- Banilla Games, Inc. v. Savvy Dog Systems, LLCInstitution deniedPTAB · Nov 19, 2020 · CBM2020-00014 · APJ Kevin W Cherry · CBM · Institution
The Board denied institution because the remaining claims did not establish that the patent claims a financial product or service, as required for CBM review.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2018). For reasons that follow, we determine that Petitioner has failed to show that the challenged patent qualifies as a covered business method patent. Accordingly, we decline to institute a covered business method patent review of the challenged claims.” slip op. at 2
- BurdenDecided for patent owner
“We agree with Patent Owner that the limitations “determining a winning combination” and “testing the game field . . . to ensure that a winning combination more valuable . . .” are not financial in nature. Beginning with “winning combination,” we agree with Patent Owner that “winning,” by itself, is not necessarily monetary in nature. Prelim. Resp. 28. Indeed, other games include the step of determining whether a combination is a “winning combination” or not without necessarily involving any kind of prize or payout. See id. at 29–30. Instead, as is shown in the ’223 patent, some additional step after the determination of who won is necessarily if there is going to be some monetary payout corresponding to the win. See Ex. 1001, Fig. 6 (showing Step 630 of “Redeem Payout and Credit Balance”), Fig. 8 (showing Step 820 of “Redeem Payout and Credit Balance”), 6:34–40 (explaining a player “may” redeem points earned in the game for cash). Petitioner identifies nothing in the specification requiring that money be paid for just winning. Moreover, the ’223 patent makes clear that the games are intended broadly for “entertainment” and “amusement” and not just for gambling. See id. at 1:13–15 (explaining patent is related to “amusement and entertainment electronic gaming”). As Patent Owner explains, the ’223 patent expressly discusses the use of the games in Ohio, which prohibits gambling, but permits the use of games of skill for entertainment purposes. See Prelim. Resp. 52–58 (discussing Ohio’s laws in detail); Ex. 1001, 1:18–33 (describing Ohio’s laws prohibiting gambling, but allowing “games of skill”). Thus, at best, “winning combination” relates only to the possibility that a monetary payout could be received, not that a player necessarily will receive anything of monetary value for playing the game. This possibility is insufficient to meet the financial product or service requirement. See Unwired Planet, 841 F.3d at 1382 (noting “it cannot be the case that a patent covering a method and corresponding apparatuses becomes a CBM patent because its practice could involve a potential sale of a good or service” and “[i]t is not enough that a sale has occurred or may occur, or even that the specification speculates such a potential sale might occur”).” slip op. at 10
Discretionary denialPatents in suitUS 7,736,223 - PTAB · Oct 2, 2020 · IPR2019-01539 · APJ Barry L Grossman · IPR · Rehearing
The Board denied rehearing and left in place the denial of institution, finding the Fintiv factors favored discretionary denial under § 314(a).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): (d) Rehearing. . . . 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. Petitioner asserts that “under NHK Spring, the Board here abused its § 314(a) discretion because it lacked an independent reason for denying review beyond the existence of a related district court action.” Req. Reh’g 3. According to Petitioner, “NHK Spring does not give the Board authority to deny institution solely or primarily because a related district court action could potentially resolve the overlapping invalidity disputes before a final decision by the Board.” Id. We disagree. Petitioner has provided no persuasive authority supporting its interpretation of NHK Spring. Binding precedent, discussed below, is contrary to Petitioner’s argued interpretation.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“7. Conclusion Under Fintiv, the Board takes “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv, Paper 11 at 6. Fintiv factor 1 weighs evenly for each party. Fintiv factor 2 weighs moderately in favor of exercising our discretion to not institute a trial. Fintiv factor 3 weighs strongly in favor of denying institution and avoiding duplication at PTAB of discovery and other work by the parties and the Court. Fintiv factor 4 weighs in favor of discretionary denial of an inter partes review. Fintiv factor 5 weighs in favor of discretionary denial. Fintiv factor 6 favors discretionary denial. Thus, based on this analysis, we determine under the particular circumstances of this case, the interests of efficiency and integrity of the patent system tilt toward invoking our discretionary authority under § 314(a) to deny institution of the Petition. Based on our analysis, Petitioner has not shown that we abused our discretion in denying the Petition. Accordingly, the request for rehearing is denied.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“7. Conclusion Under Fintiv, the Board takes “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv, Paper 11 at 6. Fintiv factor 1 weighs evenly for each party. Fintiv factor 2 weighs moderately in favor of exercising our discretion to not institute a trial. Fintiv factor 3 weighs strongly in favor of denying institution and avoiding duplication at PTAB of discovery and other work by the parties and the Court. Fintiv factor 4 weighs in favor of discretionary denial of an inter partes review. Fintiv factor 5 weighs in favor of discretionary denial. Fintiv factor 6 favors discretionary denial. Thus, based on this analysis, we determine under the particular circumstances of this case, the interests of efficiency and integrity of the patent system tilt toward invoking our discretionary authority under § 314(a) to deny institution of the Petition. Based on our analysis, Petitioner has not shown that we abused our discretion in denying the Petition. Accordingly, the request for rehearing is denied.” slip op. at 13
Discretionary denial - Choirock Contents Factory Co., Ltd. v. Spin Master Ltd.All claims unpatentablePTAB · Sep 24, 2020 · IPR2019-00900 · APJ Neil T Powell · IPR · Final written decision
Claims 1–20 are unpatentable under § 103 over Aprile and Shannon; the Board did not reach the other asserted grounds.
