- PTAB · Nov 16, 2018 · IPR2017-02046 · APJ Kevin C Trock · IPR · Rehearing
The Board denied the petitioner’s rehearing request, leaving in place the denial of institution for claims 1–24 because it found no abuse of discretion in its analysis of “network access.”
RulingsRehearing decision- RehearingRehearing, deniedDenied
“What Petitioner describes, however, is not an “abuse of discretion,” but rather our determination based on the evidence and the ordinary and customary meaning of the term “network access.” As we explained in our Decision Denying Institution of Inter Partes Review, consistent with the “broadest reasonable construction” standard, “we assign claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention, in the context of the entire patent disclosure.” Inst. Dec. 6 (citing In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007)).” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“[i]ndependent Claims 1, 15, and 24 separately recite, and therefore, distinguish between, “a request from the user to access a content provider web site” and “network access.” These claims also require that the historic information retrieved for the user include “times and locations of network access and number of previous network accesses by the network access device. Id. (citing Ex. 1001, cols 12–14 (emphasis added)). Thus, in light of this record, we are unpersuaded that we erred. Instead, our decision was based on a reasoned analysis of the evidence and applied the ordinary and customary meaning of the term “network access,” as would be understood by one of ordinary skill in the art at the time of the invention, in the context of the entire patent disclosure. Therefore, Petitioner has failed to establish persuasively, that our decision not to institute an inter partes proceeding was based on an erroneous interpretation of law, not supported by substantial evidence, or an unreasonable judgment weighing relevant factors.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“but rather our determination based on the evidence and the ordinary and customary meaning of the term “network access.” As we explained in our Decision Denying Institution of Inter Partes Review, consistent with the “broadest reasonable construction” standard, “we assign claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention, in the context of the entire patent disclosure.” Inst. Dec. 6 (citing In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007)).” slip op. at 4
Claim constructionPatents in suitUS 7,657,594 - PTAB · Oct 18, 2018 · IPR2018-00701 · APJ Terrence W Mcmillin · IPR · Rehearing
The Board denied rehearing and left institution denied for claims 1–9 and 12 because the petition did not sufficiently establish motivation to combine Barratt and Calderbank.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. See 37 C.F.R § 42.71(c). An abuse of discretion occurs 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 Star Fruits S.N.C. v. U. S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R § 42.71(d); accord Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must, in relevant part, “specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Petitioner’s arguments with these principles in mind.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“a combination of Barratt and Calderbank. See DDI 5, 7. Petitioner argued motivation to combine on page 34 of the Petition (Paper 1, “Pet.”) which stated, “while Barratt does not disclose the specific mathematical operations that are performed on the orthogonal training sequences to calculate a remote terminal’s spatial signature in Barratt’s ‘calibration mode,’ a POSA would have recognized that this spatial signature should be calculated using well-known cross-correlation techniques, such as those described in Calderbank.” Pet. 34. In response to this argument, Patent Owner asserted, “the premise of Petition’s motivation to combine—that Barratt requires calculating spatial signatures from orthogonal training sequences but does not explain how to do so—is not supported by the Petition’s allegations and is instead false.” Paper 8 (Preliminary Response), 15–16. Barratt does not use “orthogonal training sequences to calculate a remote terminal’s spatial signature in Barratt’s ‘calibration mode.’” See Ex. 1003, 16:31–17:67 (discussing calibration mode using “predetermined calibration signals”); see also id. at 18:50–67 (discussing use of orthogonal training sequences in another “closed loop” embodiment). Barratt does disclose the specific mathematical operations that are used to calculate a remote terminal’s spatial signature in Barratt’s “calibration mode.” See id. at 16:60–17:32. Thus, as we determined in the Decision Denying Institution, the purported gap in the teachings of Barratt that Petitioner relies on as the basis for providing the motivation to combine Calderbank with Barratt does not exist. DDI 10. Institution was denied because we determined Petitioner failed to sufficiently establish a motivation