- SAP America, Inc. v. Lakshmi ArunachalamAll claims unpatentablePTAB · Dec 21, 2017 · CBM2016-00081 · APJ Kevin F Turner · CBM · Final written decision
Claims 20 and 21 are unpatentable under § 101 and § 103; the motion to amend proposing claims 22–49 is denied.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Petitioner argues that “[b]ased on the technologies disclosed in the ’506 patent, one of ordinary skill in the art at the time of the alleged invention would have had the equivalent of a Bachelor’s degree or higher in computer science or computer engineering, as well as at least 3–5 years of academic or industry experience in the relevant field.” Pet. 10 (citing Ex. 1002 ¶ 22). Although Patent Owner does not address the level of ordinary skill in its Patent Owner’s Response, Patent Owner does opine about the same in its Motion to Amend. Therein, Patent Owner argues that: a person of ordinary skill in the art in 1995 would have been a person who had a degree in computer science, or the equivalent of that degree, and some substantive experience with Web technologies then being developed and considered by persons then working on internet systems. [Ex. 2006, 23] It would have been very rare to find anyone to have had a computer degree and as much as three to five years of experience in the area of Web technology as of November 1995. (Id.) Mot. Amend 5–6. Based on the positions of Petitioner and Patent Owner, we find mostly agreement as to the level of skill of such ordinarily skilled artisans and we are persuaded that one of ordinary skill in the art at the time of the invention would have had the equivalent of a degree in computer science or computer engineering, as well as some substantive experience 29 with Web technologies then being developed and considered by persons then working on Internet systems. This level of skill is considered and applied in the grounds below.” slip op. at 29
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionNo construction neededOther
“networked object,” and that we “willfully left out ‘Individual’ and only construed ‘Network Object.’” PO Resp. 36. Patent Owner is correct that we did not construe “individual networked object.” The reason is that it is not a term recited in the challenged claims, nor claim 14, from which the challenged claims depend. We construed “networked object,” i.e., without “individual,” because it is a term recited in the claims. Patent Owner also argues that the proper construction of “networked object” is “the information entries and attributes in a DOLSIB [distributed on-line service information base].” Id. (citing Ex. 1001, 8:50–54). We do not agree. Although the specification of the ’506 Patent details that “[t]he networked object identity 11 identifies the information entries and attributes in the DOLSIB as individual networked objects,” that is not a definition of “network objects.” We continue to find that the broadest reasonable construction, in view of the specification, of “networked object” is “an object that operates within a network or transmitted over a network.” We are not persuaded that “individual networked object” need be construed because it is not a claim term, and we are not persuaded that every recitation of “networked object” must refer to an “individual networked object.” Patent Owner argues that we did not construe the claim term “attributes,” which should be understood as “characteristics of an object.” Id. at 36–37 (citing Ex. 1001, 4:45–58, 23:19–25). Petitioner counters that the passages cited by Patent Owner do not support the proffered definition, because those passages do not contain the word “attribute.” Pet. Reply 4. Although Patent Owner’s construction is not unreasonable, claim 14 already recites that the step of “associating an object identity with information entries and attributes,” so that “attributes” need not be referred to as “characteristics of an object,” since such an association is already directly recited in the claims. As such, we are not persuaded that the claim term “attributes” needs explicit construction. Similarly, Patent Owner argues that “information entries” should be construed as “values of the characteristics of an object.” PO Resp. 37 (citing Ex. 1001, 4:45–58, 23:19–25). Again, we find it unnecessary to tie “information entries” to an object, since the association is already provided 12 in claim 14. Therefore, we are not persuaded that the claim term “information entries” needs explicit construction. With respect to the claim term “virtual information store,” we construed that term as “an information store in which information entries and attributes are associated with a networked object identity,” as discussed above. Patent Owner argues that we have not given proper effect to the word “virtual,” arguing that the proper construction is “a transient information store that is temporarily created and which contains information entries and attributes associated with a networked object identity.” PO Resp. 39–41. Patent Owner cites to the specification of the ’506 Patent (Ex. 1001, 3:1–5, 8:47–54), and “[t]he IBM Computer Dictionary” (id.), but, as Petitioner points out, Patent Owner has not “submitted this dictionary as an exhibit or provided any further information to locate the dictionary.” Further, the sections of the ’506 Patent cited by Patent Owner are not explicit about the store being “transient” or “temporarily created;” this is an inference drawn by Patent Owner. See PO Resp. 40. The introduction of the terms “transient” and “temporarily” to the construction adds more ambiguity to the claim term because the specification of the ’506 Patent does not discuss how long any “virtual information store” would be stored or maintained. In addition, we are not persuaded that Patent Owner’s provision of affirmatively containing the information entries and attributes is necessary because having a store in which the information entries and attributes are associated with a networked object identity would have been understood by ordinarily skilled artisans as being a store containing those elements. 13 Therefore, we are not persuaded that the claim term “virtual information store” requires a different construction and we maintain the construction provided in the Institution Decision, which is reproduced above.” slip op. at 11
- BurdenUnpatentable
“not have been obvious to make any changes to Lawlor’s system,” and that “the whole purpose of Lawlor is to establish a system built upon an existing software and infrastructure that would require no changes.” PO Resp. 80–81 (emphasis in original). We do not agree. We agree with Petitioner that Patent Owner misinterprets Lawlor’s teachings, “improperly concluding that Lawlor teaches away from any combination or modification.” Pet. Reply 24 (emphasis in original). Lawlor explains that “[b]ecause the central computer interacts with the user's bank as a standard POS or ATM network node, no significant software changes are required at the banks’ computers,” demonstrating that Lawlor makes use of a standard ATM network and existing external systems without significant modification. Ex. 1004, Abstr. As explained by Dr. Sirbu, incorporation of techniques described in CORBA into Lawlor’s system would not require modification to the external systems of Lawlor or additional processing at the central computer of Lawlor. Ex. 1002 ¶ 72. Lawlor system does not restrict or disparage modification, and Patent Owner has not pointed out any portion that purportedly restricts or disparages modification. Patent Owner also argues that Lawlor does not disclose “an OSI Layer 7 application layer switch as is the VAN Switch in FIG. 5B.” PO Resp. 79. As discussed above, however, challenged claims 20 and 21 do not recite a VAN switch, and the only consideration of such a switch comes from Patent Owner’s claims constructions that we do not adopt. As such, we are persuaded that Petitioner has shown by a 45 preponderance of the evidence that claim 20 is unpatentable over the combination of Lawlor and CORBA, and that the subject matter of claim 21 is unpatentable over the combination of Lawlor, CORBA and Billings.” slip op. at 45
