- PTAB · Dec 6, 2017 · IPR2017-01098 · APJ Sharon Fenick · IPR · Rehearing
The Board denied T-Mobile’s rehearing requests, leaving in place the denial of institution for the challenged claims because it found no abuse of discretion in its preliminary construction.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party requesting rehearing bears the burden of showing an abuse of discretion, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 3
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownDecided for patent owner
“We determined in our preliminary construction that the disclosed structure only supports the use of a single wireless network card. Dec. 12– 14. Although the district court cited column 31, lines 22–24 of the ’306 Patent in its analysis of the disclosed structure for the communication module limitation (Ex. 2001, 34), we determined that that portion of the ’306 Patent specification is not related to the identified function for the communication module limitation. Dec. 12–13.” slip op. at 4
- Skill levelOther
“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown.” Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (internal quotation omitted). Consistent with Okajima, the level of ordinary skill in this case is reflected not only by the information presented by the parties, but also by the prior art of record. Although both parties proposed definitions for the applicable level of ordinary skill in the art. (Pet. 12; Ex. 1003 ¶¶ 31–36; Prelim. Resp. 12), neither party specifically explained how any proposed level of ordinary skill in the art would impact the analysis presented. See Genzyme Therapeutic Products L.P. v. Biomarin Pharm. Inc., 825 F.3d 1360, 1371–72 (Fed. Cir. 2016). Having considered the arguments with slip op. at 8
Claim constructioncites PhillipsPatents in suitUS 8,559,369 - PTAB · Dec 6, 2017 · IPR2017-01099 · APJ Sharon Fenick · IPR · Rehearing
The Board denied T-Mobile’s rehearing requests, finding no abuse of discretion in its preliminary construction of the communication module limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“may “deny some or all grounds for unpatentability for some or all of the challenged claims.” 37 C.F.R. § 42.108(b). When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs if a decision is based 2 See IPR2017-01098, Papers 12, 14; IPR2017-01099, Papers 11 (“Institution Decision” or “Dec.”), 14 (“Req. Reh’g”). Unless otherwise specified, we refer to papers filed in IPR2017-01099 and, with respect to the specification of the patents, to U.S. Pat. No. 9,042,306 (Ex. 1002) (“the ’306 patent”). The written description of U.S. Pat. No. 8,559,369 (the “’369 patent”) is substantively identical. 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.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party requesting rehearing bears the burden of showing an abuse of discretion, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for patent owner
“We determined in our preliminary construction that the disclosed structure only supports the use of a single wireless network card. Dec. 12– 14. Although the district court cited column 31, lines 22–24 of the ’306 Patent in its analysis of the disclosed structure for the communication module limitation (Ex. 2001, 34), we determined that that portion of the ’306 Patent specification is not related to the identified function for the communication module limitation. Dec. 12–13.” slip op. at 4
- Skill levelOther
“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown.” Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (internal quotation omitted). Consistent with Okajima, the level of ordinary skill in this case is reflected not only by the information presented by the parties, but also by the prior art of record. Although both parties proposed definitions for the applicable level of ordinary skill in the art. (Pet. 12; Ex. 1003 ¶¶ 31–36; Prelim. Resp. 12), neither party specifically explained how any proposed level of ordinary skill in the art would impact the analysis presented. See Genzyme Therapeutic Products L.P. v. Biomarin Pharm. Inc., 825 F.3d 1360, 1371–72 (Fed. Cir. 2016). Having considered the arguments with 3 We dispute Petitioner’s characterization of what was “recognized” in our Institution Decision, which clearly notes that the functionality is disclosed in the ’306 Patent as being performed “using only a single wireless network card” and “using a single Wireless NIC.” Dec. 12, quoting ’306 Patent at 11:47-48, 24:28 (emphases in Dec.). respect to the level of ordinary skill, we do not find them persuasive that our preliminary construction was based on an erroneous conclusion of law, a factual finding was not supported by substantial evidence, or there was an unreasonable judgment in weighing relevant factors. slip op. at 8
Claim constructioncites PhillipsPatents in suitUS 9,042,306 - Samsung Electronics Co. Ltd. / Samsung Electronics America, Inc. et al. v. Rosetta-Wireless CorporationRehearing deniedPTAB · Oct 20, 2017 · IPR2016-00622 · APJ John A Hudalla · IPR · Rehearing