RulingsFinal written decision- Skill levelSkill level board ownOther
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation and internal quotation marks omitted). Based on the full record before us, we determine that one of ordinary skill in the art “would have a bachelor’s degree in mechanical engineering or a related field and at least three years of experience in toy design.” This level of skill in the art is consistent with the disclosure of the ’073 patent and the prior art of record.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“According to the applicable standard, claim terms “are generally given their ordinary and customary meaning” as understood by a person of ordinary skill in the art in question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). Extrinsic evidence is “less significant than the intrinsic record in determining ‘the legally operative meaning of claim language.’” Phillips, 415 F.3d at 1317. Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. America Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Our analysis below does not require construing any claim term to resolve the parties’ dispute. Accordingly, we do not expressly construe any claim term.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“b. Analysis Considering the record as a whole, Petitioner’s evidence and arguments provide rational underpinning for its contentions that claims 1–20 would have been obvious in view of Aprile and Shannon. Weighing the parties’ evidence and arguments, Petitioner persuades us that a person of ordinary skill in the art would have had motivation to modify Shannon’s toy to have a magnetically released latch like Aprile’s. Additionally, Petitioner persuades us that there would have been a reasonable expectation of success for such a modification.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“We also do not agree with Patent Owner’s assertion that Shannon teaches away from using a magnetically released fastener like Aprile’s. PO Resp. 23–29. A reference teaches away “when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Mouttet, 686 F.3d 1322, 1333– 34 (Fed. Cir. 2012)); DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006) (“We will not read into a reference a teaching away from a process where no such language exists.”). A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Fulton further explains [O]ur case law does not require that a particular combination must be the preferred, or the most desirable, combination described in the prior art in order to provide motivation for the current invention. “[T]he question is whether there is something in the prior art as a whole to suggest the desirability, and thus the obviousness, of making the combination,” not whether there is something in the prior art as a whole to suggest that the combination is the most desirable combination available. 391 F.3d at 1200. Additionally, “obviousness must be determined in light of all the facts, and there is no rule that a single reference that teaches away will mandate a finding of nonobviousness. Likewise, a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006).” slip op. at 28
Patent outcomesUS 9,868,073 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,868,073 - Choirock Contents Factory Co., Ltd. v. Spin Master Ltd.All claims unpatentablePTAB · Sep 23, 2020 · IPR2019-00897 · APJ Hyun J Jung · IPR · Final written decision
Claims 1–5 are unpatentable as obvious based on Tomiyama alone, Shannon modified by Tomiyama, and Shannon, Tomiyama, and Aprile.
