- Cambridge Industries USA, Inc. v. Applied Optoelectronics, Inc.Rehearing deniedPTAB · Dec 19, 2025 · IPR2025-00434 · APJ Mitchell G Weatherly · IPR · Rehearing
The Board denied Petitioner’s rehearing request, leaving institution denied because Shen and Soldano did not establish a reasonable likelihood of anticipating claims 1–7.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. See 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. See Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party challenging the decision has the burden of showing the 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).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“II. ANALYSIS In our Decision, we concluded that Petitioner had failed to carry its burden of demonstrating a reasonable likelihood of prevailing that either Shen or Soldano anticipated claims 1–7. Dec. 18, 26. Petitioner argues that we should institute review for three reasons. First, Petitioner argues that we abused our discretion by (a) “refusing” to interpret the scope of the claimed” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Owner’s interpretation of “carrier” as meaning “one or more components for supporting ROSA components such as an AWG.” Dec. 9 (quoting Pet. 11). For our analysis of Petitioner’s challenges, we referred to this interpretation of “carrier” as Petitioner’s second alternative construction. Id. We also noted that Petitioner appeared to dispute Patent Owner’s interpretation when it argued that “carrier” should mean “a ceramic or silicon substrate.” Id. (quoting Pet. 10). We referred to this interpretation of “carrier” as the first alternative construction. Id. Rather than resolve this apparent dispute about the meaning of “carrier,” we found that both of Petitioner’s anticipation challenges failed under both interpretations of “carrier.” Id. at 10–26. Because we found that Petitioner had failed to carry its burden regardless of which interpretation of “carrier” applied, we found it unnecessary to resolve the dispute over that interpretation. Id. at 9–10. For the reasons expressed in Parts II.B–C below, we maintain our conclusion that Petitioner has failed to demonstrate a reasonable likelihood of proving that either Shen or Soldano anticipates any claim under either interpretation of “carrier.” Accordingly, Petitioner fails to demonstrate an abuse of discretion in our alleged “refusal” to interpret “carrier.”” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Reh’g Req. 14. We cannot weigh Petitioner’s arguments based on its assertions about “caselaw” because Petitioner cited no cases to support its arguments. See id. Nevertheless, we infer that Petitioner intends its statements of “caselaw” to refer to the requirements to make out a case for anticipation. If so, Petitioner demonstrably miscasts what appear to be the legal principles for proving anticipation. As stated in our Decision: “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987).” Dec. 7. Making a showing that a prior art reference anticipates a patent claim thus necessarily requires proof that a single reference “expressly or inherently” describes every element of that claim and with all elements being arranged in the reference as they are in the” slip op. at 7
Claim construction§ 102 anticipationPatents in suitUS 10,379,301 - Scentair Technologies, LLC v. Prolitec, Inc.Rehearing deniedPTAB · Jun 24, 2021 · IPR2021-00013 · APJ Grace Karaffa Obermann · IPR · Rehearing
The Board denied the petitioner’s rehearing request, finding its new arguments untimely and unpersuasive as to the aerosol outlet limitation for claims 1–19.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A request for rehearing is not an opportunity to present new arguments or evidence that could have been presented in a petition. We could not have misapprehended or overlooked matters or arguments that were not asserted in the Petition. We deny the Rehearing Request because it is based on new arguments that Petitioner did not present in the Petition. B. Petitioner’s Arguments Are Unpersuasive Alternatively, even if we consider the new arguments raised for the first time in the Rehearing Request, we find none persuasive to show reversible error in the Decision. The ’767 patent describes and claims “a cap assembly” that is characterized by three distinct structures, namely, “a cap, a venturi insert, and a base attached together without welds or separate fasteners to define . . . an air outlet chamber” that is “partitioned from the interior of the receptacle by the base.” Ex. 1001, 15:6–13 (claim 1) (emphasis added); see id. at 3:30–43, 9:45–62 (written description).” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“The Petition advances three grounds, each of which is based on obviousness and asserts Benalikhoudja1 as a prior art reference. Pet. 5. We found in the Decision, and Petitioner does not dispute in the Rehearing Request, that each ground “depends on Petitioner’s assertion that Benalikhoudja discloses or suggests ‘an aerosol outlet chamber partitioned 1 We refer to US 2006/0237090 A1, published Oct. 26, 2006 (Ex. 1004). from the interior of the receptacle by the base.’” Dec. 5–6. As we did in the Decision, we refer herein to that feature of the claimed invention as “the aerosol outlet limitation.” Id. at 6. Based on the information presented in the Petition and Preliminary Response, we determined Petitioner did not show sufficiently, for purposes of trial institution, that Benalikhoudja discloses the aerosol outlet limitation. Id. at 9–10. Petitioner argues we erred on that point. Req. Reh’g 1–6.” slip op. at 3
§ 103 obviousnessPatents in suitUS 9,480,767 - Weber, Inc. v. Provisur Technologies, Inc.Rehearing deniedPTAB · Aug 5, 2020 · IPR2019-01463 · APJ Mitchell G Weatherly · IPR · Rehearing
The Board denied Weber’s rehearing request, finding no error or abuse of discretion in denying institution on claims 1–22.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. See 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. See Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party challenging the decision has 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).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“First, the plain language of claim 1 unambiguously recites a causal link between the roller and the movement of the end of the conveying surface of the belt. Specifically, claim 1 recites: “an endless circulating belt having an upper conveying surface.” Ex. 1001, 6:33–34. The claim requires that the belt is “circulated to move [articles] . . . to an end of said conveying surface.” Id. at 6:40–41. The claim recites a “roller” that controls “a belt accumulation region” of the belt. Id. at 6:35–36. The claimed roller must also cause the end of the conveying surface of the belt to move because the “position of said end is moveable . . . by longitudinal positioning of said roller.” Id. at 6:45–49 (emphasis added). The phrase that “end is moveable by longitudinal positioning of said roller” unambiguously requires longitudinally positioning the roller to cause the end of the conveying surface to move. The Specification bolsters our plain reading of claim 1 where it states: “Movement of the pulley 42 controls the extension or retraction of the top region 34, and the position of an end 50 of the top region 34.” Ex. 1001, 4:13–15. Figure 3 (reproduced below) illustrates the manner in which the movement of pulley 42 controls the longitudinal movement of the end 50 of the conveying surface (i.e., top region 34). In the embodiment illustrated below, roller 42 constitutes the claimed roller, top region 34 constitutes the claimed conveying surface, and end 50 constitutes the claimed end of the conveying surface.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“an interpretation of “roller.” Patent Owner argued that the roller of claim 1 must both control the accumulation region of the belt and move longitudinally to cause movement of the end of the conveying portion of the belt. Prelim. Resp. 11. Patent Owner conceded that Rheon’s roller 11 met the first requirement of the claimed roller, namely, controlling the accumulation region of the belt. Id. at 23, n.6. However, Patent Owner also argued, id. at 24–26, and we agreed, that movement of Rheon’s roller 11 did not cause movement of the end of the conveying surface, Dec. 8–11. We need not repeat our analysis here because Petitioner identifies no error in our understanding of the manner in which Rheon operates. See Reh’g Req. 11–14 (arguing only errors in our claim interpretation). III. CONCLUSION For the reasons expressed above, we determine that Petitioner has failed to demonstrate error or an abuse of discretion in our Institution Decision. Accordingly, we deny Petitioner’s Request for Rehearing.” slip op. at 6
Claim constructionPatents in suitUS 6,669,005 - Grit Energy Solutions, LLC v. Oren Technologies, LLCRehearing deniedPTAB · Jan 10, 2020 · IPR2017-01917 · APJ Michael L Woods · IPR · Rehearing
The Board denied rehearing and confirmed that claim 13 was not shown unpatentable under §103 because the asserted safety factor was speculative and unsupported.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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 3
