- Samsung Electronics Co. Ltd / Samsung Electronics America, Inc. et al. v. Neonode Smartphone LLCRehearing grantedPTAB · Dec 3, 2021 · IPR2021-00144 · APJ Michelle N Ankenbrand · IPR · Rehearing
Granted rehearing and instituted IPR of claims 1–6 and 12–17 on all asserted grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“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). Petitioner, as the party challenging the Decision, has the burden of showing that we should modify the Decision. Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. Id. § 42.71(c). “An abuse of discretion occurs if the decision (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision.” Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015).” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“that we misapprehended Hirayama307’s distinction between icon 41 and window 43 and, as a result, misapprehended the Petition’s arguments related to icon 41. Specifically, Hirayama307 discloses that window 43 appears “after having touched the desired icon 41 with the point of the pen 3,” and that window 43 is “the processing display form” of icon 41. Ex. 1006, 5:64–66. Thus, contrary to our determination in the Decision that “Hirayama307 appears to duplicate or relocate the representation of the function, i.e., icon, during gliding,” a closer reading of Hirayama307 indicates that icon 41 and window 43 are different, though Hirayama307 at times uses the term “large icon” or “enlarged icon” to describe window 43. See, e.g., Ex. 1006, 6:7–14, 6:22–23, 6:30. We acknowledge that Patent Owner disagrees with Petitioner, but we find that the parties’ disagreement raises an issue of fact that is best resolved on a full trial record. Accordingly, we determine that Petitioner shows sufficiently at this stage of the proceeding that Hirayama307 discloses the limitation “wherein the representation of the function is not relocated or duplicated during the gliding.” In light of this determination, we need not address Petitioner’s additional arguments related to whether Hirayama307 discloses the limitation at issue.10” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“2:48–51. Hirayama307 explains that, after the user moves the pen point from icon 41 to display portion 3, “an icon (hereinafter . . . referred to as a window) enlarged in the form of the processing display mode of the desired icon 41 is automatically displayed on the display portion 1 as shown in FIG. 3B.” Id. at 5:3–12.” slip op. at 6
- Other 314aInstituted
“§ 314(a). See 35 U.S.C. § 314(a) (“The Director may not authorize an inter partes review to be instituted unless . . . .”); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“First of all, the PTO is permitted, but never compelled, to institute an IPR proceeding.” (citing 35 U.S.C. § 314(a))). When deciding whether to exercise our discretion, we may consider the number of claims and grounds that meet the reasonable likelihood standard and whether, in the interests of efficient petition should be denied. Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 at 42 (PTAB Jan. 24, 2019) (informative); SAS Q&A’s, Part D, Effect of SAS on Future Challenges that Could Be Denied for Statutory Reasons, D2 (June 5, 2018), available at https://www.uspto.gov/sites/ default/files/documents/sas_qas_20180605.pdf. Here, Petitioner demonstrates a reasonable likelihood of prevailing on its challenges involving Hirayama307, which address all challenged claims. On this record, and based on the particular facts of this proceeding, we find that instituting a trial is an efficient use of the Board’s time and resources.” slip op. at 8
§ 103 obviousnessDiscretionary denialPatents in suitUS 8,095,879 - Axonics Modulation Technologies, Inc. v. Medtronic, Inc.Rehearing grantedPTAB · May 14, 2021 · IPR2020-00712 · APJ James A Tartal · IPR · Rehearing
The Board granted Patent Owner leave to file Dr. Mihran’s cross-examination testimony as an exhibit, finding it could not have been obtained earlier and that the interests of justice supported admission.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“To the extent Patent Owner’s request for leave did not specifically encompass relief pursuant to Rule 42.123(b) and, therefore, lies outside of a proper request for rehearing, we find in the interests of efficiency in the proceedings that we may consider whether Patent Owner’s Request satisfies Rule 42.123(b), in light of the arguments advanced by both parties, rather than, for example, require Patent Owner to refile its request for leave pursuant to Rule 42.123(b). We further find that Patent Owner’s arguments sufficiently show that the cross-examination testimony of Dr. Mihran could not have been obtained earlier (by virtue of it being cross-examination testimony). Petitioner’s contention that