- Mobileye Global, Inc. v. Facet Technology Corp.Rehearing deniedPTAB · Apr 22, 2025 · IPR2024-01110 · APJ Sean P O’Hanlon · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution in place on claim 15 based on the Gallagher–Lumia obviousness challenge.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id. 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 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. 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).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“or overlooked any matter. As we explained in the Institution Decision, the ’255 patent discloses that the recited characterization profile allows the system to convert the intensity values measured by the intensity sensor into luminance values based on the sensor’s ability to sense the particular color of the measured light. Inst. Dec. 21; Ex. 1001, 11:41–48. The ’255 patent states that “the light intensity sensor’s 280 ability to sense . . . a particular color” is the “the light intensity sensor’s 280 profile for [that] particular color.” Ex. 1001, 11:45–47. The ’255 patent further states that this “[l]ight intensity sensor 280 characterization is essential for high precision computations.” Id. at 11:48–49. Thus, as we stated in the Institution Decision, the recited “characterization profile” refers to a conversion factor used to convert the measured light intensity into luminance. As this conversion factor is based on the light intensity sensor’s ability to sense the particular color of light reflected by the road sign, we agree that it is empirical information. Patent Owner fails to explain adequately how the fact that the ’255 patent discloses storing multiple conversion factors for multiple colors of measured light in a digital look-up-table (see id. at 11:56–59 (“The light intensity sensor characterization 275 is empirical information about the light intensity sensor 280 that is used to create the [look-up table] 475.”)) has any bearing on our interpretation.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Owner to the Institution Decision where we fully addressed Patent Owner’s contentions. See Inst. Dec. 29–31. As we explained, “Petitioner proposes to incorporate Lumia’s teaching of measuring luminance values into Gallagher’s system, and argues that an ordinarily skilled artisan would have had a reasonable expectation of success given Gallagher’s disclosure of determining calibration factors for each individual sensor in the array of sensors.” Id. at 30. In other words, Petitioner proposes to use Gallagher’s array of sensors to measure luminance in the manner taught by Lumia. We also explained in the Institution Decision how Lumia discloses using a video camera to measure the luminance of a road sign. Id. at 27–29. We further explained that, in the Petition, “Petitioner sets forth reasoning with rational underpinning to support its contentions that it would have been obvious to combine the teachings of Gallagher and Lumia” by, for example, “argu[ing] that implementing Lumia’s teaching of determining the luminance of traffic signs in Gallagher’s system would allow Gallagher’s system to calculate the retroreflectivity of road markers as a means of identifying any markers that do not meet minimum acceptable reflectance levels.” Id. at 30–30 (citing Pet. 46). We further explained that Petitioner’s arguments were supported by the testimony of it witness, Dr. Thorpe. Id. at 31 (citing Ex. 1003 ¶ 116).” slip op. at 7
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,335,255 - Quectel Wireless Solutions Co. Ltd. v. Koninklijke Philips N.V.Rehearing deniedPTAB · Mar 7, 2023 · IPR2021-00563 · APJ Kevin F Turner · IPR · Rehearing
The Board denied Patent Owner’s rehearing request and left claim 9 unpatentable as obvious over Agin and Chen under § 103.
