- Tomofun, LLC v. Doggyphone LLCRehearing deniedPTAB · Dec 10, 2021 · IPR2021-00260 · APJ Patrick R Scanlon · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because Petitioner did not show the Board overlooked or misapprehended its arguments or abused its discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a single request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. We review our Decision under an abuse of discretion standard. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). “Substantial evidence is ‘such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.’” OSI Pharm., LLC v. Apotex” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Claim(s) Ground 35 U.S.C. § Reference(s)/Basis Challenged 1 7 102(b) Alasaarela1 2 8 103(a) Alasaarela 3 7–9 102(b) Beccaria2 4 7–9 103(a) Carelli,3 Beccaria 5 7–9 103(a) Bloksberg,4 Beccaria Pet. 4. Petitioner asserts that Alasaarela discloses the audio signal limitation for Grounds 1 and 2. Id. at 23–24, 31. Petitioner asserts that Beccaria discloses the audio signal limitation for Ground 3, and Carelli discloses the audio signal limitation for Ground 4. Id. at 36–37, 48. For Ground 5, Petitioner asserts that Bloksberg discloses the audio signal limitation. Id. at 60.” slip op. at 3
- BurdenDecided for patent owner
“As such, the Petition does not indicate with sufficient particularity that Petitioner relies on the Examiner’s finding as a basis for asserting that Bloksberg discloses the audio signal limitation and, thus, does not satisfy Petitioner’s burden on this point. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” (citing 35 U.S.C. § 312(a)(3)); see also Intelligent Bio- Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings the ‘evidence that supports the grounds for the challenge to each claim.’” (quoting 35 U.S.C. § 312(a)(3))). Because the Petition did not indicate clearly that it was relying on the Examiner’s finding, we could not have misapprehended or overlooked such a position. In addition, Patent Owner was not afforded a fair opportunity to dispute any reliance on the Examiner’s finding or the reasoning underlying the finding.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We disagree with Petitioner’s characterization of Ground 3 as being based on obviousness. Rather, the Petition clearly asserts for Ground 3 that “Claims 7-9 are anticipated under 35 U.S.C. § 102 by Beccaria[].” Pet. 4; see also id. at 32 (“Ground 3 – Claims 7–9 Are Unpatentable As Anticipated By Beccaria[]”). Petitioner’s Ground 3 analysis of claim 7 relies on Beccaria disclosing each limitation, including the audio signal limitation. Id. at 32–40. Petitioner’s Rehearing Request does not direct us to any portion of the Petition for Ground 3 that asserts any claim limitation would have been obvious over Beccaria, alone or in combination with another reference. Accordingly, we are not persuaded that we misapprehended Petitioner’s argument with respect to Beccaria.” slip op. at 9
§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,723,813 - Scentair Technologies, LLC v. Prolitec, Inc.Rehearing deniedPTAB · Jun 24, 2021 · IPR2021-00013 · APJ Grace Karaffa Obermann · IPR · Rehearing
The Board denied the petitioner’s rehearing request, finding its new arguments untimely and unpersuasive as to the aerosol outlet limitation for claims 1–19.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A request for rehearing is not an opportunity to present new arguments or evidence that could have been presented in a petition. We could not have misapprehended or overlooked matters or arguments that were not asserted in the Petition. We deny the Rehearing Request because it is based on new arguments that Petitioner did not present in the Petition. B. Petitioner’s Arguments Are Unpersuasive Alternatively, even if we consider the new arguments raised for the first time in the Rehearing Request, we find none persuasive to show reversible error in the Decision. The ’767 patent describes and claims “a cap assembly” that is characterized by three distinct structures, namely, “a cap, a venturi insert, and a base attached together without welds or separate fasteners to define . . . an air outlet chamber” that is “partitioned from the interior of the receptacle by the base.” Ex. 1001, 15:6–13 (claim 1) (emphasis added); see id. at 3:30–43, 9:45–62 (written description).” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“The Petition advances three grounds, each of which is based on obviousness and asserts Benalikhoudja1 as a prior art reference. Pet. 5. We found in the Decision, and Petitioner does not dispute in the Rehearing Request, that each ground “depends on Petitioner’s assertion that Benalikhoudja discloses or suggests ‘an aerosol outlet chamber partitioned 1 We refer to US 2006/0237090 A1, published Oct. 26, 2006 (Ex. 1004). from the interior of the receptacle by the base.’” Dec. 5–6. As we did in the Decision, we refer herein to that feature of the claimed invention as “the aerosol outlet limitation.” Id. at 6. Based on the information presented in the Petition and Preliminary Response, we determined Petitioner did not show sufficiently, for purposes of trial institution, that Benalikhoudja discloses the aerosol outlet limitation. Id. at 9–10. Petitioner argues we erred on that point. Req. Reh’g 1–6.” slip op. at 3
