• Cxloyalty, Inc. v. Maritz Holdings Inc.All claims unpatentable
  PTAB · Dec 19, 2019 · CBM2018-00037 · APJ Justin T Arbes · CBM · Final written decision

  Claims 1–15 are unpatentable under § 101; the motion to amend is granted for proposed substitute claims 16–23, which were not shown unpatentable.

  RulingsFinal written decision

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “does not remove the claim from the realm of abstract ideas. See Pet. 52–53; Reply 12; SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (holding that it “does not matter to [the conclusion that the claim is directed to an abstract idea] whether the information here is information about real investments,” as “even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract” (citation omitted)). Further, the last two clauses of claim 1 that recite how the transaction is viewed from the perspectives of the participant and vendor system, respectively, merely express the “non-physical result” of the information transfers and confirm the abstract nature of the claimed subject matter. See Pet. 57. In fact, as to the vendor system clause, the Specification indicates that the vendor system transfers information no differently than it would for any other transaction. See Ex. 1001, col. 7, ll. 15–18 (disclosing that vendor system 208 responds to purchase request 216 “in the same way that it would respond to any other purchase request from a consumer that presents a credit card”).” slip op. at 35

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “Our conclusion also is supported by the ’087 patent’s description of” slip op. at 41

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “transaction, . . . display[ing] an order message indicating the completion of the purchase transaction to the respective participant.” Mot., App’x A, 4. An example in which a judicial exception is not integrated into a practical application is when “an additional element adds insignificant extra-solution activity to the judicial exception.” Guidance, 84 Fed. Reg. at 55; Flook, 437 U.S. at 590 (holding that a step of adjusting an alarm limit variable was “post-solution activity”). Displaying an order message after the facilitated transaction has been completed amounts to insignificant post-solution activity, and does not support a conclusion that the abstract idea of claim 16 is integrated into a practical application.” slip op. at 75

  • 101 substituteMixed

    “transaction, . . . display[ing] an order message indicating the completion of the purchase transaction to the respective participant.” Mot., App’x A, 4. An example in which a judicial exception is not integrated into a practical application is when “an additional element adds insignificant extra-solution activity to the judicial exception.” Guidance, 84 Fed. Reg. at 55; Flook, 437 U.S. at 590 (holding that a step of adjusting an alarm limit variable was “post-solution activity”). Displaying an order message after the facilitated transaction has been completed amounts to insignificant post-solution activity, and does not support a conclusion that the abstract idea of claim 16 is integrated into a practical application.” slip op. at 75

  Patent outcomesUS 7,134,087 unpatentable
  § 101 eligibilitycites Alice · Mayo · Bilski · Berkheimer · Enfish
  Patents in suitUS 7,134,087
• Ruckus Wireless, Inc. / Arris Solutions, Inc. et al. v. XR Communications LLC D/B/A Vivato TechnologiesAll claims unpatentable
  PTAB · Nov 12, 2019 · IPR2018-01018 · APJ Terrence W Mcmillin · IPR · Final written decision

  Claim 16 is unpatentable as obvious over Reudink and Antonio; the motion to amend with substitute claim 18 is denied for lack of written-description support and obviousness.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. Level of Skill in the Art With regard to the level of ordinary skill in the art, Petitioner contends: [A] POSITA[5] would have had Bachelor of Science in Electrical Engineering, or an equivalent field, as well as three to four years of experience in the field of wireless communications; or a Master’s degree in Electrical Engineering, or an equivalent field, as well as two years of experience in the field of wireless communications. Pet. 30 (citing Ex. 1006 (Negus Decl.) ¶ 29). In its Response, Patent Owner does not address this issue. See generally PO Resp. In its Motion to Amend, the Patent Owner states, “Patent Owner agrees with Petitioner’s expert regarding the level of ordinary skill in the art, although someone with less education but more experience, or more education but less experience could also have met this standard.” Mot. to Amd. 15 (citing Ex. 2006 (Short Decl.) ¶ 24). At oral argument in IPR2018-01017, the attorney for the Patent Owner confirmed that there was no dispute with regard to the level of skill in the art. Ex. 3002, 34:22–24. We determine that the aforementioned argument is applicable to this proceeding because the ’728 patent is related to the patent challenged in IPR2018-01017 (see supra § I.A). Based on the evidence and because it is consistent with the prior art of record, we adopt the level of ordinary skill in the art as proposed by Petitioner.” slip op. at 10

