- PTAB · Nov 20, 2018 · CBM2018-00018 · APJ Josiah C Cocks · CBM · Rehearing
The Board denied Petitioner’s rehearing request, leaving in place the denial of CBM review of claims 1–17 and 22–24 because the patent did not qualify as a covered business method patent.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS When rehearing a decision on institution, the Board reviews the 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.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“completion of a purchase of a ticket, is a “recitation of a financial operation” sufficient to establish that claims 23 recite a covered business method. See 37 C.F.R. § 42.304(a) (“The petitioner must demonstrate that the patent for which review is sought is a covered business method patent . . . .”). Petitioner simply does not now explain persuasively why the transmission of a secured validating display by a computer system in the course of validating a ticket that had been purchased constitutes activity that is “active[] and contemporaneous[]” with the “management or administration of a financial product or service.” See Req. Reh’g 3–4. In order to be eligible for a CBM review, the challenged patent must “claim[] a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service . . . .” AIA § 18(d)(1). After considering the Petition, we determined that Petitioner did not meets its burden of demonstrating that the patent for which review is sought is a covered business method patent. Although Petitioner may disagree with our determination as to claim 23, disagreement is not, itself, a proper basis for requesting rehearing. Here, Petitioner does not identify persuasively that we misapprehended or overlooked any matter in reaching a determination other than that desired by Petitioner.” slip op. at 5
- BurdenDecided for patent owner
“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. We address below, in the order presented in the Request for Rehearing, the matters Petitioner asserts we overlooked or misapprehended.” slip op. at 3
NonePatents in suitUS 9,239,993 - Yamaha Golf Car Company v. Club Car, LLCRehearing deniedPTAB · Oct 11, 2018 · IPR2017-02141 · APJ Robert L Kinder · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests in IPR2017-02141 and IPR2017-02143, leaving institution of all challenged claims and grounds in place.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. Upon a request for rehearing, the decision on a petition will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005).” slip op. at 3
- Expert testimonyPetitioner expert creditedDecided for petitioner
“an issue in dispute is whether the ’053 Unexamined Application discloses a “golf cart.” Petitioner’s certified translation of this reference (Ex. 1003 ¶ 2)3 says it does indeed disclose use of the invention in a “golf cart,” whereas 3 Ex. 1003 ¶ 2 (“Recently, in many golf courses, means have been provided enabling play wherein the caddy or golfer places a golf bag in an electric vehicle (hereinafter termed a “golf cart”) to move about the golf course.”). Patent Owner’s contrary translation (Exhibit 2001)4 does not appear to meet the requirements of 37 C.F.R. § 1.68, and is thus unreliable. As previously noted, in order to arrive at the factual determination that the ’053 Unexamined Application does not disclose a “golf cart,” we had to rely on the English translation of the ’053 Unexamined Application. The only proper certified translation before us indicates that the ’053 Unexamined Application does indeed disclose a “golf cart.” Further, although we have issued a preliminary claim construction, this legal determination will be evaluated at the end of trial based upon the complete record before us.” slip op. at 6
NonePatents in suitUS 7,239,965 - Yamaha Golf Car Company v. Club Car, LLCRehearing deniedPTAB · Oct 11, 2018 · IPR2017-02143 · APJ Robert L Kinder · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, leaving institution in place for all challenged claims and grounds in both proceedings.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“First, Patent Owner’s argument that an institution decision and any rehearing of that decision occur within three-months of the preliminary response is not supported by the existing statutory framework. We complied with 35 U.S.C. § 314(b) at the time we issued the institution decisions on April 3, 2018 (IPR2017-02141, Paper 17) and April 4, 2018 (IPR2017- 02143, Paper 17). Per section 314(b), “[t]he Director” is given “3 months” to issue the decision on whether to institute inter partes review. 35 U.S.C. § 314(b). That section of the statute says nothing about the Director also having to consider a request for rehearing within the three-month timeframe, even though elsewhere the statute expressly provides for a right to rehearing. See 35 U.S.C. § 6(b). Because the institution decisions here were not issued until the last day of the three-month period permitted us by statute, it would have been impossible for Petitioner to exercise its statutory right to rehearing, let alone for us to consider such a request, within the time frame that Patent Owner argues is required. Indeed, under Patent Owner’s reading of the statute, the Director could effectively preclude any rehearing of institution decisions simply by issuing them on the last possible day of the statutory period.” slip op. at 4
