• Intel Corporation / Cavium, LLC et al. v. Alacritech, Inc.Rehearing denied
  PTAB · Jun 13, 2022 · IPR2017-01410 · APJ Charles J Boudreau · IPR · Rehearing

  The Board denied Petitioner’s rehearing request and maintained that claims 41–43 were not shown unpatentable because the evidence did not establish network-interface reassembly.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in its petition. Id.” slip op. at 4

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “Put another way, the finding that Petitioner did not admit that the disputed limitation is not taught by Tanenbaum was not a finding that Petitioner proved that that limitation is taught or suggested by the asserted prior art. As the Federal Circuit explained, “the Board’s rejection of certain arguments made by [Patent Owner] does not necessarily support the Board’s finding that the asserted prior art teaches or suggests reassembly in the network interface,” and “[t]hat is especially the case here, where the parties’ briefing focuses on the disclosure of the reassembly limitations by one reference (Thia), but the Board appears to have relied on a different reference (Tanenbaum) to support its finding.” Id. at 1371–72 (emphasis added). The Court, accordingly, vacated the Board’s obviousness determination as to claims 41–43 and remanded “for the Board to reconsider whether the asserted prior art teaches or suggests the entirety of the reassembly limitations, including the requirement that reassembly takes place in the network interface.” Id. at 1373 (emphasis added). And as we explained in the Decision on Remand, after such reconsideration, we were not persuaded that the combination of Thia and Tanenbaum teaches or suggests “a flow re-assembler, disposed in the network interface,” as recited in claim 41, or a “network interface comprising . . . a re-assembler,” as recited in claim 43. RFWD 22–25. While Petitioner argues that “the RFWD tacitly acknowledges that the Petition’s discussion of Tanenbaum is much more extensive than the discussion on p. 77 that the Federal Circuit described as ‘conclusory’” (Req. Reh’g 3 n.4 (citing RFWD 23–24)), we find nothing in that “more extensive” discussion that establishes by a preponderance of the evidence that the asserted combination teaches or suggests reassembly in the network interface.” slip op. at 6

  § 103 obviousness
  Patents in suitUS 8,131,880
• Shenzhen Mediatek Tong Technology Co., Ltd. v. The Noco CompanyRehearing denied
  PTAB · May 17, 2021 · IPR2020-01387 · APJ Jameson Lee · IPR · Rehearing

  The Board denied rehearing, leaving in place the denial of institution on claims 1–3, 5, 8–17, 19–21, and 23 because Petitioner did not show an abuse of discretion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW When rehearing a decision on institution, we do not review the merits of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, the request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not reached

    “We recognize that Paragraph 50 of Zhang describes two ways to measure the voltage “at the two terminals” of the vehicle battery, and the other way is by the small teeth of the output power clip. Ex. 1006 ¶ 50. But Zhang describes the two ways as occurring “at the same time,” and not as alternative implementations. Thus, measurements at both points are taken to obtain the voltage at the two terminals of the vehicle battery. Dr. Hartup does not address or explain how a measurement can be taken at the input terminal of the DC contactor that would be indicative of the voltage of the external vehicle battery connected to the output terminal of the DC contactor, if the DC contactor is not already closed. Ex. 1003 ¶ 59. The Petition does not address Zhang’s disclosure of measuring the voltage of the vehicle battery on the input side of the DC contactor at the same time a measurement is taken by the small teeth of the output power clip. Paper 9, 33 (emphasis added).” slip op. at 3

  • BurdenDecided for patent owner

    “II. STANDARD OF REVIEW When rehearing a decision on institution, we do not review the merits of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, the request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2

  § 102 anticipation
  Patents in suitUS 9,007,015
• Mercedes-Benz USA, LLC v. Carucel Investments, L.P.Rehearing denied
  PTAB · Mar 3, 2021 · IPR2019-01298 · APJ Thomas L Giannetti · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving in place its decision that all challenged claims were unpatentable.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: 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. A rehearing request is not an opportunity for the requesting party to reargue its case or merely to express disagreement with the Final Written Decision. Nor is it an opportunity for the moving party to present new arguments that were not in its original submissions.” slip op. at 3

