- Duncan Parking Technologies, Inc. v. Ips Group Inc.Rehearing grantedPTAB · Aug 18, 2017 · IPR2016-00067 · APJ Josiah C Cocks · IPR · Rehearing
The Board granted IPS’s rehearing request and held claims 1–5 and 7–10 not shown unpatentable as anticipated by King ’054 under § 102(e).
RulingsRehearing decision- RehearingRehearing, grantedGranted
“without prior authorization from the Board.” 37 C.F.R. § 42.71(d). The party requesting rehearing has the burden of showing that the decision from which rehearing is sought should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” Id.” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“communicated to the inventors of King ’054 by Mr. King. In that respect, we observe the following: (1) it is undisputed that Mr. King and the D+I inventors invented the substantive content that became claims 8 and 10 of the ’310 patent; (2) Mr. King is a common inventor as between each of the ’310 patent and King ’054; (3) the record reflects that there was frequent and numerous collaborative exchanges between Mr. King and the other inventors of King ’310 (i.e., the D+I inventors); and (4) those exchanges occurred prior to the filing of the application that became King ’054. See, e.g., Exs. 2018–31, 2034–42.” slip op. at 6
- Strike new argumentNew argument disregardedOther
“Response to IPS’s Request for Rehearing, provides little, if any, basis undermining the above-noted inference. DPT’s attempt, as a part of its Response, to belatedly seek rehearing of our Final Written Decision as to claims 1–5, 7, and 9 of the ’310 patent is both untimely and inadequately supported on the present record.4 Indeed, all the Response does is inappropriately seek rehearing of our Final Written Decision as to claims 1– 5, 7, and 9 of the ’310 patent, and does not follow our instruction of being responsive to the subject of the Request for Rehearing, i.e., the anticipation of dependent claims 8 and 10. See Paper 32, 2 (“The panel would like to hear from DPT as to the content of IPS’s Request for Rehearing. Accordingly, the panel authorizes . . . DPT to file a reply to IPS’s Request for Rehearing.”).” slip op. at 6
§ 102 anticipationPatents in suitUS 7,854,310 - Palo Alto Networks, Inc. v. Finjan, Inc.Rehearing deniedPTAB · May 19, 2017 · IPR2015-01979 · APJ Miriam L Quinn · IPR · Rehearing
The Board denied Palo Alto Networks’ rehearing request, leaving intact the finding that Khazan does not teach the second function limitation for claims 1 and 4.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“In sum, we are not persuaded that Petitioner’s arguments show an abuse of discretion in deciding the issue presented. Rather, we view Petitioner’s arguments as expressing a disagreement with our findings concerning Khazan’s disclosure. In our Final Written Decision we stated the reasons why we disagree with Petitioner’s view of Khazan, and are not persuaded by Petitioner’s rehearing request that the passages cited and explained during rehearing should alter our findings that Khazan does not teach invoking the second function with the input, only if that input is deemed safe. We reiterate our conclusion that Khazan invokes the target function, with its parameters as stated above, before any pre-monitoring code verifies those parameters. Final Dec. 49−53. Therefore, Khazan does not teach invoking the second function with the input, only if such invocation is deemed safe.” slip op. at 8
- Prior constructionOther
“B. CLAIM CONSTRUCTION ISSUE Petitioner argues that claim construction for the term “call to a first function” should be consistent across proceedings addressing the patent-at-issue. Req. Reh’g 13−14. We agree with Petitioner’s contention that the claim construction should be consistent. Petitioner, however, does not allege that the construction we have given the term in this proceeding should be altered or modified in any way. Accordingly, we have not been directed to any particular issue that we misapprehended or overlooked in this proceeding concerning the claim construction of a “call to a first function.”” slip op. at 9
Claim constructionPatents in suitUS 8,141,154 - The Toro Company v. MTD Products Inc.Rehearing deniedPTAB · Apr 11, 2017 · IPR2016-01352 · APJ William V Saindon · IPR · Rehearing