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“8. Weighing the Graham Factors Based on the full record before us, we find that (1) Petitioner’s” slip op. at 87
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“8. Weighing the Graham Factors Based on the full record before us, we find that (1) Petitioner’s” slip op. at 87
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“filed a Petition (Paper 1, “Pet.”), requesting institution of an inter partes review of claims 1–5 of U.S. Patent No. 8,500,508 B2 (Ex. 1001, “the ’508 patent”). Concurrently with the Petition, Petitioner also filed a “Motion for Joinder to Related Inter Partes Review of U.S. Patent No. 8,500,508 ([Mattel, Inc. v. Spin Master Ltd.,] IPR2018-01672) Under 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b).” Paper 3. Spin Master Ltd. (“Patent Owner” or “Spin Master”) filed a Preliminary Response (Paper 14) and an Opposition to Petitioner’s Motion for Joinder to IPR2018-01672 (Paper 7). Petitioner thereafter filed a Reply to Patent Owner’s Opposition (Paper 8), and with our authorization (Paper 15), Petitioner further filed a Reply to Patent Owner’s Preliminary Response (Paper 16). Pursuant to 35 U.S.C. § 314, we instituted an inter partes review of the ’508 patent and at the same time denied the Motion for Joinder. Paper 17 (“Dec. to Inst.”).” slip op. at 2
Patent outcomesUS 8,500,508 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,500,508 - PTAB · Sep 16, 2020 · IPR2018-00755 · APJ Hyun J Jung · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1, 3, 5, 7, 10, and 25 unpatentable under each of three §103 combinations; claim 8 was not shown unpatentable.
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); see also Req. Reh’g 1 (quoting from the rule). Therefore, Patent Owner bears the burden of establishing that we misapprehended or overlooked the matters that it requests that we review.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“Also, the body of independent claims 1 and 25 recite structurally complete inventions, and do not rely on the word “token,” from the preamble, for any antecedent basis of terms in the body of the claim. The deletion of this preamble language would not affect the structure of the claimed inventions and confirms that the language of the preamble, which names the machine or manufacture claimed as a token, and states its intended use, is not limiting. See Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358-59 (Fed. Cir. 2010). Further, because the bodies of the claims, reciting an “integrated circuit chip” (claim 1) and “storage section” (claim 25), fully define the structure of the claimed tokens and do not rely on the “token” name of the invention to recite the limitations of their structural components, the term the meaning of the claims. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). Because the term “token” does not require construction, and is of no significance in determining the meaning of the claim language, we did not adopt Patent Owner’s additional limitation of a token being required to begin play of a game. B. Whether the Board misapprehended Lee and the showing that the Board” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableDecided for petitioner
“Final Written Decision, which finds that each of the combinations (Levy and Lee, Katoh and Lee, and Mawle and Lee) discloses the limitations of claims 1, 3, 5, 7, 10, and 25 (Final Dec. 19–33, 36–48, 50–62, 64–65), that one of ordinary skill in the art would have combined the references in the manner asserted by Petitioner and as claimed (id. at 34–35, 48–49, 62–65), and thus,” slip op. at 6
Claim construction§ 103 obviousnessPatents in suitUS 7,338,377 - PTAB · Sep 16, 2020 · IPR2018-00754 · APJ Hyun J Jung · IPR · Rehearing
The Board denied Patent Owner’s rehearing request and left in place its determination that claim 9 was unpatentable over White and Lee under § 103(a).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The party filing a request for rehearing of a final written 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); see also Req. Reh’g 1 (quoting from the rule). Therefore, Patent Owner bears the burden of establishing that we misapprehended or overlooked the matters that it requests that we review.” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“In our Final Written Decision, we explained that the Specification does not support Patent Owner’s proposed interpretation of the term “token” as being disk-shaped, and determined that “we need only determine that the term ‘token’ does not include an ‘action figure.’” Final Dec. 11–12. The full record indicated to us that, even if we adopted Patent Owner’s proposed interpretation of “token” as an “item required to begin play of a game,” Petitioner had still shown by a preponderance of the evidence that claim 9 is unpatentable over White and Lee. As described in our Final Written Decision, we found that “the teachings of White related to tag 5 in base portion 4a of character 4 used in the toy of Figure 1 support Petitioner’s argument that character 4 teaches a ‘game piece with built-in IC chip.’” Final Dec. 32. We understood that “Petitioner is proposing to modify White so that tag 5 is detachable and results in a ‘token with built-in IC chip,’” so that “the modified White character 4 would have base 4a with detachable tag 5 received in recessed portion 3.” Id. at 37 (citing Pet. 65–66; Dec. to Inst. 23; Pet. Reply 24); see also id. at 41–42 (determining that” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“We also found that “Lee . . . supports Petitioner’s declarant testimony that one of ordinary skill in the art would have modified White so that its tag 5 is detachable in the same manner as Lee so that ‘various action figures can be used with the token.’” Final Dec. 42 (citing Ex. 1002 ¶ 150). Petitioner, thus, showed by a preponderance of the evidence that Lee teaches or suggests a method of attaching a component to a figure that one of ordinary skill in the art would have applied to White’s tag 5 for the reason asserted by Petitioner.” slip op. at 9
Claim construction§ 103 obviousnessPatents in suitUS 7,001,276 - 3shape A/S / 3shape Inc. v. Align Technology, Inc.No claims unpatentablePTAB · Jul 16, 2020 · IPR2019-00151 · APJ Neil T Powell · IPR · Final written decision
Claims 15–30 were not shown unpatentable because Petitioner failed to establish the required motivation to combine Picard with Ishihara or a reasonable expectation of success combining Gmitro with Tiziani.
