- Google LLC v. Cywee Group LtdRehearing deniedPTAB · Jan 30, 2019 · IPR2018-01258 · APJ Christopher L Ogden · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution of review of claims 1 and 3–5 in place because no abuse of discretion was shown.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When a party requests rehearing on a decision instituting inter partes review, we “review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). There is an abuse of discretion if we have made “a clear error of judgment in weighing relevant factors or in basing [our] decision on an error of law or on clearly erroneous factual findings.” Bayer CropScience AG v. Dow AgroSciences LLC, 851 F.3d 1302, 1306 (Fed. Cir. 2017) (quoting Mentor Graphics Corp. v. Quickturn Design Sys., Inc., 150 F.3d 1374, 1377 (Fed. Cir. 1998)). In a request for rehearing, “[t]he burden of showing a decision should be modified lies with the party challenging the decision,” and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the record. 37 C.F.R. § 42.71(d).” slip op. at 2
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“factual issue, which we do not disturb on rehearing unless it was clearly erroneous. See In re Paulsen, 30 F.3d 1475, 1481 (Fed. Cir. 1994). Based on” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“with the second signal set whereby said resultant angles . . . are obtained under said dynamic environments.” Ex. 1001, 19:12–17 (emphasis added). We construed the term comparison as the ’438 patent explicitly defines it: “the calculating and obtaining of the actual deviation angles of the 3D pointing device . . . with respect to the first reference frame or spatial 3–5 of the ’438 patent, we need not address whether or not Bachmann is pertinent to the different problem that Patent Owner defines. Further, we do not consider the evidence in Appendix A, because Patent Owner does not point to any place where this evidence was addressed in the preliminary record. See 37 C.F.R. 42.71(d). pointing frame XP YP ZP utilizing signals generated by motion sensors while reducing or eliminating noises associated with said motion sensors.” Decision 14 (quoting id. at 2:28–32). We also determined that the ’438 patent uses the term consistently with that broad definition—for example, to describe a program or model for updating a state based on a previous state and a measured state. Id. at 13–14.” slip op. at 5
- Skill levelSkill level board ownDecided for petitioner
“inquiries underpinning the legal conclusion of obviousness. See Okajima v. Bourdeau, 261 F.3d 1350, 1354 (Fed. Cir. 2001) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)). On the preliminary record, we determined that a person of ordinary skill in the art would have had, among other things, “knowledge of . . . quaternion mechanics.” Decision 19.” slip op. at 7
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 8,441,438 - Google LLC v. Cywee Group Ltd.Rehearing deniedPTAB · Jan 30, 2019 · IPR2018-01257 · APJ Patrick M Boucher · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no overlooked error in its analogous-art and skill-level analysis and declining to deny institution under § 325(d).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on whether to institute a trial, the Board reviews the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burden of showing that our Decision should be modified lies with Patent Owner, the party challenging the decision. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“(1) the similarities and material differences between the asserted art and the prior art involved during examination; (2) the cumulative nature of the assert art and the prior art evaluated during examination; (3) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (4) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (5) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (6) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586, slip op. at 17–18 (PTAB Dec. 15, 2017) (Paper 8) (informative) (formatting added). These factors weigh against exercising our discretion under § 325(d) to deny institution, particularly in view of the limited nature of Patent Owner’s allegations in its Preliminary Response.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the art would have had, inter alia, “knowledge of . . . quaternion mathematics.” Dec. 15. In doing so, we stated that “[t]he record provides support for Dr. Sarrafzadeh’s [Petitioner’s declarant] position that quaternion mathematics was well known in the relevant time frame.” Id. at 14. Patent Owner contends that, in doing so, we misapprehended the level of skill in the art “by conflating that ‘quaternion mathematics was well known in the relevant time frame’ with the issue of whether the application of quaternion mathematics was well known in the art of 3D pointing devices.” Req. Reh’g 12–13. But in describing its technical field as “methods and apparatus for tracking the orientation . . . of an object,” Bachmann specifically states that “the field of quaternion mathematics is known to those having ordinary skill in the art and is explained in detail in numerous mathematical texts.” Ex. 1004, 1:18–20, 7:25–28. As we noted in the Institution Decision, and reiterate above, “[s]uch tracking is also one of the concerns of the ’978 patent.” Dec. 14. It is thus apparent that we considered not only the isolated question of whether quaternion mathematics was known in the relevant time frame, but also the degree of its application to tracking the orientation of objects.2 We conclude that we did not misapprehend or overlook Patent Owner’s argument that the level of skill in the art should exclude knowledge of quaternion mathematics.” slip op. at 5
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Even accepting, for purposes of this Decision, Patent Owner’s characterization of Bachmann, we are not persuaded that we erred in finding that Bachmann is at least reasonably pertinent to the problem with which the inventor of the ’978 patent was involved. The question of whether a reference is analogous art presents an issue of fact. See In re Paulsen, 30 F.3d 1475, 1481 (Fed. Cir. 1994). In considering this factual issue, Patent Owner’s focus on the display aspect of the problem confronting the inventor of the ’978 patent is too narrow. The bulk of the disclosure of the ’978 patent is concerned with determining the changes in angles that define an orientation of the 3D pointing device rather than with the geometrical task of mapping those determined angles onto a two-dimensional display. Compare, e.g., Ex. 1001, 13:60–19:60 (six columns of description for determining yaw, pitch, and roll angles of 3D pointing device in describing Figure 7), with 20:6–21:65 (two columns describing the geometry of mapping to a display with Figure 9). Regardless of the specific degree to which each of these aspects of the problem is treated by the ’978 patent, it is unambiguously apparent that a significant aspect of the problem addressed is the determination of the 3D pointing device’s orientation. The determination of a hand-held device’s orientation is exactly what Bachmann describes. Ex. 1004, 1:18–20 (“The invention described herein relates to methods and apparatus for tracking the orientation . . . of an object.”), 13:47–48 (“Examples include . . . hand-held devices”). Because of the close similarity of this principal aspect of the problem confronted by the inventor of the ’978 patent, Bachmann reasonably would have commended itself to the inventor’s attention, and is therefore analogous art. We conclude that we did not misapprehend or overlook Patent Owner’s argument that Bachmann is not analogous art.” slip op. at 4
§ 103 obviousnessDiscretionary denialPatents in suitUS 8,552,978
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.