  • Expert testimonyPatent owner expert discountedDecided for patent owner

    “proposed amendment “an access point compliant with IEEE 802.11 standards.” In the Motion to Amend, Patent Owner cites column 4, lines 38 through 44, of the ’728 patent in support of this amendment. See Mot. to Amd. 7.11 The cited passage in the ’728 patent states: “the examples presented herein are directed towards wireless IEE[E] 802.11 type network configurations, wherein the client device is capable of roaming within the coverage area of the smart antenna and the client device is configured to establish an association with an access point over a main beam.” Ex. 1001, 4:38–44 (emphasis added). This passage relates to the capability and configuration of the client device not the access point. See Ex. 2006 (Short Decl.) ¶ 40 (citing this same passage in support of the statement that “a [POSITA] would understand that the receiving device can be 802.11 compatible.”) (emphases added). 11 In this section of the Motion to Amend, Patent Owner does not even clearly assert that the Specification of the ’728 patent provides written description support for this amendment. See Mot. to Amd. 7 (“[T]he access point may be compliant with 802.11 standards.”) (emphasis added). The declaration of Patent Owner’s technical witness, Dr. Short, filed in support of the motion to amend provides nothing more than a verbatim recitation of this sentence and a citation to same passage in the ’728 patent with no reasoning or explanation. See Ex. 2006 ¶ 36. As the cited passage does not support his statement, we give no weight to this portion of Dr. Short’s declaration. See 37 C.F.R. § 42.65(a). And, we find that Patent Owner’s ambiguous assertion lacks evidentiary support.” slip op. at 38

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “been motivated to combine the relevant teachings of Reudink and Antonio to make beam acquisition by mobile devices faster and to reduce signal loading on the network. Pet. 24–27 (citing Ex. 1006 (Negus Decl.) ¶ 451). The Petition states: A POSITA at the time of Reudink and Antonio would have been motivated to combine the teachings of Reudink and Antonio. Reudink sends a direction message to remote stations indicating if a beam is acceptable for communication and, if not, that the remote station should search for another beam. Acquiring a beam can thus take some time and may be a problem in cases where beam acquisition is time critical, such as for a mobile remote station. Modifying the direction message of Reudink to include the “add beam set” and “drop beam set” from Antonio’s HDM would speed up beam handoffs for mobile users in the Reudink wireless system and also reduce signaling load on the network. Ex. 1006 ¶ 451. Making this combination is within the ordinary creativity and routine skill of a POSITA because Reudink and Antonio are both directed to problems associated with determining and communicating the preferred beams to be used to establish communications between a remote station and a base station in a wireless multi-beam communication system. Ex. 1006 ¶ 439. Both Reudink and Antonio consider multi-beam communication systems applicable to wireless communications, with both fixed and mobile remote stations. Ex. 1006 ¶ 440. Pet. 24–25. We agree that a person of ordinary skill in the art would have been motivated to combine the relevant teachings of Reudink and Antonio to make beam acquisition by mobile devices faster and to reduce signal loading on the network. In its Response, Patent Owner does not dispute Petitioner’s showing with regard to motivation to combine the relevant teachings of Reudink and Antonio. See generally PO Resp. We find the Petition motivation to combine the relevant teachings of Reudink and Antonio.” slip op. at 33

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Pet. 24–25. We agree that a person of ordinary skill in the art would have been motivated to combine the relevant teachings of Reudink and Antonio to make beam acquisition by mobile devices faster and to reduce signal loading on the network. In its Response, Patent Owner does not dispute Petitioner’s showing with regard to motivation to combine the relevant teachings of Reudink and Antonio. See generally PO Resp. We find the Petition motivation to combine the relevant teachings of Reudink and Antonio. Conclusion regarding Unpatentability of Claim 16 After consideration of the arguments and evidence presented by the parties, we find that a preponderance of the evidence establishes Reudink and Antonio teach all the limitations of claim 16 and that Petitioner has established there was a motivation to combine the relevant teachings of Reudink and Antonio. We conclude that claim 16 would have been obvious in light of Reudink and Antonio.” slip op. at 33

  Patent outcomesUS 7,729,728 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,729,728
• Teradata Operations, Inc. v. Berkeley*ieorRehearing denied
  PTAB · Nov 5, 2019 · CBM2019-00013 · APJ Jon B Tornquist · CBM · Rehearing