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Patent Owner’s contrary translation (Exhibit 2001)4 does not appear to meet the requirements of 37 C.F.R. § 1.68, and is thus unreliable. As previously noted, in order to arrive at the factual determination that the ’053 Unexamined Application does not disclose a “golf cart,” we had to rely on the English translation of the ’053 Unexamined Application. The only proper certified translation before us indicates that the ’053 Unexamined Application does indeed disclose a “golf cart.” Further, although we have issued a preliminary claim construction, this legal determination will be evaluated at the end of trial based upon the complete record before us.” slip op. at 7
NonePatents in suitUS 7,480,569 - PTAB · Aug 21, 2018 · CBM2018-00011 · APJ Barry L Grossman · CBM · Rehearing
The Board denied Petitioner’s rehearing request, leaving in place the denial of CBM review because the challenged claims were not shown to meet the statutory covered-business-method definition.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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. We address below, in the order presented in the Request for Rehearing, the matters Petitioner asserts we overlooked or misapprehended.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In order to be eligible for a CBM review, the challenged patent must “claim[] a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service . . . .” AIA § 18(d)(1). We construed the scope of all the challenged claims, including claims 2 and 19, based on the words in the claims and the Specification of the ’967 patent. Dec. 12–16. Proper claim construction demands interpretation of the entire claim in context, not a single element in isolation. Hockerson-Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999). While certain terms may be at the center of the claim construction debate, the context of the surrounding words of the claim also must be considered in determining the ordinary and customary meaning of those terms. ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003).” slip op. at 6
NonePatents in suitUS 8,494,967 - Olympia Tools International, Inc. v. JPW Industries, Inc.Rehearing deniedPTAB · Aug 3, 2018 · IPR2018-00388 · APJ Ulrike W Jenks · IPR · Rehearing
The Board denied rehearing and maintained denial of institution because the petition did not adequately explain why a skilled artisan would reverse Cornes’s spindle.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD FOR RECONSIDERATION 37 C.F.R. § 42.71(d) provides that [a] party dissatisfied with a decision may file a single request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. (Emphasis added.) When reconsidering a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). A request for rehearing, however, is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“has not “sufficiently provided an articulated reason with a rational underpinning as to why reversing the spindle and mating threaded tubular member and nut in Cornes would have been obvious to a person of ordinary skill in the art.” Dec. 19 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)), see also id. at 22 (“Neither Petitioner nor its declarant, Mr. O’Banion, explains adequately why a skilled artisan would have had reason to redesign Cornes’s vise under the general theory of simple “substitution” of one known element for another. . . . [Merely reciting theory is not enough] there [still] needs to be reason why an ordinary artisan would reverse the spindle in the first place.”).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“has not “sufficiently provided an articulated reason with a rational underpinning as to why reversing the spindle and mating threaded tubular member and nut in Cornes would have been obvious to a person of ordinary skill in the art.” Dec. 19 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)), see also id. at 22 (“Neither Petitioner nor its declarant, Mr. O’Banion, explains adequately why a skilled artisan would have had reason to redesign Cornes’s vise under the general theory of simple “substitution” of one known element for another. . . . [Merely reciting theory is not enough] there [still] needs to be reason why an ordinary artisan would reverse the spindle in the first place.”).” slip op. at 3
- Expert testimonyPetitioner expert discountedDecided for patent owner
