- LG Electronics, Inc. v. Constellation Designs, LLCRehearing deniedPTAB · Aug 15, 2023 · IPR2022-01549 · APJ Brent M Dougal · IPR · Rehearing
The Board denied LG Electronics’ rehearing request, leaving in place its decision denying institution because the Petition did not explain how De Gaudenzi teaches maximizing parallel decode capacity.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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. Thus, a request for rehearing is not an opportunity to present new arguments or evidence or merely to disagree with the panel’s assessment of the arguments or weighing of the evidence. With this in mind, we address the arguments presented in turn.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“In our Decision, we faulted the Petition for “not sufficiently identify[ing] how De Gaudenzi1 teaches the ‘maximize’ limitation in the independent claims.” Dec. 17. For example, the Petition asserts that De Gaudenzi1 teaches constellation optimization by assignment of labels, but then when explaining how, only states that De Gaudenzi1 “discloses a labelling rule,” that “can be ‘Gray labelling’/‘Gray mapping,’ or ‘the pseudo-Gray labellings.’” Pet. 61; see also Dec. 13–14 (summarizing and quoting the positions in the Petition). As a result, we determined that the Petition “does not sufficiently explain why the existence of a labeling rule maximizes parallel decode capacity,” and that “the record lacks evidence of, and it is Petitioner’s burden to explain, how predetermined constellation point labels are assigned to maximize parallel decode capacity as required by the claim.” Dec. 16, 17.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“attempts to improperly supplement the Petition by advancing two new arguments in the Request: 1) that Gray mapping is “the only specific example labeling scheme disclosed by the ’980 Patent as ‘maximize[ing] the PD capacity’ used in ‘[a]ll the PD optimized PAM constellations.’ EX1001, 10:18-20;” and 2) that “Patent Owner’s expert, Dr. Caire, in his own work (EX1013 cited by De Gaudenzi1 and Petition) states that ‘we conjecture that Gray labeling maximizes BICM capacity.’ EX1013, 6.” Req. 12. Neither of these arguments are in the Petition. The Request does not cite to the Petition in making these arguments. The Request does later cite to pages 14 and 63 of the Petition, implying support for these arguments. However, neither page makes these arguments, or even cites to the portions of the references cited in the Request. Thus, we do not consider these new arguments, as Petitioner has not shown they were previously presented in the Petition.” slip op. at 3
NonePatents in suitUS 10,567,980 - Berkeley Lights, Inc. v. The University Of British ColumbiaRehearing deniedPTAB · Jul 20, 2023 · IPR2021-01249 · APJ Christopher L Ogden · IPR · Rehearing
The Board denied Berkeley Lights’ rehearing request, finding no abuse of discretion in its prior decision that claims 1, 6, 11, 16, 19, 24, 26, 27, and 30 were not shown unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(d) (2022). There is an abuse of discretion if we have made “a clear error of judgment in weighing relevant factors or in basing [our] decision on an error of law or on clearly erroneous factual findings.” Bayer CropScience AG v. Dow AgroSciences LLC, 851 F.3d 1302, 1306 (Fed. Cir. 2017) (quoting Mentor Graphics Corp. v. Quickturn Design Sys., Inc., 150 F.3d 1374, 1377 (Fed. Cir. 1998)). In a request for rehearing, “[t]he burden of showing a 1 We further refer to Patent Owner’s Response (Paper 18, “PO Resp.”), Petitioner’s Reply to the Patent Owner Response (Paper 22, “Pet. Reply”), and Patent Owner’s Sur-reply (Paper 29, “PO Sur-reply”). 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). slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“light of the background knowledge in the art. In particular, we found that Petitioner had not adequately shown that the background knowledge in the art would have been sufficient to inform a person of ordinary skill in the art how to apply the techniques such as “laser tweezers” that Dimov mentions briefly, in a way that would have allowed further analyses of cells outside Dimov’s device. See Dec. 29–31. We also found that Petitioner had not persuasively shown that modifying Dimov’s device to make its trenches accessible with a micropipette was within the background knowledge in the art at the time of the claimed invention. See Dec. 31–34.” slip op. at 4
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“Petitioner points to only one brief mention, in its Petition, of piercing the top layer of Dimov’s device to retrieve cells with a micropipette. Id. at 6 (citing Pet. 40). That argument was not backed by any evidence other than a conclusory statement by Dr. Meinhart repeating the argument in the Petition. Pet. 40; Ex. 1002 ¶ 120. We do not credit that testimony because it lacks factual support. Xerox Corp v. Bytemark, Inc., IPR2022-00624, Paper 9 (PTAB Aug. 24, 2022) (precedential) (the testimony of a declarant that merely repeats, verbatim, conclusory assertions from a petition, without citing additional supporting evidence or providing technical reasoning to support the testimony, is entitled to little weight). In particular, to the extent that Petitioner argues on rehearing that Dimov’s top layer could have been pierced successfully by a micropipette because it was only 40 microns thick, Petitioner did not properly make this argument during trial or provide adequate evidentiary support.” slip op. at 6
- Strike new argumentNew argument disregardedDecided for patent owner