The Board denied Rosetta’s rehearing request, finding it had not shown the Board overlooked or misapprehended its § 318(a) and constitutional arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“should be modified, which includes specifically identifying 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. See 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Not reached
“property right. Req. Reh’g 4–5. Thus, Rosetta contends “[i]nter partes review is an adjudicatory proceeding which, as in this case, may result in extinguishment of a patentee’s property rights by action of the Board and without the right to trial by jury.” Id. at 3. According to Rosetta, this violates the Seventh Amendment and Article III of the Constitution. Id. Rosetta cites to a pending case before the U.S. Supreme Court that has taken up this issue. Id. (citing Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 137 S. Ct. 2239 (2017)). Accordingly, Rosetta asks us to vacate our Final Written Decision. Id. at 6. Rosetta never made arguments during trial about the purported unconstitutionality of inter partes review. Nor does Rosetta’s request for rehearing attempt to identify such arguments in the trial record. As such, we could not have misapprehended or overlooked this issue.” slip op. at 4
NonePatents in suitUS 7,149,511 - Facebook, Inc. v. Sound View Innovations, LLCRehearing deniedPTAB · Oct 19, 2017 · IPR2017-00985 · APJ James B Arpin · IPR · Rehearing
The Board denied rehearing and left institution denied for claims 1–3 because the petition lacked required means-plus-function constructions under the adopted claim-construction standard.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The request must identify, with specificity, all matters that the moving party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 3
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Not reached
“Under our Rules setting forth the requirements for the content of the petition, “[w]here the claim to be construed contains a means-plus-function . . . limitation as permitted under 35 U.S.C. [§ 112, ¶ 6], the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3) (emphasis added); see Inst. Dec. 13. Thus, where the challenged claim contains a means-plus-function limitation, the petition must provide a means-plus-function construction for that limitation. Consequently, it was not our task to determine first whether the word “controller” is a nonce word potentially subjecting the claim terms to treatment under 35 U.S.C. § 112, ¶ 6, and only then to receive arguments from Petitioner on their construction. See Reh’g Req. 4 (“Without a predicate finding that § 112, ¶ 6 applies, the Petition’s silence on the identity of a ‘corresponding structure’ had no relevance to the issue of claim construction.” (emphasis added)). Our Rules do not require such a “predicate finding,” and we made no such finding regarding the construction of the “controller” terms. See Inst. Dec. 11 (“For the reasons set forth below, we do not need to construe this claim term or determine its definiteness.”). In the absence of arguments under the appropriate standard from at least Petitioner during the Preliminary Proceeding, we have no basis for construing the “controller” terms. See id. at 13–14 (“The analysis of Petitioner’s arguments regarding claims 1–3 begins and ends with Petitioner’s failure to provide constructions of the claim terms including “controller” under 35 U.S.C. § 112, ¶ 6, and we cannot evaluate Petitioner’s asserted ground with respect to claims 1–3 in the absence of such constructions.”).” slip op. at 6
- BurdenDecided for patent owner
“Under our Rules setting forth the requirements for the content of the petition, “[w]here the claim to be construed contains a means-plus-function . . . limitation as permitted under 35 U.S.C. [§ 112, ¶ 6], the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3) (emphasis added); see Inst. Dec. 13. Thus, where the challenged claim contains a means-plus-function limitation, the petition must provide a means-plus-function construction for that limitation. Consequently, it was not our task to determine first whether the word “controller” is a nonce word potentially subjecting the claim terms to treatment under 35 U.S.C. § 112, ¶ 6, and only then to receive arguments from Petitioner on their construction. See Reh’g Req. 4 (“Without a predicate finding that § 112, ¶ 6 applies, the Petition’s silence on the identity of a ‘corresponding structure’ had no relevance to the issue of claim construction.” (emphasis added)). Our Rules do not require such a “predicate finding,” and we made no such finding regarding the construction of the “controller” terms. See Inst. Dec. 11 (“For the reasons set forth below, we do not need to construe this claim term or determine its definiteness.”). In the absence of arguments under the appropriate