“to arrive at the claimed invention an artisan would need to do more than substitute one element for another, it would also necessitate a redesign of Cornes’s vise that requires reversing the position of the spindle. See Dec. 22. We are mindful that in order to arrive at a conclusion of obviousness it is often necessary to look at interrelated teachings including “background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418. Our Decision considered Mr. O’Banion’s testimony but we found that it was not sufficiently persuasive to explain why an artisan would have reversed the position of Cornes’s spindle in the first place. See Dec. 18 (citing InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352, 1354 (Fed. Cir. 2014)), see id. 22.” slip op. at 4
§ 103 obviousnesscites KSRPatents in suitUS 9,079,464 - Yamaha Golf Car Company v. Club Car, LLCRehearing grantedPTAB · Jun 26, 2018 · IPR2017-02144 · APJ Robert L Kinder · IPR · Rehearing
Rehearing was granted in all four proceedings, and review was instituted on all challenged claims and grounds, except claims 12 and 20, which were disclaimed.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“II. STANDARD OF REVIEW The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. Upon a request for rehearing, the decision on a petition will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“persuades us to grant Petitioner’s requests for rehearing and institute trial in IPR2017-02141 and IPR2017-02143. In the IPR2017-02142 and IPR2017- 02144 proceedings, which have already been instituted as to one claim, Petitioner’s requests for rehearing convince us to institute as to all claims and all grounds set forth in each petition. In particular, in order to deny institution, or partially institute, we were confronted with competing testimony of witnesses offered as experts, as well as competing prior art translations, and we resolved at least one disputed issue of material fact in favor of Patent Owner to deny each petition. See Dec. 17–20. Our own regulation, however, cautions against such an approach at the institution phase of a proceeding stating, “a genuine issue of material fact created by . . . testimonial evidence [filed by Patent Owner] will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review.” 37 C.F.R. § 42.108(c).” slip op. at 4
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached
“’569 patent was entitled to priority and adequately disclosed by the ’894 Provisional.8 Claim 11 requires “disabling golf cart movement towards the predetermined area further comprises disabling golf cart movement except in a reverse direction,” and Petitioner contends that this limitation was not adequately supported in the ’894 Provisional. Petitioner argues that we improperly weighed competing expert testimony at this phase of the proceeding to resolve the disputed issue in favor of Patent Owner. Specifically, Petitioner argues:” slip op. at 8
- Adverse judgmentAdverse judgmentOther
“9 On April 27, 2018, Club Car (Patent Owner) filed a statutory disclaimer under 35 U.S.C. § 253 for claim 12 of the ’569 patent. See IPR2017-02144, Paper 22, Exhibit B (Disclaimer of claim 12). Because claim 12 has been disclaimed, we need not issue a final written decision addressing the patentability of this claim.” slip op. at 10
§ 102 anticipationPatents in suitUS 7,480,569 - Yamaha Golf Car Company v. Club Car, LLCRehearing grantedPTAB · Jun 26, 2018 · IPR2017-02142 · APJ Robert L Kinder · IPR · Rehearing
Granted Yamaha’s rehearing requests and instituted review of all challenged claims on all petition grounds in IPR2017-02141 through IPR2017-02144, except two disclaimed claims.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. Upon a request for rehearing, the decision on a petition will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005). III. ANALYSIS One set of arguments made by Petitioner in each proceeding persuades us to grant Petitioner’s requests for rehearing and institute trial in IPR2017-02141 and IPR2017-02143. In the IPR2017-02142 and IPR2017- 02144 proceedings, which have already been instituted as to one claim, Petitioner’s requests for rehearing convince us to institute as to all claims and all grounds set forth in each petition. In particular, in order to deny institution, or partially institute, we were confronted with competing testimony of witnesses offered as experts, as well as competing prior art translations, and we resolved at least one disputed issue of material fact in favor of Patent Owner to deny each petition. See Dec. 17–20. Our own regulation, however, cautions against such an approach at the institution phase of a proceeding stating, “a genuine issue of material fact created by . . . testimonial evidence [filed by Patent Owner] will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review.” 37 C.F.R. § 42.108(c).