- Scentair Technologies, LLC v. Prolitec, Inc.Rehearing deniedPTAB · Jun 24, 2021 · IPR2021-00013 · APJ Grace Karaffa Obermann · IPR · Rehearing
The Board denied the petitioner’s rehearing request, finding its new arguments untimely and unpersuasive as to the aerosol outlet limitation for claims 1–19.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A request for rehearing is not an opportunity to present new arguments or evidence that could have been presented in a petition. We could not have misapprehended or overlooked matters or arguments that were not asserted in the Petition. We deny the Rehearing Request because it is based on new arguments that Petitioner did not present in the Petition. B. Petitioner’s Arguments Are Unpersuasive Alternatively, even if we consider the new arguments raised for the first time in the Rehearing Request, we find none persuasive to show reversible error in the Decision. The ’767 patent describes and claims “a cap assembly” that is characterized by three distinct structures, namely, “a cap, a venturi insert, and a base attached together without welds or separate fasteners to define . . . an air outlet chamber” that is “partitioned from the interior of the receptacle by the base.” Ex. 1001, 15:6–13 (claim 1) (emphasis added); see id. at 3:30–43, 9:45–62 (written description).” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“The Petition advances three grounds, each of which is based on obviousness and asserts Benalikhoudja1 as a prior art reference. Pet. 5. We found in the Decision, and Petitioner does not dispute in the Rehearing Request, that each ground “depends on Petitioner’s assertion that Benalikhoudja discloses or suggests ‘an aerosol outlet chamber partitioned 1 We refer to US 2006/0237090 A1, published Oct. 26, 2006 (Ex. 1004). from the interior of the receptacle by the base.’” Dec. 5–6. As we did in the Decision, we refer herein to that feature of the claimed invention as “the aerosol outlet limitation.” Id. at 6. Based on the information presented in the Petition and Preliminary Response, we determined Petitioner did not show sufficiently, for purposes of trial institution, that Benalikhoudja discloses the aerosol outlet limitation. Id. at 9–10. Petitioner argues we erred on that point. Req. Reh’g 1–6.” slip op. at 3
§ 103 obviousnessPatents in suitUS 9,480,767 - PTAB · Mar 4, 2021 · CBM2018-00040 · APJ Christopher G Paulraj · CBM · Rehearing
The Board denied Petitioner’s second rehearing request and left in place its denial of institution because the patent’s CBM review eligibility was not subject to judicial review.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“rehearing of our denial of institution in this proceeding in light of the Federal Circuit’s decision in SIPCO, LLC v. Emerson Elec. Co., 939 F.3d 1301, 1313 (Fed. Cir. 2019). Paper 19. We also authorized Patent Owner to file an opposition to Petitioner’s second request for rehearing. Paper 20. Subsequently, the Supreme Court granted a petition for certiorari, vacated the Federal Circuit’s first opinion in the SIPCO case, and remanded the case “for further consideration in light of Thryv, Inc. v. Click-to-Call Technologies, LP,” 140 S. Ct. 1367 (2020). On remand, the Federal Circuit determined that the issue of whether a patent qualifies for CBM review is not subject to judicial review. SIPCO, LLC v. Emerson Elec. Co., 980 F.3d 865, 870 (Fed. Cir. 2020). Accordingly, because the circumstances that warranted further reconsideration of our denial of institution no longer hold true, we hereby decline to consider the second request for rehearing. For the foregoing reasons, Petitioner’s second request for rehearing is denied. Our original decision to deny institution based on lack of CBM review eligibility therefore stands.” slip op. at 2
NonePatents in suitUS 6,758,370 - Polygroup Limited Mco v. Willis Electric Co., LtdRehearing deniedPTAB · Feb 20, 2020 · IPR2016-01781 · APJ William V Saindon · IPR · Rehearing
The Board denied Patent Owner’s rehearing request and its request to submit new arguments and evidence as an offer of proof, leaving the remand briefing order unchanged.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“944 (Fed. Cir. 2019) (emphasis added).3 Further, the Federal Circuit clarified that our refusal to consider Miller alone was not a partial institution but rather a failure to consider an alternative argument. Polygroup, 759 F. App'x at 944 n.3. Thus, on remand, we were not to consider a new ground of unpatentability but rather an alternative argument that was “explicitly argued” in the prior ground during the trial phase before us.” slip op. at 4