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“2. 37 C.F.R. § 42.221(a)(2)(i) Rule 221(a)(2)(i) requires that the amendments in a motion to amend must respond to a ground of unpatentability involved in the trial. Patent Owner’s new claims do not respond to any ground of unpatentability in the trial. Those grounds are based on 35 U.S.C. §§ 101, 103 and directed at claims 20 and 21. Pet. 28–73. Both claims 20 and 21 depend on claim 14 and the grounds of unpatentability consider all of the elements of claim 14. Thus, for example, new claim 25, which recites “[t]he apparatus of claim 14, wherein the user device is a multi-media device,” does not purport to demonstrate that such a claim brings the subject matter into the scope of § 101, nor that such a multi-media device would not be obvious over Lawlor, CORBA, and Billings. See Mot. Amend 9–17. Patent Owner’s analysis addresses claims 22–49 as a group and does not address all of the elements of the new claims. Id. Patent Owner also fails to indicate if any of the new claims include any feature of the challenged claims. For at least these reasons, we find that Patent Owner has not complied with the substantive requirements of 37 C.F.R. § 42.221(a)(2)(i). 3. 37 C.F.R. § 42.221(a)(2)(ii) and 35 U.S.C. § 326(d)(3) Rule 221(a)(2)(i) requires that the amendment may not seek to enlarge the scope of the claims of the patent. We also note that this rule is fully supported by 35 U.S.C. § 326(d)(3), which details that “[a]n amendment under this subsection may not enlarge the scope of the claims of the patent.” Patent Owner appears to take this rule as merely requiring that “the new claims do not enlarge the scope of any of the old claims.” Mot. Amend 3. 52 The “old claims,” however, are the only two claims existing in the ’506 Patent, namely claims 20 and 21. They are the “scope of the claims of the patent,” and the scope cannot refer to any claim that might have existed during the prosecution of the ’506 Patent. See Arlington Industries, Inc. v. Bridgeport Fittings, Inc., 345 F.3d 1318, 1329–30 (Fed. Cir. 2003). Therefore, we look to the scope of claims 20 and 21 to determine the scope of the claims of a patent. Proposed new claims in the Motion to Amend improperly enlarge the scope of claims 20 and 21. For example, new claim 27 recites “[t]he apparatus of claim 14, wherein the service is configurable specific to the context of a Web merchant.” This proposed claim is broader, in at least one aspect, than claims 20 and 21, which also depend from claim 14, because it contains none of the elements of claims 20 and 21, although it adds an additional element, i.e., “the service is configurable specific to the context of a Web merchant.” For at least these reasons, we find that Patent Owner has not complied with the substantive requirements of 37 C.F.R. § 42.221(a)(2)(ii) or 35 U.S.C. § 326(d)(3). 4. § 42.221(a)(3) and 35 U.S.C. § 326(d)(1)(B) Section (a)(3) of Rule 221 discusses that a patent owner must propose a reasonable number of substitute claims, and goes on to discuss that “[t]he presumption is that only one substitute claim would be needed to replace each challenged claim, and it may be rebutted by a demonstration of need.” The claims subject to the instant proceeding are claims 20 and 21, such that the normal presumption would be for the inclusion of two substitute claims. 53 Patent Owner does not address why the proposed 28 claims are a reasonable number of substitutes for the 2 challenged claims, so Patent Owner cannot be said to have rebutted the one for one presumption by any demonstration of need. We also note that this rule is fully supported by 35 U.S.C. § 326(d)(1)(B), which details that for the amendment of a patent, for each challenged claim, “a reasonable number of substitute claims” must be proposed. Petitioner points out that the meaning of “reasonable number of substitute claims” has been previously addressed by the Board, providing “in the absence of special circumstance, a challenged claim can be replaced by only one claim, and a motion to amend should, for each proposed substitute claim, specifically identify the challenged claim which it is intended to replace.” Opp. 1–2 (citing Idle Free at 5). Furthermore, as Petitioner addresses, Patent Owner has failed to identify which of the challenged claims are intended to be replaced by the new claims. Id. Patent Owner’s response appears to be that “PO does not propose a reasonable number of substitute claims, because it is not necessary.” PO Reply 2. This, however, is not responsive. For at least these reasons, we find that Patent Owner has not complied with the substantive requirements of 37 C.F.R. § 42.221(a)(3) or the statutory requirements of § 326(d)(1)(B). 5. 37 C.F.R. § 42.221(b)(1) Rule 221(b)(1) requires that a motion to amend must show the changes clearly and set for the support in the original disclosure of the patent for claim that is added. In the case of new claims 22–49, Patent Owner does 54 not indicate any changes from the claims subject to the present proceeding. The claims are indicated as being new, so that no changes from the pending claims are discussed at all. See Claim App’x. In addition, Patent Owner argues that written description support for the new claims can be found in a chart provided in a reexamination of the patent. Mot. Amend 3 (citing inter partes Reexamination Control No. 95/001,129). We note that such incorporation by reference is not permitted under our rules. 37 C.F.R. § 42.6(a)(3). As well, as Petitioner points out, Patent Owner has not demonstrated that the claims provided in the chart are the same as the new claims. Opp. 4. Given this deficit, Patent Owner cannot successfully meet the regulatory requirements under 37 C.F.R. § 42.221(a) or (b)(1) regarding written description support, based on the present record. Additionally, Patent Owner has failed to provide any mapping of the new claims to those old claims, and, as Petitioner points out, the Board determined during the cited inter partes reexamination that no written description support was provided for a number of limitations identical to those recited in the new claims. Id. (citing Ex. 1007, 32–36). For at least these reasons, we find that Patent Owner has not complied with the substantive requirements of 37 C.F.R. § 42.221(b)(1). 6. Conclusion As discussed above, Patent Owner has not demonstrated compliance with 37 C.F.R. §§ 42.221(a), 42.221(a)(2)(i), 42.221(a)(2)(i), 42.221(a)(3), or 42.221(b)(1) or 35 U.S.C. § 326(d)(1)(B) and (3). As such, Patent Owner has failed to meet the substantive requirements for a motion to amend.” slip op. at 52