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “As discussed further below, after considering all the evidence, we provided in the Final Written Decision a detailed analysis of Patent Owner’s arguments, and rejected Patent Owner’s proposed limitations for “mobile unit,” determining that the ordinary meaning should apply and no further construction was necessary. Final Dec. 14–26. D. The Final Written Decision Our analysis of “mobile unit” in the Final Written Decision was guided by Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Final Dec. 11. In summary, for the reasons that follow, we are not persuaded that our analysis of “mobile unit” under Phillips was incorrect, or that we overlooked or misapprehended Patent Owner’s arguments or evidence in that analysis.” slip op. at 5

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 7,221,904
• Mercedes-Benz USA, LLC v. Carucel Investments, L.P.Rehearing denied
  PTAB · Mar 3, 2021 · IPR2019-01404 · APJ Daniel J Galligan · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving claims 1, 4–11, and 14–23 unpatentable based on its construction of “mobile device” and findings on combining CDMA and TDMA.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “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. A rehearing request is not an opportunity for the requesting party to reargue its case or merely to express disagreement with the Final Written Decision. Nor is it an opportunity for the moving party to present new arguments that were not in its original submissions.” slip op. at 3

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “We disagree that we misapprehended or overlooked any matters in addressing Patent Owner’s proposed construction for “mobile device.” Rather, we provided a comprehensive analysis of the term “mobile device.” anything that was overlooked or misapprehended in this analysis, as required by 37 C.F.R. § 42.71(d). Instead, Patent Owner merely expresses its disagreement with our conclusions and proceeds to reargue points and evidence already considered and rejected in the Final Written Decision. This approach is not proper in a rehearing request. Furthermore, Patent Owner’s own arguments show the error in its proposed construction. For example, Patent Owner argues that the recited “mobile device” “must register with and be able to directly communicate with the cellular network.” PO Resp. 13; Req. Reh’g 1 n.1. Yet, Patent Owner acknowledges that “the claims of the ’023 Patent require the apparatus/movable base station to communicate directly with the cellular network (and not the ‘mobile device’).” Req. Reh’g 3 (emphasis added). As we pointed out in the Final Decision, the only claimed communication involving the mobile device is between the claimed “apparatus” (the mobile base station) and the mobile device, and Patent Owner acknowledges that this communication need not be cellular. Final Dec. 14 (citing PO Sur-reply 9). Thus, Patent Owner’s arguments undermine its proposed construction.” slip op. at 3

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundOther

    “[t]he Board erred in finding that that ‘CDMA and TDMA are not incompatible’ by improperly disregarding substantial evidence set forth by Patent Owner and its expert—that undermines any expectation of success and would have discouraged a [person of ordinary skill in the art] from attempting Petitioner’s combinations.” Req. Reh’g 14 (citing Final Dec. 79). Patent Owner does not attempt to identify any specific errors in citing pages from Patent Owner’s written submissions and testimony from its declarant. Req. Reh’g 14 n.31. We disagree that we misapprehended or overlooked any matters in this regard. Rather, we considered Patent Owner’s submissions and disagreed with them, finding instead that the record demonstrated that CDMA and TDMA can be combined, and we relied on, among other evidence, a prior art reference that expressly discloses a combination of CDMA and TDMA. Final Dec. 56–57 (citing Ex. 1033), 79. We further found that a person of ordinary skill in the art would have had reason to make the proposed combinations and would have had a reasonable expectation of success in doing so. Final Dec. 57–58, 79–81. slip op. at 6

  Claim construction§ 103 obviousness
  Patents in suitUS 7,979,023
• Google LLC v. Uniloc 2017, LLCRehearing denied
  PTAB · Oct 16, 2020 · IPR2019-01584 · APJ Kevin F Turner · IPR · Rehearing