Patent Owner had “unfettered access” to Dr. Mihran does not suggest that the cross-examination testimony to be filed as an exhibit, based on questioning by Petitioner, could have been obtained earlier. See Resp. 9. Further, we are persuaded that the interests-of-justice support allowing the cross-examination testimony to be entered in the record as an exhibit, including the interests of allowing each party to rely on evidence developed during trial to support or attack the credibility of a declarant. See Ultratec, Inc. v. CaptionCall LLC, 872 F.3d 1267, 1273 (Fed. Cir. 2017) (“[N]o reasonable fact finder would refuse to consider evidence of inconsistent sworn testimony. Moreover, any such inconsistencies would likely bear on the overall credibility of the expert.”). We considered Petitioner’s argument that Patent Owner seeks to use improperly the cross-examination testimony to support its sur-reply, because “Dr. Mihran developed new arguments and opinions that Patent Owner would like to advance.” Id. at 7–8. To be clear, we make no finding on whether any testimony in the transcript of Dr. Mihran’s cross-examination may be properly relied on by Patent Owner in support of the sur-reply in each case and do not limit Petitioner’s ability to contest Patent Owner’s use of the cross-examination testimony. To the extent Patent Owner relies on the cross-examination testimony in support of its sur-replies, Petitioner may dispute whether such reliance is proper. Petitioner may also choose to request leave to file additional briefing to respond to arguments advanced by Patent Owner citing the cross-examination testimony of Dr. Mihran. We, therefore, conclude that the interests-of-justice favor allowing Patent Owner to file the cross-examination testimony of Dr. Mihran as an exhibit.” slip op. at 7
- Additional discoveryAdditional discovery, grantedGranted
“encompass relief pursuant to Rule 42.123(b) and, therefore, lies outside of a proper request for rehearing, we find in the interests of efficiency in the proceedings that we may consider whether Patent Owner’s Request satisfies Rule 42.123(b), in light of the arguments advanced by both parties, rather than, for example, require Patent Owner to refile its request for leave pursuant to Rule 42.123(b). We further find that Patent Owner’s arguments sufficiently show that the cross-examination testimony of Dr. Mihran could not have been obtained earlier (by virtue of it being cross-examination testimony). Petitioner’s contention that Patent Owner had “unfettered access” to Dr. Mihran does not suggest that the cross-examination testimony to be filed as an exhibit, based on questioning by Petitioner, could have been obtained earlier. See Resp. 9. Further, we are persuaded that the interests-of-justice support allowing the cross-examination testimony to be entered in the record as an exhibit, including the interests of allowing each party to rely on evidence developed during trial to support or attack the credibility of a declarant. See Ultratec, Inc. v. CaptionCall LLC, 872 F.3d 1267, 1273 (Fed. Cir. 2017) (“[N]o reasonable fact finder would refuse to consider evidence of inconsistent sworn testimony. Moreover, any such inconsistencies would likely bear on the overall credibility of the expert.”). We considered Petitioner’s argument that Patent Owner seeks to use improperly the cross-examination testimony to support its sur-reply, because “Dr. Mihran developed new arguments and opinions that Patent Owner would like to advance.” Id. at 7–8. To be clear, we make no finding on whether any testimony in the transcript of Dr. Mihran’s cross-examination may be properly relied on by Patent Owner in support of the sur-reply in each case and do not limit Petitioner’s ability to contest Patent Owner’s use of the cross-examination testimony. To the extent Patent Owner relies on the cross-examination testimony in support of its sur-replies, Petitioner may dispute whether such reliance is proper. Petitioner may also choose to request leave to file additional briefing to respond to arguments advanced by Patent Owner citing the cross-examination testimony of Dr. Mihran. We, therefore, conclude that the interests-of-justice favor allowing Patent Owner to file the cross-examination testimony of Dr. Mihran as an exhibit.” slip op. at 7
NonePatents in suitUS 8,738,148 - Axonics Modulation Technologies, Inc. v. Medtronic, Inc.Rehearing grantedPTAB · May 14, 2021 · IPR2020-00680 · APJ James A Tartal · IPR · Rehearing