to combine the relevant teachings of the” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“a combination of Barratt and Calderbank. See DDI 5, 7. Petitioner argued motivation to combine on page 34 of the Petition (Paper 1, “Pet.”) which stated, “while Barratt does not disclose the specific mathematical operations that are performed on the orthogonal training sequences to calculate a remote terminal’s spatial signature in Barratt’s ‘calibration mode,’ a POSA would have recognized that this spatial signature should be calculated using well-known cross-correlation techniques, such as those described in Calderbank.” Pet. 34. In response to this argument, Patent Owner asserted, “the premise of Petition’s motivation to combine—that Barratt requires calculating spatial signatures from orthogonal training sequences but does not explain how to do so—is not supported by the Petition’s allegations and is instead false.” Paper 8 (Preliminary Response), 15–16. Barratt does not use “orthogonal training sequences to calculate a remote terminal’s spatial signature in Barratt’s ‘calibration mode.’” See Ex. 1003, 16:31–17:67 (discussing calibration mode using “predetermined calibration signals”); see also id. at 18:50–67 (discussing use of orthogonal training sequences in another “closed loop” embodiment). Barratt does disclose the specific mathematical operations that are used to calculate a remote terminal’s spatial signature in Barratt’s “calibration mode.” See id. at 16:60–17:32. Thus, as we determined in the Decision Denying Institution, the purported gap in the teachings of Barratt that Petitioner relies on as the basis for providing the motivation to combine Calderbank with Barratt does not exist. DDI 10. Institution was denied because we determined Petitioner failed to sufficiently establish a motivation to combine the relevant teachings of the” slip op. at 3
§ 103 obviousnessPatents in suitUS 6,611,231 - Samsung Electronics America, Inc. v. Prisua Engineering Corp.Rehearing grantedPTAB · Sep 27, 2018 · IPR2017-01188 · APJ Matthew R Clements · IPR · Rehearing
The Board granted Patent Owner’s rehearing request and authorized it to re-file its Sur-Reply by September 28, 2018.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“reply “as a matter of right,” and does not address explicitly whether a Patent Owner may file a sur-reply in a case that was instituted prior to the Trial Practice Guide Update. Because the Trial Practice Guide Update did not authorize Patent Owner to file its Sur-Reply “as a matter of right,” we are not persuaded that we erred in determining that Patent Owner’s Sur-Reply was unauthorized.” slip op. at 5
- Strike new argumentGranted
“Notwithstanding all of the above, and out of an abundance of fairness to Patent Owner, Patent Owner is authorized to re-file its Sur-Reply no later than Friday, September 28, 2018.” slip op. at 6
NonePatents in suitUS 8,650,591 - Unified Patents Inc. v. Kamatani Cloud, LLCNo claims unpatentablePTAB · Sep 19, 2018 · IPR2017-01370 · APJ Barbara A Parvis · IPR · Final written decision
The Board held claims 1, 2, 5, 7–13, 15–18, 21, 23–28, 30–32, 34, 35, and 38–41 not shown unpatentable under the three § 103 grounds.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“d) Conclusion—“detecting whether the measurement data are capable of being measured” Based on the entire trial record before us, for the reasons given, we are persuaded that Patent Owner’s proposed construction is consistent with the plain and ordinary meaning of the claim language as understood by a person of ordinary skill in the art in the context of the ’940 Patent Specification. See Ex. 1001, 5:40–54, 6:3–13, 7:1–4, Figs. 3, 4. Accordingly we determine that the broadest reasonable interpretation of detecting if data are “capable of being [measured/processed]” or “can be processed” is detecting “if any instrument has the functional ability to measure measurement data,” as proposed by Patent Owner. PO Resp. 14– 21.15 We determine no further express construction is necessary for the detecting recitations in the independent claims.” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Person of Ordinary Skill in the Art Petitioner proposes that a person of ordinary skill in the art would have had a degree in computer science, electrical engineering, or computer engineering, or equivalent experience, and at least two years of experience in remote monitoring and control systems. Pet. 7 (citing Ex. 1007 ¶ 16). At the preliminary stage, Patent Owner agreed with Petitioner’s proposal (Prelim. Resp. 8) and Patent Owner has not subsequently disputed Petitioner’s proposal or offered an alternative (see generally PO Resp.). Because we find Petitioner’s statement of the level of skill in the art (Pet. 7; Ex. 1007 ¶ 16) consistent with the level of skill implied by the prior art of record, we adopt Petitioner’s statement of the level of skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of skill in the art).” slip op. at 25