  The Board denied rehearing of its decisions denying institution of CBM review of the challenged claims in four proceedings, finding no overlooked or misapprehended matter.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD FOR REHEARING Pursuant to 37 C.F.R. § 42.71(d): 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. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion exists where a “decision [i]s 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., 840 F.2d 1565, 1567 (Fed. Cir. 1988).” slip op. at 3

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “the relational database management system to . . . calculate” as requiring that the recited calculations be performed “in the RDBMS.” Inst. Dec. 8–10. Petitioner did not provide an express construction for this claim term in the Petition. Id. at 7. For purposes of deciding whether to institute trial, and after reviewing the claim language, the written description of the involved patents, and the relevant prosecution history, we adopted Patent Owner’s proposed construction. Id. at 8–10. Petitioner contends the construction adopted by the panel is incorrect because the claims on their face are broad enough to encompass “[a]ny use of the RDBMS,” for example using the RDBMS to” slip op. at 3

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “As explained in the Institution Decision, Petitioner’s arguments with respect to whether the challenged claims recite a technological feature that is novel and unobvious over the prior art relied on a claim construction that we did not adopt. Inst. Dec. 13–14. As such, the Petition did not adequately explain why it was not novel and obvious to use an RDBMS itself to perform the claimed profit calculations. Id. at 14. Although Petitioner disagrees with our conclusion, and now cites to disparate portions of the Petition to support its argument, a mere disagreement is not the proper basis for rehearing, and a rehearing request is not the proper vehicle to make arguments that were not clearly set forth in the Petition.” slip op. at 5

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “Petitioner also contends that the Board failed to consider its obviousness arguments. Req. Reh’g 14–15. We considered these arguments, but ultimately found them unpersuasive. Inst. Dec. 13–14. In short, Petitioner presumed a construction of “using the relational database management system to . . . calculate” that we did not adopt, and did not explain sufficiently why the prior art of record would have rendered the challenged claims obvious under the adopted claim construction. A request for rehearing is not an opportunity to remedy these deficiencies.” slip op. at 7

  Claim construction§ 103 obviousness
  Patents in suitUS 7,882,137
• Teradata Operations, Inc. v. Berkeley*ieorRehearing denied
  PTAB · Nov 5, 2019 · CBM2019-00009 · APJ Jon B Tornquist · CBM · Rehearing

  The Board denied Teradata’s rehearing requests, leaving in place the denials of CBM review based on the petition’s failure to show the challenged claims unpatentable under the adopted construction.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD FOR REHEARING Pursuant to 37 C.F.R. § 42.71(d): 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. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion exists where a “decision [i]s 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., 840 F.2d 1565, 1567 (Fed. Cir. 1988).” slip op. at 3

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “the relational database management system to . . . calculate” as requiring that the recited calculations be performed “in the RDBMS.” Inst. Dec. 8–10. Petitioner did not provide an express construction for this claim term in the Petition. Id. at 7. For purposes of deciding whether to institute trial, and after reviewing the claim language, the written description of the involved patents, and the relevant prosecution history, we adopted Patent Owner’s proposed construction. Id. at 8–10. Petitioner contends the construction adopted by the panel is incorrect because the claims on their face are broad enough to encompass “[a]ny use of the RDBMS,” for example using the RDBMS to” slip op. at 3

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “the relational database management system to . . . calculate” as requiring that the recited calculations be performed “in the RDBMS.” Inst. Dec. 8–10. Petitioner did not provide an express construction for this claim term in the Petition. Id. at 7. For purposes of deciding whether to institute trial, and after reviewing the claim language, the written description of the involved patents, and the relevant prosecution history, we adopted Patent Owner’s proposed construction. Id. at 8–10. Petitioner contends the construction adopted by the panel is incorrect because the claims on their face are broad enough to encompass “[a]ny use of the RDBMS,” for example using the RDBMS to” slip op. at 3

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “As explained in the Institution Decision, Petitioner’s arguments with respect to whether the challenged claims recite a technological feature that is novel and unobvious over the prior art relied on a claim construction that we did not adopt. Inst. Dec. 13–14. As such, the Petition did not adequately explain why it was not novel and obvious to use an RDBMS itself to perform the claimed profit calculations. Id. at 14. Although Petitioner disagrees with our conclusion, and now cites to disparate portions of the Petition to support its argument, a mere disagreement is not the proper basis for rehearing, and a rehearing request is not the proper vehicle to make arguments that were not clearly set forth in the Petition.” slip op. at 5