§ 103 obviousnessPatents in suitUS 9,480,767 - Solvay USA Inc. v. Worldsource Enterprises, LLC, Eco Agro Resources LLC, And Eco World Group LLCRehearing deniedPTAB · Mar 1, 2021 · IPR2020-00768 · APJ Jeffrey W Abraham · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution of IPR on claims 1–17 in place because it found no abuse of discretion under § 325(d).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). When rehearing a 1 Patent Owner originally filed a Preliminary Response (Paper 7) that violated the word count limit in our rules. After conferring with Petitioner and the Board, Patent Owner filed a truncated version of Paper 7 that deletes the text that exceeded the word count limit at the end of the document to comply with 37 C.F.R. § 42.24(b)(1). Paper 9. For purposes of this Decision, any references or citations to the Preliminary Response refer to the truncated document filed as Paper 9. decision on a petition, the decision will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Owner does not clearly identify what matters we misapprehended or overlooked, and where those matters were previously addressed. Instead, it simply repeats arguments and information we have already considered and which we used to form the basis for our determination in the Institution Decision. To the extent Patent Owner believes we did not assign the appropriate weight to events that occurred during prosecution of the parent application of the ’231 patent, we note that Patent Owner’s own arguments derived from that information are based on speculation about what is a “more probable” explanation for the Examiner’s conduct. Rather than rely on speculation about the Examiner’s conduct during prosecution of the parent application, we based our determination on facts derived from the prosecution history of the ’231 patent itself. In that regard, we maintain that “[t]he record does not reflect any substantive consideration of CN400 during prosecution of the ’231 patent, including any consideration of CN400 in combination with Iannotta or Kolc, as presented in the Petition.” Dec. 9 (emphasis added). Nothing in Patent Owner’s recitation of undisputed facts persuasively contradicts this determination. Req. Reh’g 8.” slip op. at 6
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Nevertheless, even if we were to give weight to Patent Owner’s argument that “it is more probable that the Examiner believed CN400 could not be properly combined” with Kolc and Iannotta, the outcome here would not change. As set forth in our Institution Decision, we disagree with Patent Owner’s assertions that CN400 is non-analogous art that would not be combinable with Kolc and Iannotta. Dec. 19, 24–25. Thus, to the extent Patent Owner contends the Examiner believed CN400 could not be combined with Kolc and Iannotta for the same reasons Patent Owner presented in its Preliminary Response, we would consider such hypothetical reasoning by the Examiner to involve a misapprehension of the specific teachings of the relevant prior art, which would constitute material error. See Advanced Bionics, 8.” slip op. at 7
- Strike new argumentNew argument disregardedDecided for petitioner
“Iannotta is prior art. Reh’g Req. 10. In presenting its arguments, however, Patent Owner acknowledges “[t]his issue was not argued in the Patent Owner’s Preliminary Response,” and is based on new information Patent Owner became aware of since the filing date of its Sur-reply. Req. Reh’g 9. A request for rehearing is not an opportunity to present new arguments or evidence. See 37 C.F.R. § 42.71(d). Moreover, Patent Owner has not directed us to any matters that we overlooked or misapprehended, and the place where those matters were previously addressed. 37 C.F.R. § 42.71(d).” slip op. at 8
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,301,231 - Smartmatic USA Corp. v. Election Systems & Software, LLCRehearing deniedPTAB · Nov 30, 2020 · IPR2019-00531 · APJ Sheldon M Mcgee · IPR · Rehearing