“Although Dr. Meinhart briefly mentions this in his declaration (see Ex. 1039 ¶ 192), Petitioner has not shown that it made this argument during trial, except to the extent that Petitioner improperly incorporated it by reference from Dr. Meinhart’s declaration. See Reply 24 (citing Ex. 1039 ¶¶ 190–196); 37 CFR § 42.6(a)(3). In any event, we do not credit Dr. Meinhart’s testimony on this point because he provides no factual support. See Ex. 1039 ¶ 192; 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). As Patent Owner pointed out in its Sur-Reply, Dr. Meinhart acknowledged at deposition that increasing the spot size would have reduced the lateral gradient force of the levitation laser. PO Sur-reply 23 (citing Ex. 2013, 344:18–345:5). We agree with Patent Owner that “Dr. Meinhart . . . did not consider how this reduction in force would have affected the laser’s ability to levitate a cell in Park’s well successfully (especially with cultured cells through Park’s recirculation pattern).” Id.” slip op. at 12
§ 103 obviousnessPatents in suitUS 10,087,408 - PNC Bank N.A. v. United Services Automobile AssociationRehearing deniedPTAB · Mar 8, 2023 · IPR2021-01077 · APJ Juliet Mitchell Dirba · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving in place the final written decision finding claims 1–18 unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD FOR REHEARING A 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 a motion, an opposition, a reply, or a sur-reply.” 37 C.F.R. § 42.71(d). “The burden of showing a decision should be modified lies with the party challenging the decision.” Id.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“misapprehended or overlooked matters relevant to whether an ordinary artisan would have reasonably expected success in combining Garcia and Randle. Req. 1–5. We have reviewed and carefully considered all of the arguments presented, but determine Patent Owner fails to show that the Decision misapprehended or overlooked any material arguments or evidence. To provide context for our discussion, we begin with a targeted summary of the Decision, and then we turn to Patent Owner’s specific arguments.” slip op. at 2
§ 103 obviousnessPatents in suitUS 10,621,559 - Apple Inc. v. Identity Security LLCRehearing deniedPTAB · Dec 15, 2022 · IPR2022-00171 · APJ Sharon Fenick · IPR · Rehearing
The Board denied Apple’s rehearing request, leaving the denial of institution for claims 1–4, 12, and 13 unchanged because Apple showed no abuse of discretion or overlooked matter.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. THE REQUEST FOR REHEARING On request for rehearing, “[t]he burden of showing a 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, a reply, or a surreply.” Id. Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”” slip op. at 2
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“conclusions on the basis that Dr. Russ’s testimony is conclusory. Id. at 11. We disagree. We indicated in the Decision Denying Institution that Dr. Neuman’s testimony is conclusory. Dec. 22. For instance, Dr. Neuman testifies that the modifications that would have been needed for Petitioner’s proposed combination would have been “straightforward.” Ex. 1003 ¶ 81. Dr. Neuman’s testimony, however, is simply a conclusory statement without persuasive, supporting explanation or evidence. Id. As we indicated in the Decision Denying Institution, “Petitioner does not indicate or provide evidence supporting that the proposed modifications would have been made without introducing complexities.” Dec. 24. “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Decision to Institute as relating to only convenience. Req. 1–2, 8–11. In the Decision Denying Institution, we explained that Petitioner’s reasons to combine are insufficient because “Petitioner does not address the full teachings of Gullman.” Dec. 22, 25. We stated “[c]ontrary to Petitioner’s assertion (Pet. 33; Ex. 1003 ¶ 81) and consistent with Patent Owner’s position and Dr. Russ’s testimony that Gullman’s system eliminates the risk of the biometric template and input from being stolen during transmission (Ex. 2001 ¶ 119), Gullman describes its system as ‘secure,’ providing ‘secure identification,’ and, importantly, as providing ‘[t]ransmission security.’” Dec. 22–23 (citing Ex. 1004, 6:46–56). We particularly noted (id. at 23) Gullman’s teachings as follows: The method and apparatus of the present invention have significant advantages over known security systems. Reliable and secure identification is provided which eliminates the need for the user to memorize a code or carry a printed memorandum of the code. Transmission security is provided which is convenient, secure and useful on existing access devices of host systems in current use. In particular, the method and apparatus obviate the need for specially-designed hardware additions or modifications to existing access devices. Ex. 1004, 6:46–56. As we noted in the Decision to Institute, the Petition did not address Gullman’s teaching that its system provides “significant advantages” over known, more complex systems, which might have led an ordinarily skilled artisan away from using Padgett’s more complicated hashing process. Dec. 23–24.” slip op. at 4
§ 103 obviousnessPatents in suitUS 8,020,008 - Samsung Electronics America, Inc. v. Prisua Engineering Corp.Rehearing deniedPTAB · Mar 16, 2021 · IPR2017-01188 · APJ Barbara A Parvis · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding it had not shown that the Board overlooked or misapprehended its constitutional challenges.
