- Solus Advanced Materials Co., Ltd. v. SK Nexilis Co., Ltd.Rehearing deniedPTAB · Oct 7, 2025 · IPR2024-01462 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied Solus’s rehearing request, leaving institution denied for claims 1–8 because the petition did not adequately show motivation to combine Hanafusa and Dobashi.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“of the decision de novo, but instead review the decision for an abuse of discretion. 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” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“In particular, neither Petitioner nor Dr. Josefowicz adequately explain why a POSITA looking for ways to make Hanafusa’s surface roughness low-profile would look to methods to achieve Dobashi’s RSm values. Dobashi teaches that because RSm “can be adopted as the period of waviness, RSm can also be used as an indicator for judgment of the surface.” Ex. 1005, 2:66–3:1, 6:23–26. Dobashi explains that waviness is “an indicator for determining whether the fine pattern forming performance is good or bad,” and “[t]he surface has small waviness and is smooth when RSm is large, and the surface has large waviness Dobashi also teaches that surface roughness Rzjis is used as a low-profile indicator. Ex. 1005, 2:66–3:1. Dobashi, therefore, teaches that RSm is an indicator of surface waviness, which Dobashi explains is different than surface roughness. Id. at 2:66– 3:3, 6:23–29. Given these teachings in Dobashi, neither Petitioner nor Dr. Josefowicz sufficiently explains how or why a POSITA would have been motivated to implement Dobashi’s RSm values to make Hanafusa’s surface roughness low-profile. See Pet. 10–12; Ex. 1003 ¶¶ 46–52.” slip op. at 4
§ 103 obviousnessPatents in suitUS 11,346,014 - Solus Advanced Materials Co., Ltd. v. SK Nexilis Co., Ltd.Rehearing deniedPTAB · Oct 7, 2025 · IPR2024-01461 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution because Petitioner did not show that claims 1–10 were likely obvious over the asserted combinations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When rehearing a decision on institution, we do not review the merits of the decision de novo, but instead review the decision for an abuse of discretion. 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.” Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re 1 US 2013/0108922 A1, published May 2, 2013 (Ex. 1004, “Shinozaki”). 2 G. Khatibi, Temperature Dependent Elastic and Thermal Properties of Thin Copper Foils, Copper; Proceedings of the International Conference Copper ’06 (2006) (Ex. 1006, “Khatibi”). 3 Korean Patent Pub. No. 10-2012-0003485, published Jan. 10, 2012 (Ex. 1013; Ex. 1014 (English translation), “Toshio”). 4 US 2013/0108887 A1, published May 2, 2013 (Ex. 1012, “Kim”). 5 Griesi, M.B., Characterization of Electrodeposited Copper Foil Surface Roughness for Accurate Conductor Power Loss Modeling (2014) (Master’s Thesis, University of South Carolina) (Ex. 1015, “Griesi”). rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, the 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 in a motion, an opposition, or a reply.” Id.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not shown unpatentable
“For example, Dr. Randall does not provide adequate explanation or objective evidence to support his opinion that Khatibi’s use of a laser speckle based dilatometer instead of the claimed thermomechanical analyzer “is unlikely to significantly impact the CTE[6] value” because “variations in equipment and a heating speed of 5° C/min would not significantly alter the results.” Ex. 1003 ¶ 58. In particular, Dr. Randall neither explains what constitutes a “significant” impact on CTE, nor provides objective evidence to support his contention that equipment variations and heating differences would not “significantly alter” the resulting measurements. And although Dr. Randall opines that “the heating rate (5°C per minute) is typical for certain devices” such as a thermomechanical analyzer or dilatometer, and “[t]ypically, these devices use temperature ramp rates between 2°C and 20°C per minutes, so the ‘5° C./min’ recited in [1d] is common and should not drastically affect the measurement results,” Dr. Randall fails to point us to any evidence showing that these temperatures are “typical” or that the claimed heating rate is “common.” Id. ¶ 59 (emphases added).” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner, however, does not adequately explain why a POSITA would have been motivated to modify Kim’s copper foil surface to have a Pc value of 19.2 as reported in Griesi. In particular, neither Petitioner nor Dr. Randall points us to, nor do we discern, any teaching in Griesi that a peak count of 19.2 provides any particular benefits or properties that would have lead a POSITA to modify Kim’s copper foil surface as Petitioner proposes. Instead, Petitioner’s arguments that a POSITA would have been motivated to modify Kim’s copper foil surface with Griesi’s peak count patent itself. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (stating that the fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning”). It was Petitioner’s burden to establish that the combined teachings Kim and Griesi disclose limitation [1g] as proposed. We are not persuaded that we misapprehended Petitioner’s argument when we determined that Petitioner did not meet that burden.” slip op. at 8