standard from at least Petitioner during the Preliminary Proceeding, we have no basis for construing the “controller” terms. See id. at 13–14 (“The analysis of Petitioner’s arguments regarding claims 1–3 begins and ends with Petitioner’s failure to provide constructions of the claim terms including “controller” under 35 U.S.C. § 112, ¶ 6, and we cannot evaluate Petitioner’s asserted ground with respect to claims 1–3 in the absence of such constructions.”). It was Petitioner’s task to determine the necessary claim term constructions to support its request for inter partes review and to present those constructions as part of its Petition. Petitioner failed to do that here with respect to the “controller” terms. Thus, contrary to Petitioner’s assertion, we did not misapply the law governing interpretation of means- plus-function claim limitations; rather, due to the lack of any arguments or evidence from Petitioner, we did not and could not apply it at all. Consequently, we deny Petitioner’s request that we reconsider our Institution Decision and institute inter partes review of claims 1–3 of the ’371 patent.” slip op. at 6
- Strike new argumentNew argument disregardedDecided for patent owner
“It is hard to see where efficiency is achieved by having two tribunals simultaneously consider different claim constructions under the same standard.4 Nevertheless, we cannot find where Petitioner made this argument in its Petition or its Reply, nor does Petitioner identify where it previously raised this argument. See id. at 7–8; see also 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.”). It goes without saying that we could not have overlooked or misunderstood an argument not made, and it is not an abuse of discretion not to consider such an argument.” slip op. at 11
Claim constructionPatents in suitUS 6,125,371 - PTAB · Oct 16, 2017 · IPR2017-01064 · APJ Kerry Begley · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–17, 19–24, 53, and 54 were obvious over Feigen, Flanagan, and Falk.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Having considered the Petition and the Preliminary Response, we determine that the information presented does not show that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of the challenged claims of the ’698 patent. Thus, for the reasons given below, we deny institution of an inter partes review.” slip op. at 2
- BurdenDecided for patent owner
“of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Rather, to establish obviousness, it is petitioner’s “burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (quotations omitted); see KSR, 550 U.S. at 418. Moreover, a petitioner cannot satisfy this burden by “employ[ing] mere conclusory statements” and “must instead articulate specific reasoning, based on evidence of record,” to support an obviousness determination. Magnum Oil, 829 F.3d at 1380. Stated differently, there must be “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The “factual inquiry” into the reasons for “combin[ing] references must be thorough and searching, and the need for specificity pervades . . . .” In re Nuvasive, Inc., 842 F.3d 1376, 1381–82 (Fed. Cir. 2016) (quotations omitted). A determination of obviousness cannot be reached where the record lacks “explanation as to how or why the references would be combined to produce the claimed invention.” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016); see Nuvasive, 842 F.3d at 1382–86 (holding that an obviousness determination cannot be reached where there is no “articulat[ion of] a reason why a [person having ordinary skill in the art] would combine” and “modify” the prior art teachings). This required explanation as to how and why the references would be combined avoids an impermissible “hindsight reconstruction,” using “the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.” TriVascular, 812 F.3d at 1066; In re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011).” slip op. at 17
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Not reached
“as Petitioner, can overcome this presumption by showing that the claim term: (1) “fails to recite sufficiently definite structure,” or (2) “recites function without reciting sufficient structure for performing that function.” Id. at 1348–49 (quotations and citations omitted). The governing standard is “whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” Id. Moreover, if § 112(6) applies and the term is a means-plus-function limitation, construction of the term requires: (1) “identif[ication of] the claimed function,” and (2) a determination of “what structure, if any, disclosed in the specification corresponds to,” i.e., is “clearly link[ed]” to or “associate[d]” with, the claimed function. Id. at 1351–52. Our rules make clear that it is Petitioner’s burden to explain, in detail, how the challenged claim is to be construed with supporting factual and legal analysis. Specifically, 37 C.F.R. § 42.104(b)(3) requires the Petition to “set