RulingsFinal written decision- BurdenNot shown unpatentable
“After considering the evidence and arguments of the parties, we determine that Petitioner has not proven by a preponderance of the evidence that claims 15–30 of the ’448 patent are unpatentable. See 35 U.S.C. § 316(e). We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“We agree that the law does not require Petitioner to show a person of ordinary skill in the art would have viewed the proposed modification as the most preferred or desirable approach. The law does, however, require Petitioner to show not only that a person of ordinary skill in the art could have combined the references in the proposed manner, but that a person of ordinary skill in the art would have had a reason to combine the references’ teachings in the proposed manner. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis added) (citation omitted) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”). Here, Petitioner does not do so.” slip op. at 25
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Patent Owner persuades us that, in Picard, the axial chromatism of lens 15 constitutes a key feature of its system, not a problem. PO Resp. 27– 31. We credit the unrebutted testimony of Mr. Aikens that Picard’s “basic principle of operation, and purported point of novelty, requires focusing light at different planes via axial chromatic aberration,” provided by lens 15. Ex. 2019 ¶ 107. Mr. Aikens explains that Picard leverages the axial chromatism of lens 15 to ascertain the position of an object along the z-axis. Id. ¶¶ 68–70, 107–116. Consistent with this, Dr. Sergienko testifies that “[t]he axial chromatism in Picard is the main feature to achieve this section,” elaborating that “[t]hey’re arranging the device to provide the longitudinal dynamics, because longitudinal dynamics, it’s information about position of the focal planes along the axis longitudinally.” Ex. 2012, 85:21–86:10.” slip op. at 24
- Strike new argumentNew argument disregardedDecided for patent owner
“have foreseen Patent Owner’s argument does not justify its insufficient explanation and lack of evidence in the Petition. As Patent Owner argues, its ITC brief, filed approximately a month before the Petition was filed, provided effective notice of Patent Owner’s position that there would have been issues using Gmitro’s fiber-optic bundle to carry the plurality of light beams used in Tiziani. Id. Moreover, even without such express notice, Petitioner should have recognized the requirement that its Petition must “identif[y], in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3). The Petition was also required to include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing laws, rules, and precedent.” 37 C.F.R. § 42.22(a)(2). The Petition fails to meet these requirements with respect to its assertion that a person of ordinary skill in the art would have had a reasonable expectation of success in combining Gmitro’s fiber-optic bundle with Tiziani’s confocal imaging system and microlens array. It is “improper for a reply to present new evidence (including new expert testimony) that could have been presented in a prior filing.” Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 74– 75 (citing Genzyme Therapeutic Prods. Ltd. v. Biomarin Pharm. Inc., 825 F.3d 1360, 1365–69 (Fed. Cir. 2016)). Petitioner does not provide any persuasive reason that the evidence it presented with its Reply to bolster its assertion of a reasonable expectation of success could not have been provided with the Petition. Accordingly, we find that Petitioner exceeded the proper scope of a reply with its newly presented arguments on pages 24– 27 of the Reply and with the its new citations of portions of the ’448 Patent (Ex. 1001, 7:53–8:3, 5:62–65, 5:39–41, 5:45–51, Fig. 1A), Picard (Ex. 1003, 25–26), Gmitro’s title (Ex. 1005, title), Dr. Sergienko’s new testimony (Ex. 1037 ¶¶ 22–28), and Exhibits 1038 and 1039.” slip op. at 44
Patent outcomesUS 8,638,448 not shown unpatentable§ 103 obviousnesscites PhillipsPatents in suitUS 8,638,448 - 3shape A/S / 3shape Inc. v. Align Technology, Inc.Some claims unpatentablePTAB · Jul 16, 2020 · IPR2019-00152 · APJ Neil T Powell · IPR · Final written decision