- BurdenDecided for patent owner
“It was Petitioner’s burden to establish the Khatibi, alone or in combination with Shinozaki, Toshio, and Kim, discloses limitation [1d]. We concluded that Petitioner failed to meet that burden for the reasons explained in our Decision. We are not persuaded that we overlooked or misapprehended Khatibi’s disclosures, or Petitioner’s evidence and explanation thereof, in doing so.7” slip op. at 5
§ 103 obviousnesscites KSRPatents in suitUS 10,811,689 - Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Rehearing deniedPTAB · Jan 4, 2023 · IPR2022-00182 · APJ Steven M Amundson · IPR · Rehearing
Denied Patent Owner’s rehearing request; the Board found no abuse of discretion in instituting IPR of claims 1, 24, and 25 on the stated § 103 grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d) (2022). In a rehearing request, the party challenging the decision “must specifically identify” (1) “all matters the party believes the Board misapprehended or overlooked” and (2) “the place where each matter was previously addressed” in an earlier submission. Id.; see Consolidated Trial Practice Guide at 90.3 “A rehearing request is not an opportunity for the requesting party to reargue its case or merely to express disagreement with the underlying decision.” MicroSurgical Tech., Inc. v. Regents of Univ. of Colo., PGR2021-00026, Paper 14 at 2 (PTAB Aug. 12, 2021). “Nor is it an opportunity for the moving party to present new arguments that were not in its original submissions.” Id.” slip op. at 3
- Obviousness (§103) › Objective indicia / secondary considerations › CopyingObjective indicia no nexusDecided for petitioner
“Patent Owner does not explain why issue preclusion permits the Board to hold the district court’s finding that Cisco “copied software functionality from the [infringed] patents” against Petitioner. See Prelim. Resp. 16, 54–56; Req. Reh’g 3, 14–15. Issue preclusion “is appropriate only if”: (1) “the issue is identical to one decided in the first action”; (2) “the issue was actually litigated in the first action”; (3) “resolution of the issue was essential to a final judgment in the first action”; and (4) the party defending against preclusion “had a full and fair opportunity to litigate the issue in the first action.” SynQor, Inc. v. Vicor Corp., 988 F.3d 1341, 1353 (Fed. Cir. 2021). Patent Owner does not address any of these requirements for issue preclusion. See Prelim. Resp. 16, 54–56; Req. Reh’g 3, 14–15.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Regarding the policy’s whitelist processing, if the security device determines that a newly received packet with encrypted data is correlated to the hostname corresponding to the whitelisted destination domain, the security device filters the packet by forwarding it to the remote server with the whitelisted destination domain. See Ex. 1004, 7:52–59, 16:36–42; Ex. 1003 ¶ 90; see also Ex. 1004, 6:1–11. Filtering the newly received packet with encrypted data by forwarding it to the remote server with the whitelisted destination domain occurs “without having to decrypt the encrypted secure tunnel session traffic.” Ex. 1004, 5:24–27, 5:35–42, 7:1–9, 11:7–19; see Ex. 1003 ¶¶ 94, 113. Further, filtering the newly received packet with encrypted data by forwarding it to the remote server with the whitelisted destination domain results from applying a packet-filtering rule (a whitelisted destination domain) to the packet. Hence, we disagree with Patent Owner that Buruganahalli’s security devices process whitelisted packets by “forward[ing] the entire encrypted stream without . . . filtering encrypted packets.” See Req. Reh’g 10. We also disagree with Patent Owner that “encrypted packets in whitelisted sessions” are (1) “forwarded without applying any packet-filtering rules” and (2) “allowed uninspected.” See id. at 11 n.1, 13. Regarding the policy’s blacklist processing, if the security device determines that a newly received packet with encrypted data is correlated to the hostname corresponding to the blacklisted destination domain, the security device either blocks the packet (as Patent Owner contends) or filters the packet by forwarding it to a decryption engine. See Ex. 1004, 7:60–67, 9:61–67, 14:33–36, 16:43–48; Ex. 1003 ¶¶ 90–91, 94, 97, 108, 118, 127, 137; Req. Reh’g 10–11, 13. Filtering the newly received packet with encrypted data by forwarding it to a decryption engine occurs “without having to decrypt the encrypted secure tunnel session traffic.” Ex. 1004, 5:24–27, 5:35–42, 7:1–9, 11:7–19; see Ex. 1003 ¶¶ 94, 113, 135. Further, filtering the newly received packet with encrypted data by forwarding it to a decryption engine results from applying a packet-filtering rule (a