The Board denied Toro’s rehearing request and left institution denied because the Petition did not persuasively explain why a skilled artisan would combine Irikura’s steering assembly with Hauser.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Decision” or “Dec.”) denying institution of an inter partes review of U.S. Patent No. 9,254,865 (Ex. 1001, “the ’865 patent”). Paper 10 (“Req. Reh’g”). 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 has occurred 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. 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). 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. This latter requirement is critical; requests for rehearing are not an opportunity to raise new arguments but rather an opportunity to point us to arguments we overlooked or misapprehended.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Hauser’s instruction to employ “sound engineering judgment” in the selection of a front steering assembly. Req. Reh’g 9–11. Regardless of any instruction in Hauser, what was missing in the Petition was an explicit and persuasive explanation of why a person of ordinary skill in the art would have looked to Irikura’s front wheel steering assembly. Irikura does not describe itself as a zero-degree turning vehicle, and as we found in our Decision, Petitioner has not explained why a person of ordinary skill in the art would have looked to it for modifying a zero-degree turning vehicle such as Hauser. Dec. 9. Petitioner points us to no passage in the Petition that we overlooked or misapprehended on this point, and instead merely offers additional arguments.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Hauser’s instruction to employ “sound engineering judgment” in the selection of a front steering assembly. Req. Reh’g 9–11. Regardless of any instruction in Hauser, what was missing in the Petition was an explicit and persuasive explanation of why a person of ordinary skill in the art would have looked to Irikura’s front wheel steering assembly. Irikura does not describe itself as a zero-degree turning vehicle, and as we found in our Decision, Petitioner has not explained why a person of ordinary skill in the art would have looked to it for modifying a zero-degree turning vehicle such as Hauser. Dec. 9. Petitioner points us to no passage in the Petition that we overlooked or misapprehended on this point, and instead merely offers additional arguments.” slip op. at 4
- Expert testimonyPetitioner expert discountedDecided for patent owner
“ZTR turns. Req. Reh’g 3–6. In our Decision, we found that “Petitioner does not direct us to evidence that Irikura itself is a ZTR vehicle or describes a steering assembly for zero-degree turns.” Dec. 7. In other words, we found that Irikura does not hold itself out as a ZTR-capable vehicle. Petitioner’s Request fails to identify any disclosure in Irikura that we misapprehended on this point. Instead, Petitioner’s Request points us to the testimony of its declarant, Mr. Smith. Regarding his testimony, we found in our Decision that “Petitioner’s evidence that Irikura’s steering assembly nonetheless is capable of zero-degree turns is unpersuasive.” Id. at 7–9. We considered Mr. Smith’s testimony that Irikura must provide a zero-degree turn in order not to scuff when providing a zero-degree turn to involve circular reasoning. Id. at 8. We also found that Mr. Smith’s testimony regarding the operation of Irikura’s front wheel gear assembly based on modified versions of the drawings to be improper. Id. at 8–9. Specifically, the analysis of Petitioner and Mr. Smith was based on projections of the behavior of components in Irikura that impermissibly relied on the precision of drawings, rather than on actual disclosure of Irikura (which was silent on the matter). As we stated in our Decision, absent indication in the specification (or other indications of dependability), extrapolations based on the precision and accuracy of the drawings are improper. Id. Petitioner now directs us to Mr. Smith’s testimony that allegedly stands for the premise Irikura provides a zero-degree turn because it has drive wheels capable of rotating in opposite directions. Req. Reh’g 3–4 (citing Ex. 1007 ¶¶ 75–76). Petitioner does not point to where this argument was developed in the Petition. See 37 C.F.R. § 42.71(d).” slip op. at 3
§ 103 obviousnessPatents in suitUS 9,254,865 - Carefusion Corporation v. Baxter International, Inc.Rehearing deniedPTAB · Mar 27, 2017 · IPR2016-01463 · APJ Richard E Rice · IPR · Rehearing