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“evidence as an “Offer of Proof,” even if we deny its request for rehearing. Req. Reh’g 6. We see no particular reason or benefit to doing so. Patent Owner relies on Ultratec, Inc. v. CaptionCall, LLC to support its position that we should allow it to enter the new arguments and evidence, but Ultratec is inapposite. See id. (citing Ultratec, Inc. v. CaptionCall, LLC, 872 F.3d 1267, 1273 (Fed. Cir. 2017)). In Ultratec, the issue was the Board’s refusal to enter newly-available, allegedly inconsistent expert testimony in a case where neither the reasons for the Board’s refusal nor the testimony were made of record. Ultratec, 872 F.3d at 1272–73. As such,” slip op. at 5
- RemandOther
“944 (Fed. Cir. 2019) (emphasis added).3 Further, the Federal Circuit clarified that our refusal to consider Miller alone was not a partial institution but rather a failure to consider an alternative argument. Polygroup, 759 F. App'x at 944 n.3. Thus, on remand, we were not to consider a new ground of unpatentability but rather an alternative argument that was “explicitly argued” in the prior ground during the trial phase before us. Given that the Miller-alone ground was an argument in an instituted” slip op. at 4
NonePatents in suitUS 8,974,072 - PTAB · Oct 10, 2019 · IPR2018-00991 · APJ Patrick R Scanlon · IPR · Rehearing
The Board denied rehearing and left in place its discretionary denial of institution under § 314(a), concluding that the General Plastic factors supported denial.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a single request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. We review our Decision under an abuse of discretion standard. 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 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDecided for patent owner
“between Petitioner and the Prior Petitioners. Unlike the Valve case, however, the majority opinion did not find that the first factor favors denying institution. Rather, the majority opinion determined that the first factor weighs against exercising discretion to deny institution, but only moderately because of the complete overlap in the challenged claims between the Petition and the petition in the 136 IPR, as well as the overlap of many issues and arguments raised by the Petition and the 136 IPR petition. Dec. 12–13. Petitioner’s arguments do not establish that we overlooked or misapprehended anything, or used unreasonable judgment, in determining that the first factor weighs only moderately against exercising discretion to deny institution. Furthermore, even if we were to determine that the first factor heavily weighs against exercising discretion to deny institution, as advocated by Petitioner, this determination would not alter our overall weighing of the General Plastic factors.” slip op. at 8
Discretionary denialPatents in suitUS 9,144,700 - Smith & Nephew, Inc. / Arthrocare Corp. v. Arthrex, Inc.Rehearing deniedPTAB · Dec 15, 2017 · IPR2016-00918 · APJ Barry L Grossman · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 10 and 11 unpatentable as obvious because the cited commercial-success evidence had little probative weight.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“(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.” slip op. at 2
- Obviousness (§103) › Objective indicia / secondary considerations › Commercial successObjective indicia no nexusNot shown unpatentable
“Moreover, even if we were now to consider Exhibit 2013 and Professor Gall’s Declaration testimony about Ex. 2013, at best this evidence would merely create a presumption of nexus. Req. Reh’g. 6 (“a nexus should be presumed”). Establishing a presumption of nexus, however, does not establish commercial success or patentability. In re Kao, 639 F.3d at 1067 (when secondary considerations are present, “they are not always dispositive”); see also Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir. 2007) (“Although secondary considerations must be taken into account, they do not necessarily control the obviousness conclusion.”). As discussed above, the evidence of commercial success based on the sales data presented in the declaration testimony of Mr. Holter (Ex. 2029) and Mr. Vellturo (Ex. 2025) is entitled to little probative weight. Even if we were to attempt to balance this commercial success evidence against the substantial prior art evidence that claims 10 and 11 would have been obvious, as discussed in our Final Written Decision, it would not change our conclusion that a preponderance of the evidence establishes that claims 10 and 11 would have been obvious. See Fin. Dec. 68, 75. We disagree with Patent Owner’s argument “that the evidence of record regarding commercial success sufficiently rebuts any showing of obviousness of claims 10 and 11.” Req. Reh’g. 6.” slip op. at 9
§ 103 obviousnessPatents in suitUS 8,821,541 - Facebook, Inc. / Instagram, LLC v. Skky, LLCRehearing deniedPTAB · Nov 27, 2017 · CBM2017-00002 · APJ William V Saindon · CBM · Rehearing
The Board denied rehearing, finding no abuse of discretion in denying CBM institution because the patent, after disclaimer, lacked a claim requiring financial activity.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party requesting rehearing bears the burden of showing an abuse of discretion, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 3