blacklisted destination domain) to the packet and corresponds to limitation [1.g] and the similar limitations in claims 24 and 25. See Ex. 1003 ¶¶ 109, 134–135. The Institution Decision explained how Buruganahalli’s security devices may filter packets comprising unencrypted data and packets comprising encrypted data according to claims 1, 24, and 25 by applying a whitelist/blacklist policy to the packets. See, e.g., Inst. Dec. 57–60, 66–67, 69–71. As the Institution Decision explained and as discussed above, “for each session packets comprising unencrypted data and packets comprising encrypted data are correlated and filtered based on the hostname (destination domain) extracted from the handshake traffic, and then the correlated and filtered packets are processed separately from packets destined for other domains.” See Inst. Dec. 69–70; Ex. 1003 ¶¶ 109, 120–121, 133–135; Ex. 1004, 7:39–67, 8:55–60, 11:47–51, 14:21–33, 14:50–55, 16:32–48. Buruganahalli discloses additional filtering after forwarding a newly received packet with encrypted data to a decryption engine, e.g., as occurs in Buruganahalli’s Figure 3B embodiment. See, e.g., Ex. 1004, 6:17–22, 9:67–10:4, 12:4–64, Fig. 3B. But claims 1, 24, and 25 use the transitional term “comprising.” Ex. 1001, 25:14, 28:59, 29:29–30. Hence, the claims do not “exclude unrecited elements,” such as additional filtering after forwarding a newly received packet with encrypted data to a decryption engine. See Regeneron Pharm., Inc. v. Merus N.V., 864 F.3d 1343, 1352 (Fed. Cir. 2017) (citing Manual of Patent Examining Procedure § 2111.03).” slip op. at 8
§ 103 obviousnessPatents in suitUS 9,917,856 - Intel Corporation v. VLSI Technology LLCRehearing deniedPTAB · Feb 19, 2021 · IPR2020-00527 · APJ Kimberly Mcgraw · IPR · Rehearing
The Board denied Intel’s rehearing requests and left in place its § 314(a) denial of institution in both proceedings based on the Fintiv factors.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“Petitioner has not shown that this change in circumstance warrants modifying (1) the determination that Fintiv factor 4 weighs in favor of exercising discretion to deny institution or (2) the determination, after weighing all factors and taking a holistic view of the relevant circumstances, to exercise discretion to deny institution. Several of the claims challenged in each Petition are still at issue in the parallel proceeding, and the combinations of references asserted by Petitioner in the district court largely overlap with the combinations of references asserted in the Petitions. Petitioner has not identified any differences among the claims that have been dropped and the claims that remain as a reason to modify our Decision. See Fintiv, Paper 11 at 13 (“if a petition involves the same prior art challenges but challenges claims in addition to those that are challenged in the district court, it may still be inefficient to proceed because the district court may resolve validity of enough overlapping claims to resolve key issues in the petition”).” slip op. at 5
Discretionary denialPatents in suitUS 6,633,187 - Intel Corporation v. VLSI Technology LLCRehearing deniedPTAB · Feb 19, 2021 · IPR2020-00526 · APJ Kimberly Mcgraw · IPR · Rehearing
The Board denied Intel’s rehearing requests, leaving institution denied in both proceedings based on its Fintiv analysis of the parallel litigation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“noted that, “[e]ven if Petitioner’s contentions are true, Petitioner has not shown these contentions will avoid adjudication of Intel’s invalidity defenses” in the related Western District of Texas litigation. Dec. Inst. 13. In light of the record at the time, we found that Petitioner’s arguments in connection with Fintiv factor 6 did not weigh against exercising our discretion to deny institution. Id. at 13–15. Accordingly, we maintain our finding that Petitioner’s argument does not weigh against exercising our discretion to deny institution.” slip op. at 4
Discretionary denialPatents in suitUS 6,633,187 - Intel Corporation v. VLSI Technology LLCRehearing deniedPTAB · Feb 11, 2021 · IPR2020-00582 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Intel’s rehearing request and maintained its discretionary denial of institution under Fintiv, despite weighing Factor 6 neutrally.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“The change in circumstances regarding the trial date does not persuade us to change our decision to exercise our discretion to deny institution. Even if we were to institute an inter partes review proceeding, the deadline for issuing a final written decision could be no earlier than February 2022. Thus, at this time, it appears likely that trial will occur many months before any final written decision would likely issue in this proceeding. Therefore, we maintain our finding that Fintiv Factor 2” slip op. at 4
Discretionary denialPatents in suitUS 7,292,485 - PTAB · Feb 3, 2021 · IPR2020-01024 · APJ Jeffrey S Smith · IPR · Rehearing