The Board denied rehearing of institution on the Bollish–TITRATOR obviousness ground for claims 1–3, 6, 7, and 16, finding no abuse of discretion or overlooked matter.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION A. Applicable Requirements A request for rehearing will be reviewed for abuse of discretion. 37 C.F.R. § 42.71(c). The request must identify specifically all matters that a party believes the Board misapprehended or overlooked, and the place in the record where each matter was previously addressed. 37 C.F.R. § 42.71(d); see Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In the present case, the burden of persuasion falls on Patent Owner as the moving party. 37 C.F.R. § 42.71(d).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Contrary to Patent Owner’s argument, an actual, physical substitution of elements in not required for obviousness. In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.”). Nor does obviousness depend upon precise teachings directed to the specific subject matter of the challenged claims. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[T]he [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”). Moreover, in arguing that one of ordinary skill in the art would not have been motivated to make the asserted combination, Patent Owner relies on its own arguments and testimonial evidence, but does not address the arguments and evidence of Petitioner that we found sufficient at this stage of the proceeding to support Petitioner’s challenge to claims 1–3, 6, 7, and 16 as obvious over Bollish and TITRATOR.” slip op. at 3
§ 103 obviousnesscites KSRPatents in suitUS 6,231,560 - NHK Seating Of America, Inc. v. Lear CorporationRehearing deniedPTAB · Sep 23, 2016 · IPR2014-00925 · APJ Mitchell G Weatherly · IPR · Rehearing
The Board denied NHK’s rehearing request, leaving claim 2 not shown unpatentable because NHK did not establish that the asserted tab extended from the identified transfer member or upper armature.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“NHK’s argument for rehearing is unpersuasive even if we were to agree with NHK’s argument that the eyebolt is a “tab.” At trial, NHK failed to establish that the eyebolt extends from cable 6a of DE ’017, which is the structure that NHK identified in its Reply as the claimed transfer member. Reply 23.1 NHK also failed to establish that the eyebolt extends from any structure that NHK equated to the claimed upper armature. In our Final Written Decision, we determined that claim 2 requires that the claimed tab must “extend outward from one or the other of the transfer member and the upper armature.” Final Dec. 23. Because NHK 1 NHK shifted positions again in its Reply in Support of its Request for Rehearing regarding the element in the prior art that constitutes the claimed transfer member when it identified “bowden cable arrangement 6” of DE ’017 as the transfer member. Reh’g Reply 2. A Request for Rehearing is not a proper vehicle for introducing argument or evidence that was not presented at trial. See 37 C.F.R. § 42.71(d) (limiting requests for rehearing to those matters that were “previously addressed in a motion, an opposition, or a reply” during trial). Accordingly, we do not consider NHK’s new argument properly to be before us. failed at trial to demonstrate how the eyebolt meets this requirement of claim 2, we deny the Request for Rehearing.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable
“NHK’s argument for rehearing is unpersuasive even if we were to agree with NHK’s argument that the eyebolt is a “tab.” At trial, NHK failed to establish that the eyebolt extends from cable 6a of DE ’017, which is the structure that NHK identified in its Reply as the claimed transfer member. Reply 23.1 NHK also failed to establish that the eyebolt extends from any structure that NHK equated to the claimed upper armature. In our Final Written Decision, we determined that claim 2 requires that the claimed tab must “extend outward from one or the other of the transfer member and the upper armature.” Final Dec. 23. Because NHK 1 NHK shifted positions again in its Reply in Support of its Request for Rehearing regarding the element in the prior art that constitutes the claimed transfer member when it identified “bowden cable arrangement 6” of DE ’017 as the transfer member. Reh’g Reply 2. A Request for Rehearing is not a proper vehicle for introducing argument or evidence that was not presented at trial. See 37 C.F.R. § 42.71(d) (limiting requests for rehearing to those matters that were “previously addressed in a motion, an opposition, or a reply” during trial). Accordingly, we do not consider NHK’s new argument properly to be before us. failed at trial to demonstrate how the eyebolt meets this requirement of claim 2, we deny the Request for Rehearing.” slip op. at 4
- Strike new argumentNew argument disregardedOther
§ 103 obviousnessPatents in suitUS 8,434,818 - Arctic Cat, Inc. v. Polaris Industries, Inc.Rehearing grantedPTAB · May 3, 2016 · IPR2014-01427 · APJ Michael W Kim · IPR · Rehearing
The Board granted rehearing only as to the assertions it addressed and denied the rest, finding no rehearing basis for the unbriefed “extending between” issue.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“A request for rehearing can only point out that which the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). Moreover, as the moving party, the burden of persuasion falls on Patent Owner. 37 C.F.R. § 42.20(c). The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and where each matter was previously addressed in a motion, an opposition, or a reply. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).” slip op. at 2
