- Cardiovascular Systems, Inc. v. Shockwave Medical, Inc.Rehearing grantedPTAB · Feb 2, 2023 · IPR2019-00405 · APJ Mitchell G Weatherly · IPR · Rehearing
On rehearing, the Board held claims 1–4 and 6–17 unpatentable as obvious, claim 5 not shown unpatentable, and denied both motions.
RulingsRehearing decision- RehearingGranted in part
“preponderance of evidence that claims 1–4 and 6–17 are unpatentable, but for the reasons expressed below rather than those expressed in our Decision. Additionally, we maintain our prior conclusion that Petitioner has failed to demonstrate that claim 5 is unpatentable without any modification to our reasoning expressed in the Decision. We repeat our prior analysis of claim 5 from our Decision so that this single paper contains the substance of our analysis of all of Petitioner’s challenges to the claims. Accordingly, for the reasons set forth below, we determine that Petitioner has demonstrated by a preponderance of evidence that claims 1–4 and 6–17 are unpatentable but has failed to show that claim 5 is unpatentable.” slip op. at 6
- ExcludeMotion to exclude, deniedDenied
“FURTHER ORDERED that Petitioner’s Motion to Exclude Exhibits 2002–2004, 2006, 2008, 2016, 2017, 2124, 2125, 2126, 2132, 2133, 2139, 2141, 2149, 2152, 2161, 2162, 2163, 2164, 2170–2176, 2196, and 2100 (¶¶ 18, 19, 59, 60, 66, 132, 143, 144, 165, 170, 175, 199, 201, 205, 217, 218, 220, 221, 222, and 229) is denied;” slip op. at 96
- Additional discoveryAdditional discovery, deniedDenied
“FURTHER ORDERED that Patent Owner’s Motion for Additional Discovery is denied; and” slip op. at 96
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundMotivation foundMixed
“laser as enough of a concern that its balloon could be cooled by circulating liquid through the balloon. Pet. 18, 29 (citing Ex. 1002 ¶¶ 96, 120); Reply 31 (citing Ex. 1003, 3–5). However, Petitioner fails to adduce evidence that an EHL shockwave generator produces less heat than a laser-based shockwave generator such as Levy’s. Accordingly, we determine that Petitioner has failed to prove by a preponderance of evidence that an ordinarily skilled artisan would have been motivated to substitute an EHL probe for Levy’s laser probe to reduce heat generated by the probe.” slip op. at 38
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,956,371 - Samsung Electronics Co. Ltd / Samsung Electronics America, Inc. et al. v. Neonode Smartphone LLCRehearing grantedPTAB · Dec 3, 2021 · IPR2021-00144 · APJ Michelle N Ankenbrand · IPR · Rehearing
Granted rehearing and instituted IPR of claims 1–6 and 12–17 on all asserted grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“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). Petitioner, as the party challenging the Decision, has the burden of showing that we should modify the Decision. Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. Id. § 42.71(c). “An abuse of discretion occurs if the decision (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision.” Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015).” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“that we misapprehended Hirayama307’s distinction between icon 41 and window 43 and, as a result, misapprehended the Petition’s arguments related to icon 41. Specifically, Hirayama307 discloses that window 43 appears “after having touched the desired icon 41 with the point of the pen 3,” and that window 43 is “the processing display form” of icon 41. Ex. 1006, 5:64–66. Thus, contrary to our determination in the Decision that “Hirayama307 appears to duplicate or relocate the representation of the function, i.e., icon, during gliding,” a closer reading of Hirayama307 indicates that icon 41 and window 43 are different, though Hirayama307 at times uses the term “large icon” or “enlarged icon” to describe window 43. See, e.g., Ex. 1006, 6:7–14, 6:22–23, 6:30. We acknowledge that Patent Owner disagrees with Petitioner, but we find that the parties’ disagreement raises an issue of fact that is best resolved on a full trial record. Accordingly, we determine that Petitioner shows sufficiently at this stage of the proceeding that Hirayama307 discloses the limitation “wherein the representation of the function is not relocated or duplicated during the gliding.” In light of this determination, we need not address Petitioner’s additional arguments related to whether Hirayama307 discloses the limitation at issue.10” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“2:48–51. Hirayama307 explains that, after the user moves the pen point from icon 41 to display portion 3, “an icon (hereinafter . . . referred to as a window) enlarged in the form of the processing display mode of the desired icon 41 is automatically displayed on the display portion 1 as shown in FIG. 3B.” Id. at 5:3–12.” slip op. at 6