  Claim construction§ 103 obviousness
  Patents in suitUS 7,882,137
• Packers Plus Energy Services Inc. / Packers Plus Energy Services (USA) Inc. v. Baker Hughes Oilfield Operations, LLCAll claims unpatentable
  PTAB · Nov 5, 2019 · IPR2018-01030 · APJ Barbara A Parvis · IPR · Final written decision

  Claims 1, 5, 6, and 10–13 are unpatentable, principally because King’s second embodiment anticipates them; the contingent motion to amend is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner contends, relying on the testimony of Mr. Gonzalez, that a person of ordinary skill in the art would have had a bachelor’s degree in petroleum or mechanical engineering, or other science or technical degree applicable in the oil and gas industry, and at least three years of experience in drilling and completions of oil and gas wells, including experience in well fracturing simulations. Pet. 23 (citing Ex. 1025 ¶¶ 41–43). Petitioner further contends that the artisan’s level of education necessary may increase or decrease depending on years of experience, and conversely the years of experience may increase or decrease depending on level of education. Id. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill or propose an alternative. PO Resp. 4. On the record before us, we are persuaded to adopt Mr. Gonzalez’s assessment of a person with ordinary skill in the art because it is consistent with the problems and solutions in the prior art of record. We further find that the prior art of record in the instant proceeding reflects the appropriate level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (“the prior art itself reflects an appropriate level” of ordinary skill in the art).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “In applying a broadest reasonable construction, claim terms generally are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Additionally, we must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “We start with whether “profile” is limited to a feature or element that makes contact with the ball. We agree with Petitioner that “profile” is not limited to features that make contact. Claim 1 recites “a profile disposed at the second portion configured to increase resistance to extrusion of a runnable member past the pluggable seat in comparison to the same pluggable seat without the profile.” Ex. 1001, 4:7–10 (emphasis added). Claim 11 recites a profile disposed at a second portion of the seat having a second diameter that is smaller than the first diameter and positioned downstream of the first portion, downstream being defined as a direction that the ball is moved into seating engagement with the seat, the profile being configured to require greater pressure required to extrude the ball past the first portion. Ex. 1001, 4:41–47. Consistent with Petitioner’s proposed construction (Pet. 22; Ex. 1025 ¶ 48), and contrary to Patent Owner’s contentions and the testimony of Mr. Watson (see, e.g., PO Resp. 14–16; Ex. 2010 ¶ 45), claims 1 and 11 recite that the “profile” is configured “to increase resistance” and “to require greater pressure,” respectively. Ex. 1001, 4:7–10, 4:41–47. Claims 1 and 11 also include recitations relating to seating, such as “seatable thereagainst” and “seating engagement,” but these recitations pertain to “a first portion” and defining the position of “a second portion,” i.e., “downstream,” respectively. Id. at 3:57, 4:3, 4:44. No similar terms are recited with respect to “profile.” Id. at 3:55–4:10, 4:33–47.” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Regarding the first of Patent Owner’s assertions, consistent with Petitioner’s contentions and the testimony of Mr. Gonzalez and contrary to Patent Owner’s assertion and the testimony of Mr. Watson, Haugen describes an apparatus and method of operation for the release of concentric tubing strings used in well operations. Ex. 1003, at code (57). We agree with Petitioner that the ’829 Patent Specification does not limit the field of endeavor to “fracturing” or “sliding sleeves” and claim 1 does not recite that the “frustoconical surface” of the first portion prevents extrusion. Pet. Reply 17. Indeed, the ’829 Patent describes the field broadly as “industries concerned with earth formation boreholes, such as hydrocarbon recovery and gas sequestration.” Ex. 1001, 1:6–7. “When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” KSR at 417.” slip op. at 35

  Patent outcomesUS 8,365,829 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,365,829
• BMW Of North America, LLC v. Carrum Technologies, LLCInstitution denied
  PTAB · Nov 5, 2019 · IPR2019-00928 · APJ Lynne H Browne · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim, relying on Winner’s existing methods for detecting turns.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless 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.”” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “6. Analysis We agree with Patent Owner. As Winner discloses methods for identifying when a vehicle has entered a curve (measuring transverse acceleration and using the forward facing radar), it is not evident why one of ordinary skill in the art would have looked to Fukada to obtain additional Petitioner is relying on alleged AAPA7 to provide reasoning in support of the proposed combination, we note that identification of a problem “is not an admission that this problem was known or appreciated by others.” Endo Pharm. Inc. v. Actavis LLC, 922 F.3d 1365, 1376 (Fed. Cir. 2019) (quoting Innogenics, N.V. v. Abbott Labs., 512 F.3d 1363, 1373 (Fed. Cir. 2008))). Thus, we are not persuaded by Petitioner’s argument.” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “In view of our analysis discussed below, we do not discern a need to construe explicitly any claim term of the ’416 patent, because construing these terms is not necessary for us to assess the asserted grounds of unpatentability. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 9