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Mr. Zatarain testifies “[i]n my opinion, detecting the off-on status of an instrument satisfies a PHOSITA’s understanding of the term ‘capable’ as well as relevant dictionary definitions for that term.” Ex. 1030 ¶ 84. Mr. Zatarain’s testimony then repeats the aforementioned definitions (id.), which we find are consistent with Patent Owner’s proposed construction. Mr Zatarain also testifies that an instrument that is not powered on “lacks the ability to perform any of its general functions.” Id. ¶ 85. But Mr. Zatarain’s testimony does not provide sufficient explanation as to why the meaning of the words “capable” and “available” overlap, as Petitioner contends (Pet. Reply 22–26). Additionally, Mr. Zatarain’s testimony is conclusory. See Ex. 1030 ¶¶ 84–85. We, instead, credit the testimony of Dr. Zavadsky that Patent Owner’s proposed construction is consistent with the understanding of one of ordinary skill in the art. See, e.g., Ex. 2006 ¶¶ 28, 30–36.” slip op. at 23
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Petitioner’s contentions are premised on its claim construction contentions, which we did not adopt. More specifically, for the reasons discussed supra in Section II.A.2, we are persuaded that the broadest reasonable interpretation of detecting if data are “capable of being [measured/processed]” is detecting “if any instrument has the functional ability to measure measurement data,” as proposed by Patent Owner. PO Resp. 14–21. Petitioner relies on two paragraphs of Miyajima describing determining whether an instrument is powered on and, if so, if it is processing another client’s data. Pet. 38–45 (citing e.g., Ex. 1005 ¶¶ 47, 55). This description, however, merely is of detecting the instrument’s availability. We do not find that Miyajima’s description of determining whether an instrument is powered on and, if so, if it is processing another client’s data (Ex. 1005 ¶¶ 47, 55) teaches “detecting whether the measurement data are capable of being measured by any measurement means in the said server apparatus” (emphasis added) in accordance with our construction, i.e., we do not find Miyajima teaches detecting “if any instrument has the functional ability to measure measurement data.”” slip op. at 31
Patent outcomesUS 6,873,940 not shown unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 6,873,940 - Amazon.Com, Inc. / Amazon Digital Services, Inc. et al. v. Uniloc Luxembourg S.A.Some claims unpatentablePTAB · Aug 1, 2018 · IPR2017-00948 · APJ David C Mckone · IPR · Final written decision
Claims 1–8, 18–22, and 25 are unpatentable; claims 9–17, 23, and 24 are not unpatentable; substitute claims 26–28 are denied.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The “verify” limitation of claim 1 expressly recites a check based “at least in part on a device identity.” The specification describes such a check as occurring at steps 15 and 16, not step 13. Steps 15 and 16 check whether the device identity is on record and, in response to that check, allow a digital product to be used on a device (steps 17, 18) or start a process to authorize the device. Id. at 5:1–9, 5:13–18. Although steps 15 and 16 are not expressly described as a verification of validity, steps 15 and 16, not step 13, logically track and most closely align with the language of claim 1’s “verify” and “in response to” limitations. Thus, the specification supports Petitioner’s view that the “verify” limitation can encompass checking whether unique device information is reflected in a database as authorized for a license.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“claim 1 is limiting, with Patent Owner arguing that it is and Petitioner arguing that it is not. Id. at 12–13. Patent Owner now argues that “[t]he preambles [of claims 1 and 22] expressly state that the claimed system and method are both directed to ‘adjusting’ the license in terms of its allowed copy count, which the preambles expressly define.” PO Resp. 9. We explained in the Institution Decision, however, that even if the preamble is limiting (e.g., by virtue of it providing antecedent basis (“at least one allowed copy count”) for “set the allowed copy count”), the language “[a] system for adjusting a license for a digital product over time” constitutes a 2 The preamble of claim 25 is not similar to that of claims 1 and 22, and Patent Owner does not propose an “adjusting” limitation for the language “in response to the device identity not being on the record, set the allowed copy count to a first upper limit for a first time period after an initial authorization of the digital product,” as recited in claim 25. statement of intended purpose and does not purport to modify any particular claim language, such as “set the allowed copy count.” Dec. 13–14. Patent Owner argues that our preliminary construction would vitiate the purpose of the preamble language and that, instead, “the claim limitations must be understood in light of the ‘adjusting’ context introduced in the preamble.” PO Resp. 9. However, “the mere fact that a structural term in the preamble is part of the claim does not mean that the preamble’s statement of purpose or other description is also part of the claim.” Marrin v. Griffin, 599 F.3d 1290, 1295 (Fed. Cir. 2010). Rather, the Federal Circuit has held that “a preamble is not limiting ‘where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.’” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). Thus, an intended purpose set forth in a claim preamble and the context that purpose might provide, without more, are not limiting. Moreover, as Petitioner points out, “the claimed invention could be used to adjust an allowed device limit, at least to a higher limit, thereby satisfying the intended purpose of the invention.” Reply 4.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“On the complete record, we find that DeMello’s authentication, which checks a Passport ID and machine ID against stored records to authenticate a device, discloses executable code for the processor to “verify that a license data associated with the digital product is valid based at least in part on a device identity generated by sampling physical parameters of the given device,” as recited in claim 1 and similarly recited in claim 22.” slip op. at 29
- Obviousness (§103) › KSR rationalesUnpatentableNot shown unpatentableMixed
“The Federal Circuit has cautioned that “references to ‘common sense’—whether to supply a motivation to combine or a missing limitation—cannot be used as a wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the prior art references specified.” Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016). That is not the case here. As explained above, both the ’960 patent and DeMello describe precise numbers of days as arbitrary and that their respective inventions contemplate other numbers. We find that it would have been reasonable for the skilled artisan to have selected six days, as recited in claim 6, in light of DeMello’s disclosure.” slip op. at 45
Patent outcomesUS 8,566,960 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Alice · Bilski · Berkheimer · GrahamPatents in suitUS 8,566,960 - Fedex Corporation v. Intellectual Ventures II LLCSome claims unpatentablePTAB · Jul 20, 2018 · IPR2017-00729 · APJ Barbara A Parvis · IPR · Final written decision
Claims 1–17 are unpatentable as obvious over Rappaport, Rappaport and DeLorme, or Rappaport and Wright; claims 18–24 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“have held at least a Bachelor’s Degree in Electrical Engineering, Computer Engineering, Computer Science, or an equivalent, and two or more years of industry experience in the field of mobile communications, or the academic equivalent thereof.” Pet. 8. Petitioner bases its argument on the testimony and experience of Dr. Lavian. Id. (citing Ex. 1005 ¶¶ 44–49). Patent Owner does not dispute Petitioner’s statement. See generally PO Resp. For the 3 The complete record does not include evidence of objective indicia of nonobviousness or secondary considerations. reasons given by Petitioner (Pet. 8; Ex. 1005 ¶¶ 44–49), we adopt Petitioner’s statement of the level of skill in the art.” slip op. at 9
- Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed
“Although Petitioner directs us to a portion of the ’581 Patent that Petitioner contends corresponds to the field management program, i.e., “Ex. 1001, 7:50–8:12” (Pet. 10), Petitioner does not identify teachings in Rappaport corresponding to the algorithm in the ’581 Patent, which includes “[t]he program would prompt the user for input of data related to the problem.” Ex. 1001, 7:54–55. Petitioner’s assertion that no substantial differences exist between “Rappaport’s memory, processor, and SitePlanner® program and the memory, processor, and field data management program” of the ’581 Patent is conclusory. Pet. 51. Although Petitioner includes references back to its contentions for other independent claims that do not require a prompt, Petitioner does not provide any explanation regarding these other teachings and the prompt requirement of claim 18. Id. As discussed above with respect to independent claims 1 and 7, Rappaport teaches repeating the cycle of making measurements, receiving optimized predictions, and reconfiguring the network. See, e.g., Ex. 1002, 19:1–8. However, Petitioner has not shown sufficiently that this teaching, or any other teaching in Rappaport, is the same or equivalent to a program that prompts the user to input data. Dr. Lavian’s testimony (see, e.g., Ex. 1006 ¶ 205) is conclusory and substantially the same as Petitioner’s contentions. Dr. Lavian testifies that the program in Rappaport when executed “is substantially equivalent” to that of the ’581 Patent. Id. Because Dr. Lavian does not disclose sufficiently the underlying facts or data on which his opinion is based, including what portions of Rappaport are substantially equivalent to the prompt in the ’581 Patent, we give his testimony (Ex. 1006 ¶ 205) little or no weight. 37 C.F.R. § 42.65(a).” slip op. at 45