- Other 314aInstituted
“§ 314(a). See 35 U.S.C. § 314(a) (“The Director may not authorize an inter partes review to be instituted unless . . . .”); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“First of all, the PTO is permitted, but never compelled, to institute an IPR proceeding.” (citing 35 U.S.C. § 314(a))). When deciding whether to exercise our discretion, we may consider the number of claims and grounds that meet the reasonable likelihood standard and whether, in the interests of efficient petition should be denied. Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 at 42 (PTAB Jan. 24, 2019) (informative); SAS Q&A’s, Part D, Effect of SAS on Future Challenges that Could Be Denied for Statutory Reasons, D2 (June 5, 2018), available at https://www.uspto.gov/sites/ default/files/documents/sas_qas_20180605.pdf. Here, Petitioner demonstrates a reasonable likelihood of prevailing on its challenges involving Hirayama307, which address all challenged claims. On this record, and based on the particular facts of this proceeding, we find that instituting a trial is an efficient use of the Board’s time and resources.” slip op. at 8
§ 103 obviousnessDiscretionary denialPatents in suitUS 8,095,879 - Platform Science, Inc. v. Omnitracs, LLCRehearing grantedPTAB · Sep 3, 2021 · IPR2020-01612 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board granted rehearing and instituted IPR on all petition grounds for claims 1–4, 6–9, 11, 12, and 15, finding a reasonable likelihood of prevailing.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“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 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. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“preliminary stage, we determine that Petitioner demonstrates a reasonable likelihood of prevailing with respect to claim 1.” slip op. at 44
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The only dispute pertaining to claim construction at this stage of the proceeding is whether the phrase “a process for creating said response message,” recited in claim 1, is governed by 35 U.S.C. § 112 ¶ 6.6 Petitioner 6 As noted above, Petitioner raises a second claim construction issue in its Rehearing Request. See Req. Reh’g 12–15 (asserting that the claims require only one instance of copying information from a formatted message to a response message based on which formatted message was received). Petitioner did not raise this issue in the Petition, Patent Owner has not had an contends that the phrase should be interpreted as a means-plus-function limitation, whereas Patent Owner contends that it should not. Compare Pet. 2–7 (advocating for a means-plus-function construction), with Prelim. Resp. 9–11 (advocating for an ordinary and customary meaning). At this stage of the proceeding, the dispute between the parties regarding the construction of this claim phrase does not impact our Decision. Accordingly, we need not construe expressly any claim terms for the purpose of this Decision.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“VI. ANALYSIS Legal Standards – Anticipation “[A] claim is anticipated ‘if each and every limitation is found expressly or inherently in a single prior art reference.’” King Pharm., Inc. v. Eon Labs., Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998)). Anticipation is a question of fact, In re Gleave, 560 F.3d 1331, 1334–35 (Fed. Cir. 2009), assessed from the perspective of one of ordinary skill in the art, see Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (“the dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching that every claim element was disclosed in that single reference” (alteration in original) (quotation omitted)).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,925,308 - 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 - PTAB · Mar 29, 2017 · IPR2016-01492 · APJ Mitchell G Weatherly · IPR · Rehearing
The Board granted rehearing in part to explain institution on Eizenhöfer and Miller anticipation grounds for claims 13–15 and require claim-interpretation briefing; it denied rehearing on § 325(d).