- Strike new argumentNew argument disregardedDecided for petitioner
“proceeding that could plausibly be considered as being directed to “extending between.” Substantively, the only place in this proceeding where arguments and evidence were asserted concerning “extending between” was in the oral hearing transcript, which Patent Owner correctly identifies as being directed to both proceedings, and, thus, the contents of which are equally applicable to both proceedings. Paper 54, 3:18–23. As set forth expressly in our Office Patent Trial Practice Guide, however, “[n]o new evidence or arguments may be presented at the oral argument.” 77 Fed. Reg. at 48,768. See also Dell Inc. v. Acceleron, LLC, 2016 WL 1019075, *6, *7 (Fed. Cir. Mar. 15, 2016) (“the Board denied Acceleron its procedural rights by relying in its decision on a factual assertion introduced into the proceeding only at oral argument, after Acceleron could meaningfully respond.”). Accordingly, when the oral hearing transcript is excluded from consideration, there is no argument or asserted evidence concerning “extending between” in this proceeding. Of course, there is asserted evidence, along with arguments providing context to that evidence, in the substantive papers for the other proceeding. In asserting that the Board should consider those arguments, Patent Owner asserts that claim constructions should be consistent across proceedings. We would agree with Patent Owner if the evidence and arguments presented in the two proceedings were consistent. Such is not the case here. Indeed, even if we were to import some arguments from the other proceeding, they would be directed solely to a proper construction of “extending between,” with no explanation of the relevance of “extending between” to the combination of Denney and Furuhashi in the instant proceeding, as that combination was not at issue in the other proceeding.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANot reached
“claim construction of “extending between” in a Final Written Decision of related proceeding IPR2014-01428 (Ex. 2095, “other proceeding”). Specifically, Patent Owner asserts that if that claim construction of “extending between” from the other proceeding were applied in the instant proceeding, the record would show that the prior art asserted in the instant proceeding is missing a claim element recited in every challenged independent claim, and, thus, the Board’s determination that independent claims are unpatentable cannot be maintained. When considered in the confines of a request for rehearing, this is a straightforward case. By Patent Owner’s own acknowledgment, no proposed claim construction concerning “extending between,” much less any assertion concerning its relevance to proffered prior art, was considered in the Final Written Decision for the instant proceeding. This should come as no surprise, as it is undisputed that no argument or evidence has been advanced in any substantive paper, and, thus, no evaluation of any argument or evidence has been conducted, concerning this issue, in the instant proceeding. Absent such argument or evidence, Patent Owner has not, and cannot, identify that which the Board misapprehended or overlooked in the instant proceeding, as required by the Office Patent Trial Practice Guide. And without such identification, we are unpersuaded that there is any basis for a request for rehearing, in that it certainly cannot be said that the Board misapprehended or overlooked that which was not argued.” slip op. at 2
Claim constructionPatents in suitUS 8,596,405 - Palo Alto Networks, Inc. v. Finjan, Inc.Rehearing deniedPTAB · Apr 19, 2016 · IPR2015-01979 · APJ Miriam L Quinn · IPR · Rehearing
The Board denied Finjan’s rehearing request, leaving institution of review of claims 1–8, 10, and 11 in place because it had not overlooked or misapprehended the evidence about Khazan.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The party challenging the decision of the Board has the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “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.” Id.” slip op. at 2
NonePatents in suitUS 8,141,154 - Apple Inc. v. Tracbeam, LLCRehearing deniedPTAB · Mar 29, 2016 · IPR2015-01697 · APJ Matthew R Clements · IPR · Rehearing
The Board denied Apple’s rehearing request, leaving institution denied for claims 25, 45, 49, and their dependent claims because the petition did not adequately show Bruno taught the limitations.