The Board granted Patent Owner leave to file Dr. Mihran’s cross-examination testimony as an exhibit, finding it could not have been obtained earlier and admission served the interests of justice.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“encompass relief pursuant to Rule 42.123(b) and, therefore, lies outside of a proper request for rehearing, we find in the interests of efficiency in the proceedings that we may consider whether Patent Owner’s Request satisfies Rule 42.123(b), in light of the arguments advanced by both parties, rather than, for example, require Patent Owner to refile its request for leave pursuant to Rule 42.123(b). We further find that Patent Owner’s arguments sufficiently show that the cross-examination testimony of Dr. Mihran could not have been obtained earlier (by virtue of it being cross-examination testimony). Petitioner’s contention that Patent Owner had “unfettered access” to Dr. Mihran does not suggest that the cross-examination testimony to be filed as an exhibit, based on questioning by Petitioner, could have been obtained earlier. See Resp. 9. Further, we are persuaded that the interests-of-justice support allowing the cross-examination testimony to be entered in the record as an exhibit, including the interests of allowing each party to rely on evidence developed during trial to support or attack the credibility of a declarant. See Ultratec, Inc. v. CaptionCall LLC, 872 F.3d 1267, 1273 (Fed. Cir. 2017) (“[N]o reasonable fact finder would refuse to consider evidence of inconsistent sworn testimony. Moreover, any such inconsistencies would likely bear on the overall credibility of the expert.”). We considered Petitioner’s argument that Patent Owner seeks to use improperly the cross-examination testimony to support its sur-reply, because “Dr. Mihran developed new arguments and opinions that Patent Owner would like to advance.” Id. at 7–8. To be clear, we make no finding on whether any testimony in the transcript of Dr. Mihran’s cross-examination may be properly relied on by Patent Owner in support of the sur-reply in each case and do not limit Petitioner’s ability to contest Patent Owner’s use of the cross-examination testimony. To the extent Patent Owner relies on the cross-examination testimony in support of its sur-replies, Petitioner may dispute whether such reliance is proper. Petitioner may also choose to request leave to file additional briefing to respond to arguments advanced by Patent Owner citing the cross-examination testimony of Dr. Mihran. We, therefore, conclude that the interests-of-justice favor allowing Patent Owner to file the cross-examination testimony of Dr. Mihran as an exhibit.” slip op. at 7
- Additional discoveryAdditional discovery, grantedGranted
“encompass relief pursuant to Rule 42.123(b) and, therefore, lies outside of a proper request for rehearing, we find in the interests of efficiency in the proceedings that we may consider whether Patent Owner’s Request satisfies Rule 42.123(b), in light of the arguments advanced by both parties, rather than, for example, require Patent Owner to refile its request for leave pursuant to Rule 42.123(b). We further find that Patent Owner’s arguments sufficiently show that the cross-examination testimony of Dr. Mihran could not have been obtained earlier (by virtue of it being cross-examination testimony). Petitioner’s contention that Patent Owner had “unfettered access” to Dr. Mihran does not suggest that the cross-examination testimony to be filed as an exhibit, based on questioning by Petitioner, could have been obtained earlier. See Resp. 9. Further, we are persuaded that the interests-of-justice support allowing the cross-examination testimony to be entered in the record as an exhibit, including the interests of allowing each party to rely on evidence developed during trial to support or attack the credibility of a declarant. See Ultratec, Inc. v. CaptionCall LLC, 872 F.3d 1267, 1273 (Fed. Cir. 2017) (“[N]o reasonable fact finder would refuse to consider evidence of inconsistent sworn testimony. Moreover, any such inconsistencies would likely bear on the overall credibility of the expert.”). We considered Petitioner’s argument that Patent Owner seeks to use improperly the cross-examination testimony to support its sur-reply, because “Dr. Mihran developed new arguments and opinions that Patent Owner would like to advance.” Id. at 7–8. To be clear, we make no finding on whether any testimony in the transcript of Dr. Mihran’s cross-examination may be properly relied on by Patent Owner in support of the sur-reply in each case and do not limit Petitioner’s ability to contest Patent Owner’s use of the cross-examination testimony. To the extent Patent Owner relies on the cross-examination testimony in support of its sur-replies, Petitioner may dispute whether such reliance is proper. Petitioner may also choose to request leave to file additional briefing to respond to arguments advanced by Patent Owner citing the cross-examination testimony of Dr. Mihran. We, therefore, conclude that the interests-of-justice favor allowing Patent Owner to file the cross-examination testimony of Dr. Mihran as an exhibit.” slip op. at 7