Patent outcomesUS 7,340,506 unpatentableClaim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Enfish · KSR · GrahamPatents in suitUS 7,340,506 - Hamamatsu Corporation v. President & Fellows Of Harvard CollegeAll claims unpatentablePTAB · Nov 16, 2017 · IPR2016-01143 · APJ Jacqueline T Harlow · IPR · Final written decision
Claims 1, 2, 4–6, and 11 are unpatentable as anticipated by Uematsu; claim 3 is unpatentable as obvious over Uematsu.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“’446 patent would have had “at least a bachelor’s degree in material science, physics, or electrical engineering, and at least one year of work experience in semiconductor processing.” Pet. 7–8 (citing Ex. 1007 ¶ 15). Patent Owner does not dispute Petitioner’s proposal, or otherwise address the level of skill in the art at the time of invention of the ’446 patent in its Response. See generally, PO Resp. In addition, in its Preliminary Response, Patent Owner applies the level of skill in the art set forth in the Petition. Prelim. Resp. 6; Ex. 2001 ¶¶ 11–12. We agree with Petitioner that an artisan of ordinary skill at the time of invention of the ’446 patent would have had at least a bachelor’s degree in material science, physics, or electrical engineering, and at least one year of work experience in semiconductor processing, with the understanding that the level of skill is also reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). In addition, we have reviewed the credentials of Dr. Souri (Ex. 1007), and we consider him to be qualified to provide his opinion on the level of skill and the knowledge of a person of ordinary skill in the art at the time of the invention.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“On the record before us, we conclude that the term “undulating topography” should be afforded its plain and ordinary meaning, which encompasses a wavy surface, and permits, but does not require, the non-uniformity or irregularity of the individual features, within that topography. As an initial matter, we observe that Patent Owner’s contention that “undulating topography” requires non-uniformity and/or irregularity of the claimed submicron-sized features, is improper, as it was impermissibly raised for the first time during oral hearing. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012) (“No new evidence or arguments may be presented at the oral argument.”). Accordingly, we need not address this contention. Nevertheless, for the reasons set forth below, we determine that even had Patent Owner timely raised this argument, the broadest reasonable interpretation of “undulating topography” does not require that the claimed submicron-sized features be non-uniform or irregular.” slip op. at 10
- Prior constructionPrior construction not adoptedDecided for petitioner
“We also consider the district court’s construction of “undulating topography” as “arrangement of features of varying heights and widths” (Paper 23,2 22) in determining the broadest reasonable interpretation of that term.3 We observe, however, that we are “not generally bound by a prior” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We are not persuaded by Patent Owner’s arguments. As explained above, we conclude that the broadest reasonable interpretation of “undulating topography” encompasses a wavy surface, and permits, but does not require, non-uniformity or irregularity of the claimed submicron-sized 32 features. Furthermore, for the reasons set forth above, we find that Uematsu’s disclosure of a transition layer including “pyramids 11 having a regular width and largeness” formed on a silicon substrate (Ex. 1005, [0019]) satisfies the “undulating topography” requirement of claim 1. In particular, we find that the depiction of Uematsu’s pyramids in Figure 8 establishes that Uematsu teaches a wavy surface. Id. at Fig. 8. We also find, in accord with Dr. Souri’s testimony, that Working Example 1 of Uematsu “describes an undulating topography composed of pyramids that are ‘formed on a silicon substrate 3 having a front surface with a (100) plane.’” Ex. 1007 ¶ 39 (quoting Ex. 1005, [0019]).” slip op. at 32
Patent outcomesUS 7,884,446 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,884,446 - Sonos, Inc. v. D&M Holdings Inc.Institution deniedPTAB · Oct 5, 2017 · IPR2017-01044 · APJ Jon M Jurgovan · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–4, 10, 11, 13–20, and 25–27 were unpatentable over Deslippe.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and Preliminary Response, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to the challenged claims. Therefore, we do not institute an inter partes review as to the challenged claims of the ’294 patent.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“interpretation of “providing, for each group, a system control interface” as meaning that one system control interface can control multiple groups of multimedia devices. Pet. 6–7. Similarly, Petitioner’s challenge requires interpretation of claim 1’s language of “defining at least two groups” and “each group has a group leader” as meaning one group leader may control multiple groups. Patent Owner interprets this language to require a separate system control interface and group leader for each of multiple groups. Prelim. Resp. 28. We agree with Patent Owner and interpret the claim language as requiring the groups to have distinct system control interfaces and group leaders. In this regard, we can find no mention in the ’294 patent of a device serving as system control interface and group leader for multiple groups. Also, under similar facts in Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298−99 (Fed. Cir. 2015), the Federal Circuit construed claims reciting a “gateway,” “caching computer,” and “at least two other computers” to be four separate elements, finding the Board’s construction permitting the “two other computers” to include the “caching computer” unreasonably broad in light of the language of the claims and specification. Similarly, in the case of In re Smith International, Inc., No. 2016-” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)
“Claim 1 recites a “relative group leader” which, for reasons explained in Section II.A, supra, we interpret as a master multimedia device which is a member of a group, which controls slave multimedia devices within the group. Petitioner contends Deslippe’s master device 110 is a “relative group leader” as claimed. Pet. 22. However, as Patent Owner observes, “[t]he master console device 110 is not disclosed in Deslippe as capable of playing media and thus is not a multimedia device.” Prelim. Resp. 25. We agree with Patent Owner’s assertion. In this regard, the ’294 patent states “[t]he master device 110 can include, for example, a stand-alone control console or a control program using communication abilities of a computer (e.g., desktop, laptop, or handheld computer).” Ex. 1001, ¶ 42. Deslippe also states “[t]he slave devices 112A–112D can include any of a variety of devices including a speaker, an electronic device with an audio playback and/or recording capability, or a device collecting and/or displaying information about an audio stream.” Id. Thus, because Deslippe’s master device 110 is not a multimedia device (whereas its slave devices 112 are), Deslippe does not disclose the claimed “relative group leader,” and thus does not anticipate claim 1.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“control interface is provided in accordance with an open networking protocol.” Ex. 1001, 21:31–33. Claim 11 thus incorporates the limitations of claim 1. 