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“persuades us to grant Petitioner’s requests for rehearing and institute trial in IPR2017-02141 and IPR2017-02143. In the IPR2017-02142 and IPR2017- 02144 proceedings, which have already been instituted as to one claim, Petitioner’s requests for rehearing convince us to institute as to all claims and all grounds set forth in each petition. In particular, in order to deny institution, or partially institute, we were confronted with competing testimony of witnesses offered as experts, as well as competing prior art translations, and we resolved at least one disputed issue of material fact in favor of Patent Owner to deny each petition. See Dec. 17–20. Our own regulation, however, cautions against such an approach at the institution phase of a proceeding stating, “a genuine issue of material fact created by . . . testimonial evidence [filed by Patent Owner] will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review.” 37 C.F.R. § 42.108(c).” slip op. at 4
- Adverse judgmentOther
“9 On April 27, 2018, Club Car (Patent Owner) filed a statutory disclaimer under 35 U.S.C. § 253 for claim 12 of the ’569 patent. See IPR2017-02144, Paper 22, Exhibit B (Disclaimer of claim 12). Because claim 12 has been disclaimed, we need not issue a final written decision addressing the patentability of this claim.” slip op. at 10
- Expert testimonyDecided for petitioner
“persuades us to grant Petitioner’s requests for rehearing and institute trial in IPR2017-02141 and IPR2017-02143. In the IPR2017-02142 and IPR2017- 02144 proceedings, which have already been instituted as to one claim, Petitioner’s requests for rehearing convince us to institute as to all claims and all grounds set forth in each petition. In particular, in order to deny institution, or partially institute, we were confronted with competing testimony of witnesses offered as experts, as well as competing prior art translations, and we resolved at least one disputed issue of material fact in favor of Patent Owner to deny each petition. See Dec. 17–20. Our own regulation, however, cautions against such an approach at the institution phase of a proceeding stating, “a genuine issue of material fact created by . . . testimonial evidence [filed by Patent Owner] will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review.” 37 C.F.R. § 42.108(c).” slip op. at 4
NonePatents in suitUS 7,239,965 - Yamaha Golf Car Company v. Club Car, LLCRehearing grantedPTAB · Jun 26, 2018 · IPR2017-02143 · APJ Robert L Kinder · IPR · Rehearing
Granted rehearing and instituted review on all asserted grounds for all challenged claims in IPR2017-02141 through IPR2017-02144, except the two disclaimed claims.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“II. STANDARD OF REVIEW The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. Upon a request for rehearing, the decision on a petition will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“persuades us to grant Petitioner’s requests for rehearing and institute trial in IPR2017-02141 and IPR2017-02143. In the IPR2017-02142 and IPR2017- 02144 proceedings, which have already been instituted as to one claim, Petitioner’s requests for rehearing convince us to institute as to all claims and all grounds set forth in each petition. In particular, in order to deny institution, or partially institute, we were confronted with competing testimony of witnesses offered as experts, as well as competing prior art translations, and we resolved at least one disputed issue of material fact in favor of Patent Owner to deny each petition. See Dec. 17–20. Our own regulation, however, cautions against such an approach at the institution phase of a proceeding stating, “a genuine issue of material fact created by . . . testimonial evidence [filed by Patent Owner] will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review.” 37 C.F.R. § 42.108(c).” slip op. at 4
- Adverse judgmentOther
“9 On April 27, 2018, Club Car (Patent Owner) filed a statutory disclaimer under 35 U.S.C. § 253 for claim 12 of the ’569 patent. See IPR2017-02144, Paper 22, Exhibit B (Disclaimer of claim 12). Because claim 12 has been disclaimed, we need not issue a final written decision addressing the patentability of this claim.” slip op. at 10
NonePatents in suitUS 7,480,569 - Yamaha Golf Car Company v. Club Car, LLCRehearing grantedPTAB · Jun 26, 2018 · IPR2017-02141 · APJ Robert L Kinder · IPR · Rehearing
The Board granted rehearing and instituted review of all challenged claims on all petition grounds in four proceedings, except claims 12 and 20, which had been disclaimed.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. Upon a request for rehearing, the decision on a petition will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“persuades us to grant Petitioner’s requests for rehearing and institute trial in IPR2017-02141 and IPR2017-02143. In the IPR2017-02142 and IPR2017- 02144 proceedings, which have already been instituted as to one claim, Petitioner’s requests for rehearing convince us to institute as to all claims and all grounds set forth in each petition. In particular, in order to deny institution, or partially institute, we were confronted with competing testimony of witnesses offered as experts, as well as competing prior art translations, and we resolved at least one disputed issue of material fact in favor of Patent Owner to deny each petition. See Dec. 17–20. Our own regulation, however, cautions against such an approach at the institution phase of a proceeding stating, “a genuine issue of material fact created by . . . testimonial evidence [filed by Patent Owner] will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review.” 37 C.F.R. § 42.108(c).” slip op. at 4