  The Board denied Google’s rehearing request, finding no abuse of discretion in denying institution of review of claims 1–3, 5, 6, 8, 39, and 41 under its General Plastic analysis.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW When rehearing a decision on institution, we do not review the merits of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, the request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for patent owner

    “petitions are only relevant if Petitioner was a party to the prior proceedings, or had a relationship with the prior petitioners. Reh’g Req. 7. But a review of the cited precedential decision does not reflect Petitioner’s suggestion. See General Plastic, Paper No. 19 at 15−19 (“Our intent in formulating the factors was to take undue inequities and prejudices to Patent Owner into account.”). General Plastic does not proscribe panels of the Board from considering whether a subsequent petitioner knew of the prior art cited in the subsequent petition at the time of filing of the first petition, per the second factor. Similarly, we are not barred, under General Plastic, from considering the length of time that elapsed between when a petitioner learned of the art and when the petition, based on that art, was filed, or whether petitioner provides an adequate explanation for the time elapsed between the filings of multiple petitions, per the fourth and fifth factors. Additionally, we are not persuaded that the factors enumerated in General Plastic, as viewed through the lens of Valve Corp., must all be limited by any possible relationship between the multiple petitioners. Although the discussion of the first factor in Valve Corp. makes clear that “any relationship between those petitioners when weighing the General Plastic factors” must be considered, the remaining factors take into account the knowledge of the second petitioner irrespective of a specific relationship. See Valve Corp., Paper 11 at 9−15. As such, the relationship between the different petitioners certainly has some bearing on what the second petitioner knew, when they knew it, and when they acted upon it, but the consideration of the second through seventh factors does not require a showing of a specific relationship between the petitioners to consider those factors.” slip op. at 5

  Discretionary denial
  Patents in suitUS 6,519,005
• Flex Logix Technologies, Inc. v. Venkat KondaRehearing denied
  PTAB · Sep 16, 2020 · IPR2020-00261 · APJ Jo-Anne M Kokoski · IPR · Rehearing

  The Board denied Patent Owner’s rehearing requests, leaving institution of review of claims 1–7, 11, 15–18, 20–22, 32, and 47 in place.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “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). Patent Owner, as the party challenging the Decisions, has the burden of showing that the Decisions should be modified. Id. When rehearing a decision on a petition, the Board reviews the decision for an abuse of discretion. Id. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of the law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “in our Decision on Institution. In the Decision, we directly addressed Patent Owner’s arguments that Dr. Baker is not qualified to testify in this proceeding because he is neither a person of ordinary skill in the art, nor an expert in the relevant art. See Dec. 7–8. In particular, we explained that there is no requirement “that the expert’s experience perfectly match the relevant field, or that the expert is a person of ordinary skill in the art.” Id. at 7. We also explained that Dr. Baker testifies as to his education and qualifications and provides his curriculum vitae. See Ex. 1002 ¶¶ 3–12; Ex. 1003. At this preliminary stage, we cannot say that Dr. Baker’s scientific, technical, and other specialized knowledge will not be helpful in understanding the evidence. See Fed. R. Evid. 702(a). On this record, we are not persuaded that Dr. Baker’s testimony should be disregarded. Id. at 8. Therefore, even if Dr. Baker were not a person of ordinary skill in the art as Patent Owner contends, it does not follow that he is unqualified to testify in these proceedings. Nothing was misapprehended or overlooked in considering Dr. Baker’s testimony.” slip op. at 6

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(Ex. 2001). In the Preliminary Response, Patent Owner cited the Konda Declaration when discussing the experience and qualifications of the named inventor of the ’523 patent. Prelim. Resp. 8–9. The education level of the inventor, however, is just one of several factors that we may consider in determining the level of ordinary skill in the art. See Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (enumerating six factors that “may be considered in determining the level of ordinary skill in the art” (quoting Evt’l Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696 (Fed. Cir. 1983))). And, as Patent Owner noted in the Preliminary Response, “these factors are merely a guide to determining the level of ordinary skill in the art.” Prelim. Resp. 7–8 (citing Daiichi Sankyo, 501 F.3d at 1256). In any event, in the Decision we also considered Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art, noted the differences between them, and stated that “[o]ur determination regarding Petitioner’s challenge does not turn on the differences between Petitioner’s and Patent Owner’s definitions.” Dec. 7. Therefore, our evaluation of Petitioner’s challenges and Dr. Baker’s testimony in support thereof would have been the same under Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art. See id. (“[W]e note that our conclusions would be same under either definition.”).” slip op. at 7