Claims 15 and 20 are unpatentable as anticipated by Picard; claims 1–14 and 16–19 were not shown unpatentable on the asserted grounds.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In view of our analysis below, we need not construe expressly any claim language to resolve the parties’ patentability dispute. The Petition’s first challenge asserts obviousness of claims 1, 2, 7, 8, 9, and 14 over Picard and Ishihara. Pet. 18–39. As explained in greater detail below in Section III.B.3, this challenge rests on a contention that it would have been obvious to modify Picard to use telecentric optics like those taught in Ishihara. Id. at 32–38. With respect to the challenge of claims 1, 2, 7, 8, 9, and 14 over Picard and Ishihara, the Petition does not explain any theory of unpatentability that does not rely on the assertion that it would have been obvious to modify Picard with telecentric optics based on Ishihara. Id. at 18–39. Thus, the merits of this challenge inextricably depend on whether Petitioner has demonstrated adequately that it would have been obvious to modify Picard with telecentic optics based on Ishihara. For the reasons explained below in Section III.B.3, Petitioner has not done so. Therefore, Petitioner’s challenge of claims 1, 2, 7, 8, 9, and 14 over Picard and Ishihara fails for reasons unrelated to claim construction.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We agree that the law does not require Petitioner to show a person of ordinary skill in the art would have viewed the proposed modification as the most preferred or desirable approach. The law does, however, require Petitioner to show not only that a person of ordinary skill in the art could have combined the references in the proposed manner, but that a person of ordinary skill in the art would have had a reason to combine the references’ teachings in the proposed manner. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis added) (citation omitted) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”). Here, Petitioner does not do so.” slip op. at 25
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Thus, Picard expressly discloses that the embodiment discussed in connection with Figure 8 includes the components and features shown and discussed in connection with Figure 3, plus all of the components and features shown and discussed in connection with Figure 8. Accordingly, the Petition cites to Picard’s discussions of Figures 3 as providing details regarding certain components and features that Picard discloses are also included in the embodiment of Figure 8. Pet. 20–23, 26–30, 39–41. In view of Picard’s express teaching to combine the features of Figures 3 and 8 and explanation of how they should be combined (Ex. 1003, 24:9–17) and Petitioner’s reliance on these same features to show anticipation (Pet. 20–23, 26–30, 39–41), we find no merit in Patent Owner’s argument that Petitioner does not identify any motivation to combine Picard’s discussions of Figures 3 and 8.11 See Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1344 (Fed. Cir. 2016) (“[A] reference need not always include an express discussion of the actual combination to anticipate. . . . Instead, a reference may still anticipate if that reference teaches that the disclosed components or functionalities may be combined and one of skill in the art would be able to implement the combination.”) (citing Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F. 3d 1376, 1383 (Fed. Cir. 2015)). In sum, Petitioner demonstrates by a preponderance of the evidence that Picard anticipates claims 15 and 20.” slip op. at 32
- Strike new argumentNew argument disregardedDecided for patent owner
“have foreseen Patent Owner’s argument does not justify its insufficient explanation and lack of evidence in the Petition. As Patent Owner argues, its ITC brief, filed approximately a month before the Petition was filed, provided effective notice of Patent Owner’s position that there would have been issues using Gmitro’s fiber-optic bundle to carry the plurality of light beams used in Tiziani. Id. Moreover, even without such express notice, Petitioner should have recognized the requirement that its Petition must “identif[y], in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3). The Petition was also required to include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing laws, rules, and precedent.” 37 C.F.R. § 42.22(a)(2). The Petition fails to meet these requirements with respect to its assertion that a person of ordinary skill in the art would have had a reasonable expectation of success in combining Gmitro’s fiber-optic bundle with Tiziani’s confocal imaging system and microlens array. It is “improper for a reply to present new evidence (including new expert testimony) that could have been presented in a prior filing.” Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 74– 75 (citing Genzyme Therapeutic Prods. Ltd. v. Biomarin Pharm. Inc., 825 F.3d 1360, 1365–69 (Fed. Cir. 2016)). Petitioner does not provide any persuasive reason that the evidence it presented with its Reply to bolster its assertion of a reasonable expectation of success could not have been provided with the Petition. Accordingly, we find that Petitioner exceeded the proper scope of a reply with its newly presented arguments on pages 24– 27 of the Reply and with the its new citations of portions of the ’901 Patent (Ex. 1001, 5:46–48, 5:52–58, 6:2–6, 7:62–8:13, Fig. 1A), Picard (Ex. 1003, 25–26), Gmitro’s title (Ex. 1005, title), Dr. Sergienko’s new testimony (Ex. 1037 ¶¶ 23–28), and Exhibits 1038 and 1039. For all of the foregoing reasons, Petitioner has not carried its burden of showing that claims 1, 2, 7–9, 14, 15, and 20 would have been obvious over Tiziani, Gmitro, and Ishihara.” slip op. at 47