The Board denied Smartmatic’s rehearing request, leaving intact the determination that original claim 16 and substitute claims 21–29 were not shown unpatentable over Johnson and Cummings.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS 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. 37 C.F.R. § 42.71(d). Specifically, “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). Petitioner’s First Argument” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“As an initial matter, we disagree that we misapprehended Petitioner’s proffered basis for modifying the teachings of Johnson. Req. 1–2, 4–9. Our Decision makes clear that we understood the challenge as it was presented by Petitioner. For example, we expressly stated that “Petitioner asserts that a person of ordinary skill in the art would have been motivated to modify the teachings of Johnson with those of Cummings at the time of the invention to provide options for either depositing the paper ballot or returning it to the voter,” and quoted Petitioner’s proffered rationale for doing so––i.e., because “a voter may wish to receive his or her printed ballot if it were incorrectly marked in order to gain assurance that the ballot will not be mistakenly counted during a recount or audit of the paper ballots.” Dec. 18. We also characterized Petitioner’s obviousness challenge as being “over the combined teachings of Johnson and Cummings” and noted how the Petition “set[s] forth the [asserted] obviousness rationale and expectation of successfully modifying the teachings of Johnson with those of Cummings.” Id. at 14–15; see also id. at 17–18 (summarizing Cummings’ teachings); id. at 19–20 (identifying “Petitioner’s proffered modification” as “adding Cummings’ ‘ballot return’ feature to Johnson’s device”). Ultimately, we determined Petitioner failed to show that “the skilled artisan would have been motivated to make the proffered modification to the teachings of Johnson,” and “[i]n particular,” had not shown such artisan “would have modified Johnson to provide a voter with options for either depositing a physical ballot to a ballot box or returning the ballot to the voter.” Id. at 25. Notably, the language in our Decision (id.) tracks, almost verbatim, Petitioner’s proffered motivation for modifying Johnson’s teachings with those of Cummings to arrive at the subject matter of claim 16 (Pet. 57). Petitioner’s emphasis of our use of the phrase “considering Johnson’s teachings as a whole” (Req. 4) reflects a misunderstanding of the context in which this statement was used. Dec. 25. Specifically, this statement was part of an introductory paragraph summarizing the deficiencies in Petitioner’s case, and does not indicate that we focused solely on the teachings of Johnson in assessing the strength of Petitioner’s challenge. Indeed, as the Decision goes on to explain, a detailed analysis of Johnson’s teachings was necessary to determine how the skilled artisan would have viewed Johnson’s silence on the specifics of processing its segregated paper ballots “that have not been approved by the voter.” Ex. 1002, 6:56–60; see Dec. 26 (“According to Petitioner, ‘Johnson does not teach never providing the voter with a ballot.’ Reply 15. Petitioner thus appears to argue that Johnson’s lack of physical access to the printed ballot does not apply to every step in Johnson’s voting process.”). To discern how the skilled artisan would have viewed Johnson’s teachings, we stressed that we are required to consider Johnson’s teachings as a whole, which we did. Dec. 26 (noting that even though Johnson may be silent on specific teachings regarding how to handle disapproved paper ballots, that fact “does not negate our obligation to consider the teachings of the Johnson reference as a whole.” (citing In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991)); id. at 25–27 (finding “Johnson repeatedly stresses the voter’s inaccessibility to the physical ballot” and that Johnson “when considered as a whole––does not suggest that a voter should be given physical possession of the inaccurate or disapproved ballots after it is segregated”). Only after we undertook this factual inquiry into the full scope and content of Johnson’s teachings were we then able to conclude, as a matter of law, that the claims would not have been obvious over the combined disclosures of Johnson and Cummings. Dec. 34, 41–42; In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009 (“The teachings of a prior art reference are underlying factual questions in the obviousness inquiry.”).” slip op. at 3
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“(Ex. 1023) and US 2005/0035199 (Ex. 1038), which purportedly “corroborates Dr. Bederson’s testimony as to why a [skilled artisan] would have been motivated to make the proposed modification of Johnson,” we disagree. Req. 6–7. The Decision addresses Chung specifically (Dec. 27–28 (citing Ex. 1023)) and furthermore explains why we ascribed little weight to Dr. Bederson’s testimonial evidence regarding how election audits are carried out (id. at 32–33). Regarding Chung, in the Decision we noted a key difference in how ballots were handled in Chung’s voting system vis-à-vis Johnson’s system–– i.e., “where the paper ballot remains inaccessible to the voter [Johnson], and Chung’s system where the paper ballot is given to a voter in the first instance.” Id. at 27–28. This difference is not to be understated because Petitioner tried to establish similarities between Johnson and Chung to support its