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“based on speculation and entitled to little weight. See Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (according little weight to broad conclusory statements in expert testimony); Gorelik v. Holder, 339 F. App’x 70, 73 (2d Cir. 2009) (noting that “little weight” should be given to an expert’s testimony where the expert’s reasoning is “speculative”); Jenkins v. Astrue, 250 F. App’x 645, 647 (5th Cir. 2007) (holding that “hypothetical testimony” by a vocational expert, which is unsupported by the evidence, may be properly disregarded). Smith is a patent document, not an engineering specification, and does not mention any safety factor, let alone one that is at least 1.15. We credit Mr. Smith’s testimony that confirms this fact. See, e.g., Ex. 2049 ¶ 139 (“Smith is silent about whether his containers are designed with any safety factor, let alone something as specific as Dr. Wooley’s assumed 1.15”) (citing Ex. 2048, 145:25–146:3). Simply because Dr. Wooley testifies that Smith has a safety factor does not make it true. See Trial Practice Guide Update, 5 (August 2018) (“[E]xpert testimony . . . is not a substitute for disclosure in a prior art reference itself.”). We are mindful not to read into Smith that which is not disclosed; such hindsight bias has no role in an obviousness analysis.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“that Smith’s “sidewalls have a rigidity suitable for retaining no less than about 30,000 pounds of proppant when positioned therein,” as recited in claim 13. Ex. 1002, 10:14–17. “In an [inter partes review], 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). Petitioner did not meet its burden. In support of its “safety factor” argument, Petitioner relies on Dr. Wooley’s testimony that Smith has a safety factor of at least 1.15. See Pet. 70 (citing in relevant part Ex. 1001 ¶ 181); see also supra Part II.b. Dr. Wooley’s testimony regarding Smith’s safety factor, however, is based on speculation and entitled to little weight. See Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (according little weight to broad conclusory statements in expert testimony); Gorelik v. Holder, 339 F. App’x 70, 73 (2d Cir. 2009) (noting that “little weight” should be given to an expert’s testimony where the expert’s reasoning is “speculative”); Jenkins v. Astrue, 250 F. App’x 645, 647 (5th Cir. 2007) (holding that “hypothetical testimony” by a vocational expert, which is unsupported by the evidence, may be properly disregarded). Smith is a patent document, not an engineering specification, and does not mention any safety factor, let alone one that is at least 1.15. We credit Mr. Smith’s testimony that confirms this fact. See, e.g., Ex. 2049 ¶ 139 (“Smith is silent about whether his containers are designed with any safety factor, let alone something as specific as Dr. Wooley’s assumed 1.15”) (citing Ex. 2048, 145:25–146:3). Simply because Dr. Wooley testifies that Smith has a safety factor does not make it true. See Trial Practice Guide Update, 5 (August 2018) (“[E]xpert testimony . . . is not a substitute for disclosure in a prior art reference itself.”). We are mindful not to read into Smith that which is not disclosed; such hindsight bias has no role in an obviousness analysis.” slip op. at 7
§ 103 obviousnessPatents in suitUS 9,296,518 - Valve Corporation v. Ironburg Inventions Ltd.Rehearing deniedPTAB · Oct 30, 2019 · IPR2017-01928 · APJ Mitchell G Weatherly · IPR · Rehearing
The Board denied Valve’s rehearing request, leaving claims 1–24 not shown unpatentable because Valve did not establish that Burns was a prior art printed publication.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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.” 37 C.F.R. § 42.71(d). Therefore, Valve must demonstrate that we misapprehended or overlooked matters previously argued and specifically identify the location in its papers at which it made the argument that we misapprehended or overlooked in order to justify modifying our Final Decision. It has failed to do so. Instead, Valve asks us to reconsider and reweigh evidence and” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“As explained in detail, in our Final Decision, we do not consider Exhibit 1003 to be the same as the document accessible using the 1 The cited pages of Exhibit 1040 (pp. 171–179) refer to a copy of the Burns article provided by the Examiner during prosecution of an unrelated but commonly owned patent that appears to have been retrieved from the “Wayback Machine” web archive. See Ex. 1040, 172 (referring to “WAYBACK MACHINE”). However, neither the cited pages nor the Examiner’s Notice of References Cited lists the Webarchive URL. See id. at 165, 171–179 (listing only URL to xboxer360.com domain as source of Burns article). Webarchive URL. Final Dec. 17–29. The URL listed on Exhibit 1003 refers to a URL on the xboxer360.com domain, not the Webarchive URL on the web.archive.org domain. Ex. 1003, 1–10. Contrary to Valve’s contentions otherwise, URLs are not prior art materials themselves, but merely addresses that might permit a user to access information via the internet. Valve also wholly fails to identify any specific argument or evidence that it advanced during the trial that we misapprehended or overlooked in reaching our decision on the issue of whether Valve had proven that Exhibit 1003 was a prior art printed publication.” slip op. at 4