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“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” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“terminal demand” in a single sentence supported by citations to portions of the Specification and testimony from Dr. Lomp. Id. at 15–16 (citing Ex. 1001, 7:8–11, 18:50–54, 19:1–4, Figure 15A; Ex. 2001 ¶¶ 7, 16, 19–21). Based on our review of the cited portions of the Specification, it is not apparent how those sections support WPI’s proffered meaning of “subscriber terminal demand.” None of the cited portions explicitly defines “subscriber terminal demand” or uses the term, and WPI does not explain why those cited portions are relevant to the inquiry. The cited testimony from Dr. Lomp reflects his opinion but is not supported by any citations to other evidence, including the Specification itself. To the extent that WPI’s argument regarding the meaning of “subscriber terminal demand” relies upon Dr. Lomp’s testimony, we currently find that argument unpersuasive because it is unsupported by other evidence. TCT has not expressly argued the meaning of “subscriber terminal demand” but instead implies a meaning by identifying specific portions of Eizenhöfer that allegedly teach this limitation. Pet. 31–32 (citing Ex. 1004, 3:7–10, Abstract). Absent briefing with citations to relevant evidence, we decline to offer our own express interpretation of “subscriber terminal demand.” Rather, we determine that TCT’s implied interpretation and its argument based on that interpretation demonstrates a reasonable likelihood of establishing that Eizenhöfer describes the recited limitation. Because resolution of the dispute may require an express interpretation of “subscriber terminal demand,” we also direct the parties to address explicitly the meaning of this phrase at trial and cite relevant evidence from among at least other claims, the Specification, and the prosecution history.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“reasons. First, WPI has failed, as required under Rule 42.71(c), to identify an abuse of discretion stemming from our allegedly “unreasonable” failure to exercise discretion under § 325(d) and deny institution of challenges based on Miller. Second, WPI merely reiterates an argument already considered and rejected, and thus fails to meet its obligation under Rule 42.71(d) to “identify all matters . . . misapprehended or overlooked.” We disagree that WPI offered a “clear comparison” of the entirety of the claims that were allegedly previously considered by the Office during reexamination of the ’326 patent to the claims at issue in this proceeding. Describing claims in the ’326 patent as “closely related” or reciting “similar features” without providing the actual text of those claims fails to provide an adequate basis for comparing those claims to the claims at issue in this proceeding. The paraphrased comparison of claims in the ’326 patent to the claims here is similarly lacking in clarity. Third, even if we were to determine that WPI sufficiently compared the “orthogonal code generator” recited in claims of the ’326 patent to the one recited in the claims at issue, such a comparison fails to demonstrate enough similarity in the claims overall to justify a discretionary denial of TCT’s challenge based on Miller.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached
“TCT has not expressly argued the meaning of “subscriber terminal demand” but instead implies a meaning by identifying specific portions of Eizenhöfer that allegedly teach this limitation. Pet. 31–32 (citing Ex. 1004, 3:7–10, Abstract). Absent briefing with citations to relevant evidence, we decline to offer our own express interpretation of “subscriber terminal demand.” Rather, we determine that TCT’s implied interpretation and its argument based on that interpretation demonstrates a reasonable likelihood of establishing that Eizenhöfer describes the recited limitation. Because resolution of the dispute may require an express interpretation of “subscriber terminal demand,” we also direct the parties to address explicitly the meaning of this phrase at trial and cite relevant evidence from among at least other claims, the Specification, and the prosecution history.” slip op. at 5
Claim construction§ 102 anticipationDiscretionary denialPatents in suitUS 6,381,211 - Westerngeco LLC v. PGS Geophysical AsRehearing grantedPTAB · Feb 3, 2017 · IPR2015-00313 · APJ Justin Busch · IPR · Rehearing
On rehearing, the Board held claim 2 unpatentable as anticipated by Gallagher, modifying the final written decision; no other aspect was modified.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“On rehearing, the burden of showing the Decision should be modified lies with the party challenging the Decision. 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 a motion, an opposition, or a reply.” Id. For the reasons that follow, Petitioner’s request for rehearing is granted. This decision on rehearing modifies our Final Written Decision only to the extent that we now hold claim 2 of the ’059 patent to be unpatentable as anticipated by Gallagher. Neither party challenges our holdings with respect to any other claims in our Final Written Decision.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Owner, and Petitioner does not contest, that traces “have the same coordinates” when those traces populate the same bin in the “set of bins.” We agree with Petitioner, however, that the disputed limitation is tied to the assignment of coordinates, not to the organizing step, and we are unpersuaded by Patent Owner’s arguments that a trace can only populate a particular bin after “the coordinate-designated set of traces” has been organized.” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“interpreted properly (i.e., not tied to the organizing step), Gallagher teaches or suggests the disputed limitation. Req. Reh’g 5–6. We found persuasive Petitioner’s mappings of (1) Gallagher’s assignment of sections and shells in a common reference point bin to the assigning step, (2) the section-shell segments created from that assignment to the recited set of bins, and (3) Gallagher’s decimation process, which in one example leaves one trace per section-shell segment (or bin), to the organizing step. Dec. 14–19; see Pet. 45–48. In Gallagher, it is the combination of the acquisition geometry and the selection of the sections and shells that defines the coordinate-designated set of traces and the bins. Prior to Gallagher’s decimation,” slip op. at 10