forth . . . [h]ow the challenged claim is to be construed” and for a means-plus-function limitation, to “identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” In addition, 37 C.F.R. § 42.22(a)(2) requires the Petition to include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” Here, the Petition falls far short of these requirements of our rules by merely stating a bare conclusion that “biometric analyzer” is a mean-plus-function limitation pursuant to 35 U.S.C. § 112(6) and listing the alleged structure and function with one unexplained citation to the ’698 patent specification. Pet. 19. Claims 10 and 11 do not include the word “means,” yet Petitioner provides no analysis directed to rebutting the resulting presumption, under governing Federal Circuit precedent, that § 112(6) is inapplicable. See Williamson, 792 F.3d at 1348–49. Nor does Petitioner provide any evidence, such as expert testimony, regarding whether an ordinarily skilled artisan would have understood “biometric analyzer” to have “sufficiently definite meaning as the name for structure.” See id. Moreover, even if we were to conclude that “biometric analyzer” should be construed as a means-plus-function limitation, Petitioner’s analysis is insufficient. Petitioner offers no explanation regarding why the claimed function would be “analyzing a monitored parameter of the accessor,” as Petitioner proposes. Pet. 19 (emphasis omitted). Given that claim 10 recites only “receiving in a biometric analyzer the biometric signal,” it is unclear, on this record, how or why Petitioner’s proposed function comports with any claimed function. Ex. 1001, 15:6–7. In addition, as to the alleged corresponding structure, Petitioner’s general reference to the Petition’s entire synopsis of the specification and bald citation, without any analysis or explanation, to five lines of the specification, which do not refer to a “biometric analyzer,” are insufficient to address why or how this passage discloses structure that corresponds to any function recited in claims 10 and 11. See id. at 6:55–59; Pet. 16, 19 (citing Ex. 1001, 6:55–59); see also Pet. 10–15.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“2. Other Claim Terms Petitioner proffers numerous other claim terms for construction. Pet. 16–20. Patent Owner argues that no construction of these terms is necessary and contests Petitioner’s proposed construction for some terms. See Prelim. Resp. 13–24. Based on our review of the record and the dispositive issues in our determination of whether to institute inter partes review, we determine that none of these terms requires an express construction to resolve the issues presented by the patentability challenges. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only claim terms that “are in controversy” need to be construed and “only to the extent necessary to resolve the controversy”).” slip op. at 10
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 8,484,698 - Apple Inc. v. California Institute Of TechnologyInstitution deniedPTAB · Sep 12, 2017 · IPR2017-00703 · APJ Ken B Barrett · IPR · Institution
The Board denied institution on claims 1–14, exercising § 325(d) discretion and finding no reasonable likelihood that the ’710 patent and MacKinnon rendered them obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“In determining whether to institute an inter partes review, we, acting on behalf of the Director, may take into account whether, and reject a petition to institute on a particular ground because, the same or substantially the same prior art or arguments previously were presented to the Office. 35 U.S.C. § 325(d).” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner bears the ultimate burden of proving unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this stage, we assess, based on the information presented in the Petition and Patent Owner’s Preliminary Response, whether Petitioner has demonstrated a reasonable likelihood of eventually satisfying that burden. 35 U.S.C. § 314(a). To be entitled to the benefit of the filing date of an earlier application, the claims at issue must have written description support in that earlier application. See 35 U.S.C. § 120. “[T]he test for sufficiency [of the written description] is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citations omitted).” slip op. at 10
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for patent owner
“To be entitled to the benefit of the filing date of an earlier application, the claims at issue must have written description support in that earlier application. See 35 U.S.C. § 120. “[T]he test for sufficiency [of the written description] is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citations omitted).” slip op. at 10
§ 112 disclosureDiscretionary denialPatents in suitUS 8,284,833 - Apple Inc. v. California Institute Of TechnologyInstitution deniedPTAB · Sep 12, 2017 · IPR2017-00702 · APJ Ken B Barrett · IPR · Institution