- ExcludeNot reached
“Ironburg filed a Motion to Exclude Evidence (Paper 30, “Mot.” or “Motion”). Valve opposed the Motion (Paper 31, “Opp.” or “Opposition”). Ironburg filed a Reply in support of the Motion (Paper 32, “Mot. Reply”).” slip op. at 3
§ 102 anticipationPatents in suitUS 9,352,229 - Nitro Fluids, L.L.C. v. Cameron International CorporationRehearing deniedPTAB · Oct 15, 2019 · IPR2019-00804 · APJ Jon B Tornquist · IPR · Rehearing
The Board denied the rehearing request and maintained denial of institution for claims 1–15 under § 325(d) based on Kajaria and Guidry.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD FOR REHEARING 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 › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential in relevant part) and determined that the balance of these factors favored denial of the Petition under 35 U.S.C. § 325(d). Dec. 11–23. As part of this analysis, we determined that: Kajaria was previously presented to the office during prosecution and was the basis for a rejection by the Examiner; Petitioner and the Examiner relied on the same disclosures of Kajaria to support their arguments; Petitioner did not sufficiently point out how the Examiner erred in his evaluation of Kajaria; and the declaration testimony of Mr. Ely did not warrant reconsideration of the prior art previously analyzed by the Examiner. Id. at 12–22.” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Other
“fracturing tree, wherein the single outlet is coupled to the fracturing tree by a single fluid conduit that is the only fluid conduit connecting the skid apparatus in fluid communication with the well at which the one fracturing tree is positioned. Ex. 1001, 7:6–30.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successOther
“obviousness ground relies solely on modification of distribution modules 42. Req. Reh’g 14. According to Petitioner, the Petition specifically alleges that “it would have been obvious to modify any module, including specifically module 40, to use a single manifold, to support only a single valve group, for delivery of fluid to a single well, via a single fluid conduit.” Id. (citing Pet. 35–42, 49–52, 56–57; Ex. 1002 ¶¶ 92, 96, 99, 102, 103, 122, 124–126, 128, 138). We did not misunderstand or misapprehend this argument; indeed, we noted its logical appeal. Dec. 21 n.10. We instead declined to credit the inference underpinning this argument, i.e., that a single-manifold embodiment would use a single fluid conduit, because the only reference of record having a single distribution module coupled to a single manifold had two fluid conduits extending from the distribution module to the well. Id. Accordingly, we are not persuaded that we misunderstood or overlooked Petitioner’s obviousness arguments.” slip op. at 11
§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 9,903,190 - PTAB · Jun 21, 2019 · IPR2019-00158 · APJ Beverly M Bunting · IPR · Rehearing
The Board denied the Patent Owner’s rehearing request, finding no misapprehension or oversight in its preliminary § 112(f) construction of “tool” for institution.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). On rehearing, the burden of showing that the Decision should be modified lies with the party challenging the Decision, in this case, Patent Owner. 37 C.F.R. § 42.71(d). A request for rehearing must identify specifically all matters the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). In our Decision, when considering the meaning and scope of the claim language, we “preliminarily determine[d] that the term tool is used merely as a generic placeholder meant to cover ‘the corresponding structure, material, or acts described in the specification and equivalents thereof.’” Dec. 16. Based on this understanding, we preliminarily agreed with” slip op. at 2
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). On rehearing, the burden of showing that the Decision should be modified lies with the party challenging the Decision, in this case, Patent Owner. 37 C.F.R. § 42.71(d). A request for rehearing must identify specifically all matters the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). In our Decision, when considering the meaning and scope of the claim language, we “preliminarily determine[d] that the term tool is used merely as a generic placeholder meant to cover ‘the corresponding structure, material, or acts described in the specification and equivalents thereof.’” Dec. 16. Based on this understanding, we preliminarily agreed with plus-function limitation having the function of imparting a deforming force on the deformable member, and the corresponding structure is a wedge, swage, shoulder, cone, ramp, mandrel, plug, and dart, as exemplified by tools 102, 122 and 142 disclosed in the ’439 patent.” Id. at 17–18. In its Preliminary Response, other than disputing Petitioner’s proposed construction, Patent Owner did not advance its own construction of tool. Prelim. Resp. 21–45. Now, Patent Owner’s stated basis for requesting rehearing is that we erred in preliminarily interpreting tool as a means-plusfunction (“MPF”) term. Req. Reh’g. 1.