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot reached

    “Moreover, in the Decision, we directly addressed Patent Owner’s argument with respect to whether the ’394 provisional and ’605 PCT provided support for the claim limitation “said routing network comprising a plurality of stages y, in each sub-integrated circuit block, starting from the lowest stage of 1 to the highest stage of y, where y≧1” when y=1. Dec. 14. In particular, we found that Patent Owner’s arguments, as we understand them, are directed only to the disclosure of a network with only one stage (y=1). [Prelim. Resp.] at 15–39. Patent Owner does not address the other limitations of claim 1, and does not point to any disclosures in the priority applications that describe a sub-integrated circuit block with only one stage that also comprises pluralities of forward connecting links and backward connecting links as required by claim 1. Id. Thus, we did not overlook Patent Owner’s arguments, but rather evaluated the disclosures in the ’394 provisional and ’605 PCT and determined, on the record at this stage of the proceeding, that they do not provide sufficient written description support for the challenged claims. The parties will have the opportunity to further develop the record on these issues during trial, and the Board will evaluate the fully-developed record at the close of the evidence. D. Public Availability of the ’394 provisional” slip op. at 9

  § 102 anticipation§ 112 disclosure
  Patents in suitUS 8,269,523
• Flex Logix Technologies, Inc. v. Venkat KondaRehearing denied
  PTAB · Sep 16, 2020 · IPR2020-00260 · APJ Jo-Anne M Kokoski · IPR · Rehearing

  The Board denied the Patent Owner’s rehearing requests, leaving institution in place for claims 1–7, 11, 15–18, 20–22, 32, and 47.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “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). Patent Owner, as the party challenging the Decisions, has the burden of showing that the Decisions should be modified. Id. When rehearing a decision on a petition, the Board reviews the decision for an abuse of discretion. Id. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of the law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2

  • Strike new argumentNew argument disregardedOther

    “Consolidated Trial Practice Guide, 90. The Consolidated Trial Practice Guide goes on to state that “[a]bsent a showing of ‘good cause’ prior to filing the request for rehearing or in the request for rehearing itself, new evidence will not be admitted.” Id. (citing Huawei, Paper 19 at 4).” slip op. at 4

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Dr. Baker testifies as to his education and qualifications and provides his curriculum vitae. See Ex. 1002 ¶¶ 3–12; Ex. 1003. At this preliminary stage, we cannot say that Dr. Baker’s scientific, technical, and other specialized knowledge will not be helpful in understanding the evidence. See Fed. R. Evid. 702(a). On this record, we are not persuaded that Dr. Baker’s testimony should be disregarded. Id. at 8. Therefore, even if Dr. Baker were not a person of ordinary skill in the art as Patent Owner contends, it does not follow that he is unqualified to testify in these proceedings. Nothing was misapprehended or overlooked in considering Dr. Baker’s testimony.” slip op. at 6

  • Skill levelOther

    “(Ex. 2001). In the Preliminary Response, Patent Owner cited the Konda Declaration when discussing the experience and qualifications of the named inventor of the ’523 patent. Prelim. Resp. 8–9. The education level of the inventor, however, is just one of several factors that we may consider in determining the level of ordinary skill in the art. See Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (enumerating six factors that “may be considered in determining the level of ordinary skill in the art” (quoting Evt’l Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696 (Fed. Cir. 1983))). And, as Patent Owner noted in the Preliminary Response, “these factors are merely a guide to determining the level of ordinary skill in the art.” Prelim. Resp. 7–8 (citing Daiichi Sankyo, 501 F.3d at 1256). In any event, in the Decision we also considered Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art, noted the differences between them, and stated that “[o]ur determination regarding Petitioner’s challenge does not turn on the differences between Petitioner’s and Patent Owner’s definitions.” Dec. 7. Therefore, our evaluation of Petitioner’s challenges and Dr. Baker’s testimony in support thereof would have been the same under Petitioner’s and Patent Owner’s proposed definitions of the level of ordinary skill in the art. See id. (“[W]e note that our conclusions would be same under either definition.”).” slip op. at 7