35 U.S.C. § 112 ¶ 4. As noted, Deslippe differs from claim 1 in that its master device 110 has not been shown to be a “relative group leader” that is a multimedia device, such as a speaker, that is one of a group of multimedia devices responsive to a system control signal to implement an operational change, such as a volume adjustment. Petitioner’s contentions with respect to claim 11 do not address this difference or explain why it would have been obvious to a person of ordinary skill in the art. Pet. 50–51. Accordingly, we are not persuaded Petitioner has shown a reasonable likelihood of prevailing in showing obviousness of claim 11 in view of Deslippe. Claim 15 is similar to claim 11 but depends from claim 13 and thus incorporates all of its limitations. 35 U.S.C. § 112 ¶ 4. Petitioner has not shown that Deslippe’s master device 110 is one of a group of multimedia devices that is responsive to the system control signal it generates to implement an operational change, such as a volume adjustment. Petitioner has not explained why this difference between claim 15 and Deslippe would have been obvious to a person of ordinary skill. Accordingly, we are not persuaded Petitioner has shown a reasonable likelihood to prevail in showing claim 15 is unpatentable.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,987,294 - Arris International PLC / Arris Global Ltd. et al. v. Sony CorporationAll claims unpatentablePTAB · Sep 25, 2017 · IPR2016-00835 · APJ Jennifer S Bisk · IPR · Final written decision
Claims 1–4 are unpatentable as obvious over Wasilewski, Rosenberger, and Ishikawa, and independently over Wasilewski and Ejima.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed patent owner constructionDecided for patent owner
“The parties appear to agree, at least for purposes of this proceeding, on the broadest reasonable construction of the control means limitation. First, there is no dispute that the “control means” limitation is subject to means-plus-function treatment pursuant to 35 U.S.C. § 112 ¶ 6.6 Pet. 18–19; PO Resp. 1. Second, there is no dispute that the function of this term is coextensive with the language of the claim—“controlling the transmission signal receiving means to receive the transmission signal of a channel indicated by the channel number being displayed when the command received by the command receiving means is broken.” Pet. 18; PO Resp. 16. Third, in post-institution briefing, the parties appear to agree that, for purposes of this proceeding, the corresponding structure disclosed in the ’643 patent is “a CPU implementing the algorithmic structure described in the specification at least at 7:58-8:10; and 9:15-30, and equivalents thereof.” See, e.g., Reply 3; Sur-Reply 2; Tr. 4:10–19, 23:3–16.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“claim 1, wherein the channel number display control means switches the channels in the order of magnitude of the channel numbers.” Ex. 1001, 10:31–33 (emphasis added). In the interest of clarity, we address the broadest reasonable construction of this term, which was briefly discussed at the oral hearing. In the context of the claim language, we are persuaded that the broadest reasonable construction of “order of magnitude of the channel numbers” includes the “sequential order” of the channel number. See Tr. 9:1–15 (Petitioner’s counsel agreeing with this construction), 24:7–12 (Patent Owner’s counsel declining to give an opinion on the issue). The specification does not explicitly define the term, but is consistent with a construction that includes an arrangement of items by relative size. See, e.g., Ex. 1001, 1:61–63 (“The channel number display control means may switch the channels in the magnitude order of the channel numbers.”); 8:54–57 (“[T]he service_ids are stored in the order of the magnitude thereof, and incrementing the pointer by one and acquiring the service_id in the area indicated by the pointer can acquire a second larger service_id.” (emphasis added)). Accordingly, we adopt a broadest reasonable construction of “order of magnitude of the channel numbers” that includes the “sequential order” of the channel number.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“set forth by Dr. Samuel H. Russ. Pet. 8. Dr. Russ states that such a person would have had “at least a bachelor’s degree in digital electronics, electrical engineering, computer engineering, computer science, or a related technical degree with several years (e.g., 2–5 years) of post-degree experience in a similar field” or, alternatively, “an advanced degree, such as a Master’s Degree, in digital electronics, electrical engineering, computer engineering, computer science, or a related technical degree.” Ex. 1003 ¶ 36. Patent Owner does not address this issue. See PO Resp.; Sur-Reply. Petitioner’s assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art raised in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (acknowledging that the prior art itself may reflect an appropriate level of ordinary skill in the art). Accordingly, we adopt Petitioner’s definition of a person of ordinary skill in the art.” slip op. at 15
- Expert testimonyPetitioner expert creditedDecided for petitioner
“been motivated to combine the teachings of Wasilewski, Rosenberger, and Ishikawa. See Pet. 34–36. Specifically, at the time of the invention, a person of ordinary skill would have recognized that the time required to change and tune channels in a digital system was noticeably longer than that for analog channels. Ex. 1001, 1:28–36; Ex. 1007, 3; Ex. 1015, 2:59–65, 3:48–56; Ex. 1017, 1:16–20. Such artisan would have been motivated to simplify and quicken this process, especially given the proliferation of channels and services throughout the industry. Ex. 1003 ¶ 202. Because a skilled artisan would have known about both analog and digital systems, it would have been obvious to look to Rosenberger’s analog solution to this problem and apply the same technique to the digital receiver of Wasilewski. Id. ¶¶ 203–204. We credit Dr. Russ’s unrebutted testimony that such combination would be “very simple from a technical standpoint,” requiring “essentially . . . a change in software to prevent the system from tuning a new channel while a channel-change button is being held down.” Id. ¶¶ 205–207. A preponderance of the evidence, therefore, shows that this combination is nothing more than “the predictable use of prior art elements according to their established functions.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).” slip op. at 31
Patent outcomesUS 6,084,643 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,084,643 - Fieldpiece Instruments, Inc. v. Twin Rivers Engineering, Inc.Rehearing deniedPTAB · Sep 25, 2017 · IPR2017-00362 · APJ Monica S Ullagaddi · IPR · Rehearing