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) (2020). 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., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting 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
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We do not agree with Patent Owner’s arguments. As stated in our Decision, Agin discloses that parameters may be determined based on statistics on power control results for a transmission period before said transmission interruption, including “the largest [of] the variations of a received signal power before the interruption. See Dec. 24; Ex. 1004, 6:9– 13. Thus, Agin acknowledges that variations are possible, and can be taken into account, even with a single base station. Chen discusses that a power control processor determines the correct power control command by use of averaging or weighted averaging from “each transmitter’s signal at the receiver.” Ex. 1005, 10:45–56. Thus, although Patent Owner is correct that those signals are received from multiple transmitters, in Chen, Agin demonstrates that variations can occur and can be compensated for with even a single transmitter, countering Patent Owner’s argument that there would be nothing to average over. Taking Agin and Chen together, as Petitioner has asserted, we remain persuaded that ordinarily skilled artisans would have applied the weighted average, disclosed in Chen, in Agin, even if a single transmitter/ base station is utilized. See Dec. 23–25. We remain persuaded that those of ordinary skill in the art would have been able to apply the concept of a weighted average to signals received from a single base station.” slip op. at 10
§ 103 obviousnessPatents in suitUS 8,195,216 - 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 - 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 - Huawei Device Co., Ltd. v. Optis Wireless Technology, LLCRehearing deniedPTAB · Mar 13, 2019 · IPR2018-00655 · APJ John P Pinkerton · IPR · Rehearing
The Board denied Patent Owner’s requests for rehearing, finding no overlooked or misapprehended matter warranting modification of its order denying supplemental briefing.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed. Id. When rehearing an interlocutory decision, a panel will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(b); see also Wi-Fi One, LLC v. Broadcom Corp., 887 F.3d 1329 (Fed. Cir. 2018) (“The Board’s administration of its rules for trial proceedings is reviewed for an abuse of discretion.”). The Board abuses its discretion if the decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision. Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (quoting Abrutyn v. Giovanniello, 15 F.3d 1048, 1050–51 (Fed. Cir. 1994)). With this in mind, we address the arguments presented by Patent Owner.” slip op. at 3
- Other 314aDecided for petitioner
“case at the time of our Order. Nonetheless, considering NHK Spring now, we do not agree with Patent Owner that the district court trial timeline in the Litigation, alone, is a sufficient factor for us to exercise our discretion to deny institution of these proceedings. The district court trial timeline is but one of many factors, none of which is particularly dispositive, either alone or in combination with other factors. See TPG Update, 9−10. Further, a petition need only meet a reasonable likelihood of success on the merits (35 U.S.C. § 314(a)) for us to institute trial, which is a very different standard than the clear and convincing evidence standard applied in determining patent invalidity in the district court (Microsoft Corp. v. I4I Ltd. P’ship, 564 U.S. 91, 95 (2011) (holding that 35 U.S.C § 282 requires an invalidity defense to be proved by clear and convincing evidence)). Also, in these proceedings we apply the broadest reasonable interpretation standard (Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016)), compared to the Phillips standard used at the district court (Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc)). Accordingly, although we recognize that the Litigation in district court resulted in a trial in which the patent at issue survived the validity challenge, we weigh all other relevant circumstances in the case, including the merits, and determine that the circumstances of this case do not warrant exercise of discretion under § 314 or as explained in the NHK Spring case. See TPG Update, 10 (“The General Plastic factors, alone or in combination, are not dispositive, but part of a balanced assessment of all relevant circumstances in the case, including the merits.”).” slip op. at 8