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“Although Petitioner directs us to a portion of the ’581 Patent that Petitioner contends corresponds to the field management program, i.e., “Ex. 1001, 7:50–8:12” (Pet. 10), Petitioner does not identify teachings in Rappaport corresponding to the algorithm in the ’581 Patent, which includes “[t]he program would prompt the user for input of data related to the problem.” Ex. 1001, 7:54–55. Petitioner’s assertion that no substantial differences exist between “Rappaport’s memory, processor, and SitePlanner® program and the memory, processor, and field data management program” of the ’581 Patent is conclusory. Pet. 51. Although Petitioner includes references back to its contentions for other independent claims that do not require a prompt, Petitioner does not provide any explanation regarding these other teachings and the prompt requirement of claim 18. Id. As discussed above with respect to independent claims 1 and 7, Rappaport teaches repeating the cycle of making measurements, receiving optimized predictions, and reconfiguring the network. See, e.g., Ex. 1002, 19:1–8. However, Petitioner has not shown sufficiently that this teaching, or any other teaching in Rappaport, is the same or equivalent to a program that prompts the user to input data. Dr. Lavian’s testimony (see, e.g., Ex. 1006 ¶ 205) is conclusory and substantially the same as Petitioner’s contentions. Dr. Lavian testifies that the program in Rappaport when executed “is substantially equivalent” to that of the ’581 Patent. Id. Because Dr. Lavian does not disclose sufficiently the underlying facts or data on which his opinion is based, including what portions of Rappaport are substantially equivalent to the prompt in the ’581 Patent, we give his testimony (Ex. 1006 ¶ 205) little or no weight. 37 C.F.R. § 42.65(a). In summary, Petitioner has not provided persuasive contentions identifying in Rappaport teachings for the “means for managing data collected at the field using the at least one handheld device responsive to program,” recited in claim 18. On this record, we are not persuaded Petitioner establishes by a preponderance of the evidence that claim 18 is unpatentable over Rappaport.” slip op. at 45
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner has shown that all the limitations of claim 1 are taught in Rappaport’s description with respect to two consecutive figures, i.e., Figures 9 and 10. Rappaport’s Figures 9 and 10 both pertain to a system with a handheld device that transmits field data to a remote server, consistent with Dr. Lavian’s testimony. Ex. 1006 ¶¶ 77, 80 (citing, e.g., Ex. 1002, (57), 1:12–18, 4:41–5:31, 18:7–18, 18:64–19:8, Figs. 1, 3, 9, 10). Even to the extent that these disclosures are of two separate embodiments, “[c]ombining two embodiments disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness.” Boston Sci. Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009). Consistent with Dr. Lavian’s testimony (Ex. 1006 ¶¶ 80–85), we find that it at least would have been obvious and predictable for a person having ordinary skill in the art to combine the functionality disclosed with respect to Figures 9 and 10 into a single handheld device that transmits measured field data to a remote server so that the technician could optimize on-site and on the fly. See, e.g., Ex. 1002, 18:7–18, 18:33–48, 18:64–19:8. Rappaport depicts handheld devices in Figures 1, 3, 9, and 10 and refers to each device as a “handheld computer.” See, e.g., Ex. 1002, 6:27–58, 9:26–36, 14:54–15:3, 16:56–65, 18:7–18, 18:64–19:8, Figs. 1, 3, 9, 10. Dr. Sharony’s testimony that the proposed combination is impractical because “the exemplary Palm IIIc handheld of Rappaport . . . only had one serial port” (Ex. 2008 ¶¶ 53–59) does not take into account the full disclosure of Rappaport including “many other portable handheld computers” that “could be used while staying within the spirit of the present invention” such as cellular phones, other PDAs running PalmOS and pocket or tablet personal computers (PCs) running the Windows OS or “another powerful OS.” See, e.g., Ex. 1002, 6:27–58; see also id. at 19:9–12 (“[T]hose skilled in the art will recognize that the invention can be practiced with considerable variation”).6 Additionally, Dr. Sharony’s testimony that the measurement device and the interface box must be connected “at the same time” (Ex. 2008 ¶ 53) is not commensurate with the scope of claim 1, which does not require simultaneous collection and transmission of field data.” slip op. at 24
Patent outcomesUS 8,494,581 mixed§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,494,581 - Fedex Corporation v. Intellectual Ventures II LLCRehearing deniedPTAB · Jul 17, 2018 · IPR2017-02030 · APJ Barbara A Parvis · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, finding no overlooked or misapprehended basis to authorize a motion to terminate the reexamination.