argument that Johnson’s disclosure is “consistent with other voting machines that, for some period of time prevent the voter from accessing the ballot, only to later return the ballot to the voter.” Reply 11. Our Decision reflects the reasons we rejected that argument after considering Johnson’s disclosure as a whole. See Dec. 25–31. Specifically, based on the differences between the Johnson and Chung systems, we found Petitioner’s reliance on Chung to lack sufficient probative value. Id. at 27– 28; Ex. 1023, Fig. 4, ¶¶ 86, 99. And while our Decision does not specifically mention US 2005/0035199 (Ex. 1038), we note that Petitioner cited this exhibit in support of Dr. Bederson’s testimonial evidence regarding how election audits are carried out. Reply 24; Ex. 1024 ¶ 47 (citing Ex. 1038 ¶ 35, and opining “there is no reason all of Johnson’s ballots must be collected to conduct an audit of an election.”). Our Decision makes clear, however, that we ascribed little weight to Dr. Bederson’s opinion on such matters and explained our rationale for doing so. Dec. 32–33 (citing Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003)); id. at 45 (according this disputed evidence “minimal weight”).” slip op. at 5
§ 103 obviousnessPatents in suitUS 8,096,471 - PTAB · Nov 20, 2020 · IPR2020-00846 · APJ David C Mckone · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no overlooked or misapprehended arguments and no abuse of discretion in instituting review.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“an abuse of discretion. See 37 C.F.R. § 42.71(c) (2019). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burden of showing that the Institution Decision should be modified is on Patent Owner, the party challenging the Decision. See 37 C.F.R. § 42.71(d) (2019). In addition, “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“not be persuasive. We do not view the circumstances to have changed materially. The record still is unclear as to whether the Texas court has set a trial date. Staff at the Texas court has indicated that Patent Owner “may use 7/12/2021 as the scheduled trial date” for a group of trials that will include Petitioners (Ex. 2018, 1), but the record does not indicate that the Texas court has issued any orders to that effect. final decision to assess the weight to be accorded a trial date set earlier than the expected final written decision date. This proximity inquiry is a proxy for the likelihood that the trial court will reach a decision on validity issues before the Board reaches a final written decision. A trial set to occur soon after the institution decision is fairly likely to happen prior to the Board’s final decision, even if the trial date were postponed due to intervening circumstances. Here, however, a July 12, 2021, trial date would be approximately three months before our final written decision is due. Even considering the allegedly changed circumstances raised by Patent Owner, there is at least some persuasive evidence that delays are possible. In these circumstances, the efficiency and system integrity concerns that animate the Fintiv analysis are not as strong—all other things being equal. Accordingly, even if we were to consider Patent Owner’s new arguments, this factor still would be, at best, neutral to whether we should exercise our discretion to deny the Petition. For the same reasons, our analysis of Fintiv factor 5 also would remain unchanged.” slip op. at 7
Discretionary denialPatents in suitUS 7,076,431 - PTAB · Nov 20, 2020 · IPR2020-00847 · APJ David C Mckone · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution in place because it found no overlooked matter or abuse of discretion in its Fintiv analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on institution, we review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c) (2019). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burden of showing that the Institution Decision should be modified is on Patent Owner, the party challenging the Decision. See 37 C.F.R. § 42.71(d) (2019). In addition, “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Fintiv factor 2 looks at the proximity of the trial date to the date of our final decision to assess the weight to be accorded a trial date set earlier than the expected final written decision date. This proximity inquiry is a proxy for the likelihood that the trial court will reach a decision on validity issues before the Board reaches a final written decision. A trial set to occur soon after the institution decision is fairly likely to happen prior to the Board’s circumstances. Here, however, a July 12, 2021, trial date would be approximately three months before our final written decision is due. Even considering the allegedly changed circumstances raised by Patent Owner, there is at least some persuasive evidence that delays are possible. In these circumstances, the efficiency and system integrity concerns that animate the Fintiv analysis are not as strong—all other things being equal. Accordingly, even if we were to consider Patent Owner’s new arguments, this factor still would be, at best, neutral to whether we should exercise our discretion to deny the Petition. For the same reasons, our analysis of Fintiv factor 5 also would remain unchanged.” slip op. at 7