The Board denied Fieldpiece’s rehearing request, leaving institution denied because the Petition did not sufficiently show that the prior art taught or suggested the negative limitation in claims 2, 3, 6, 7, and 9.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Pet. 44 (for claims 2 and 9); see also id. at 58 (substantially similar argument for claim 6), 68 (for claim 7, referring to argument for claim 6). In its Rehearing Request, Petitioner cites numerous portions of the Laub Declaration in support of its contention. Reh’g. Req. 5, 6, 8–10, 12, 13 (citing Ex. 1003, 29, 30, 32–34, 36, 49, 50, 73, 74). None of these portions of the Laub Declaration were cited in the Petition in connection with the negative limitation. In fact, as noted in our Decision, Petitioner did not cite to the Laub Declaration at all in connection with the negative limitation. See Dec. 14 n.2. The Rehearing Request “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d) (emphasis added). As Petitioner did not cite to the Laub Declaration at all in connection with the negative limitation in its Petition, we could not have “misapprehended or overlooked” this evidence in connection with that limitation. Moreover, the portions of the Petition cited in the Rehearing Request relate only to overviews of the references. See Reh’g. Req. 5–13 (citing Pet. 13, 14, 21, 22, 26, 29, 33, 34, 46, 47). In our Decision, we stated that the burden of persuasion remains on a petitioner in inter partes review proceedings. See Dec. 13 (citing DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (Fed. Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”)). Petitioner does not meet its burden because none of these overviews explain why the ordinarily skilled artisan would have understood the references to teach or suggest the negative limitation. Similarly, even having considered the portions of the Laub Declaration first cited in the Request for Rehearing, we still are not persuaded Petitioner explains sufficiently why the negative limitation is taught or suggested by the references.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“person of ordinary skill in the art would have nonetheless expected the limitation ‘without…a secondary tracer’ to have been known in the art.” Reh’g. Req. 2, 14. The Petition, however, does not mention the level of the ordinary skill in the art in connection with the negative limitation, let alone explain why the limitation would have been taught or suggested to one of ordinary skill in the art at the time of the invention. Petitioner further asserts that our Decision “misapprehends the disclosure in the prior art and is based on authority regarding [the] written description requirement of a negative limitation – not the standard required to show disclosure of a negative limitation in the prior art.” Id. at 4 (emphasis added); see also id. at 13–14 (expanding upon argument). We clarify that we relied on the case law cited in our Decision, not to indicate the minimum that a petitioner is required to show regarding a negative limitation, but simply to emphasize that the negative limitation inquiry is focused on what a person of ordinary skill in the art would understand the prior art to teach or suggest. Petitioner does not disagree with this legal point. See, e.g., id. at 15 (“Petitioner contends that the prior art, when viewed from the perspective of a person of ordinary skill in the art, sufficiently discloses the negative limitation . . .”). Nonetheless, as noted above, Petitioner neither points out an express teaching nor provides any other explanation as to why the negative limitation would have been taught or suggested to one of ordinary skill in the art at the time of the invention. Based on our construction of the negative limitation and our reading of the prior art, we concluded that a person of ordinary skill would not have understood the prior art to disclose the negative limitation. And Petitioner did not provide any evidence to the contrary. See, e.g., Pet. 44, 58, 68 (citing “generally” to prior art exhibits, but not citing to Laub Declaration). Thus, we are not persuaded that we erred in determining that Petitioner did not meet its burden to show a reasonable likelihood of prevailing on this issue.” slip op. at 6
- BurdenDecided for patent owner
“Moreover, the portions of the Petition cited in the Rehearing Request relate only to overviews of the references. See Reh’g. Req. 5–13 (citing Pet. 13, 14, 21, 22, 26, 29, 33, 34, 46, 47). In our Decision, we stated that the burden of persuasion remains on a petitioner in inter partes review proceedings. See Dec. 13 (citing DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (Fed. Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”)). Petitioner does not meet its burden because none of these overviews explain why the ordinarily skilled artisan would have understood the references to teach or suggest the negative limitation. Similarly, even having considered the portions of the Laub Declaration first cited in the Request for Rehearing, we still are not persuaded Petitioner explains sufficiently why the negative limitation is taught or suggested by the references.” slip op. at 4
NonePatents in suitUS 7,022,993 - General Plastic Industrial Co., Ltd. v. Canon Kabushiki KaishaRehearing deniedPTAB · Sep 6, 2017 · IPR2016-01361 · APJ Sheila F Mcshane · IPR · Rehearing
The Board granted the expanded-panel request but denied rehearing, leaving in place the discretionary denial of institution in all five follow-on petitions.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“B. Requests for Rehearing A party requesting rehearing has the burden to show a decision should be modified by specifically identifying all matters the party believes were misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing 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 arise 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. 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 5
- Other 314aInstitution denied discretionary otherInstitution denied
“Our intent in formulating the factors was to take undue inequities and prejudices to Patent Owner into account. Thus, factor 3 is directed to Petitioner’s potential benefit from receiving and having the opportunity to study Patent Owner’s Preliminary Response, as well as our institution decisions on the first-filed petitions, prior to its filing of follow-on petitions. As discussed in our Decisions Denying Institution, we are concerned here by the shifts in the prior art asserted and the related arguments in follow-on petitions. See Dec. 11. Multiple, staggered petitions challenging the same patent and same claims raise the potential for abuse. The absence of any restrictions on follow-on petitions would allow petitioners the opportunity to strategically stage their prior art and arguments in multiple petitions, using our decisions as a roadmap, until a ground is found that results in the grant of review.14 All other factors aside, this is unfair to patent 14 The Board has addressed efficiency and potential prejudice induced by multiple petitions in multiple cases. See LG Electronics, slip op. at 12 (“The Board’s resources would be more fairly expended on first petitions rather than on a followon petition like the Petition in this case.”); Butamax Advanced Biofuels LLC v. Gevo, Case IPR2014-00581, slip op. at 12–13 (PTAB Oct. 14, 2014) (Paper 8) (“[T]he four obviousness grounds are ‘second bites at the apple,’ which use our prior decision as a roadmap to remedy Butamax’s prior, deficient challenge. owners and is an inefficient use of the inter partes review process and other post-grant review processes. Considering other factors (i.e., factors 2, 4, and 5) allows us to assess and weigh whether a petitioner should have or could have raised the new challenges earlier. We recognize that there may be circumstances where multiple petitions by the same petitioner 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. The factors set forth above, in our view, represent a formulation of relevant considerations that permit the Board to assess the potential impacts on both the efficiency of the inter partes review process and the fundamental fairness of the process for all parties. We recognize, also, that additional factors may arise in other cases for consideration, where appropriate. However, the factors set forth above, at the very least, serve to act as a baseline of factors to be considered in our future evaluation of follow-on petitions.” slip op. at 17