The Board denied institution because Apple did not show the Pfister Slides were a prior art printed publication, defeating its sole obviousness challenge to claims 1–14.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“With respect to the Pfister Slides, Petitioner fails to meet the burden imposed under § 314(a) to establish in its Petition a reasonable likelihood of success, which includes, among other things, making a threshold showing that the Pfister Slides qualify as a prior art printed publication. Accordingly, we determine that Petitioner has not demonstrated a likelihood of showing that claims 1–14 would have been obvious over the Pfister Slides and MacKinnon. III. CONCLUSION Petitioner has not demonstrated that there is a reasonable likelihood of establishing the unpatentability of any of the claims of the ’833 patent. IV. ORDER For the foregoing reasons, it is ORDERED that the Petition is denied as to the challenged claims, and no trial is instituted.” slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“We look to the underlying facts to make a legal determination as to whether a reference is a printed publication. Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014). The determination of whether a given reference qualifies as a prior art “printed publication” involves a caseby-case inquiry into the facts and circumstances surrounding its disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989); see In re Wyer, 655 F.2d 221, 226 (CCPA 1981). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006) (citation omitted). With respect to slide presentations, Federal Circuit case law and a prior opinion from our Board have found that the mere presentation of slides at a professional conference is not per se a prior art printed publication. Klopfenstein, 380 F.3d at 1349 n.4; Temporal Power Ltd. v. Beacon Power, LLC, Case IPR2015-00146, slip op. at 8–11 (PTAB April 27, 2015) (Paper 10). In the present case, Petitioner cites to specific paragraphs of Mr. Siegel’s declaration that do not support a conclusion that the Pfister Slides qualify as a printed publication. Pet. 31 (citing Ex. 1023 ¶¶ 5–6). Mr. Siegel’s declaration in its entirety does not address the factors cited in In re Klopfenstein as to whether the slides in question qualify as a printed publication. See Ex. 1023. The Petition and Mr. Siegel’s declaration merely support the assertion that a presentation took place, but fail to provide sufficient evidence or argument regarding whether the Pfister Slides were published or how the Pfister Slides were made accessible to the relevant public, among other issues raised by slide presentations. See, e.g., Klopfenstein, 380 F.3d at 1350; Temporal Power Ltd., IPR2015-00146, Paper 10 at 8–11. With respect to the Pfister Slides, Petitioner fails to meet the burden imposed under § 314(a) to establish in its Petition a reasonable likelihood of success, which includes, among other things, making a threshold showing that the Pfister Slides qualify as a prior art printed publication. Accordingly, we determine that Petitioner has not demonstrated a likelihood of showing that claims 1–14 would have been obvious over the Pfister Slides and MacKinnon.” slip op. at 7
§ 102 anticipationPatents in suitUS 8,284,833 - Fedex Corporation v. Intellectual Ventures II LLCRehearing deniedPTAB · Sep 5, 2017 · IPR2017-00750 · APJ David C Mckone · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution because Petitioner did not show a reasonable likelihood of prevailing on claims 1, 3–5, 7, 10–14, and 17.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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 the Decision should be modified is on 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 in a motion, an opposition, or a reply.” Id.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsNot shown unpatentable
“consider. Upon consideration of this evidence, we concluded that “Dr. Hill does not identity any known automation techniques or provide any evidence that employing autonomous vehicles to pick up and/or return items would have been a known example.” Dec. 15.” slip op. at 5
- BurdenDecided for patent owner
“consider. Upon consideration of this evidence, we concluded that “Dr. Hill does not identity any known automation techniques or provide any evidence that employing autonomous vehicles to pick up and/or return items would have been a known example.” Dec. 15.” slip op. at 5
NonePatents in suitUS 6,909,356 - PTAB · Apr 3, 2017 · IPR2016-01516 · APJ John A Hudalla · IPR · Rehearing