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 specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id. 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 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” slip op. at 2
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“Furthermore, the Federal Circuit’s decision in Arthrex addressed the first challenge. See 941 F.3d at 1337. As Patent Owner acknowledges (PO Reh’g Req. 11–12), the second challenge also has been addressed. See Ethicon Endo-Surgery, Inc. v. Covidien LP, 812 F.3d 1023, 1028–1033 (Fed. Cir. 2016). Accordingly, we decline to consider Patent Owner’s constitutional challenges any further.” slip op. at 5
NonePatents in suitUS 8,650,591 - ZTE (USA), Inc. / LG Electronics Inc. v. Cywee Group Ltd.Rehearing deniedPTAB · Nov 4, 2020 · IPR2019-01203 · APJ Christopher L Ogden · IPR · Rehearing
The Board denied CyWee’s rehearing request, leaving intact its decision allowing joined petitioner LGE to oppose CyWee’s revised motion to amend.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). A 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.” Id.” slip op. at 3
- PTAB / AIA Trials › Motions to amend / substitute claimsDecided for petitioner
“In our Rehearing Decision, we determined that “the adversarial system is better served if we allow a Petitioner to raise [statutory, regulatory, or patentability] issues in response to CyWee’s Revised Motion to Amend.” Reh’g Dec. 8. Therefore, we held that LGE may present arguments and evidence, independently from ZTE, in response to CyWee’s Revised Motion to Amend, and that LGE may request an oral hearing limited solely to the issues raised in the Revised Motion to Amend. Id. at 9.” slip op. at 3
NonePatents in suitUS 8,441,438 - ZTE (USA), Inc. / LG Electronics Inc. v. Cywee Group Ltd.Rehearing deniedPTAB · Nov 4, 2020 · IPR2019-00143 · APJ Christopher L Ogden · IPR · Rehearing
The Board denied CyWee’s rehearing request, leaving in place its decision allowing joined petitioner LGE to oppose the Revised Motion to Amend.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). A 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.” Id.” slip op. at 3
NonePatents in suitUS 8,441,438 - PTAB · Sep 15, 2020 · IPR2020-00282 · APJ Christopher L Ogden · IPR · Rehearing
The Board denied Samsung’s rehearing request, leaving in place the denial of institution because the petition did not show a reasonable likelihood of proving any challenged claim unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“a party requests rehearing on a decision on whether to institute inter partes review, we “review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c) (2019). There is an abuse of discretion if we have made “a clear error of judgment in weighing relevant factors or in basing [our] decision on an error of law or on clearly erroneous factual findings.” Bayer CropScience AG v. Dow AgroSciences LLC, 851 F.3d 1302, 1306 (Fed. Cir. 2017) (quoting Mentor Graphics Corp. v. Quickturn Design Sys., Inc., 150 F.3d 1374, 1377 (Fed. Cir. 1998)). In a request for rehearing, “[t]he 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).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We disagree. Nowhere in the cited passages in the Petition does Samsung argue that we should construe the term “row wrap-around connections” according to the explicit construction that Samsung now suggests for the plain and ordinary meaning. See Pet. 10–11, 25–30. Rather, Samsung argued that “Petitioners do not believe any term requires explicit construction.” Pet. 10–11. In the Reply, Samsung argued that all of the terms in the challenged claims should be construed according to their plain and ordinary meaning. See Reply 1, 4–5. However, apart from arguing that Samsung had proposed construing limitation 1C in the co-pending district court proceeding according to its plain and ordinary meaning,3 Samsung did not propose any specific construction for the phrase “row wrap-around connection,” or point to any evidence as to what the ordinary and customary meaning of that phrase was to a person of ordinary skill in the art. Therefore, we decline to adopt Samsung’s new proposed construction on rehearing.