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“panels to authorize, an expanded panel. See generally 35 U.S.C. § 6; 37 C.F.R. §§ 41.1–42.412; see also AOL Inc. v. Coho Licensing LLC, Case IPR2014-00771, slip op. at 2 (PTAB Mar. 24, 2015) (Paper 12) (“[P]arties are not permitted to request, and panels do not authorize, panel expansion.”). Our standard operating procedures, however, provide the Chief Judge with discretion to expand a panel to include more than three judges. PTAB SOP 1, 1–3 (§§ II, III) (Rev. 14); see id. at 1 (introductory language explaining that the Director has delegated to the Chief Judge the authority to designate panels under 35 U.S.C. § 6); see also In re Alappat, 33 F.3d 1526, 1532 (Fed. Cir. 1994) (providing that Congress “expressly granted the Commissioner the authority to designate expanded Board panels made up of more than three Board members.”). The Chief Judge may consider panel expansions upon a “suggestion” from a judge, panel, or party in a post-grant review. Id. at 3–4; see also Apple Inc. v. Rensselaer Polytechnic Inst., Case IPR2014-00319, slip op. at 2 n.1 (PTAB Dec. 12, 2014) (Paper 20) (expanded panel) (per curiam). 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.” Id. (§ III.A.1). In these cases, the Chief Judge has considered whether expansion is warranted, and has decided to expand the panel due to the exceptional nature of the issues presented.4 As we discuss further below, follow-on petitions have been at issue in multiple cases before the Board. The Chief Judge has determined that an expanded panel is warranted to provide a discussion of factors that are considered in the exercise of the Board’s discretion under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a).” slip op. at 4
Discretionary denialPatents in suitUS 8,909,094 - General Plastic Industrial Co., Ltd. v. Canon Kabushiki KaishaRehearing deniedPTAB · Sep 6, 2017 · IPR2016-01360 · APJ Sheila F Mcshane · IPR · Rehearing
The Board denied rehearing of the decisions denying institution in all five proceedings, concluding it had not abused its discretion or overlooked any issue.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“B. Requests for Rehearing A party requesting rehearing has the burden to show a decision should be modified by specifically identifying all matters the party believes were misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing 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 arise 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. 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 5
- Other 314aInstitution denied discretionary otherDecided for patent owner
“prejudices to Patent Owner into account. Thus, factor 3 is directed to Petitioner’s potential benefit from receiving and having the opportunity to study Patent Owner’s Preliminary Response, as well as our institution decisions on the first-filed petitions, prior to its filing of follow-on petitions. As discussed in our Decisions Denying Institution, we are concerned here by the shifts in the prior art asserted and the related arguments in follow-on petitions. See Dec. 11. Multiple, staggered petitions challenging the same patent and same claims raise the potential for abuse. The absence of any restrictions on follow-on petitions would allow petitioners the opportunity to strategically stage their prior art and arguments in multiple petitions, using our decisions as a roadmap, until a ground is found that results in the grant of review.14 All other factors aside, this is unfair to patent” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDecided for patent owner
“of the seven factors weigh against institution. Petitioner disputes our findings on the issue of whether Petitioner “should have known” of the art asserted in the follow-on petitions under factor 2. We disagree with Petitioner’s characterization that invariably factor 2 could not be met because “patents or printed publications” necessarily “must be locatable by a reasonably diligent search.” Req. Reh’g 8. The relevant issue under factor 2 is not, as Petitioner has framed it, whether the prior art references relied on in the follow-on petitions constitute printed publications, but whether they could have been found with reasonable diligence. Thus, even for printed publications, a petitioner is free to explain why a reasonably diligent search could not have uncovered the newly applied prior art. See Apotex Inc. v. Wyeth LLC, IPR2015-00873, slip op. at 6 (Sept. 16, 2015) (Paper 8) (describing “[w]hat a petitioner ‘could have raised,’” as including “prior art which a skilled searcher conducting a diligent search reasonably could have been expected to discover.”). Here, the record is devoid of any explanation why Petitioner could not have found the newly asserted prior art in any earlier search(es) through the exercise of reasonable diligence.” slip op. at 19
- Strike new argumentNew argument disregardedDecided for patent owner
“In the Replies to Patent Owner’s Preliminary Responses, Petitioner did not argue that there were any changed circumstances that reasonably justified its new prior art searches and associated filing of follow-on petitions. See Reply 1–5. In the Requests for Rehearing, however, Petitioner avers that denial of the first-filed petitions was “surprising” to it, because the Board treated the term “toner supply container” in the claim preamble as limiting. Req. Reh’g 10–11. We determine that the “surprising” argument is not entitled to consideration, because it was not included in the Replies, which we authorized in order to allow Petitioner to address Patent Owner’s Preliminary Responses that raised the issues of impropriety of follow-on petitions and application of discretion under § 314(a).” slip op. at 20
Discretionary denialPatents in suitUS 8,909,094 - General Plastic Industrial Co., Ltd. v. Canon Kabushiki KaishaRehearing deniedPTAB · Sep 6, 2017 · IPR2016-01359 · APJ Sheila F Mcshane · IPR · Rehearing
The Board denied rehearing of the institution denials in IPR2016-01357 through IPR2016-01361, finding no abuse of discretion or overlooked issue; it granted the request for an expanded panel.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“B. Requests for Rehearing A party requesting rehearing has the burden to show a decision should be modified by specifically identifying all matters the party believes were misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing 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 arise 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. 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 5
- Other 314aInstitution denied discretionary otherDecided for patent owner