Discretionary denialPatents in suitUS 9,451,084 - Apple Inc. v. Parus Holdings, Inc.Rehearing deniedPTAB · Nov 18, 2020 · IPR2020-00687 · APJ David C Mckone · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no misapprehension or abuse of discretion in instituting review despite the asserted changes in the Texas case.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on institution, we review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c) (2019). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burden of showing that the Institution Decision should be modified is on Patent Owner, the party challenging the Decision. See 37 C.F.R. § 42.71(d) (2019). In addition, “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“The circumstances have not changed materially in the Texas court. Although a motion to stay has been filed, the Texas court has not ruled on it. Accordingly, Patent Owner still asks us to speculate as to how the Texas court might rule. We decline to speculate, and instead determine that this factor remains neutral. See Sand Revolution, Paper 24 at 7; Fintiv II, Paper 15 at 12.” slip op. at 5
- Strike new argumentNew argument disregardedDecided for petitioner
“Patent Owner did not make this argument in its Preliminary Response or Sur-reply; thus, we could not have misapprehended or overlooked it. For that reason alone, Patent Owner’s new argument is improper and insufficient. Nevertheless, even if we were to consider the argument, it would not be persuasive.” slip op. at 5
Discretionary denialPatents in suitUS 9,451,084 - Apple Inc. v. Parus Holdings, Inc.Rehearing deniedPTAB · Nov 18, 2020 · IPR2020-00686 · APJ David C Mckone · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no misapprehension, overlooked argument, or abuse of discretion in instituting review.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on institution, we review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c) (2019). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burden of showing that the Institution Decision should be modified is on Patent Owner, the party challenging the Decision. See 37 C.F.R. § 42.71(d) (2019). In addition, “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Although a motion to stay has been filed, the Texas court has not ruled on it. Accordingly, Patent Owner still asks us to speculate as to how the Texas court might rule. We decline to speculate, and instead determine that this factor remains neutral. See Sand Revolution, Paper 24 at 7; Fintiv II, Paper 15 at 12.” slip op. at 5
Discretionary denialPatents in suitUS 7,076,431 - Favored Tech Corporation v. P2i LtdRehearing deniedPTAB · Oct 21, 2020 · IPR2020-00478 · APJ Jeffrey W Abraham · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving in place institution of review on claims 1–17 based on the Petition’s challenges.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). When rehearing a decision on a petition, the decision will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Petitioner also provides a reason why a person of ordinary skill in the art would have used [Baalmann’s] outer-wall configuration with a 1 m3 chamber such that the plasma zone covers the full chamber volume: “because doing so would have maximized the effective chamber capacity at any given chamber size by allowing the reactive plasma to reach all substrate surfaces, even for large substrates or large batches of smaller substrates extending near the outer limits of the chamber.” Pet. 35; Ex. 1002 ¶ 125. Dec. 20–21. Patent Owner does not address this portion of the Decision or our citation to page 35 of the Petition in the section of its Rehearing Request asserting we incorrectly found the Petition asserts a ground of obviousness based on Baalmann alone. Req. Reh’g 7–11.5 These portions of the record, which address Petitioner’s evidence demonstrating a person of ordinary skill in the art would have had reason to use a particular reactor configuration and plasma zone size, undermine Patent Owner’s assertion that “Petitioner’s obviousness theory fails to provide any reasoning why a POSA would combine Baalmann’s separate and distinct teachings to arrive at the claimed” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“teaching away argument in the Decision, we will do so here. With regard to Patent Owner’s contention that “Baalmann teaches away from the claimed method because . . . Baalmann discloses applying a power of 2kW in its only example using a reactor large enough to potentially satisfy claim 1’s plasma zone volume requirement, which would result in a plasma