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(Paper 1, “Petition” or “Pet.”) requesting an inter partes review of claims 1–23 (“the challenged claims”) of U.S. Patent No. 9,080,439 B2 (Ex. 1003, “the ’439 patent”). Baker Hughes Oilfield Operations, LLC, (“Patent Owner”) filed a Preliminary Response to the Petition (Paper 6, “Prelim. Resp.”). On April 15, 2019, we entered a Decision on Institution (Paper 9, “Decision” or “Dec.”) in this proceeding, determining that Petitioner had demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim of the ’439 patent. Dec. 33. Patent Owner timely filed this Request for Rehearing of the Decision. Paper 12 (“Request” or “Req. Reh’g.”).” slip op. at 2
Claim constructionPatents in suitUS 9,080,439 - General Electric Company v. United Technologies CorporationRehearing deniedPTAB · Oct 18, 2018 · IPR2017-00428 · APJ George R Hoskins · IPR · Rehearing
The Board denied GE’s rehearing request, leaving intact its finding that claims 10–14 were not shown unpatentable, including claim 10’s failure under §103.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“issue here, the party challenging the decision has the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). 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 the proceeding. Id.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundMotivation not foundNot shown unpatentable
“We have reviewed the case law cited in Petitioner’s Request. At most, it establishes that prior art disclosures indicating a given design option would be inoperative or technically infeasible are sufficient to teach away from the design option. See Urbanski, 809 F.3d at 1243 (“[i]f references taken in combination would produce a ‘seemingly inoperative device,’ . . . such references teach away from the combination”) (quoting McGinley, 262 F.3d at 1354); DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326–28 (Fed. Cir. 2009) (prior art taught away from a “rigid” pedicle screw in “warn[ing] that rigidity increases the likelihood that the screw will fail within the human body, rendering the device inoperative for its intended purpose”) (emphases added); Orthopedic Equip. Co., Inc. v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983) (obviousness may be defeated if “skilled persons in the art felt that there was some technological incompatibility that prevented [the prior art’s] combination”). The cited case law does not, as Petitioner would have it, establish that such prior art disclosures are necessary to teach away from the design option. See Polaris, 882 F.3d at 1069–70 (on remand, “the Board must analyze whether Denney ‘teaches away’” based on undisputed evidence indicating that adding a fuel tank under Denney’s seats would “rais[e] the center of gravity and render[] the vehicle less stable, which would run contrary to one of Denney’s stated purposes”) (emphasis added)1; Urbanski, 809 F.3d at 1243–44 (“the cited references do not teach away,” because “[n]othing in the prior art teaches that the proposed modification would have resulted in an ‘inoperable’ process or a dietary fiber product with undesirable properties”) (emphases added). Instead, a teaching away requires the prior art merely to criticize, discredit, or discourage pursuit of the design option. See Polaris, 882 F.3d at 1068–70 (Board erred in “fail[ing] to analyze whether Denney ‘teaches away’ . . . by determining whether ‘a person of ordinary skill, upon reading [Denney], would be discouraged from following the path set out in [Denney], or would be led in a direction divergent from the path that was taken by the applicant”) (emphases added); Urbanski, 809 F.3d at 1243–44; DePuy Spine, 567 F.3d at 1327; Reply Br. 8–9; Reh’g Req. 4. For the reasons provided in the Decision, Wendus criticizes, discredits, and discourages using a two-stage high pressure turbine in the Wendus ADP engine. See Dec. 23–30.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“motivation must be found to physically combine the actual embodiments in” Wendus and Moxon. Reh’g Req. 9–10. However, as stated in the Decision and not disputed in Petitioner’s Request, Petitioner’s case for obviousness is premised upon modifying the specific ADP engine disclosed in Wendus. See Dec. 12 n.5 (citing Pet. 59–60, 65, 66–75 and Reply Br. 23–24). Further, the Decision did not require Petitioner to establish that the two-stage high pressure turbine of Moxon could be bodily incorporated into the Wendus ADP engine. See id. at 32–38. Instead, the Decision discussed Petitioner’s failure to provide a persuasive motivation or justification for why a person of ordinary skill in the art, when modifying the Wendus ADP engine to include a two-stage high pressure turbine, would maintain the other claimed parameters within the scope of claim 10. See id. This was especially true concerning the claimed parameters for the low pressure turbine, which is located downstream of the high pressure turbine. Id. at 36–38.” slip op. at 8