The Board denied LG’s rehearing request and left in place the denial of institution on claims 1–12 and 58–67 because neither four-reference obviousness ground established each challenged reference’s prior-art status.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined 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 party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“we denied institution on both grounds presented in the Petition. Dec. 13. In particular, we found that LG had failed to make a threshold showing that one reference from each of its two obviousness grounds—namely, Callaghan Book and Microsoft SMB—qualified as prior art under 35 U.S.C. § 102(b). See id. at 11, 13. Accordingly, we determined that LG had not established a reasonable likelihood that it would prevail in asserting that claims 1–12 and 58–67 would have been obvious over the cited references. Id. LG filed a Request for Rehearing asking that we reconsider our decision not to institute a trial on these obviousness grounds. Paper 24 (“Req. Reh’g”).” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“requirements are met.1 Specifically, we may not institute inter partes review unless “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (emphasis added). LG did not meet this threshold requirement in its Petition, because LG merely asserts that Callaghan Book and Microsoft SMB are printed publications under 35 U.S.C. § 102(b) with no supporting analysis whatsoever. See Pet. 5. In the absence of any showing that these references qualify as printed publications, and based on the relevant dates for Callaghan Book, we found that LG had not met the threshold showing for institution under § 314(a). See Dec. 10–13. Thus, we are not persuaded by LG’s arguments. III. CONCLUSION For the reasons above, we conclude that LG has not met its burden of showing an abuse of discretion, or that we misapprehended or overlooked any of LG’s arguments, in our determinations (1) that LG put forth two fourreference obviousness grounds, and (2) that LG failed to establish the prior art status of one reference in each of the grounds, namely, Callaghan Book and Microsoft SMB. See Dec. 4–5, 10–13. We, therefore, deny LG’s request to modify our determinations and institute an inter partes review of the challenged claims in the ’511 patent.” slip op. at 7
- BurdenDecided for patent owner
“numbered grounds in LG’s chart really represents eight distinct challenges, meaning the Petition includes sixteen grounds of unpatentability. Under this logic, eight grounds would remain even if LG failed to establish the prior art status of Callaghan Book in “Ground 1” or Microsoft SMB in “Ground 2.” See Req. Reh’g 4–5. LG’s argument belies its requirement to “[p]rovide a statement of the precise relief requested for each claim challenged” in the Petition, including identifying “[t]he specific statutory grounds . . . on which the challenge to the claim is based and the patents or printed publications relied upon for each ground.” 37 C.F.R. § 42.104(b) (emphases added); see also 35 U.S.C. § 312(a)(3) (a petition is required to “identif[y], in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim”). LG’s failure to identify specifically and clearly its alleged sixteen grounds is further illustrated by its color-coded Exhibit 1037, wherein LG invites us to parse the discussion of “Ground 1” and “Ground 2” in the Petition by color to construct the eight permutations of grouped references that do not include Callaghan Book or Microsoft SMB. We decline to comb through the Petition to determine the strongest arguments or particular combinations of references that might survive LG’s failure to establish the prior art status of certain references. Instead, we fairly read LG’s “Ground 1” and “Ground 2” to be two grounds. We also stated that each of these two grounds relied on the secondary references throughout the analysis (see Dec. 4–5), which is supported by LG’s color-coded Exhibit 1037. Accordingly, we properly interpreted the Petition as including two four-reference obviousness grounds. Id. at 5. Under these circumstances, LG’s arguments do not persuade us that we misapprehended or overlooked additional grounds in our Decision on Institution.” slip op. at 4
§ 102 anticipationPatents in suitUS 7,149,511 - Ams AG / Ams-Taos USA Inc. et al. v. 511 Innovations, Inc.Institution deniedPTAB · Mar 15, 2017 · IPR2016-01793 · APJ John A Hudalla · IPR · Institution
The Board denied institution for claims 1, 3, and 11 because Petitioner did not show a reasonable likelihood of prevailing, failing to construe the shared “minimal height” limitation.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“arguments in its Preliminary Response to determine whether Petitioner has met the “reasonable likelihood” threshold standard for institution under 35 U.S.C. § 314(a). Our determination turns on Petitioner’s failure to proffer a construction of the following “minimal height” limitation in claim 1: “wherein the one or more light sources and one or more light receivers define at least one minimal height, wherein below the minimal height light that is reflected from a surface of the object is not propagated by the one or more light receivers.”” slip op. at 11
- BurdenDenied