Discretionary denialcites PhillipsPatents in suitUS 8,208,569 - Huawei Device Co., Ltd. v. Optis Wireless Technology, LLCRehearing deniedPTAB · Mar 13, 2019 · IPR2018-00653 · APJ John P Pinkerton · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, leaving its order denying supplemental briefing in place and finding no abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed. Id. When rehearing an interlocutory decision, a panel will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(b); see also Wi-Fi One, LLC v. Broadcom Corp., 887 F.3d 1329 (Fed. Cir. 2018) (“The Board’s administration of its rules for trial proceedings is reviewed for an abuse of discretion.”). The Board abuses its discretion if the decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision. Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (quoting Abrutyn v. Giovanniello, 15 F.3d 1048, 1050–51 (Fed. Cir. 1994)). With this in mind, we address the arguments presented by Patent Owner.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Office, the finite resources of the Board, and events and proceedings at district courts.” Id. at 3 (citing Transcript 3:22–4:18). Patent Owner asserted that the jury trial at district court “involved the same parties, same patents, same experts, and same prior art,” and the jury verdict upheld validity of patent claims that were at issue in the trial. Id. (citing Transcript 3:10–21). Patent Owner concluded that these proceedings are not an efficient use of the Board’s resources, and the policy goals behind IPRs can no longer be achieved, because the jury has already decided validity of the same patents. Id. at 3–4 (citing Transcript 4:14–5:8). Petitioner then had the opportunity to oppose Patent Owner’s request for supplemental briefing, asserting that institution is proper in these proceedings because the IPR process “was statutorily given a different framework [than district court proceedings], in particular, the different burden of proof and different rules, regulations, and procedures.” Transcript 7:2–16.” slip op. at 6
Discretionary denialcites PhillipsPatents in suitUS 8,208,569 - Huawei Device Co., Ltd. v. Optis Wireless Technology, LLCRehearing deniedPTAB · Mar 13, 2019 · IPR2018-00655 · APJ John P Pinkerton · IPR · Rehearing
The Board denied Patent Owner’s rehearing request as to modifying institution, finding the § 314(a) and § 316(b) circumstances did not warrant discretionary denial.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously 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). 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. 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). With this in mind, we address the arguments presented by Patent Owner.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“The seven General Plastic factors primarily address repeated attacks by “follow-on” petitions challenging the same patent as challenged previously in an IPR, rather than addressing parallel district court litigation. See TPG Update 9–10 (citing IPR2016-01357, Paper 19, 15–16). In the instant proceedings, there are no follow-on petitions challenging the ’569 patent. IPRs ’653 and ’655 were filed on the same date, and each IPR challenges a different grouping of claims. 3 Thus, IPR ’655 is not a follow-on petition to IPR ’653 as contemplated in General Plastic.” slip op. at 6
- Other 314aInstitution denied discretionary otherDecided for petitioner
“Patent Owner argues the goal of an inter partes review being a “quick and cost effective alternative to litigation” that limits unnecessary litigation costs cannot be attained here, because the district court has already rendered its verdict. Id. at 7–8, 10. Again, the district court trial timeline is but one of many factors for discretionary denial, none of which is particularly dispositive, either alone or in combination with other factors. See TPG Update 9−10. As stated above, the AIA explicitly permits filing an inter partes review on a patent that is involved in concurrent litigation, and, thus, an IPR is not necessarily an alternative to litigation. We also note that a petition need only demonstrate a reasonable likelihood of success on the merits (35 U.S.C. § 314(a)) for us to institute trial, which is a very different standard than the clear and convincing evidence standard applied in determining patent invalidity in the district court Litigation (Microsoft Corp. v. I4I Ltd. P’ship, 564 U.S. 91, 95 (2011) (holding that 35 U.S.C § 282 requires an invalidity defense to be proved by clear and convincing evidence)).” slip op. at 13
Discretionary denialPatents in suitUS 8,208,569 - Huawei Device Co., Ltd. v. Optis Wireless Technology, LLCRehearing deniedPTAB · Mar 13, 2019 · IPR2018-00653 · APJ John P Pinkerton · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, leaving institution in place because the discretionary factors did not warrant denying review.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously 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). 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. 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). With this in mind, we address the arguments presented by Patent Owner.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“The seven General Plastic factors primarily address repeated attacks by “follow-on” petitions challenging the same patent as challenged previously in an IPR, rather than addressing parallel district court litigation. See TPG Update 9–10 (citing IPR2016-01357, Paper 19, 15–16). In the instant proceedings, there are no follow-on petitions challenging the ’569 patent. IPRs ’653 and ’655 were filed on the same date, and each IPR challenges a different grouping of claims. 3 Thus, IPR ’655 is not a follow-on petition to IPR ’653 as contemplated in General Plastic.” slip op. at 6
- Other 314aDecided for petitioner