Patent outcomesUS 9,615,901 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 9,615,901 - Choirock Contents Factory Co., Ltd. v. Spin Master Ltd.Rehearing deniedPTAB · Jun 22, 2020 · IPR2019-00901 · APJ Hyun J Jung · IPR · Rehearing
The Board denied Spin Master’s rehearing request and left institution of IPR on claims 1–5 in place, finding no overlooked or misapprehended matter or abuse of discretion.
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 believed 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). We review our Decision under an abuse of discretion standard. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if based on an erroneous interpretation of law, if a factual finding is not supported by” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“(PTAB Apr. 2, 2019), Petitioner and the prior petitioner have a relationship (i.e., that Petitioner is a real party in interest (“RPI”), or is in privy, with the prior petitioner), and that relationship is relevant to the analysis of General Plastic factor 1. Decision 13. However, as also noted in the Decision, General Plastic does not mandate any particular weighing of the factors or that the Board deny institution when any specific factors weigh in favor of a patent owner. Id. at 14–15. Instead, General Plastic explicitly states that “there may be circumstances where multiple petitions . . . against the same claims of a patent should be permitted, and that such a determination is dependent on the facts at issue in the case.” General Plastic at 18. As indicated in the Decision: [I]n addition to the factors addressed above, Choirock’s Petition was filed on March 29, 2019, and a joint motion to terminate IPR2018-01672 was filed on April 16, 2019, which was granted on April 29, 2019. The sequence of events leading to the termination of IPR2018-01672 indicates that Patent Owner knew of Choirock’s instant Petition and, thus, should have filed updated mandatory notices in that proceeding to make the Board aware that there was a petition related to IPR2018- 01672, so that the Board could have better determined if termination as to all parties in IPR2018-01672 was appropriate. Patent Owner also filed its mandatory notices in this case the day before the parties in IPR2018-01672 filed a joint motion to terminate. Thus, based on the facts of this proceeding and IPR2018- 01672, we are not convinced that Choirock is engaged in abusive, strategic serial petitioning, the situation meant to be addressed by General Plastic. On balance, the factors weigh in favor of declining to exercise our discretion under § 314(a) to deny institution. Further, the facts of this proceeding and IPR2018-01672 do not persuade us that Patent Owner has been prejudiced. Decision 15 (emphasis added). Thus, despite the fact that there is a RPI or privy relationship between Petitioner and the prior petitioner, we considered the aforementioned facts of this proceeding, and concluded that General Plastic factor 1 did not weigh in favor of exercising our discretion to deny institution. Id. at 13, 15.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“The present paper presents a separate and distinct basis for denial of institution than application of the General Plastic factors. Whether a petitioner should be permitted to obtain institution of an IPR substantially the same as a prior-filed IPR—to which the party was an RPI or privy—is a fundamental basis for denial of institution, as discussed in detail below. Because Choirock was an RPI and privy with Mattel for the Mattel IPR, Choirock should be prohibited from obtaining institution of a second IPR. For purposes of a clear record, Spin Master brings a second basis for denial of institution under either or both of §§ 314(a) and 325(d) due to Choirock being an RPI and privy with Mattel for the Mattel IPR. As such, the arguments and evidence presented in this paper should be fully considered by the Board. (Paper 14 at 2). The Board overlooked this argument. In the Institution Decision, the Board only provided an analysis applying the General Plastic factors but failed to consider whether or not an RPI/privy should be permitted to file a substantially identical IPR Petition. (Paper 17 at 10-16). Reh. Req. 7–8 (emphasis added). We do not agree that we overlooked this argument. Instead, in the Decision, we rejected this argument and refused to adopt a per se rule that an RPI or privy of a previous petitioner is automatically barred from filing a substantially identical petition. Decision 13 (“Patent Owner does not point us to any rule or case law that prevents an RPI or privy of a previous petitioner, who is not barred under § 315(b), from filing its own petition or that prevents an RPI or privy from joining a proceeding.”).” slip op. at 10