power density well outside the claimed range” (Req. Reh’g 14), we note that a reference teaches away from a claimed invention if it “criticize[s], discredit[s], or otherwise discourage[s]” modifying the reference to arrive at the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Patent Owner does not direct us to any such evidence in Baalmann, and we will not “read into a reference a teaching away . . . where no such language exists.” DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006). Additionally, although the one example of a 1 m3 reactor in Baalmann involved using a power density that did not fall within the claimed range, for purposes of an obviousness analysis, we cannot ignore the broader disclosure of Baalmann regarding the use of power densities in the range of between 0.5 kW/m3 and 5kW/m3, which does overlap the claimed range. See In re Wesslau, 353 F.2d 238, 241 (CCPA 1965) (“It is impermissible within the framework of section 103 to pick and choose from any one reference only so much of it as will support a given position, to the exclusion of other parts necessary to the full appreciation of what such reference fairly suggests to one of ordinary skill in the art.”).” slip op. at 10
- Strike new argumentNew argument disregardedDecided for petitioner
“Req. Reh’g 14. Patent Owner cites to pages 54–56 of the Preliminary Response as the source for this argument and evidence. Although these pages do provide a discussion of the use of certain power densities in prior art references, this portion of the Preliminary Response primarily addresses Patent Owner’s arguments regarding whether a person of ordinary skill in the art “would have had a reasonable expectation of success when combining the disparate process of Coulson and Baalmann,” not what a person of ordinary skill in the art would have been “motivated” to do. Prelim. Resp. 56; see Par Pharmaceutical v. Twi Pharmaceuticals, Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014) (noting the proper analysis under § 103 requires “consideration of two factors: (1) whether the prior art would have suggested to those of ordinary skill in the art that they should make the claimed composition or device, or carry out the claimed process; and (2) whether the prior art would also have revealed that in so making or carrying out, those of ordinary skill would have a reasonable expectation of success”) (quoting Medichem, S.A. v. Rolabo S.L., 437 F.3d 1157, 1164 (Fed. Cir. 2006). As such, Patent Owner appears to present a new argument for the first time in the Rehearing Request. Not only is such an argument improper (see 37 C.F.R. § 42.71(d)), but the fact that it was raised for the first time in the rehearing means it is not something we could have overlooked. Even if Patent Owner had presented this “motivation” argument in the Preliminary Response, we remain unpersuaded of any error in our Decision. Patent Owner fails to explain sufficiently why a person of ordinary skill in the art would look to other prior art references for guidance regarding the use of a particular power density in large scale reactors in view of our determination that Baalmann itself discloses the use of a power density in the claimed range in a large scale reactor.” slip op. at 11
§ 103 obviousnessPatents in suitUS 8,389,070 - Shieldmark, Inc. v. Clifford A. LoweRehearing deniedPTAB · Sep 4, 2020 · PGR2019-00058 · APJ Sheldon M Mcgee · PGR · Rehearing
The Board accepted the late rehearing request but denied rehearing, leaving in place denial of PGR because Petitioner failed to establish the patent's PGR eligibility.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Before considering the merits of a post grant review challenge, we must first determine whether the subject patent is eligible for post grant review. It is Petitioner’s burden to establish such eligibility, a threshold that Petitioner recognizes by devoting an entire section of its Petition arguing why it believes the ʼ664 patent is eligible for post-grant review (Pet. 28–43) prior to detailing its specific challenges (id. at 43–62). Petitioner’s argument in the Request suggests that, to appreciate the full scope of its eligibility arguments presented at pages 33–36 of its Petition, we were to mine other portions of the Petition (i.e., pages 53–55) for additional lack of enablement and written description arguments for a “width of the lateral edge portion” limitation. We, however, are not required to undertake such efforts on Petitioner’s behalf. See DeSilva v. DiLeonardi, 181 F.3d 865, 867 (7th Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.”); Dec. 23 (“Because Petitioner has failed to demonstrate that the ʼ664 patent is eligible for post-grant review, we need not address Petitioner’s specific unpatentability challenges to claims 1–6, 10–16, 20–22 thereof. Pet. 43–62.”).” slip op. at 6
NonePatents in suitUS 10,214,664
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.