§ 103 obviousnesscites KSRPatents in suitUS 8,695,920 - Grit Energy Solutions, LLC v. Oren Technologies, LLCRehearing deniedPTAB · Aug 7, 2018 · IPR2017-00768 · APJ Michael L Woods · IPR · Rehearing
The Board denied the petitioner’s rehearing request, leaving intact its conclusion that claims 1–7 were not shown unpatentable under the instituted grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“we found that “for at least the following two reasons, we disagree[d] with Petitioner’s argument that transposing Eng Soon’s pin and receptacle would have been a simple substitution to achieve predictable results.” Final Dec. 22 (citations omitted) (emphasis added). In other words, even if we found that Constantin discloses an orifice or receptacle attached to its actuator—which we do not—we also found that transposing Eng Soon’s pin and receptacle as proposed by Petitioner would result in a more expensive system, and we disagreed with Petitioner’s assertion that modifying Eng Soon would have been a mere simple substitution. See Final Dec. 24 (“we agree with Mr. Smith that a POSITA would not modify Eng Soon to ‘reduce cost,’ as Petitioner proposes . . ., when doing so would increase the overall cost of the mobile containers”) (citing Ex. 2040 ¶ 76). Moreover, even if we treat Petitioner’s First Rationale as separate from its Second Rationale—thereby ignoring the Second Rationale when considering the First Rationale—when considered alone, Petitioner’s First Rationale fails to explain adequately why a POSITA would have transposed Eng Soon’s pin and receptacle. See Pet. 53–54. It is not enough to state that “[Eng Soon’s] pin and receptacle perform the same function to achieve the same result, regardless of their position, [and that] a POSITA would have been able to make the swap.” Reh’g Req. 11; see also Pet. 53–54 (“A POSITA reading Constantin would understand that there is no functional difference between these configurations”). In other words, it is not enough to argue that a POSITA could modify Eng Soon in a manner that meets the claims, without adequately explaining why a POSITA would make the modifications. See Personal Web Techs. LLC v. Apple, Inc., 848 F.3d 987, 993–94 (Fed. Cir. 2017) (finding that a skilled artisan would have understood that prior art could be combined insufficient; “it does not imply a motivation to pick out those two references and combine them to arrive at the claimed invention”). Indeed, we found that the proposed modification would result in a more expensive system. See Final Dec. 24.” slip op. at 9
- BurdenDecided for patent owner
“all challenged claims (claims 1–7) under all grounds, namely, Grounds 1 and 2.” Final Dec. 2. Indeed, the Petition sets forth only two grounds; Ground 1 challenging claims 1–3 and 5, and Ground 2 challenging claims 4, 6, and 7. Pet. 6 (Statutory Grounds of Challenge). In our Final Written Decision, we determined that Petitioner failed to meet its burden that any of the challenged claims are unpatentable. Final Dec. 2–3. In particular, we found that Constantin does not disclose an orifice attached to an actuator and concluded that a POSITA would not have modified Eng Soon as Petitioner proposed. See id. at 17–25. We find nothing in Petitioner’s “G1Constantinbased challenges” that cures these fatal defects. Moreover, Petitioner’s statement in footnote 5 that certain “aspects” of Eng Soon and Constantin can somehow be “vice-versa” swapped with other “aspects” fails to rise to the specificity and particularity required under 35 U.S.C § 312(a)(3) and 37 C.F.R. § 42.104(b). The function of the Board is not to comb through the cited art in order to determine the strongest combination of references to meet the claims, thereby overcoming whatever deficiencies may exist in the Petition. See generally LG Elecs., Inc. v. Rosetta-Wireless Corp., Case IPR2016-01516 (PTAB Apr. 3, 2017) (Paper 25).” slip op. at 11
§ 103 obviousnessPatents in suitUS 8,585,341 - Valve Corporation v. Ironburg Inventions Ltd.Rehearing deniedPTAB · Jan 26, 2018 · IPR2016-00948 · APJ Phillip J Kauffman · IPR · Rehearing