  • Skill levelSkill level petitioner adoptedOther

    “A person of ordinary skill in the art (“POSITA”) at the time the ’416 patent was filed would have a bachelor’s degree in electrical engineering, computer engineering, or a related engineering discipline and two to three years of industry experience in the field of automotive control systems or automotive engineering, or equivalent experience, education, or both.” Pet. 9 (citing Ex. 1004 ¶ 22). Petitioner asserts further that “[t]he person would also have knowledge or familiarity with in-vehicle computing.” Id. Patent Owner “does not dispute Petitioner’s definition of a POSA.” Prelim. Resp. 2 (citing Pet. 9). Accordingly, for the purposes of this Decision, we 6 We note that at this time no objective evidence of nonobviousness has been presented by Patent Owner. consistent with the evidence at this stage of the proceeding, including the ’416 patent and the asserted prior art.” slip op. at 7

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,925,416
• BASF Corporation v. Ingevity South Carolina, LLCRehearing denied
  PTAB · Oct 17, 2019 · IPR2019-00202 · APJ Christopher L Crumbley · IPR · Rehearing

  The Board denied rehearing and maintained its denial of institution because BASF did not show a reasonable likelihood that any challenged claim was unpatentable.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “when rehearing a decision on a petition to institute trial the Board “will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “An abuse of discretion occurs where the decision is based on an erroneous interpretation of the law, on factual findings that are not supported by substantial evidence, or represents an unreasonable judgment in weighing relevant factors.” Lacavera v. Dudas, 441 F.3d 1380, 1383 (Fed. Cir. 2006) (quoting Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005)). The party requesting rehearing has the burden of showing the decision should be modified, and “[t]he request must specifically identify all” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “In our Decision, we reviewed BASF’s arguments and submitted evidence, and concluded that the record lacked sufficient support for these three links in BASF’s logical chain. First, we found that BASF had not provided evidence “why a person of skill in the art would have been led by Park’s strength requirement for an air intake system to select Formulation D” for the evaporative emissions systems that are the focus of the ’844 patent. Dec. 17–18. Second, we found no reason to conclude that, even if a person of ordinary skill in the art would have selected Park’s Formulation D to use in an evaporative emissions system, the resulting honeycomb would have the 73.8% voidages that Park considers desirable. Id. at 18–19. Finally, we found unsupported Mr. Lyons’ testimony that BAX 1500 carbon was the highest-capacity carbon known in the art at the time of the invention. Id. at 19–20. Each of these independent findings was sufficient to lead us to conclude that BASF had not shown that a system resulting from the use of Park’s honeycomb filter in an evaporative emissions system would necessarily have an IAC below 35 g/L, as required by the claims. Id. at 20–21. As such, we found that BASF had not established a reasonable likelihood that any claim of the ’844 patent was unpatentable.” slip op. at 4