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“On September 26, 2019, we issued a Decision Granting Institution of Inter Partes Review. Paper 17 (“Decision” or “Dec.”). In the Decision, we: (1) instituted an IPR of the ’508 patent; and (2) denied Petitioner’s Motion for Joinder because the proceeding which Petitioner sought to join (i.e., IPR2018-01672) had been terminated and was no longer pending before the Board.4 Id. at 2.” slip op. at 3
Discretionary denialPatents in suitUS 9,975,058 - Choirock Contents Factory Co., Ltd. v. Spin Master Ltd.Rehearing deniedPTAB · Jun 22, 2020 · IPR2019-00900 · APJ Hyun J Jung · IPR · Rehearing
The Board denied Spin Master’s rehearing request, leaving institution in place because it had not shown that the Board misapprehended or overlooked an issue or abused its discretion.
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 believed 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 3
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“(PTAB Apr. 2, 2019), Petitioner and the prior petitioner have a relationship (i.e., that Petitioner is a real party in interest (“RPI”), or is in privy, with the prior petitioner), and that relationship is relevant to the analysis of General Plastic factor 1. Decision 13. However, as also noted in the Decision, General Plastic does not mandate any particular weighing of the factors or that the Board deny institution when any specific factors weigh in favor of a patent owner. Id. at 14–15. Instead, General Plastic explicitly states that “there may be circumstances where multiple petitions . . . against the same claims of a patent should be permitted, and that such a determination is dependent on the facts at issue in the case.” General Plastic at 18. As indicated in the Decision: [I]n addition to the factors addressed above, Choirock’s Petition was filed on March 29, 2019, and a joint motion to terminate IPR2018-01672 was filed on April 16, 2019, which was granted on April 29, 2019. The sequence of events leading to the termination of IPR2018-01672 indicates that Patent Owner knew of Choirock’s instant Petition and, thus, should have filed updated mandatory notices in that proceeding to make the Board aware that there was a petition related to IPR2018- 01672, so that the Board could have better determined if termination as to all parties in IPR2018-01672 was appropriate. Patent Owner also filed its mandatory notices in this case the day before the parties in IPR2018-01672 filed a joint motion to terminate. Thus, based on the facts of this proceeding and IPR2018- 01672, we are not convinced that Choirock is engaged in abusive, strategic serial petitioning, the situation meant to be addressed by General Plastic. On balance, the factors weigh in favor of declining to exercise our discretion under § 314(a) to deny institution. Further, the facts of this proceeding and IPR2018-01672 do not persuade us that Patent Owner has been prejudiced. Decision 15 (emphasis added). Thus, despite the fact that there is a RPI or privy relationship between Petitioner and the prior petitioner, we considered the aforementioned facts of this proceeding, and concluded that General Plastic factor 1 did not weigh in favor of exercising our discretion to deny institution. Id. at 13, 15.” slip op. at 6
- Other 314aDecided for petitioner
“We do not agree that we overlooked this argument. Instead, in the Decision, we rejected this argument and refused to adopt a per se rule that an RPI or privy of a previous petitioner is automatically barred from filing a substantially identical petition. Decision 13 (“Patent Owner does not point us to any rule or case law that prevents an RPI or privy of a previous petitioner, who is not barred under § 315(b), from filing its own petition or that prevents an RPI or privy from joining a proceeding.”). After considering Patent Owner’s arguments for rehearing, we determine Patent Owner has not carried its burden of showing that we misapprehended or overlooked any matter or that the Decision granting institution of inter partes review was an abuse of discretion.” slip op. at 11
Discretionary denialPatents in suitUS 9,868,073
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.