  § 102 anticipation§ 112 disclosure
  Patents in suitUS 8,269,523
• Ericsson Inc. v. Uniloc 2017, LLCRehearing denied
  PTAB · Sep 9, 2020 · IPR2020-00420 · APJ Jameson Lee · IPR · Rehearing

  The Board denied Ericsson’s rehearing request and left in place the discretionary denial of institution for claims 1–5, 7, and 17 under General Plastic.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW When rehearing a decision on institution, we do not review the merits of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, the request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for patent owner

    “considered whether Petitioner knew of prior art which disclosed the same material as what the allegedly recently discovered references disclose. Decision 10–11. The additional consideration was prompted by the Petition’s characterization of Alamouti as merely disclosing an “implementation detail” omitted by the Merakos and Kay. Pet. 28–29. Petitioner argues that the additional consideration of the criticality of the disclosure contained in the allegedly recently discovered prior art applies a new standard that is inconsistent with General Plastic. Reh’g Req. 11. We disagree. First, there is no inconsistency because General Plastic does not prohibit the consideration. Second, the consideration is not a new standard, because, in our view, it already is implicit in General Plastic. Typically, there is nothing to trigger it and an assumption is usually made that absence of the recently discovered reference is what kept Petitioner from filing the petition earlier. Here, the circumstance is different, because Alamouti, and Ling evidently as well, are used by Petitioner only to provide relatively less significant implementation details compared to what Merakos and Kay disclose. Third, Petitioner does not point to anything in General Plastic which approves a hypothetical petitioner’s possibly substituting a reference it has known for a long time with a recently obtained reference that discloses the same, to justify a delay in filing a petition. Thus, it is not” slip op. at 6

  • BurdenDecided for patent owner

    “every single document in the related litigation. It was incumbent upon Petitioner to submit and identify material to support its assertions. Although we were willing to inspect the Complaint and any Amended Complaint, we were not willing to go further. It matters not whether a plaintiff asserting patent infringement is required to identify all asserted claims in the its assertion, and we need not even have looked in the Complaint.” slip op. at 3

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Petitioner’s accounting must begin from when it first learned that Patent Owner had filed suit accusing products designed and manufactured by Petitioner of infringing claims of the ’079 patent.” Decision 12. Rather than accounting for the entire 10 month period from March 26, 2019 to January 17, 2020, the Petition only addressed 4 months. Pet. 73. Now, in the Request for Rehearing, Petitioner provides for consideration an explanation that purportedly covers the entire 10 month period. Reh’g Req. 7–10. The discussion and change of focus from 4 months to 10 months arguments after the original arguments are rejected. Accordingly, we decline to consider the new explanation that purportedly accounts for the full 10 month period. C. slip op. at 5

  Discretionary denial
  Patents in suitUS 6,868,079
• Blackberry Corp. v. Facebook, Inc.Rehearing denied
  PTAB · Apr 17, 2020 · IPR2019-01593 · APJ Miriam L Quinn · IPR · Rehearing

  The Board denied rehearing and left in place its discretionary denial of the petition, finding no misapprehension or oversight in its assessment of the claim 23 challenges.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “According to 37 C.F.R. § 42.71(d), “[t]he burden of showing a decision should be modified lies with the party challenging the decision,” and the “request must specifically identify all matters the party believes the Board misapprehended or overlooked.” The burden here, therefore, lies with Petitioner to show we misapprehended or overlooked the matters it requests” slip op. at 2