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We determined that Samsung had not provided sufficient evidence of its proposed motivation to combine the two references. See Dec. 16 (“[N]either Samsung nor Dr. Wolfe supports this conclusion with any evidence on the preliminary record.” (citing In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016); 35 U.S.C. § 322(a)(3))). In particular, we found that “Dr. Wolfe does not explain how or why the combination of Barkan and Tagg would minimize RC delay or allow for the use of lengthier columns and rows of electrodes, or cite to any facts, data, or authorities to support that opinion.” Dec. 17. We stated that “there is no evidence in the record suggesting that RC delay was a recognized problem . . . or that a person of ordinary skill in the art would have understood that a connection to both sides of a row of electrodes would be a solution to that problem.” Id. We also stated that Dr. Wolfe does not “provide any detail as to how a person of ordinary skill in the art would have modified Barkan’s leads 160 to incorporate external connections such as those in Tagg.” Id. (citing Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017)).” slip op. at 13
Claim construction§ 103 obviousnessPatents in suitUS 7,821,502 - Comcast Cable Communications, LLC v. Rovi Guides, Inc.Rehearing deniedPTAB · May 29, 2020 · IPR2019-01413 · APJ Karl D Easthom · IPR · Rehearing
The Board denied Rovi Guides’ rehearing request, leaving institution of inter partes review of claims 1–22 in place because the request showed no matters misapprehended or overlooked.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“institute an inter partes review, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d)” slip op. at 2
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), did not warrant terminating or staying this case. Dec. 26–27. Specifically, we explained that, according to Arthrex, “no constitutional infirmity [exists] in an institution decision.” Id. at 27 (quoting Arthrex, 941 F.3d at 1340) (alteration in Decision). We also explained that we generally do not stay cases pending an appeal to the Federal Circuit or the Supreme Court. Id.” slip op. at 2
NonePatents in suitUS 9,232,254 - GN Hearing A/S v. Oticon A/SRehearing deniedPTAB · Apr 16, 2019 · IPR2017-01927 · APJ Terrence W Mcmillin · IPR · Rehearing
The Board denied Oticon’s rehearing request, leaving claims 2 and 7 unpatentable based on the Dodge and Saltykov showing.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Decision is set forth in 37 C.F.R. § 42.71(d), which provides that a 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 a motion, an opposition, or a reply.” The party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“presented earlier in this proceeding—the Board improperly relied on a combination of the embodiments of Dodge. Request 2 (“The Board misapprehended the disclosure of various embodiments in Dodge and overlooked the complete lack of a motivation for the new combination of Dodge’s various embodiments.”), 4–5 (“The Board misapprehended the disclosure of Dodge and overlooked the lack of support in the record for a combination of multiple embodiments in Dodge’s figures.”), 6 (“There is no embodiment in Dodge that includes both a smooth, gradual curve on the first surface and an edge with a cross-sectional angle of less than ninety degrees.”), 12 (“The record is devoid of any support for an alleged combination of Dodge’s various embodiments.”). In its Request, Patent Owner fails to show that the Board misapprehended or overlooked these arguments earlier in the course of this proceeding. See generally Request. To the contrary and as noted above, Patent Owner failed to address the teachings of Figures 3 and 4 of Dodge and failed to address the combination of the teachings of the embodiments shown in those figures with the other teachings and embodiments in Dodge. Instead, Patent Owner ignored Figures 3 and 4 of Dodge in its Response to the Petition (see Paper 10, 29–34) and never contended it was improper to rely on Figures 3, 4, 5, and 6 of Dodge for teaching the elements of claims 2 and 7, as Petitioner did in its Reply (see Paper 14, 24–26) and the Board did in its Institution Decision (see Paper 7, 25–27). Patent Owner had notice that Figures 3 and 4 (and Figures 5 and 6) of Dodge were being relied upon and cited against claims 2 and 7 and, as also noted above, was given an opportunity file a Sur-Reply. In its Sur-Reply, Patent Owner acknowledged that Figures 3, 4, 5, and 6 of Dodge were being relied upon and cited against claims 2 and 7, but failed to provide any argument as to why Figures 3, 4, 5, and 6 of Dodge when considered together did not teach or suggest all the limitations relating to the claimed slit configuration. Paper 21, 23. At this stage of these proceedings, it is too late for Patent Owner to introduce and rely on new arguments.” slip op. at 6
§ 103 obviousnessPatents in suitUS 8,494,204
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.