- Strike new argumentNot reached
“allowing the cross-examination testimony to be entered in the record as an exhibit, including the interests of allowing each party to rely on evidence developed during trial to support or attack the credibility of a declarant. See Ultratec, Inc. v. CaptionCall LLC, 872 F.3d 1267, 1273 (Fed. Cir. 2017) (“[N]o reasonable fact finder would refuse to consider evidence of inconsistent sworn testimony. Moreover, any such inconsistencies would likely bear on the overall credibility of the expert.”). We considered Petitioner’s argument that Patent Owner seeks to use improperly the cross-examination testimony to support its sur-reply, because “Dr. Mihran developed new arguments and opinions that Patent Owner would like to advance.” Id. at 7–8. To be clear, we make no finding on whether any testimony in the transcript of Dr. Mihran’s cross-examination may be properly relied on by Patent Owner in support of the sur-reply in each case and do not limit Petitioner’s ability to contest Patent Owner’s use of the cross-examination testimony. To the extent Patent Owner relies on the cross-examination testimony in support of its sur-replies, Petitioner may dispute whether such reliance is proper. Petitioner may also choose to request leave to file additional briefing to respond to arguments advanced by Patent Owner citing the cross-examination testimony of Dr. Mihran. We, therefore, conclude that the interests-of-justice favor allowing Patent Owner to file the cross-examination testimony of Dr. Mihran as an exhibit.” slip op. at 7
NonePatents in suitUS 8,457,758 - Axonics Modulation Technologies, Inc. v. Medtronic, Inc.Rehearing grantedPTAB · May 14, 2021 · IPR2020-00678 · APJ James A Tartal · IPR · Rehearing
The Board granted Patent Owner leave to file Dr. Mihran’s cross-examination testimony as an exhibit in each proceeding, finding that it could not have been obtained earlier and that admission served the interests of justice.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“To the extent Patent Owner’s request for leave did not specifically encompass relief pursuant to Rule 42.123(b) and, therefore, lies outside of a proper request for rehearing, we find in the interests of efficiency in the proceedings that we may consider whether Patent Owner’s Request satisfies Rule 42.123(b), in light of the arguments advanced by both parties, rather than, for example, require Patent Owner to refile its request for leave pursuant to Rule 42.123(b). We further find that Patent Owner’s arguments sufficiently show that the cross-examination testimony of Dr. Mihran could not have been obtained earlier (by virtue of it being cross-examination testimony). Petitioner’s contention that Patent Owner had “unfettered access” to Dr. Mihran does not suggest that the cross-examination testimony to be filed as an exhibit, based on questioning by Petitioner, could have been obtained earlier. See Resp. 9. Further, we are persuaded that the interests-of-justice support allowing the cross-examination testimony to be entered in the record as an exhibit, including the interests of allowing each party to rely on evidence developed during trial to support or attack the credibility of a declarant. See Ultratec, Inc. v. CaptionCall LLC, 872 F.3d 1267, 1273 (Fed. Cir. 2017) (“[N]o reasonable fact finder would refuse to consider evidence of inconsistent sworn testimony. Moreover, any such inconsistencies would likely bear on the overall credibility of the expert.”). We considered Petitioner’s argument that Patent Owner seeks to use improperly the cross-examination testimony to support its sur-reply, because “Dr. Mihran developed new arguments and opinions that Patent Owner would like to advance.” Id. at 7–8. To be clear, we make no finding on whether any testimony in the transcript of Dr. Mihran’s cross-examination may be properly relied on by Patent Owner in support of the sur-reply in each case and do not limit Petitioner’s ability to contest Patent Owner’s use of the cross-examination testimony. To the extent Patent Owner relies on the cross-examination testimony in support of its sur-replies, Petitioner may dispute whether such reliance is proper. Petitioner may also choose to request leave to file additional briefing to respond to arguments advanced by Patent Owner citing the cross-examination testimony of Dr. Mihran. We, therefore, conclude that the interests-of-justice favor allowing Patent Owner to file the cross-examination testimony of Dr. Mihran as an exhibit.” slip op. at 7
- Additional discoveryAdditional discovery, grantedGranted