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 6,026,059 - Square, Inc. v. Think Computer CorporationRehearing grantedPTAB · Feb 9, 2016 · CBM2014-00159 · APJ Michael W Kim · CBM · Rehearing
The Board granted Patent Owner’s rehearing request insofar as it addressed the assertions in the decision, but denied it in all other respects; the prior analysis remained unchanged.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“A request for rehearing can only point out that which the Board misapprehended or overlooked, and will be reviewed for abuse of discretion. 37 C.F.R. § 42.71(d). Moreover, as the moving party, the burden of persuasion falls on Patent Owner. 37 C.F.R. § 42.20(c). The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and where each matter was previously addressed in a motion, an opposition, or a reply. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).” slip op. at 1
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“are unpersuaded that they would alter our construction. For example, Patent Owner asserts that the claim limitation “any particular transaction” requires that “bidirectional account” be construed as allowing an account to function simultaneously as both a merchant account and a purchaser account under all transactions. We disagree, primarily because we are unclear as to what Patent Owner means by “under all transactions.” The relevant limitation of independent claim 1 reads “wherein the first account and the second account are adapted to selectively function as either a merchant or a purchaser account during any particular transaction.” We find that “[a]ny particular transaction” means any specific transaction, and is not necessarily limited to all transactions going forward, and find further that, logically, an account need only function in “merchant mode” or “purchaser mode” for that particular transaction; otherwise the account would be in the awkward position of performing a transaction with itself. Moreover, we are unclear as to why the same account cannot function as both, depending on the transaction, as an account is merely a repository within which funds are held, and whether the account is in “merchant mode” (i.e., the ability to send funds from the account) or “purchaser mode” (i.e., the ability to send funds to the account) does not alter the fundamental repository nature of the account itself. A similar analysis of the cited portions of the prosecution history and Specification yields similar conclusions. For example, Patent Owner’s discussion of the prosecution history on pages 4 and 5 of the Request for Rehearing do not amount to Patent Owner providing an explicit definition of “selectively function,” “during any particular transition,” or any other claim term as meaning “simultaneously”; nor do Patent Owner’s statements rise to the level of a clear and unmistakable disclaimer with respect to the meaning of the claim terms.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“2. whether Dalzell fails to meet the claims’ requirements Based on Patent Owner’s proposed claim construction of “bidirectional accounts,” Patent Owner asserts that Dalzell does not disclose “bidirectional accounts.” Req. 7‒10. As we are unpersuaded, however, that the Board misapprehended or overlooked the items identified by Patent Owner in construing “bidirectional accounts,” we are unpersuaded that our analysis of Dalzell and “bidirectional accounts” set forth on pages 28 to 29 of the Final Written Decision should be modified in any way. See Dec. 29 (“[W]e find that a more logical reading of paragraph 59 of Dalzell is that a buyer, from a particular account, can add a seller feature to that particular account, without the need to create a whole new account. Such a finding is supported by extensive analysis and testimony by Dr. Sadeh-Koniecpol, with explicit citations to Dalzell, which we find credible, reasonable, and persuasive. Ex. 1002 ¶¶ 147-164 (citing Ex. 1006 ¶¶ 9, 27, 49, 57, 61, 82, 85, 87, 132, 163, Figs. 1A, 1B).”)” slip op. at 9
Claim construction§ 103 obviousnessPatents in suitUS 8,396,808 - Target Corporation v. Destination Maternity CorporationRehearing grantedPTAB · Feb 12, 2015 · IPR2014-00509 · APJ Lora M Green · IPR · Rehearing
The Board granted Target’s request for rehearing of the denial of institution, for the reasons given in the related IPR2014-00508 decision.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“our Decision Denying Joinder of the instant proceeding with IPR2013-00533 (Paper 18), as well as our Decision Denying Institution of Inter Partes Review (Paper 19). Paper 20 (“Request for Rehearing”). Patent Owner, Destination Maternity Corporation, was authorized to file an Opposition (Paper 22), to which Petitioner was authorized to file a Reply (Paper 23). For the reasons discussed in the Decision Granting Petitioner’s Request for Rehearing in related IPR2014-00508 (Paper 28), we grant the Request for Rehearing.” slip op. at 2
None
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.