“and cost effective alternative to litigation” that limits unnecessary litigation costs cannot be attained here, because the district court has already rendered its verdict. Id. at 7–8, 10. Again, the district court trial timeline is but one of many factors for discretionary denial, none of which is particularly dispositive, either alone or in combination with other factors. See TPG Update 9−10. As stated above, the AIA explicitly permits filing an inter partes review on a patent that is involved in concurrent litigation, and, thus, an IPR is not necessarily an alternative to litigation. We also note that a petition need only demonstrate a reasonable likelihood of success on the merits (35 U.S.C. § 314(a)) for us to institute trial, which is a very different standard than the clear and convincing evidence standard applied in determining patent invalidity in the district court Litigation (Microsoft Corp. v. I4I Ltd. P’ship, 564 U.S. 91, 95 (2011) (holding that 35 U.S.C § 282 requires an invalidity defense to be proved by clear and convincing evidence)). In addition, the full quote from the TPG Update regarding the goals of the AIA is “to establish a more efficient and streamlined patent system that will improve patent quality and limit unnecessary and counterproductive litigation costs.” TPG Update 6 (emphasis added). Because the district court reviewed only two claims of the ’569 patent, IPRs ’653 and ’655 can still serve the purpose of rendering a patentability determination for the remaining claims that are challenged, potentially improving patent quality and limiting future litigation costs.” slip op. at 13
Discretionary denialPatents in suitUS 8,208,569 - Epicor Software Corporation v. Protegrity CorporationRehearing deniedPTAB · Apr 19, 2016 · CBM2015-00002 · APJ Kevin F Turner · CBM · Rehearing
The Board denied both rehearing requests, leaving the institution of § 101 review of claims 1, 5, 8, 19, 20, and 27–31 and denial of prior art grounds unchanged.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“D. Conclusion We are not persuaded of an abuse of discretion either by Patent Owner or Petitioner. III. ORDER In consideration of the foregoing, it is hereby: ORDERED that each Request for Rehearing is denied.” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The Board instituted covered business method patent review of the ’201 Patent based upon the following ground, combined from both proceedings: Ground Prior Art Challenged Claims § 101 n/a 1, 5, 8, 19, 20, and 27–31 Papers 17 and 13 (’02 Decision and ’30 Decision, respectively). The Board did not institute covered business method patent review upon any prior art grounds. See ’02 Decision 6 and ’30 Decision 4–5 (listing grounds proffered by Petitioner).” slip op. at 2
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner
“Response, Patent Owner argues that the claims are directed toward protection of data in a database on a more granular level, namely at the data element level. Prelim. Resp. 27 (“the ’201 Patent is not directed to some abstract idea, but rather a specific improvement in computing technologies to protect data in a database at the date element level”). However, the abstract idea we identified is that of “determining whether access to a given data element value in a database should be granted based on whether one or more rules are satisfied.” ’02 Decision 20. See also Pet. 20. As such, the abstract idea goes directly to the concept of protecting data at the data element level.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Although Atalla discloses authorization to a file based on information about the file, Ex. 1007, 3:27–58, Petitioner has not shown that the information about the file is individual data element types. Overall, Atalla addresses accessing files, in part, based on whether the files were previously accessed, but a file in not the same as an individual data element value. The section of Atalla cited in Petitioner’s Rehearing Request discloses the need for a correct key code, but that key code is for the entire file and not specific to the data element type. Pet. Req. 6 (citing Ex. 1007, 3:27–58). Although “information about the file” could include information about individual data element types, Petitioner has not demonstrated any such teaching or suggestion in Atalla. As stated in the ’02 Decision, Atalla “does not describe that access authorization file 15 comprises ‘a data element protection catalogue (DPC), which contains each individual data element type (DT) and one or more protection attributes stating processing rules for data element values’ as requires by claim 1.” ’02 Decision 28. Thus, we are not persuaded by Petitioner that we abused our discretion in denying institution of covered business method patent review of claims 1, 5, 19, 20, and 27–31 over the anticipation ground of Atalla provided in the Petition.” slip op. at 16
§ 101 eligibility§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,321,201 - Informatica Corporation v. Protegrity CorporationRehearing deniedPTAB · Apr 19, 2016 · CBM2015-00021 · APJ Kevin F Turner · CBM · Rehearing