The Board denied Valve’s rehearing request and maintained its determination that claims 1–11, 13, 16, and 17 were not shown obvious over Enright and Tosaki.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Written Decision (Paper 44, “Decision,” or “Dec.”) in this case. Paper 45 (“Reh’g Req.”). Specifically, Petitioner asks that we: (1) reconsider and adopt the construction of “flexible” proposed in the Petition, (2) consider Section IV.D. of the Petitioner’s Reply, (3) determine that claims 1–11, 13, 16, and 17 are obvious over Enright and Tosaki, and (4) correct three typographical errors.1 Id. at 1.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Petitioner asks that we deviate from the ordinary meaning of “flexible,” yet neither identifies a lexicographical definition nor alleges that the prosecution history warrants such a deviation. See Resp. 1–2, 4–5 (pointing out that Petitioner’s attempt to deviate from ordinary meaning is not well supported); see also Reply 2 (contending that the broadest reasonable interpretation of “flexible” is broader than its ordinary meaning, but not providing a reason for departing from ordinary meaning). Further, Petitioner’s suggestion that the ordinary meaning of a claim term must be expressly stated in the disclosure is incorrect and does not warrant deviation from the ordinary meaning of a term. The proper inquiry, as applied in both our Institution Decision and our Final Written Decision, is whether the ordinary meaning of a claim term is consistent with the specification. See Dec. 36–37; Paper 10, 13–14; In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (the words of the claim must be given their plain meaning unless the plain meaning is inconsistent with the specification); Resp. 7. Second, Petitioner agrees that “inherently resilient” as claimed means that the elongate member will return to its unbiased position when not under load. Being capable of returning to an unbiased position when not under load of necessity includes being capable of being moved to a biased position under load. In other words, inherent resiliency requires that the elongate member may be moved to a biased position under load and then returns to an unbiased position when not under load. Inherent resiliency and flexibility as claimed are different characteristics. For example, an elongate member formed of hard plastic that could be biased/displaced by a user’s finger to activate a switch mechanism and then return to an unbiased position would be inherently resilient. That same elongate member formed of hard plastic would not itself bend or flex, and therefore would not be flexible as required by claim 1.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“correspond to elongate members as claimed, then in the Reply, Petitioner changes the theory to allege that it would have been obvious to modify Enright’s switches to be flexible as claimed. Compare Pet. 34–35 to Pet. Reply 15. We do not consider this contention because Patent Owner was not afforded notice and opportunity to respond to this new theory of unpatentability. See generally Genzyme Therapeutic Prods. Ltd. V. Biomarin Pharm. Inc., 825 F.3d 1360, 1366–1367 (Fed. Cir. 2016) (determining that the Administrative Procedure Act and due process require notice to a party and the opportunity to submit facts and argument); see also Intelligent Bio- Ays. V. Illumina Cambridge, Ltd., 821 F.3d 1359, 1367–68 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim’” [as required by 35 U.S.C. § 312(a)(3)]); 37 C.F.R. § 42.104(b)(2).” slip op. at 9
- Strike new argumentNew argument disregardedDecided for patent owner
“In the Petition, Petitioner alleges that Enright’s switches 32, 34 correspond to elongate members as claimed, then in the Reply, Petitioner changes the theory to allege that it would have been obvious to modify Enright’s switches to be flexible as claimed. Compare Pet. 34–35 to Pet. Reply 15. We do not consider this contention because Patent Owner was not afforded notice and opportunity to respond to this new theory of unpatentability. See generally Genzyme Therapeutic Prods. Ltd. V. Biomarin Pharm. Inc., 825 F.3d 1360, 1366–1367 (Fed. Cir. 2016) (determining that the Administrative Procedure Act and due process require notice to a party and the opportunity to submit facts and argument); see also Intelligent Bio- Ays. V. Illumina Cambridge, Ltd., 821 F.3d 1359, 1367–68 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim’” [as required by 35 U.S.C. § 312(a)(3)]); 37 C.F.R. § 42.104(b)(2). 3 Petitioner’s Reply refers to the ground of unpatentability based on Enright, Tosaki, and Oelsch, but Petitioner has not requested that we reconsider that portion of our Final Written Decision. See Pet. Reply 15; Reh’g Req. 1 (seeking reconsideration of the ground of unpatentability based Enright and Tosaki).” slip op. at 9
Claim construction§ 103 obviousnessPatents in suitUS 8,641,525
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.