The Board denied the Patent Owner’s rehearing request, leaving institution in place after finding no overlooked or misapprehended matter concerning claim construction or the prior-art obviousness showing.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. 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 burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): (d) Rehearing. . . . 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. For the reason discussed below, Patent Owner’s Request for” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“preambles of claims 1, 5, and 22 are not like the preamble in the claim in Bio-Rad. Here, unlike Bio-Rad, the preamble recitation of “for use” in the preamble term “for use in a public transportation facility” expresses an intended use. See Opp. 8. Further, in Bio-Rad, the preamble recited a “method for conducting a reaction in plugs in a microfluidic system,” where the terms “a reaction” and “a microfluidic system” were recited in the body of the claim, and were intertwined with other preamble terms such as “conducting.” Bio-Rad, 967 F.3d at 1371. Here, the body of each independent claim does not recite “public transportation facility.” See Opp. 7. Further, the claim term “high voltage power source” is not intertwined with the claim term “for use in a public transportation facility,” because the “high voltage power source” is structurally complete by itself. Here, as in Catalina, “deletion of the disputed phrase [“for use in a public transportation facility”] from the preamble of Claim 1 does not affect the structural definition or operation of the [claimed apparatus] itself.” Catalina, 289 F.3d at 810; accord Opp. 8. In particular, the location or supply of the high voltage power source does not affect the structural definition or operation of the claimed “first power input adapted to be connected to the first standard high voltage power source,” nor any other limitation recited in the body of the claim of the LED light fixture itself. Also here, as in Catalina, “the specification, in its entirety, does not make the location of the [high voltage power source] an additional structure for the claimed [high voltage power source].” Id.; see Decision at 9–11; accord Opp. 3–4. Patent Owner does not show that the Decision overlooked or misapprehended Catalina or Bio-Rad. We deny rehearing on this basis.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Patent Owner’s contentions are inconsistent with the claims and the Specification. The claims do not separately recite “a high voltage power source” and “a voltage of 450 to 1000 Volts.” Rather, claim 1 recites “a high voltage power source having a voltage of 450 to 1000 Volts.” The Specification discloses that the high voltage power “source 34 can be 450- 1000V direct current.” Ex. 1002, 5:39–40. In reciting “a high voltage power source having a voltage of 450 to 1000 Volts,” claim 1 expressly limits the “high voltage power source” to the disclosed embodiment of a “source [that] can be 450-1000V direct current,” and excludes other embodiments of power sources having a voltage outside of this range. Further, the Specification discloses that the “source,” not the third rail, “can be 450-1000V,” without describing a specific structure that provides the voltage. Ex. 1002, 5:39–40. Contrary to Patent Owner’s contention, the Specification itself describes the high voltage power source in terms of what source can be. Id. Thus, the Decision’s construction of this term is consistent with its usage in the context of the Specification. See Phillips, 415 F.3d at 1315 (Fed. Cir. 2005) (“The words of patent claims have the meaning and scope with which they are used in the specification and the prosecution history. The best indicator of claim meaning is its usage in context.”) (internal citations omitted). Patent Owner does not show that we overlooked or misapprehended the meaning of the claimed “high voltage power source having a voltage of 450-1000 Volts” as used in context of the Specification. We deny rehearing on this basis.” slip op. at 8
Claim constructioncites PhillipsPatents in suitUS 10,190,760 - U.S. Venture, Inc. v. Sunoco Partners Marketing & Terminals L.P.Rehearing deniedPTAB · Dec 17, 2020 · IPR2020-00728 · APJ Brent M Dougal · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution for claims 16–17 based on the Fintiv factors and its § 314(a) discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. 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 burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): 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. Thus, a request for rehearing is not an opportunity to present new arguments or evidence or merely to disagree with the panel’s assessment of the arguments or weighing of the evidence.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“the evidence laid out an approximate time frame for when the trial would likely be held. Dec. 9 (citing Ex. 2003); see also id. at 8–9 (citing PO Resp. 35; Ex. 1026) (Discussing the Court’s Procedures and timeline for trial after the docket call). Thus, we determined that this factor favored denying institution under our analysis of the factors under Fintiv. Id. at 9.