“encompass relief pursuant to Rule 42.123(b) and, therefore, lies outside of a proper request for rehearing, we find in the interests of efficiency in the proceedings that we may consider whether Patent Owner’s Request satisfies Rule 42.123(b), in light of the arguments advanced by both parties, rather than, for example, require Patent Owner to refile its request for leave pursuant to Rule 42.123(b). We further find that Patent Owner’s arguments sufficiently show that the cross-examination testimony of Dr. Mihran could not have been obtained earlier (by virtue of it being cross-examination testimony). Petitioner’s contention that Patent Owner had “unfettered access” to Dr. Mihran does not suggest that the cross-examination testimony to be filed as an exhibit, based on questioning by Petitioner, could have been obtained earlier. See Resp. 9. Further, we are persuaded that the interests-of-justice support allowing the cross-examination testimony to be entered in the record as an exhibit, including the interests of allowing each party to rely on evidence developed during trial to support or attack the credibility of a declarant. See Ultratec, Inc. v. CaptionCall LLC, 872 F.3d 1267, 1273 (Fed. Cir. 2017) (“[N]o reasonable fact finder would refuse to consider evidence of inconsistent sworn testimony. Moreover, any such inconsistencies would likely bear on the overall credibility of the expert.”). We considered Petitioner’s argument that Patent Owner seeks to use improperly the cross-examination testimony to support its sur-reply, because “Dr. Mihran developed new arguments and opinions that Patent Owner would like to advance.” Id. at 7–8. To be clear, we make no finding on whether any testimony in the transcript of Dr. Mihran’s cross-examination may be properly relied on by Patent Owner in support of the sur-reply in each case and do not limit Petitioner’s ability to contest Patent Owner’s use of the cross-examination testimony. To the extent Patent Owner relies on the cross-examination testimony in support of its sur-replies, Petitioner may dispute whether such reliance is proper. Petitioner may also choose to request leave to file additional briefing to respond to arguments advanced by Patent Owner citing the cross-examination testimony of Dr. Mihran. We, therefore, conclude that the interests-of-justice favor allowing Patent Owner to file the cross-examination testimony of Dr. Mihran as an exhibit.” slip op. at 7
NonePatents in suitUS 7,774,069 - Asustek Computer, Inc. / Asus Computer International v. Avago Technologies General IP (Singapore) Pte. LtdRehearing grantedPTAB · Mar 8, 2017 · IPR2016-00647 · APJ Glenn J Perry · IPR · Rehearing
Granted petitioner’s request for reconsideration and added institution of the §102 Cioffi challenge to claims 8, 11, 12, 14, 15, 18, and 19.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“III. CONCLUSIONS For the foregoing reasons, we are persuaded that our Decision to Institute overlooked or misapprehended the matters discussed in this Decision, and that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail with respect to its challenge as to the patentability of claims 8, 11, 12, 14, 15, 18, and 19 as being anticipated by Cioffi. The Board has not made a final determination on the patentability of any challenged claims or the construction of any claim terms. Our final decision will be based on the record as fully developed during trial.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Upon review on rehearing, we are persuaded the Petition demonstrates sufficiently for purposes of institution that data and synchronization signals are multiplexed and encoded by MUX & ENCODER 43 in Cioffi’s Figure 3. Multiplexed sub-symbols are passed to modulator 45, which incorporates an inverse fast Fourier transform (IFFT). Based on this understanding of Cioffi, the detailed reading of claims 8, 11, 12, 14, 15, 18, and 19 on Cioffi at Petition pages 35–53, supported by the Lyon Declaration (Ex. 1003), presents a reasonable likelihood of Petitioner prevailing as to this challenge. We, therefore, modify our Decision on Institution to include this challenge.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Upon review on rehearing, we are persuaded the Petition demonstrates sufficiently for purposes of institution that data and synchronization signals are multiplexed and encoded by MUX & ENCODER 43 in Cioffi’s Figure 3. Multiplexed sub-symbols are passed to modulator 45, which incorporates an inverse fast Fourier transform (IFFT). Based on this understanding of Cioffi, the detailed reading of claims 8, 11, 12, 14, 15, 18, and 19 on Cioffi at Petition pages 35–53, supported by the Lyon Declaration (Ex. 1003), presents a reasonable likelihood of Petitioner prevailing as to this challenge. We, therefore, modify our Decision on Institution to include this challenge.” slip op. at 4
§ 102 anticipationPatents in suitUS 6,430,148
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.