challenged claims are unpatentable as obvious over Ding in view of Zhang. Patent Owner’s proposed claims 11 and 12 are unpatentable because they introduce limitations—nitrogen throughout the first film (claim 11) and nitrogen at the upper surface of the first film (claim 12)— that are met by the very references asserted in the ground of unpatentability involved in this inter partes review. Patent Owner’s Motion to substitute claims 11 and 12 is premised, incorrectly, on Zhang requiring pure tantalum (and, thus, no nitrogen) at the upper surface of its tantalum-rich tantalum nitride film. In fact, Zhang does not require any portion of the tantalum-rich tantalum nitride film to be pure tantalum. Ex. 1004, 3:53–54 (“The tantalum-rich tantalum nitride film has a range of approximately 0-30 atomic percent nitrogen.”). And, Zhang explicitly teaches that the upper surface may include nitrogen. Id. at 3:57–62 (“A lower atomic percent nitrogen at the upper surface typically gives better adhesion to copper films. At the upper surface, the atomic percent tantalum may be at least 95% and the atomic percent nitrogen may be less than 5% if copper adhesion is particularly problematic.”); Ex. 1036, 40:1– 6, 42:2–9, 42:15–21, 54:14–20 (Dr. Harris acknowledging that the upper surface of the film would contain some nitrogen). Accordingly, a preponderance of the evidence establishes that Patent Owner’s proposed claims 11 and 12 are not patentable over the art of record in this inter partes review. Put another way, and as Petitioner argues, claims 11 and 12 (like challenged claim 5) are unpatentable as they claim subject matter that would have been obvious over Ding in view of Zhang. Final Dec. 33–34. Thus, we considered every limitation of proposed claims 11 and 12, including the limitations they would introduce relative to claim 5, and determined that proposed claims 11 and 12 claim subject matter that would have been obvious over Ding and Zhang.” slip op. at 8

    § 103 obviousness
    Patents in suitUS 6,538,324
  • PTAB · Dec 26, 2017 · IPR2017-01244 · APJ Daniel N Fishman · IPR · Rehearing

    The Board denied Apple’s rehearing request, leaving in place the denial of institution because Petitioner did not show a reasonable likelihood of proving claims 1–21 and 29–42 unpatentable.

    RulingsRehearing decision
    • RehearingRehearing, deniedDenied

      “review the decision for an “abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision,” and, “[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 the record. 37 C.F.R. § 42.71(d). A request for rehearing is not an opportunity to present new arguments. See id. An abuse of discretion may arise 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. 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).” slip op. at 2

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

      “We discern no teaching or suggestion in this text of Salami that the preemphasized signal is used on a perceptual weighting filter. We find no support in the cited portions of Salami for Petitioner’s assertion that the preemphasized signal is first applied to LP analysis and then the same preemphasized signal is perceptually weighted (i.e., applied to a perceptually weighted filter). Petitioner’s argument in the Petition does not explain specifically how the cited text teaches the identified claim limitations and, thus, amounts to little more than an unsupported conclusory remark. Dr. Cohen merely repeats the same argument without providing any further explanation.” slip op. at 4

    • Expert testimonyPetitioner expert discountedDecided for patent owner

      “We discern no teaching or suggestion in this text of Salami that the preemphasized signal is used on a perceptual weighting filter. We find no support in the cited portions of Salami for Petitioner’s assertion that the preemphasized signal is first applied to LP analysis and then the same preemphasized signal is perceptually weighted (i.e., applied to a perceptually weighted filter). Petitioner’s argument in the Petition does not explain specifically how the cited text teaches the identified claim limitations and, thus, amounts to little more than an unsupported conclusory remark. Dr. Cohen merely repeats the same argument without providing any further explanation.” slip op. at 4

    None
    Patents in suitUS 6,807,524
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