“Our intent in formulating the factors was to take undue inequities and prejudices to Patent Owner into account. Thus, factor 3 is directed to Petitioner’s potential benefit from receiving and having the opportunity to study Patent Owner’s Preliminary Response, as well as our institution decisions on the first-filed petitions, prior to its filing of follow-on petitions. As discussed in our Decisions Denying Institution, we are concerned here by the shifts in the prior art asserted and the related arguments in follow-on petitions. See Dec. 11. Multiple, staggered petitions challenging the same patent and same claims raise the potential for abuse. The absence of any restrictions on follow-on petitions would allow petitioners the opportunity to strategically stage their prior art and arguments in multiple petitions, using our decisions as a roadmap, until a ground is found that results in the grant of review.14 All other factors aside, this is unfair to patent 14 The Board has addressed efficiency and potential prejudice induced by multiple petitions in multiple cases. See LG Electronics, slip op. at 12 (“The Board’s resources would be more fairly expended on first petitions rather than on a followon petition like the Petition in this case.”); Butamax Advanced Biofuels LLC v. Gevo, Case IPR2014-00581, slip op. at 12–13 (PTAB Oct. 14, 2014) (Paper 8) (“[T]he four obviousness grounds are ‘second bites at the apple,’ which use our prior decision as a roadmap to remedy Butamax’s prior, deficient challenge. owners and is an inefficient use of the inter partes review process and other post-grant review processes. Considering other factors (i.e., factors 2, 4, and 5) allows us to assess and weigh whether a petitioner should have or could have raised the new challenges earlier.” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDecided for patent owner
“ii. Applying the Factors in These Cases As summarized above, supra Section II.B.2, we find that, in these cases, six of the seven factors weigh against institution. Petitioner disputes our findings on the issue of whether Petitioner “should have known” of the art asserted in the follow-on petitions under factor 2. We disagree with Petitioner’s characterization that invariably factor 2 could not be met because “patents or printed publications” necessarily “must be locatable by a reasonably diligent search.” Req. Reh’g 8. The relevant issue under factor 2 is not, as Petitioner has framed it, whether the prior art references relied on in the follow-on petitions constitute printed publications, but whether they could have been found with reasonable diligence. Thus, even for printed publications, a petitioner is free to explain why a reasonably diligent search could not have uncovered the newly applied prior art. See Apotex Inc. v. Wyeth LLC, IPR2015-00873, slip op. at 6 (Sept. 16, 2015) (Paper 8) (describing “[w]hat a petitioner ‘could have raised,’” as including “prior art which a skilled searcher conducting a diligent search reasonably could have been expected to discover.”). Here, the record is devoid of any explanation why Petitioner could not have found the newly asserted prior art in any earlier search(es) through the exercise of reasonable diligence.” slip op. at 19
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“panels to authorize, an expanded panel. See generally 35 U.S.C. § 6; 37 C.F.R. §§ 41.1–42.412; see also AOL Inc. v. Coho Licensing LLC, Case IPR2014-00771, slip op. at 2 (PTAB Mar. 24, 2015) (Paper 12) (“[P]arties are not permitted to request, and panels do not authorize, panel expansion.”). Our standard operating procedures, however, provide the Chief Judge with discretion to expand a panel to include more than three judges. PTAB SOP 1, 1–3 (§§ II, III) (Rev. 14); see id. at 1 (introductory language explaining that the Director has delegated to the Chief Judge the authority to designate panels under 35 U.S.C. § 6); see also In re Alappat, 33 F.3d 1526, 1532 (Fed. Cir. 1994) (providing that Congress “expressly granted the Commissioner the authority to designate expanded Board panels made up of more than three Board members.”). The Chief Judge may consider panel expansions upon a “suggestion” from a judge, panel, or party in a post-grant review. Id. at 3–4; see also Apple Inc. v. Rensselaer Polytechnic Inst., Case IPR2014-00319, slip op. at 2 n.1 (PTAB Dec. 12, 2014) (Paper 20) (expanded panel) (per curiam). The standard operating procedure exemplifies some of the reasons for which” slip op. at 4
Claim constructionDiscretionary denialPatents in suitUS 8,909,094 - General Plastic Industrial Co., Ltd. v. Canon Kabushiki KaishaRehearing deniedPTAB · Sep 6, 2017 · IPR2016-01358 · APJ Sheila F Mcshane · IPR · Rehearing
The Board denied rehearing of the institution denials in five follow-on petitions, concluding that its discretionary denials under § 314(a) were not an abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“B. Requests for Rehearing A party requesting rehearing has the burden to show a decision should be modified by specifically identifying all matters the party believes were misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing 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 arise 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. 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 5
- Other 314aInstitution denied discretionary otherInstitution denied
“Our intent in formulating the factors was to take undue inequities and prejudices to Patent Owner into account. Thus, factor 3 is directed to Petitioner’s potential benefit from receiving and having the opportunity to study Patent Owner’s Preliminary Response, as well as our institution decisions on the first-filed petitions, prior to its filing of follow-on petitions. As discussed in our Decisions Denying Institution, we are concerned here by the shifts in the prior art asserted and the related arguments in follow-on petitions. See Dec. 11. Multiple, staggered petitions challenging the same patent and same claims raise the potential for abuse. The absence of any restrictions on follow-on petitions would allow petitioners the opportunity to strategically stage their prior art and arguments in multiple petitions, using our decisions as a roadmap, until a ground is found that results in the grant of review.14 All other factors aside, this is unfair to patent 14 The Board has addressed efficiency and potential prejudice induced by multiple petitions in multiple cases. See LG Electronics, slip op. at 12 (“The Board’s resources would be more fairly expended on first petitions rather than on a followon petition like the Petition in this case.”); Butamax Advanced Biofuels LLC v. Gevo, Case IPR2014-00581, slip op. at 12–13 (PTAB Oct. 14, 2014) (Paper 8) (“[T]he four obviousness grounds are ‘second bites at the apple,’ which use our prior decision as a roadmap to remedy Butamax’s prior, deficient challenge. owners and is an inefficient use of the inter partes review process and other post-grant review processes. Considering other factors (i.e., factors 2, 4, and 5) allows us to assess and weigh whether a petitioner should have or could have raised the new challenges earlier. We recognize that there may be circumstances where multiple petitions by the same petitioner 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. The factors set forth above, in our view, represent a formulation of relevant considerations that permit the Board to assess the potential impacts on both the efficiency of the inter partes review process and the fundamental fairness of the process for all parties. We recognize, also, that additional factors may arise in other cases for consideration, where appropriate. However, the factors set forth above, at the very least, serve to act as a baseline of factors to be considered in our future evaluation of follow-on petitions.” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for patent owner