  • Other 314aInstitution denied discretionary otherDenied

    “Partes Review. Paper 7 (“Dec.”). We exercised our discretion under 35 U.S.C. § 314(a) and denied the Petition based on our determination that Petitioner has only demonstrated a reasonable likelihood of prevailing as to three claim challenges (out of 17).1 Dec. 39−40. Petitioner filed a Request for Rehearing challenging several aspects of our Decision. Paper 8 (Req. Reh’g). In particular, Petitioner challenges our determination of the scope of “Global Positioning System data” (hereinafter “GPS Data”) a term recited in independent claim 23. Req. Reh’g 3−6. Petitioner further challenges our determination concerning the term “range of acceptable values,” recited in claim 23. Id. at 10−12. Thus, Petitioner argues, based on the correct interpretation of “GPS data” and “range of acceptable values,” we should have instituted trial because it demonstrated a reasonable likelihood of prevailing as to four or five out of eight challenged claims.2 Req. Reh’g 13.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “types of information that are GPS data, such as idle time. The portions of the Specification that Petitioner now cites, however, do not show that the GPS data is not, at a minimum, location information. As we stated in our Decision, other types of data may be transmitted from the remote unit to the central location, but the GPS data does refer to location information. Dec. 9. Moreover, Petitioner points out that the Specification discusses vehicle speed, idle time, movement, and actual windshield time as examples of calculated values, arguably from GPS location and time information. Req. Reh’g 3. But the Specification actually refers to these values to determine exceptions to be logged and noted (Ex. 1001, 4:41−49, 4:65−67, 6:1−3), which proves only that the system may use non-GPS data, in combination with GPS data, to determine exceptions. We acknowledge that claim 23’s recitation of GPS data could seem, at first blush, to potentially encompass every comparison that the Specification explains. Claim 23, however, must be interpreted in a manner that accounts for the recited two-part structure. In the first part, the claim recites a first comparison that involves the GPS data; and in the second part, the claim recites the second comparison that does not mention GPS data. Our analysis of the term GPS data in our Decision did not assume that the two comparisons involved the same data, e.g., GPS data. This is where Petitioner disagrees with our assessment, because it urges us to construe GPS data as including values and information recited in the second comparison, i.e., the idle time or recited “stationary time.” Petitioner’s position cannot be correct because the claim does not require that the “stationary time” also be GPS data. Further, the comparison that claim 23 recites with respect to GPS data does not mention exceptions at all, so it does not follow that all the Specification’s descriptions of exceptions encompass GPS data. The second comparison recited in claim 23 (comparing the stationary time to a predetermined stationary time), in contrast, is expressly performed for the purpose of noting an exception. Claim 23 (“if the length of time that the remote unit remains in a stationary position is greater than the predetermined stationary time, the system notes an exception.”). Thus, Petitioner, even in arguing for the first time its claim construction position, has not shown that derived data must also be GPS data according to the plain reading of the claim language. Consequently, having reviewed Petitioner’s arguments, we are not persuaded that GPS data means data that is derived from and representative of GPS coordinates and time stamps, as argued for the first time in the Request for Rehearing.3” slip op. at 4

  • BurdenDecided for patent owner

    “construction issue. Patent Owner explicitly addressed the construction of the term, a fact we acknowledged in our Decision. Dec. 8 (citing Prelim. Resp. 29−30). Petitioner did not address the scope of the term explicitly or implicitly. And it was not apparent from any of the now-cited portions of the Petition that Petitioner contended a scope of the term to include data that is derived from and representative of GPS coordinates and time stamps. Petitioner’s argument attempts to characterize its omission of a contention regarding claim construction as an oversight on our part. The argument is not persuasive as it is Petitioner’s burden to show in the Petition its contentions regarding how the challenged claim is to be construed and how, so construed, the claim is rendered obvious by the asserted references. See 37 C.F.R. § 42.104(b)(3)−(4). Therefore, we could not have either overlooked Petitioner’s position on claim construction, since none was provided, or misapprehended a position of claim scope not made explicit.” slip op. at 3