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 addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on a petition, we review 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. 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). With this in mind, we address the arguments presented by Petitioner.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not shown unpatentable
“Rehg. Req. 1. Specifically, Petitioner contends that it explained, in its Petition, that Bruno’s GPS, cellular, and RF Signpost techniques are independent. Id. at 3–4 (citing Pet. 17; Ex. 1007, Fig. 9); see also id. at 6–7 (addressing claim 45). The analysis in the Petition, however, merely asserts that the techniques are independent without further explanation. We reviewed the evidence cited by Petitioner, but were not persuaded that it supported Petitioner’s conclusory assertion.” slip op. at 3
- BurdenNot shown unpatentable
“Rehg. Req. 1. Specifically, Petitioner contends that it explained, in its Petition, that Bruno’s GPS, cellular, and RF Signpost techniques are independent. Id. at 3–4 (citing Pet. 17; Ex. 1007, Fig. 9); see also id. at 6–7 (addressing claim 45). The analysis in the Petition, however, merely asserts that the techniques are independent without further explanation. We reviewed the evidence cited by Petitioner, but were not persuaded that it supported Petitioner’s conclusory assertion.” slip op. at 3
NonePatents in suitUS 7,525,484 - Symantec Corp. v. Finjan, Inc.Rehearing deniedPTAB · Feb 25, 2016 · IPR2015-01546 · APJ Thomas L Giannetti · IPR · Rehearing
The Board denied rehearing, leaving its denial of institution for claims 1–7 in place because the Petition did not sufficiently show Binding disclosed the claimed client-directed management information.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“In the “Ground 2” obviousness challenge, the Petition applies the limitations of claims 1, 4, and 7 to the APA-Binding combination. One section specifically relates to the claim limitation “receiving non-HTTP management data intended for the client from a management server.” Pet. 36–39. In that section, the Petition states: “Although the APA does not explicitly teach that the non-HTTP management data is received by the gateway computer, this would have been obvious based on the teachings in Binding.” Pet. 37 (emphasis added) (citations omitted). The Petition goes on to state: “Binding further explains that this server or gateway computer includes an HTTP ‘communications protocol engine’ (i.e., gateway communicator), for communicating with the clients by connecting to another ‘communications protocol engine’ on each client.” Id. at 37 (emphasis added). The Petition further states: “Binding also teaches that the server or gateway computer sends various non-HTTP management messages and data, such as security information and parameters to the client by piggy-backing the data within an HTTP message.” Id. at 38 (emphasis added). The Petition then states: “Binding further describes a “Second Preferred Embodiment,” in which the gateway computer communicates with a “Trusted Third Party” (TTP) in order to establish a secure communication session with the client.” Id. (emphasis added). The Petition also asserts that “Binding explains that security information, parameters and metadata is piggy-backed (i.e., inserted) within an HTTP message being sent to the client.” Id. at 39–40 (emphasis added). We are, therefore, persuaded that the Petition’s reliance on Binding went beyond “piggy-backing.” Petitioner also relied on Binding for its asserted teaching of a gateway receiving piggy-backed non-HTTP management information intended for a client, a feature that is missing from the APA. We, therefore, are not persuaded that we misapprehended or overlooked anything in concluding that because Petitioner did not present sufficient evidence that Binding disclosed this feature, Petitioner had not carried its burden and we should not institute a trial.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In the “Ground 2” obviousness challenge, the Petition applies the limitations of claims 1, 4, and 7 to the APA-Binding combination. One section specifically relates to the claim limitation “receiving non-HTTP management data intended for the client from a management server.” Pet. 36–39. In that section, the Petition states: “Although the APA does not explicitly teach that the non-HTTP management data is received by the gateway computer, this would have been obvious based on the teachings in Binding.” Pet. 37 (emphasis added) (citations omitted). The Petition goes on to state: “Binding further explains that this server or gateway computer includes an HTTP ‘communications protocol engine’ (i.e., gateway communicator), for communicating with the clients by connecting to another ‘communications protocol engine’ on each client.” Id. at 37 (emphasis added). The Petition further states: “Binding also teaches that the server or gateway computer sends various non-HTTP management messages and data, such as security information and parameters to the client by piggy-backing the data within an HTTP message.” Id. at 38 (emphasis added). The Petition then states: “Binding further describes a “Second Preferred Embodiment,” in which the gateway computer communicates with a “Trusted Third Party” (TTP) in order to establish a secure communication session with the client.” Id. (emphasis added). The Petition also asserts that “Binding explains that security information, parameters and metadata is piggy-backed (i.e., inserted) within an HTTP message being sent to the client.” Id. at 39–40 (emphasis added). We are, therefore, persuaded that the Petition’s reliance on Binding went beyond “piggy-backing.” Petitioner also relied on Binding for its asserted teaching of a gateway receiving piggy-backed non-HTTP management information intended for a client, a feature that is missing from the APA. We, therefore, are not persuaded that we misapprehended or overlooked anything in concluding that because Petitioner did not present sufficient evidence that Binding disclosed this feature, Petitioner had not carried its burden and we should not institute a trial.