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner acknowledges that the proposed combination of the references relies on “us[ing] the cumulative totals of the flow rates of the unblended components in the Hoffman compensation process” (id.), however Patent Owner identifies that Hoffman appears to teach away from using the flow rates of the unblended components in its calculations because of the uncertainty in the flow rate of the blended line. Prelim. Resp. 19, 21– 22. Contrary to Petitioner’s position, it is not Patent Owner’s burden to show why “a person of ordinary skill in the art would be discouraged from measuring flow rates upstream for use in the Hoffman compensation process” (Reh. Req. 9), but rather, Petitioner bears the burden to show why a person of ordinary skill in the art would measure flow rates upstream for use in the Hoffman compensation process in view of the all of the teachings of the references (35 U.S.C. § 314(a) (Institution only authorized if “the information presented in the petition . . . 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.”)). Petitioner’s arguments do not show that we misapprehended or” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageNot reached
“argument concerning the construction of the term “in-line blending.” Id. at 13.” slip op. at 6
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 9,207,686 - Unified Patents, LLC v. Velos Media, LLCRehearing deniedPTAB · Dec 9, 2020 · IPR2019-00710 · APJ Jason W Melvin · IPR · Rehearing
The Board denied rehearing, leaving claims 1, 2, 11, 12, and 22 not shown unpatentable over Chen or Chen and Bao under §103.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The Decision, however, did not overlook and rather accepted that the DC block group flag was “not necessary (and often redundant).” Dec. 12–13 (quoting Pet. 53). Notwithstanding that proposition, we declined to extend it to compel omitting the DC block group flag and withholding the DC block from the (0,0) inference. Id. at 13. Petitioner faults the Decision’s conclusion because the (0,0) inference cannot be applied if the DC block does not have a group flag (the inference depends on the group flag’s value). See Req. Reh’g 7–8. The Request fails to persuade us that we misapprehended or overlooked Petitioner’s argument. Asserting that the DC block group flag was “unnecessary (and often redundant)” does not compel a conclusion that the DC block group flag would be omitted from the bitstream. The Decision determined that the Petition does not sufficiently justify such a conclusion and we do not agree with the Request’s post hoc view equating “not necessary” with “would be omitted.” See Req. Reh’g 8–9.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable
“The Request argues the Petition establishes “it would have been obvious not to include (i.e., omit) a group flag in the bitstream for the DC block” as “one of three ways to reduce the size of coded video.” Req. Reh’g 6 (emphasis omitted) (citing Pet. 54). As an independent basis for modifying Chen, the Petition identifies three potential solutions for reducing coded-video size—“not encoding the significant-coefficient-group flag for the block containing the last significant coefficient, the DC block, and the block whose right neighboring block and lower neighboring block both have non-zero significant-coefficient-group flags.” Pet. 54–55. As support, the Petition cites the challenged patent. Id. at 54 (citing Ex. 1001, 12:6–54). Although the Petition also cites declaration testimony (id. at 55 (citing Ex. 1002 ¶ 94)), that testimony offers no support beyond that in the Petition. Thus, other than through the challenged patent itself, the Petition does not support the factual underpinning required for an obvious-to-try conclusion. That hindsight approach does not establish a persuasive position.” slip op. at 4
§ 103 obviousnessPatents in suitUS 8,964,849 - Netflix, Inc. v. Divx, LLCRehearing deniedPTAB · Dec 2, 2020 · IPR2020-00511 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied DivX’s rehearing request, leaving the institution decision in place because the rule remained effective and Dr. McDaniel’s testimony was supported on the record.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- Expert testimonyPetitioner expert creditedDecided for petitioner
“assertions regarding Dr. McDaniel’s testimony. Dr. McDaniel testified that (a) Chen teaches video data streams, (b) “[a]s was widely known in the art, for example as disclosed by Grab-333,[1] a [person of ordinary skill in the art] would have understood that video data streams were comprised of a series of video frames,” and (c) a person of ordinary skill in the art “would have understood that Chen teaches a plurality of frames of video are encrypted using at least one scrambling key/control word.” Ex. 1003 ¶ 112;” slip op. at 3
NonePatents in suitUS 9,184,920
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.