The Board denied the Patent Owner’s rehearing request and left institution in place, including the § 101 and § 103 grounds against the challenged claims.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A. Standard of Review When rehearing a decision on petition, the Board will review the decision 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 Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party challenging the decision has the burden of showing a decision should be modified, and the request for rehearing must identify specifically all matters the party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). In its Request for Rehearing, the dissatisfied party must (1) “specifically identify all matter that party believes the Board misapprehended or overlooked” and (2) identify the place where each matter was previously addressed. Id.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“eligibility in reaching our Decision. As we stated in our Decision, we were not persuaded by Patent Owner’s argument in the Preliminary Response. Decision 21–23 (citing Prelim. Resp. 27–41). In the Preliminary Response, Patent Owner argues that the claims are directed toward protection of data in a database on a more granular level, namely at the data element level. Prelim. Resp. 31 (“[t]he ’201 Patent’s claims provide a solution to a computer technology problem – how to protect data at the data element level, something thought to be technologically not possible.”); see also Req. 12. However, the abstract idea we identified is that of “determining whether access to a given data element value in a database should be granted based on whether one or more rules are satisfied.” Decision 21. See also Pet. 17. As such, the abstract idea goes directly to the concept of protecting data at the data element level. Patent Owner also argues that the claims are directed to more than a generic computing device. Req. 12. Such arguments, however, are not commensurate with the scopes of the contested claims, where those claims are drawn to processing of protected data, using conventional databases. Although the claims can be applied to “prevent those with administrative responsibilities from having too much access to confidential information” (id. at 12), nothing in the subject claims themselves explicitly recites or suggests such an intrinsic utility, and is not specifically addressed in the Specification. We, thus, are not persuaded by Patent Owner that we abused our discretion in determining that the claims of the ’201 Patent are more likely than not directed to a patent-ineligible abstract idea.” slip op. at 11
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“SecureBuy. In SecureBuy, the Board determined that 35 U.S.C. § 325(a)(1) applied to covered business method review proceedings, but made no determination as to whether or not a dismissal without prejudice triggered the statutory bar. See SecureBuy slip op. at 2–3. Although only an informative Decision, the Board has also determined that “[t]he dismissal of an action without prejudice leaves the parties as though the action had never been brought.” Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022, slip op. at 16–18 (PTAB Sept. 2, 2014)(Paper 166) (citing Graves v. Principi, 294 F.3d 1350, 1356 (Fed. Cir. 2002)). See also Decision 9. In this case, Petitioner’s filing of a civil action before filing the Petition did not trigger the statutory bar because the civil action was dismissed without prejudice. See Decision 9. Dismissal without prejudice does not trigger the statutory bar. See Cyanotech Corp. v. Bd. of Trustees of the Univ. of Ill., IPR2013-00401, slip op. at 11–12 (PTAB Dec. 19, 2013) (Paper 17) (“Excluding an action that de jure never existed from the scope of § 315(a)(1) is consistent with both relevant case law and legislative history.”); Callidus Software, Inc. v. Versata Software, Inc., CBM2013- 00052, slip op. at 5–7 (PTAB Mar. 4, 2014) (Paper 21). As such, we did not ignore the statute or the precedential decision in SecureBuy, but applied both and took into account that the action for declaratory judgment of non-infringement and invalidity dismissed without prejudice. As well, we also do not agree that we cited to Ariosa Diagnostics as authority, as Patent Owner alleges (Req. 4), but rather agreed with the reasoning provided in that informative decision.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“arguments that Hoffman lacks a second database. Req. 14–15. Patent Owner continues that even if the blocks “ACCESS” and “CONTROL” in Hoffman are considered databases, they would be two separate databases and that they cannot be a single second database as required by claim 1. Id. We do not agree. The “comprising” language found in claim 1 connotes that the claim is not exclusively limited to just the elements recited. See Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376 (Fed. Cir. 2004). Further, we concur with Petitioner’s argument that “to the extent that the Board does not find that the protection catalog of Hoffman has the claimed protection catalog and data element types stored as data element values, IBM DB2, or the references of the DB2 Documentation, cures this ‘deficiency.’” Pet. 56. Implementing the blocks “ACCESS” and “CONTROL” in Hoffman as a single database would have been motivated to ordinarily skilled artisans for the reasons supplied by Petitioner’s declarant. Id. As such, we are not persuaded by Patent Owner that we abused our” slip op. at 13
§ 103 obviousnessPatents in suitUS 6,321,201
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.