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“In the “Ground 2” obviousness challenge, the Petition applies the limitations of claims 1, 4, and 7 to the APA-Binding combination. One section specifically relates to the claim limitation “receiving non-HTTP management data intended for the client from a management server.” Pet. 36–39. In that section, the Petition states: “Although the APA does not explicitly teach that the non-HTTP management data is received by the gateway computer, this would have been obvious based on the teachings in Binding.” Pet. 37 (emphasis added) (citations omitted). The Petition goes on to state: “Binding further explains that this server or gateway computer includes an HTTP ‘communications protocol engine’ (i.e., gateway communicator), for communicating with the clients by connecting to another ‘communications protocol engine’ on each client.” Id. at 37 (emphasis added). The Petition further states: “Binding also teaches that the server or gateway computer sends various non-HTTP management messages and data, such as security information and parameters to the client by piggy-backing the data within an HTTP message.” Id. at 38 (emphasis added). The Petition then states: “Binding further describes a “Second Preferred Embodiment,” in which the gateway computer communicates with a “Trusted Third Party” (TTP) in order to establish a secure communication session with the client.” Id. (emphasis added). The Petition also asserts that “Binding explains that security information, parameters and metadata is piggy-backed (i.e., inserted) within an HTTP message being sent to the client.” Id. at 39–40 (emphasis added). We are, therefore, persuaded that the Petition’s reliance on Binding went beyond “piggy-backing.” Petitioner also relied on Binding for its asserted teaching of a gateway receiving piggy-backed non-HTTP management information intended for a client, a feature that is missing from the APA. We, therefore, are not persuaded that we misapprehended or overlooked anything in concluding that because Petitioner did not present sufficient evidence that Binding disclosed this feature, Petitioner had not carried its burden and we should not institute a trial.” slip op. at 5
§ 103 obviousnessPatents in suitUS 7,756,996 - Symantec Corp. v. Finjan, Inc.Rehearing deniedPTAB · Feb 25, 2016 · IPR2015-01547 · APJ Miriam L Quinn · IPR · Rehearing
The Board denied Symantec’s rehearing request, leaving in place the denial of institution on all challenges to claims 1–12 because the Ross anticipation arguments were inadequately presented.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“paragraphs of Dr. Davidson’s Declaration cited in pages 20−21 of the Petition, or any of the cited descriptions of Figure 6. As stated in the Decision on Institution, we relied on Ross’s disclosure of the embodiments described in both Figures 2 and 6 to find that the hook script generator generates the hook function, which is loaded separate from data content 602 that is received over the network. Dec. on Inst. 7. We concluded, as urged by Patent Owner in its Preliminary Response, that loaded separately, the hook function (or the alleged first function) is not in the content received over a network. Id. (relying on page 12 of the Preliminary Response). The “content” refers to the “web content” in Ross that Petitioner alleged equated to the “content received over a network. See Pet. 18 (“Ross discloses a computer, which includes a ‘script processing engine’ (i.e., a content processor) that receives web content over a network.”) (emphasis added). It does not matter whether the hook script generator is located elsewhere in the network, as argued in the Request for Rehearing (Req. Reh’g 9), if data content 602, i.e., the web content, does not include the first function as required. Dec. on Inst. 7. Claim 1 requires that the first function be part of the content received from the network, yet Petitioner failed to explain how it contends that data content 602 includes the hook functions, both of which must be received from a network concurrently. Accordingly, we are not persuaded that we overlooked evidence presented in the Petition.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“paragraphs of Dr. Davidson’s Declaration cited in pages 20−21 of the Petition, or any of the cited descriptions of Figure 6. As stated in the Decision on Institution, we relied on Ross’s disclosure of the embodiments described in both Figures 2 and 6 to find that the hook script generator generates the hook function, which is loaded separate from data content 602 that is received over the network. Dec. on Inst. 7. We concluded, as urged by Patent Owner in its Preliminary Response, that loaded separately, the hook function (or the alleged first function) is not in the content received over a network. Id. (relying on page 12 of the Preliminary Response). The “content” refers to the “web content” in Ross that Petitioner alleged equated to the “content received over a network. See Pet. 18 (“Ross discloses a computer, which includes a ‘script processing engine’ (i.e., a content processor) that receives web content over a network.”) (emphasis added). It does not matter whether the hook script generator is located elsewhere in the network, as argued in the Request for Rehearing (Req. Reh’g 9), if data content 602, i.e., the web content, does not include the first function as required. Dec. on Inst. 7. Claim 1 requires that the first function be part of the content received from the network, yet Petitioner failed to explain how it contends that data content 602 includes the hook functions, both of which must be received from a network concurrently. Accordingly, we are not persuaded that we overlooked evidence presented in the Petition.” slip op. at 3
NonePatents in suitUS 8,141,154
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.