NonePatents in suitUS 7,239,965 - Olympia Tools International, Inc. v. JPW Industries, Inc.Institution deniedPTAB · Jun 20, 2018 · IPR2018-00388 · APJ Ulrike W Jenks · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 3, 5–8, 12, and 21–25 were unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the Petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the arguments and evidence presented in the Petition and the Preliminary Response, we are not persuaded that Petitioner has established a reasonable likelihood that it would prevail in any of its challenges with respect to any of claims 1, 3, 5–8, 12, and 21–25 of the ’464 patent. Accordingly, we deny institution of an inter partes review of claims 1, 3, 5–8, 12, and 21–25.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“Ex. 1001, 3:15–22, see Fig. 2. This description makes clear that the passage runs from one end of the connection member to the opposing other end of the connection member. It also is apparent from the ’464 patent that by extending between the first and second ends (elements 24 and 22, respectively) of connection member 16, the passage is a continuous space between those ends, that receives a spindle assembly that movably couples jaw pieces therein. See, e.g., id. at 3:9–13, 3:37–39, 4:1–2. The spindle assembly requires two pieces, a spindle nut 42 and a spindle 52, which are operatively coupled only after they are inserted from opposite ends though connection member 16. See, e.g., id. at 3:9–13, 3: 36–33, 4:1–2, 4:6–7, 5:53-54, Fig. 2. The ordinary and customary meaning of the term “passage”1 is “a way of exit or entrance: a road, path, channel, or course by which something passes” or “a corridor or lobby giving access to the different rooms or parts of the building.” When considering the ordinary and customary use of the term “passage” as read in light of the specification of the ’464 patent, we construe a “passage” to describe a tube having an opening on both ends so that it defines the path between the two opposing openings. In other words, we construe a “passage,” in the context of a “connection member defining a . . . passage,” to be, “a continuous open space extending from the first opening on one end of the connection member to a second opening at the opposing second end of the connection member.”” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Cornes does not satisfy the claimed “first connection member defining a first passage.” Id. As discussed above in the Claim Construction section (see II.A), a “passage” is “a continuous open space extending from the first opening on one end of the connection member to a second opening at the opposing second end of the connection member.” This is shown, for instance, in figure 2 of the ’464 patent, where passage 20 spans the length of member 16 between opening 24 of the stationary vise jaw and second end 22. See Ex. 1001, Fig. 2, see 3:19–20. Cornes discloses a vise that can be inserted into a trailer hitch. See Ex. 1006, Figs. 1 and 2. Cornes discloses two components 33 and 36 that are brought together to make up the shaft that is inserted into the trailer hitch. See Ex. 1006, Fig. 2. We agree with Patent Owner that Cornes further discloses that plate 52 is welded between components 33 and 36. See Ex. 1006 ¶ 35 (“a receiving sleeve 33 having an outer receiving opening in the outer face of the stationary jaw and an outer threaded stationary shaft 51 inside the receiving sleeve 33, which threaded stationary shaft 51 is welded to a shaft receiving plate 52 welded to the vise insertion tube 36”); see also id. at Fig. 2 (depicting the same). Sleeve 33 is not a passage because there is only one opening that serves as both the entrance and exit. Because Cornes does not disclose a passage spanning from the stationary jaw all the way to the end of insertion tube 36, we agree with Patent Owner that Cornes does not anticipate claim 1.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We agree with Patent Owner that Petitioner has not demonstrated a reasonable likelihood that it would prevail at trial in showing that claim 23 would have been obvious in view of Cornes. A showing of obviousness “requires a suggestion of all limitations in a claim,” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) and “an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 9,079,464
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.