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. With this in mind, we address the arguments presented by Patent Owner.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for patent owner
“First, IV requested that the Board exercise its discretion under 35 U.S.C. § 315(d) and 37 C.F.R. § 42.122(a) to terminate the reexamination request because it was abusive to IV and an unmistakable attempt to circumvent General Plastic. Second, IV requested that the Board exercise its discretion under 35 U.S.C. § 325(d) to terminate the reexamination request because that request presented the same references and substantially the same arguments that FedEx presented in Case IPR2017-00729 and Case IPR2017-02030. Id. For the reasons that follow, we are not persuaded by Patent Owner’s contentions that we misapprehended or overlooked its arguments in connection with its request for authorization to file a motion to terminate. Id. at 1–8.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for patent owner
“First, IV requested that the Board exercise its discretion under 35 U.S.C. § 315(d) and 37 C.F.R. § 42.122(a) to terminate the reexamination request because it was abusive to IV and an unmistakable attempt to circumvent General Plastic. Second, IV requested that the Board exercise its discretion under 35 U.S.C. § 325(d) to terminate the reexamination request because that request presented the same references and substantially the same arguments that FedEx presented in Case IPR2017-00729 and Case IPR2017-02030. Id. For the reasons that follow, we are not persuaded by Patent Owner’s contentions that we misapprehended or overlooked its arguments in connection with its request for authorization to file a motion to terminate. Id. at 1–8.” slip op. at 4
Discretionary denialPatents in suitUS 8,494,581 - Fedex Corporation v. Intellectual Ventures II LLCRehearing deniedPTAB · Jul 17, 2018 · IPR2017-00729 · APJ Barbara A Parvis · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, finding no misapprehension or oversight concerning its denial of authorization to move to terminate the reexamination.