  Claim constructionDiscretionary denial
  Patents in suitUS 6,356,841
• Intel Corporation v. Hera Wireless S.A.Rehearing denied
  PTAB · Nov 8, 2019 · IPR2018-01687 · APJ Jacqueline T Harlow · IPR · Rehearing

  The Board denied Intel’s rehearing request, leaving institution denied for claims 1–6 because the proposed obviousness combinations relied on hindsight and lacked sufficient support.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “ANALYSIS Pursuant to 37 C.F.R. § 42.71(d): A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion exists where a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988).” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “the proposed combination of Hansen and Ramasubramanian manifests hindsight reasoning, as it would abandon the receiver-based channel estimation techniques central to Ramasubramanian in favor of an incompatible transmitter-based threshold control system that mirrors the disclosures of the challenged patent, but is neither suggested by the prior art, nor supported by the background knowledge possessed by a person having ordinary skill in the art. Id. at 18–19; see also id. at 27–28 (explaining that the same reasoning applies to the combination of Mujtaba and Ramasubramanian). More particularly, the Decision finds that Petitioner discounts the core disclosures of Ramasubramanian, and argues instead that an ordinarily skilled artisan would have been motivated, based on the problem identified by Ramasubramanian, to pursue an undisclosed solution wholly incompatible with the solution Ramasubramanian proposes. In view of Ramasubramanian’s teachings concerning the advantages of the disclosed receiver-based channel estimation system and method, and Hansen’s silence regarding smoothing, we are not persuaded by Petitioner’s argument.” slip op. at 4

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner

    “the proposed combination of Hansen and Ramasubramanian manifests hindsight reasoning, as it would abandon the receiver-based channel estimation techniques central to Ramasubramanian in favor of an incompatible transmitter-based threshold control system that mirrors the disclosures of the challenged patent, but is neither suggested by the prior art, nor supported by the background knowledge possessed by a person having ordinary skill in the art. Id. at 18–19; see also id. at 27–28 (explaining that the same reasoning applies to the combination of Mujtaba and Ramasubramanian). More particularly, the Decision finds that Petitioner discounts the core disclosures of Ramasubramanian, and argues instead that an ordinarily skilled artisan would have been motivated, based on the problem identified by Ramasubramanian, to pursue an undisclosed solution wholly incompatible with the solution Ramasubramanian proposes. In view of Ramasubramanian’s teachings concerning the advantages of the disclosed receiver-based channel estimation system and method, and Hansen’s silence regarding smoothing, we are not persuaded by Petitioner’s argument.” slip op. at 4

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “instances,” we improperly “adopted Dr. Sharony’s factual position despite conflicting testimony from Dr. Wicker” (Req. Reh’g. 9). In deciding whether to institute, we are required by our rules to view testimonial evidence “in the light most favorable to the petitioner” only where there is a genuine issue of material fact created by the testimony. See 37 C.F.R. § 42.108 (c). The rule, however, does not require us to accept the testimony 5 of any expert. The Board has broad discretion to assign weight to be accorded expert testimony. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010). Aside from identifying the evidence relied upon by the parties, and describing their positions regarding the level of ordinary skill in the art, our Decision does not refer to Drs. Wicker or Sharony or discuss, much less rely on, their testimony. See Dec. 7–9. Our determination that Petitioner failed to carry its burden to demonstrate a reasonable likelihood of establishing the unpatentability of at least one claim of the ’377 patent is premised on the inadequacy of Petitioner’s showing, and our finding that Petitioner’s proposed obviousness combinations reflect improper hindsight bias. See Dec. 17–28. Moreover, acceptance of Petitioner’s contention that the Board must automatically adopt the reasoning of a petitioner’s expert in deciding whether to institute inter partes review––irrespective of the sufficiency of that testimony––would compel institution in every case where expert testimony is presented. Petitioner’s argument is another instance of a disagreement with our Decision and not a proper basis for rehearing.” slip op. at 5

  § 103 obviousnesscites KSR
  Patents in suitUS 8,737,377

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