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “insufficient to support a reasonable likelihood of inherency on this record. To justify a conclusion of inherency in an obviousness inquiry, “the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art.” Par Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014). In other words, even were we to accept BASF’s contentions that a person of ordinary skill would have formed a filter using Park’s Formulation D and having 73.8% voidages, we would also have to conclude that the artisan would have had reason to select a carbon that necessarily would result in an IAC below 35 g/L. And, as we stated in our Decision, the reason for selecting a particular carbon cannot be based on the very IAC property that is allegedly inherent. Dec. 14 (“properties that are inherent—and, therefore, possibly unknown—cannot be used as the basis for this motivation unless they were expected.”) (citing Honeywell Int’l v. Mexichem Amanco Holding, 865 F.3d 1348 (Fed. Cir. 2017)). BASF’s Petition discussed two available carbons, BAX 1100 and BAX 1500, because they were referenced in the specification of the ’844 patent. Pet. 23. But there is insufficient evidence in the record why these were the two carbons that a person of ordinary skill in the art would have found it obvious to select from among the carbons that were available at the time of the invention, and the record is silent as to whether other carbons, if selected, would have necessarily resulted in the same IAC or lower. As we observed in our Decision, all that BASF presented on this point was the unsupported testimony of its expert that BAX 1500 had “the highest possible IAC known at the time of the ’844 patent.” Dec. 19–20 (citing Ex. 1003 ¶ 111). Again, BASF cites our rules, contending that we erred by not viewing a disputed issue of material fact in the light most favorable to it. Req. Reh’g 14. In particular, BASF notes our statement in the Decision acknowledging that “BAX 1500 certainly has the highest IAC of any carbon disclosed in the ’844 patent,” and argues that this alone is “evidence in the record that BAX-1500 was the highest-capacity carbon available at the time.” Id. (citing Dec. 20). But the disclosure of two particular carbons in the record says nothing about the existence—or lack thereof—of other carbons. In other words, as we stated in the Decision, “on this record we cannot extrapolate beyond [the] disclosure to all activated carbons known at the time of the invention.” Dec. 20. The issue is not one of viewing a disputed issue of fact in the light most favorable in BASF; rather, it is an issue of BASF asking us to conclude from the disclosure of two carbons in the ’844 patent that these are the carbons that a person of ordinary skill in the art, upon reading Park, would have selected. The record is insufficient to reach such a conclusion, and we did not err in deciding so.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “would have selected Park’s Formulation D when creating a filter for use as a subsequent adsorption volume, BASF contends that we misapprehended its evidence supporting such a selection. Id. at 9–12. BASF notes its argument was that a person of ordinary skill in the art would have selected Formulation D “because it is the only formulation that meets Park’s explicit requirements for the air intake application: a carbon content of 25–35% by weight and an axial crushing strength from 1200–1600 psi.” Id. at 10 (citing Pet. 33–34). But BASF’s argument misses the point of our conclusion in the Decision, which was that the record contained no evidence that the requirements of an air intake application, as discussed by Park, were the same as the requirements of the evaporative emissions application that is the focus of the ’844 patent and the primary prior art references in each combination. In other words, while a person of ordinary skill in the art might have been led to Formulation D if trying to create a filter for an air intake system, the record contains no persuasive evidence that the same is true of the artisan creating an evaporative emissions system. Indeed, as we noted in the Decision, the only evidence on this point is to the contrary, and comes from Ingevity’s expert witness Dr. Ritter. As we noted, “Dr. Ritter testifies that evaporative emission systems and air intake systems are designed for use with different vapor concentrations and, more importantly, different flow rates.” Dec. 17 (citing Ex. 2001 ¶¶ 43–44).” slip op. at 5

  § 102 anticipation§ 103 obviousness
• Next Caller Inc. v. Trustid, Inc.Institution denied
  PTAB · Oct 16, 2019 · IPR2019-00961 · APJ Jean R Homere · IPR · Institution

  The Board denied institution in IPR2019-00961 and IPR2019-00962 because substantially overlapping district court litigation was advanced and scheduled to conclude before a Board decision.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied

    “discretion under § 314(a) to deny a petition upon determining that institution would be an inefficient use of Board resources. NHK Spring, IPR2018- 00752, Paper 8 at 19–20. In particular, the Board determined that it was proper to exercise discretion to deny institution in a case having a parallel district court proceeding involving (i) the same patent/parties, (ii) the same claim construction standard, (iii) the same prior art references, and (iv) the same arguments as in the district court proceeding, which was scheduled to be completed before a final decision would have been due in the Board proceeding.7 See id. The Board determined that these circumstances supported denial of the petition under § 314(a), considering the AIA’s objective “to provide an effective and efficient alternative to district court litigation.” Id. at 20 (quoting Gen. Plastic8). We agree with TRUSTID that the case before us presents circumstances that support denial of institution under § 314(a). Prelim. Resp. 15–19.” slip op. at 10

  • Other 314aInstitution denied discretionary otherInstitution denied

    “e. Additional Factor: Next Caller’s Delay Next Caller’s delay in filing the Petition weighs in favor of the Board exercising discretion to deny institution under § 314. As depicted in table 4 below, at the time of the ’039 Petition, Next Caller was aware or could have reasonably been aware of the prior art asserted in the challenges set forth in the instant proceeding.” slip op. at 15

  Discretionary denialcites Phillips
  Patents in suitUS 8,238,532
• Next Caller Inc. v. Trustid, Inc.Institution denied
  PTAB · Oct 16, 2019 · IPR2019-00962 · APJ Jean R Homere · IPR · Institution

  The Board denied institution of IPR on claims 1–52 under § 314(a), finding the petitions duplicated parallel district court litigation scheduled to conclude before a Board final decision.