- Adverse judgmentAdverse judgmentOther
“CBM patent review of claims 1–14 of the ’870 patent under Section 18 of the Leahy-Smith America Invents Act, Pub. L. No. 112–29, 125 Stat. 284, 329 (2011) (“AIA”). Patent Owner, Skky, LLC, filed a Preliminary Response. Paper 8 (“Prelim. Resp.”). With its Preliminary Response, Patent Owner provided evidence (Ex. 2001) that it filed with the Office a statutory disclaimer of claims 1–7 and 9 of the ’870 patent pursuant to 37 C.F.R. § 1.321(a). Prelim. Resp. 2 (citing Ex. 2001). After the Preliminary Response, Petitioner filed a Preliminary Reply to Patent Owner’s Preliminary Response, as authorized by the panel pursuant an e-mail request by Petitioner, to address the consequences of Patent Owner’s disclaimer of claims 1–7 and 9. Paper 9 (“Pet. Prelim. Reply”). In response to the” slip op. at 2
NonePatents in suitUS 9,203,870 - Costco Wholesale Corporation v. Robert Bosch LLCRehearing deniedPTAB · Nov 20, 2017 · IPR2016-00041 · APJ William V Saindon · IPR · Rehearing
The Board denied Costco’s rehearing request, leaving claim 6 not unpatentable because the asserted combinations did not explain why a skilled artisan would modify the spoiler as claimed.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. LEGAL STANDARD The Rule governing requests for rehearing provides that “[t]he burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). Further, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“determined that Petitioner failed to provide “an explanation for why it would have been obvious to combine the two separate components in Kotlarski ’090 into a single component.” ’823 Final Dec. 22. In its Request, Petitioner asserts that we overlooked the explanation by its expert that “[e]ach part of the ‘binary component’ performs the same function in the same way as the distinct components of Kotlarski ‘090.” Req. Reh’g 10 (citing Ex. 1014 ¶ 74). But pointing out that Kotlarski ’090 and claim 6 of the ’823 patent both have a spoiler for displacing air and claws for retention fails to account for the fact that they are configured to do so in different ways. Claim 6 requires a binary component having portions with different hardness values, where the wind deflection portion and the claws are integrated into a single piece (see, e.g., Ex. 1001, Figs. 1, 2 (depicting the claw as the lower portion of the spoiler, uniform along the length of the wiper)), whereas Kotlarski ’090 has separate retaining clips, longitudinally spaced apart in intervals, that have a similar profile as the wind deflection portion (see, e.g., Ex. 1021, Figs. 5–15 (depicting various embodiments of spoiler/clip combos, with blowouts showing just the separate clips)). This is not a simple matter of making two things one; somehow fusing the clips and wind deflection portion together of Kotlarski ’090 would not meet the requirement of claim 6 where the claw area is harder than the wind deflection portion, because the clips in Kotlarski ’090 are hard from claw to tip (i.e., through the wind deflection portion). See, e.g., Ex. 1021, Figs. 5, 6 (depicting the clip and a cross-section of the clip as made of a uniform material). We emphasize that Kolarski ’090’s clips are separate components from the spoiler, are of uniform hardness (all plastic), and are not harder at the claws. Petitioner’s expert’s testimony that the wind deflection portion and the claws perform the same function in the same way is an oversimplification and does not address this significant distinction. Further, Petitioner has not directed us to, nor do we see, any direct application of the teachings of Kotlarski ’090 for modifying the Prohaska spoiler to have harder claws. The Prohaska spoiler is similar to the spoiler in the ’823 patent, in that the claws are on the spoiler. Kotlarski ’090 is different—it teaches separate clips. It does not teach making the claws of a spoiler harder. To apply the teachings of Kotlarski ’090 to Prohaska’s spoiler in one of the articulated grounds would not satisfy the claims; it would require a further modification than what is shown in Kotlarski ’090 or explained in the Petition in order for the claw portion to be harder than the wind deflection portion. Petitioner argues that Prohaska already teaches a “binary component,” Req. Reh’g 10–12, but this argument is untenable in view of our understanding of the term. See ’823 Final Dec. 22 (explaining that the claim requires a binary component to be made of a single structure having different hardness values). Reviewing the Request, we are not persuaded we misapprehended or overlooked Petitioner’s arguments or evidence regarding the ground asserted against claim 6 of the ’823 patent involving Kotlarski ’090.” slip op. at 4
- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner
“Lastly, Petitioner argues that the ’264 Final Decision, which issued March 30, 2017, and determined claim 3 of the ’264 patent was unpatentable, should be held to have preclusive effect as to claim 6 in our ’823 Final Decision, which issued April 12, 2017.3 Req. Reh’g 13–15. That these two final decisions mailed on separate days is due to mere clerical factors—these trials proceeded concurrently. See Paper 21 (Scheduling Order placing these proceedings on the same schedule). Petitioner’s argument, if persuasive, would result in an inability to rehear certain cases mailed after others, contrary to our Rules. 37 C.F.R. § 42.71(d) (permitting rehearings of decisions, including final decisions). We are not persuaded that the ’264 Final Decision in this instance precludes certain determinations in the ’823 Final Decision. See also generally In re Craig, 411 F.2d 1333, 1336 (CCPA 1969) (where the Board has conceded error in a prior decision, the broad countervailing public policy considerations of granting valid 3 We note that neither decision has been designated as informative and/or precedential. patents preclude the application of res judicata).” slip op. at 7
§ 103 obviousnessPatents in suitUS 8,099,823 - Facebook, Inc. / Instagram, LLC v. Skky, LLCRehearing deniedPTAB · Nov 9, 2017 · CBM2017-00003 · APJ Karl D Easthom · CBM · Rehearing
The Board denied Facebook and Instagram’s rehearing request, maintaining that the patent was ineligible for CBM review because no existing challenged claim required financial activity.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party requesting rehearing bears the burden of showing an abuse of discretion, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“only for a patent that is a covered business method patent.” (Emphasis added). A patent is eligible for CBM review if it has at least one claim directed to a covered business method. Transitional Program for Covered Business Method Patents—Definitions of Covered Business Method Patent and Technological Invention; Final Rule, 77 Fed. Reg. 48,734, 48,736 (Response to Comment 8).” slip op. at 4
- Adverse judgmentOther
“Pet.”) requesting covered business method (“CBM”) patent review of claims 1–7 of the ’810 patent under Section 18 of the Leahy-Smith America Invents Act, Pub. L. No. 112–29, 125 Stat. 284, 329 (2011) (“AIA”). Patent Owner, Skky, LLC, filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). With its Preliminary Response, Patent Owner provided evidence (Ex. 2001) that it filed with the Office a statutory disclaimer of claim 5 of the ’810 patent pursuant to 37 C.F.R. § 1.321(a). Prelim. Resp. 2 (citing Ex. 2001). After the Preliminary Response, Petitioner filed a Preliminary Reply to Patent Owner’s Preliminary Response, as authorized by the panel pursuant an e-mail request by Petitioner, to address the consequences of Patent Owner’s disclaimer of claim 5. Paper 7 (“Pet. Prelim. Reply”). In slip op. at 2
NonePatents in suitUS 9,219,810 - Facebook, Inc. / Instagram, LLC v. Skky, LLCRehearing deniedPTAB · Nov 9, 2017 · CBM2017-00006 · APJ Karl D Easthom · CBM · Rehearing
The Board denied rehearing and maintained its denial of CBM institution because, after the statutory disclaimers, no challenged claim required a financial activity.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“proceeding only for a patent that is a covered business method patent.” (Emphases added). In other words, the decision at the time of institution is based upon on what “is a covered business method patent,” id. (emphasis added), instead of what was “a covered business method patent” prior to the disclaimer. See also AIA § 18(d)(1) (using the present tense “claims”); 37 C.F.R. § 42.207(e) (when a patent owner files a statutory disclaimer, “[n]o post-grant review will be instituted based on disclaimed claims”). Petitioner’s proposed rule would require the Director to institute a CBM patent review “for a patent that is [not] a covered business method patent,” contrary to AIA § 18(a)(1)(E).” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“284 (2011) (“AIA”) created a transitional program for the Board to conduct post-grant reviews of a limited set of patents designated as “covered business method patents.” AIA § 18(a). The AIA defines a “covered business method patent” as “a patent that claims 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.” Id. § 18(d)(1). Thus, in order to institute a CBM review proceeding, the statute requires a patent that claims a particular type of method or apparatus. See Secure Axcess, LLC v. PNC Bank Nat’l Ass’n, 848 F.3d 1370, 1381 (Fed. Cir. 2017) (“Necessarily, the statutory definition of a CBM patent requires that the patent have a claim that contains, however phrased, a financial activity element.” (emphasis added)); Unwired Planet, LLC v. Google Inc., 841 F.3d 1376, 1382 (Fed. Cir. 2016) (CBM patents “are limited to those with claims that are directed to methods and apparatuses of particular types and with particular uses ‘in the practice, administration, or management of a financial product or service’” (emphasis added)); Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1340 (Fed. Cir. 2016) (citing previous Board decisions that “properly focuse[d] on the claim language at issue” (emphasis added)). Under AIA § 18(a)(1)(E), “[t]he Director may institute a transitional proceeding only for a patent that is a covered business method patent.” (Emphases added). In other words, the decision at the time of institution is based upon on what “is a covered business method patent,” id. (emphasis added), instead of what was “a covered business method patent” prior to the disclaimer. See also AIA § 18(d)(1) (using the present tense “claims”); 37 C.F.R. § 42.207(e) (when a patent owner files a statutory disclaimer, “[n]o post-grant review will be instituted based on disclaimed claims”). Petitioner’s proposed rule would require the Director to institute a CBM patent review “for a patent that is [not] a covered business method patent,” contrary to AIA § 18(a)(1)(E).” slip op. at 5
NonePatents in suitUS 9,215,310 - PTAB · Apr 17, 2017 · IPR2016-01185 · APJ Patrick M Boucher · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution, finding the Petition insufficient to show a reasonable likelihood of prevailing on any challenge.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Decision” or “Dec.”) denying institution of an inter partes review of U.S. Patent No. 7,809,373 B2 (Ex. 1001, “the ’373 patent”), contending that “the Decision misapprehends or overlooks the Petition’s application of the prior art to the language of independent claims 15 and 24.” Paper 8 (“Req. Reh’g”), 1. When rehearing a decision by the Board on whether to institute a trial, the Board reviews the decision for an abuse of discretion. See 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); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burden of showing that our Institution Decision should be modified lies with Petitioner, the party challenging the decision. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“As determined in the Institution Decision, the Petition’s reliance on this disclosure does not sufficiently support its contention that “[i]n order for ‘contention free’ ranging to be performed, two mobile stations cannot transmit the same ranging code at the same time,” nor its conclusion that, “[a]ccordingly, in a contention free ranging procedure, only one mobile station is allowed to send the ranging code during a particular time.” Dec. 15; Pet. 46 (citing Ex. 1003 ¶ 108; Ex. 1018 ¶¶ 98, 105, 129). As indicated expressly in the cited passage of Etemad, it is also possible for contention-free ranging to be achieved through channel reservation rather than with a dedicated preamble. “Notably, this is different from the problem addressed by the ’373 patent, which seeks to avoid collisions when two mobile terminals simultaneously attempt to use the same random access channel to effect handovers.” Dec. 16 (citing Ex. 1001, col. 4, l. 66–col. 5, l. 7).” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Second, and more significant, even if Son, in isolation, disclosed a “dedicated preamble,” the Petition insufficiently articulates a compelling argument that the combined disclosures of Son and Etemad meet the specific combination of limitations recited in the challenged claims. In its argument, the Petition contends that the combination of Etemad and Son “teaches that the target base station ‘assigns . . . a ranging code’ to the mobile station for use during the handover” and that “[t]he mobile station uses this assigned ranging code to perform a ‘contention-free’ initial ranging procedure with the target base station.” Pet. 45 (citing Ex. 1005, col. 5, ll. 43–46, Fig. 2) (alterations by Petitioner). The portion of Etemad cited by the Petition to support this contention is:” slip op. at 5
- Expert testimonyPetitioner expert discountedDecided for patent owner
“But this contention, set forth in the Petition, is too conclusory to satisfy Petitioner’s burden. In particular, we agree with Patent Owner that “[t]his disclosure makes no reference to or explanation of a dedicated preamble, and Son provides no detail on how the code is assigned or how it is used by the terminal.” Prelim. Resp. 18. Although the Petition cites to testimony by Petitioner’s expert, Jonathan Wells, Ph.D., to support its contention, the cited portion of the expert testimony merely repeats the contention without adequate elaboration or explanation and is, therefore, similarly conclusory. Ex. 1003 ¶ 99; see 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight”). Nor is the Petition’s additional citation of portions of U.S. Pat. Publ. No. 2005/0041573 (“Eom”) sufficient to support its contention. The Petition does not adequately explain how the cited portions of Eom—which are not applied directly in any ground asserted by Petitioner—inform an understanding of Son’s disclosure to reach the conclusion Petitioner advocates.” slip op. at 4
§ 103 obviousnessPatents in suitUS 7,809,373
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.