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. With this in mind, we address the arguments presented by Patent Owner.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for patent owner
“First, IV requested that the Board exercise its discretion under 35 U.S.C. § 315(d) and 37 C.F.R. § 42.122(a) to terminate the reexamination request because it was abusive to IV and an unmistakable attempt to circumvent General Plastic. Second, IV requested that the Board exercise its discretion under 35 U.S.C. § 325(d) to terminate the reexamination request because that request presented the same references and substantially the same arguments that FedEx presented in Case IPR2017-00729 and Case IPR2017-02030.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for patent owner
“First, IV requested that the Board exercise its discretion under 35 U.S.C. § 315(d) and 37 C.F.R. § 42.122(a) to terminate the reexamination request because it was abusive to IV and an unmistakable attempt to circumvent General Plastic. Second, IV requested that the Board exercise its discretion under 35 U.S.C. § 325(d) to terminate the reexamination request because that request presented the same references and substantially the same arguments that FedEx presented in Case IPR2017-00729 and Case IPR2017-02030.” slip op. at 4
Discretionary denialPatents in suitUS 8,494,581 - Samsung Electronics America, Inc. v. Prisua Engineering Corp.Rehearing deniedPTAB · Jul 9, 2018 · IPR2017-01188 · APJ Matthew R Clements · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, declining to retroactively deny institution or extend the statutory deadline for the final written decision.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Patent Owner’s argument is not persuasive because it is predicated on the false assumption that, if we cannot determine the scope of a claim for § 112 reasons, then we must find it unpatentable under § 112. We are, therefore, not persuaded that we misapprehended or overlooked Cuozzo when denying Patent Owner’s request to deny institution retroactively or to terminate this proceeding at this stage, or that “good cause” exists to deny institution retroactively or to terminate on this record.” slip op. at 7
- Director reviewOther
“The standard operating procedure exemplifies some of the reasons for which the Chief Judge may expand a panel. PTAB SOP 1, 3 (§ III.A). For example, an expanded panel may be appropriate when “[t]he proceeding or AIA Review involves an issue of exceptional importance” or when “[c]onsideration by an expanded panel is necessary to secure and maintain uniformity of the Board’s decisions.” Id. (§ III.A.1, 2). In this case, the Chief Judge has considered Patent Owner’s suggestion for an expanded panel, but has determined that an expanded panel is not warranted.” slip op. at 6
NonePatents in suitUS 8,650,591 - Quantificare, Inc. v. The Proctor & Gamble CompanyRehearing deniedPTAB · Jun 12, 2018 · IPR2017-02113 · APJ Jeffrey A Stephens · IPR · Rehearing
The Board denied rehearing, leaving in place the denial of institution because the Petition did not show a reasonable likelihood that the challenged claims were unpatentable on the asserted § 103 grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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. 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 Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Pet. 53–54. As an initial matter, as we explained in the Decision, this contention lacks sufficient “explanation, expert testimony, or other evidence” regarding: (1) how teachings from the references are combined or modified, (2) the reasons one of ordinary skill in the art would have combined or modified the teachings to arrive at the claimed invention, or (3) whether one of ordinary skill in the art would have been able to combine the teachings in the manner claimed.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Pet. 53–54. As an initial matter, as we explained in the Decision, this contention lacks sufficient “explanation, expert testimony, or other evidence” regarding: (1) how teachings from the references are combined or modified, (2) the reasons one of ordinary skill in the art would have combined or modified the teachings to arrive at the claimed invention, or (3) whether one of ordinary skill in the art would have been able to combine the teachings in the manner claimed.” slip op. at 12
- Expert testimonyPetitioner expert discountedOther
“Decision, including a reference to Lobo’s teaching of “human visual inspection,” and states that “[e]ach of these sentences of the Board are confirmed in writing as being erroneous by Dr. Niels Lobo himself (see attached Lobo Declaration).” Reh’g Req. 4. Petitioner’s Rehearing Request does not cite to or explain the significance of any particular paragraph of the Lobo Declaration. We have, however, reviewed the Lobo Declaration and do not find therein sufficient explanation of the Lobo patent’s reference to “human visual inspection” that persuades us the regions shown in Figure 13 of Lobo are determined electronically. The Lobo Declaration primarily consists of reproductions of Patent Owner’s Preliminary Response and the Decision, followed by conclusory assertions that the reproduced statements are erroneous. The Lobo Declaration does not cite specific portions of Lobo that support the declarant’s statements, other than a single reference to the “specification, the figures, the description, and even the title” of the reference. Ex. 1043 ¶ 8. The Lobo Declaration provides that “Lobo doesn’t specifically state that ‘human visual inspection’ is used with the wrinkle geography map to choose a bounding region for a grid used to analyze wrinkles within the grid,” but provides no other alternative explanation for Lobo’s teachings at column 24, lines 34–36. Ex. 1043 ¶ 7(f). Thus, we afford the Lobo Declaration little weight.2 In addition, the Lobo Declaration and its substance are not part of the Petition, and the Board could not have misapprehended or overlooked arguments that were not in the Petition. See 37 C.F.R. § 42.71(d) (“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 a motion, an opposition, or a reply.”).” slip op. at 5
§ 103 obviousnesscites KSRPatents in suitUS 6,571,003
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.