  RulingsInstitution decision

  • Other 314aInstitution denied discretionary otherInstitution denied

    “discretion under § 314(a) to deny a petition upon determining that institution would be an inefficient use of Board resources. NHK Spring, IPR2018- 00752, Paper 8 at 19–20. In particular, the Board determined that it was proper to exercise discretion to deny institution in a case having a parallel district court proceeding involving (i) the same patent/parties, (ii) the same claim construction standard, (iii) the same prior art references, and (iv) the same arguments as in the district court proceeding, which was scheduled to be completed before a final decision would have been due in the Board proceeding.7 See id. The Board determined that these circumstances supported denial of the petition under § 314(a), considering the AIA’s objective “to provide an effective and efficient alternative to district court litigation.” Id. at 20 (quoting Gen. Plastic8). We agree with TRUSTID that the case before us presents circumstances that support denial of institution under § 314(a). Prelim. Resp. 15–19.” slip op. at 10

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached

    “A threshold issue raised by the Preliminary Response is whether, pursuant to the precedent set forth in NHK Spring, we should deny institution under 35 U.S.C. § 314(a) in view of the similarities between this proceeding and the Parallel District Court Proceeding, and the expected completion date of the Parallel District Court Proceeding before the Board’s final written decision in this proceeding. Id. Because we determine that the specific factual circumstances of this case warrant denial of institution under § 314(a), this threshold issue is dispositive.5 35 U.S.C. § 314(a) states that [t]he Director may not authorize an inter partes review to be instituted unless the Director6 determines that 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.” slip op. at 9

  Discretionary denialcites Phillips
  Patents in suitUS 8,238,532
• Nitro Fluids, L.L.C. v. Cameron International CorporationRehearing denied
  PTAB · Oct 15, 2019 · IPR2019-00804 · APJ Jon B Tornquist · IPR · Rehearing

  The Board denied the rehearing request and maintained denial of institution for claims 1–15 under § 325(d) based on Kajaria and Guidry.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD FOR REHEARING Pursuant to 37 C.F.R. § 42.71(d): 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. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion exists where a “decision [i]s 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., 840 F.2d 1565, 1567 (Fed. Cir. 1988).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential in relevant part) and determined that the balance of these factors favored denial of the Petition under 35 U.S.C. § 325(d). Dec. 11–23. As part of this analysis, we determined that: Kajaria was previously presented to the office during prosecution and was the basis for a rejection by the Examiner; Petitioner and the Examiner relied on the same disclosures of Kajaria to support their arguments; Petitioner did not sufficiently point out how the Examiner erred in his evaluation of Kajaria; and the declaration testimony of Mr. Ely did not warrant reconsideration of the prior art previously analyzed by the Examiner. Id. at 12–22.” slip op. at 3

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Other

    “fracturing tree, wherein the single outlet is coupled to the fracturing tree by a single fluid conduit that is the only fluid conduit connecting the skid apparatus in fluid communication with the well at which the one fracturing tree is positioned. Ex. 1001, 7:6–30.” slip op. at 3

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successOther

    “obviousness ground relies solely on modification of distribution modules 42. Req. Reh’g 14. According to Petitioner, the Petition specifically alleges that “it would have been obvious to modify any module, including specifically module 40, to use a single manifold, to support only a single valve group, for delivery of fluid to a single well, via a single fluid conduit.” Id. (citing Pet. 35–42, 49–52, 56–57; Ex. 1002 ¶¶ 92, 96, 99, 102, 103, 122, 124–126, 128, 138). We did not misunderstand or misapprehend this argument; indeed, we noted its logical appeal. Dec. 21 n.10. We instead declined to credit the inference underpinning this argument, i.e., that a single-manifold embodiment would use a single fluid conduit, because the only reference of record having a single distribution module coupled to a single manifold had two fluid conduits extending from the distribution module to the well. Id. Accordingly, we are not persuaded that we misunderstood or overlooked Petitioner’s obviousness arguments.” slip op. at 11

  § 102 anticipation§ 103 obviousnessDiscretionary denial
  Patents in suitUS 9,903,190

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.