“As we discussed above, § 314(a) recites “may not” when referring to authorization for inter partes review, and does not specify any particular Allowing similar, serial challenges to the same patent, by the same petitioner, risks harassment of patent owners and frustration of Congress’s intent in enacting the Leahy-Smith America Invents Act. See H.R. Rep. No. 112-98, pt.1, at 48 (2011).”); Conopco, slip op. at 5 (“We are not persuaded that we erred by adopting a more flexible approach that assesses each case on its particular facts to achieve a result that promotes the efficient and economical use of Board and party resources, and reduces the opportunity for abuse of the process.”); Travelocity.com L.P. v. Cronos Tech., LLC, Case CBM2015-00047, slip op. at 13 (PTAB June 15, 2015) (Paper 7) (“Moreover, a decision on a petition . . . is not simply part of a feedback loop by which a petitioner may perfect its challenges through a subsequent filing.”). circumstance in which review must be authorized. That means institution of review is committed to the Director’s discretion, which, in turn, has been delegated to the Board. See 35 U.S.C. § 314(a); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016); 37 C.F.R. § 42.4(a). Similarly, under § 325(d), whether “the same or substantially the same prior art or arguments previously were presented to the Office” is an issue that “may” be taken into account in considering institution, also manifesting the discretionary nature of application of § 325(d). As such, § 325(d) is not intended to be the sole factor in the exercise of discretion under § 314(a). We, therefore, do not agree with Petitioner that our Decisions Denying Institution conflict with the “express wording” of § 325(d), or render the aforementioned provision superfluous or meaningless. We also do not agree that the legislative history indicates an intent to limit discretion under § 314(a), such that it is subordinate to or encompassed by § 325(d). Additionally, although the legislative history reflects recognition of a desire for a “safety valve” to alleviate backlog, it does not limit the exercise of discretion under 35 U.S.C. § 314(a) to only circumstances in which there is a high volume of pending proceedings. See 157 CONG. REC. S1377 (Mar. 8, 2011). In any event, no such restriction appears in the language of 35 U.S.C. § 314(a), and we decline to read into 35 U.S.C. § 314(a) such a restriction.” slip op. at 18
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“In these cases, the Chief Judge has considered whether expansion is warranted, and has decided to expand the panel due to the exceptional nature of the issues presented.4 As we discuss further below, follow-on petitions have been at issue in multiple cases before the Board. The Chief Judge has determined that an expanded panel is warranted to provide a discussion of factors that are considered in the exercise of the Board’s discretion under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a).” slip op. at 4
Discretionary denialPatents in suitUS 9,046,820 - General Plastic Industrial Co., Ltd. v. Canon Kabushiki KaishaRehearing deniedPTAB · Sep 6, 2017 · IPR2016-01357 · APJ Sheila F Mcshane · IPR · Rehearing
The Board denied rehearing of the institution denials in five proceedings, finding no abuse of discretion or overlooked issue; it granted the request to expand the panel.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“B. Requests for Rehearing A party requesting rehearing has the burden to show a decision should be modified by specifically identifying all matters the party believes were misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing 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 arise 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. 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 5
- Other 314aInstitution denied discretionary otherDecided for patent owner
“prejudices to Patent Owner into account. Thus, factor 3 is directed to Petitioner’s potential benefit from receiving and having the opportunity to study Patent Owner’s Preliminary Response, as well as our institution decisions on the first-filed petitions, prior to its filing of follow-on petitions. As discussed in our Decisions Denying Institution, we are concerned here by the shifts in the prior art asserted and the related arguments in follow-on petitions. See Dec. 11. Multiple, staggered petitions challenging the same patent and same claims raise the potential for abuse. The absence of any restrictions on follow-on petitions would allow petitioners the opportunity to strategically stage their prior art and arguments in multiple petitions, using our decisions as a roadmap, until a ground is found that results in the grant of review.14 All other factors aside, this is unfair to patent” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for patent owner
“prejudices to Patent Owner into account. Thus, factor 3 is directed to Petitioner’s potential benefit from receiving and having the opportunity to study Patent Owner’s Preliminary Response, as well as our institution decisions on the first-filed petitions, prior to its filing of follow-on petitions. As discussed in our Decisions Denying Institution, we are concerned here by the shifts in the prior art asserted and the related arguments in follow-on petitions. See Dec. 11. Multiple, staggered petitions challenging the same patent and same claims raise the potential for abuse. The absence of any restrictions on follow-on petitions would allow petitioners the opportunity to strategically stage their prior art and arguments in multiple petitions, using our decisions as a roadmap, until a ground is found that results in the grant of review.14 All other factors aside, this is unfair to patent” slip op. at 17
- BurdenDecided for patent owner
“of the seven factors weigh against institution. Petitioner disputes our findings on the issue of whether Petitioner “should have known” of the art asserted in the follow-on petitions under factor 2. We disagree with Petitioner’s characterization that invariably factor 2 could not be met because “patents or printed publications” necessarily “must be locatable by a reasonably diligent search.” Req. Reh’g 8. The relevant issue under factor 2 is not, as Petitioner has framed it, whether the prior art references relied on in the follow-on petitions constitute printed publications, but whether they could have been found with reasonable diligence. Thus, even for printed publications, a petitioner is free to explain why a reasonably diligent search could not have uncovered the newly applied prior art. See Apotex Inc. v. Wyeth LLC, IPR2015-00873, slip op. at 6 (Sept. 16, 2015) (Paper 8) (describing “[w]hat a petitioner ‘could have raised,’” as including “prior art which a skilled searcher conducting a diligent search reasonably could have been expected to discover.”). Here, the record is devoid of any explanation why Petitioner could not have found the newly asserted prior art in any earlier search(es) through the exercise of reasonable diligence.” slip op. at 19
Claim constructionDiscretionary denialPatents in suitUS 9,046,820
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.