“In its Petition, Petitioner was required to “[p]rovide a statement of the precise relief requested for each claim challenged” including an identification of “[h]ow the challenged claim is to be construed” and “[h]ow the construed claim is unpatentable” under the asserted grounds of unpatentability.2 37 C.F.R. § 42.104(b)(3)–(b)(4). Notwithstanding, Petitioner contends “the Board need not consider any claim terms for purposes of [unpatentability].” Pet. 8. Patent Owner cites the district court’s conclusion in the underlying litigation that “no construction was necessary for ‘minimal height,’ and that the term is ‘defined by the surrounding claim language.’” Prelim. Resp. 12 (quoting Ex. 2001, 28–31). Patent Owner agrees with this conclusion and contends that “no further construction is necessary.”3 Id.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“more light sources and the one or more light receivers define the minimal height. The minimal height is where “light that is reflected from a surface of the object is not propagated by the . . . light receiver[].” We cannot discern from the Petition whether Petitioner reads the claim as requiring absolutely zero light propagation or essentially zero light propagation. Regarding the former case, the Specification does not support a reading where absolutely zero light is propagated. As shown in Figure 5A, region 3 is where the probe is moved to be “essentially is in contact with the surface of the object being measured.” Ex. 1001, 14:14–16. If the object being measured is 2 We do not hold that a petitioner must proffer constructions for every word in a patent claim and, in effect, produce a glossary. In this case, however, the literal language of a key term of the challenged claims is potentially at odds with the ’541 patent’s written description, as we explain below. Petitioner’s application of this term to the prior art provides no clarity as to how Petitioner reads this term or how it supports such a reading. Rule 42.104(b) puts the onus on Petitioner to address this type of situation in the Petition or risk failure to meet its burden under 35 U.S.C. § 314(a). 3 We observe that Patent Owner is not required to proffer claim constructions in its Preliminary Response. See 37 C.F.R. § 42.107. translucent, “the light intensity will be quite high.” Id. at 14:20–21 (emphasis added). And, even in the case where an opaque object is being observed, the intensity shown in Figure 5A is still nonzero. See id. at Fig. 5A. This situation also is described in the Specification as “the received light intensity will be very low, or almost zero,” or, alternatively, the intensity “decrease[s] essentially to zero” and “remain[s] essentially zero.”4 Id. at 13:13–17, 14:19–21 (emphases added). As such, the Specification does not describe a minimal height below which absolutely zero light is propagated by the receiving fiber optic. We now consider a construction of the “minimal height” limitation where essentially zero light is propagated by the receiving fiber optic. As shown above, the notion of essentially zero light being propagated is supported by the very small intensity of light received from an opaque object in region 3 of Figure 5A. Nevertheless, the language of claim 1 does not include a qualifier like essentially or substantially to describe the amount of light that is not propagated. And, even if we were to construe the “minimal height” limitation as being associated with essentially zero light, then the 4 With reference to Figures 4A–4C, the Specification describes “certain principles underlying” the use of fiber optics, including the concepts of an emission cone and a reception cone. Ex. 1001, 11:62–12:4, 12:29–30, 12:56–60. This description states that, “[i]f the fiber optics are held too close to the surface, the circular areas will no longer intersect and no light emitted from the source fiber optic will be received by the receiver fiber optic.” Id. at 13:2–5. Yet this hypothetical scenario is not “bound by theory,” and it expressly states that only light emitted from the source fiber optic is not received. Id. at 12:1–4, 13:2–5. In contrast, claim 1’s light that is not propagated is not limited to “light emitted from the source fiber optic.” As such, this description does not further clarify the “minimal height” limitation. determination of the minimal height would become impossible; Petitioner does not identify an objective standard by which an ordinarily skilled artisan would judge when the intensity of light propagated was low enough to constitute the minimal height. See Liberty Ammunition, Inc. v. United States, 835 F.3d 1388, 1395–96 (Fed. Cir. 2016) (explaining that “[t]erms of degree are problematic if their baseline is unclear to those of ordinary skill in the art,” i.e., if they fail to provide a “standard” or “objective boundar[y] for those of skill in the art when read in light of the specification and prosecution history”) (internal citations and quotations omitted).” slip op. at 12
Claim constructioncites PhillipsPatents in suitUS 7,397,541
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.