- NXP USA, Inc. v. Impinj, Inc.Rehearing deniedPTAB · Aug 25, 2022 · IPR2021-01556 · APJ Kevin C Trock · IPR · Rehearing
The Board denied rehearing and left in place its § 314(a) denial of institution, finding no abuse of discretion in its Fintiv analysis.
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). “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.” Huawei Device Co., Ltd., v. Optis Cellular Tech., LLC, IPR2018-00816, Paper 19, 3 (PTAB Jan. 8, 2019) (precedential) (citations omitted). Further, “[a]bsent a showing of ‘good cause’ . . . , new evidence will not be admitted” in connection with a request for rehearing. Patent Trial and Appeal Board Consolidated Trial Practice Guide 90 (Nov. 2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (citing Huawei Device Co., IPR2018-00816, Paper 19 at 4). Thus, a request for rehearing is not generally an opportunity to present new arguments or evidence.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“patent’s ‘current [trial] date is well before the Board’s projected deadline’ is inaccurate.” Id. at 2. Petitioner’s argument that Patent Owner’s statement concerning the district court trial date is inaccurate, however, is based on speculation. In the Request, Petitioner calculates that “there is only a one-out-of-three chance that the ’198 Patent will be included” in the district court trial. Id. at 5. But, as Petitioner acknowledges in the Request, “whether or not the ’198 Patent is included in the first trial is entirely under Patent Owner’s control.” Id. at 4. Petitioner presents no evidence that Patent Owner has decided not to include the ’198 patent in the district court trial. Thus, Petitioner’s argument that Patent Owner’s statement “is inaccurate” is based on Petitioner’s speculation as to what Patent Owner will, or will not, do.” slip op. at 7
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“in weighing relevant factors.” Huawei Device Co., Ltd., v. Optis Cellular Tech., LLC, IPR2018-00816, Paper 19, 3 (PTAB Jan. 8, 2019) (precedential) (citations omitted). Further, “[a]bsent a showing of ‘good cause’ . . . , new evidence will not be admitted” in connection with a request for rehearing. Patent Trial and Appeal Board Consolidated Trial Practice Guide 90 (Nov. 2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (citing Huawei Device Co., IPR2018-00816, Paper 19 at 4). Thus, a request for rehearing is not generally an opportunity to present new arguments or evidence.” slip op. at 4
Discretionary denialPatents in suitUS 10,776,198 - NXP USA, Inc. v. Impinj, Inc.Rehearing deniedPTAB · Aug 25, 2022 · PGR2022-00005 · APJ Ken B Barrett · PGR · Rehearing
The Board denied NXP’s rehearing request, leaving in place the denial of PGR institution on claims 1–20 based on its holistic Fintiv analysis.
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). “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.” Huawei Device Co., Ltd., v. Optis Cellular Tech., LLC, IPR2018-00816, Paper 19, 3 (PTAB Jan. 8, 2019) (precedential) (citations omitted). Further, “[a]bsent a showing of ‘good cause’ . . . , new evidence will not be admitted” in connection with a request for rehearing. Patent Trial and Appeal Board Consolidated Trial Practice Guide 90 (Nov. 2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (citing Huawei Device Co., IPR2018-00816, Paper 19 at 4). Thus, a request for rehearing is not generally an opportunity to present new arguments or evidence.” slip op. at 3
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“with the Request. “Ideally, a party seeking to admit new evidence with a rehearing request would request a conference call with the Board prior to filing such a request so that it could argue ‘good cause’ exists for admitting the new evidence. Alternatively, a party may argue ‘good cause’ exists in the rehearing request itself.” Huawei Device Co., IPR2018-00816, Paper 19 at 4; see also Consolidated Trial Practice Guide at 90 (quoting the same). Petitioner did not request a conference call prior to filing the Request to argue that good cause exists and does not present arguments in the Request regarding good cause. Accordingly, we find that Petitioner has not met its burden of showing that good cause exists to justify consideration of those exhibits to evaluate whether we erred by overlooking or misapprehending anything in the Decision. B. We Did Not Misapprehend the Significance of the Facts Pertaining to” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“argument, we stated that, “[b]ecause the currently scheduled trial in the parallel proceeding is scheduled to begin over two months before our deadline to reach a final decision, this factor weighs somewhat in favor of discretionary denial.” Dec. 9. After discussing all of the Fintiv factors and after “consider[ing] ‘a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review,’” we exercised discretion to deny institution of a post-grant review. Id. at 12–13 (quoting Fintiv, Paper 11 at 6).” slip op. at 6
Discretionary denialPatents in suitUS 10,929,734 - Scentair Technologies, LLC v. Prolitec, Inc.Rehearing deniedPTAB · Jun 24, 2021 · IPR2021-00013 · APJ Grace Karaffa Obermann · IPR · Rehearing
The Board denied the petitioner’s rehearing request, finding its new arguments untimely and unpersuasive as to the aerosol outlet limitation for claims 1–19.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A request for rehearing is not an opportunity to present new arguments or evidence that could have been presented in a petition. We could not have misapprehended or overlooked matters or arguments that were not asserted in the Petition. We deny the Rehearing Request because it is based on new arguments that Petitioner did not present in the Petition. B. Petitioner’s Arguments Are Unpersuasive Alternatively, even if we consider the new arguments raised for the first time in the Rehearing Request, we find none persuasive to show reversible error in the Decision. The ’767 patent describes and claims “a cap assembly” that is characterized by three distinct structures, namely, “a cap, a venturi insert, and a base attached together without welds or separate fasteners to define . . . an air outlet chamber” that is “partitioned from the interior of the receptacle by the base.” Ex. 1001, 15:6–13 (claim 1) (emphasis added); see id. at 3:30–43, 9:45–62 (written description).” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“The Petition advances three grounds, each of which is based on obviousness and asserts Benalikhoudja1 as a prior art reference. Pet. 5. We found in the Decision, and Petitioner does not dispute in the Rehearing Request, that each ground “depends on Petitioner’s assertion that Benalikhoudja discloses or suggests ‘an aerosol outlet chamber partitioned 1 We refer to US 2006/0237090 A1, published Oct. 26, 2006 (Ex. 1004). from the interior of the receptacle by the base.’” Dec. 5–6. As we did in the Decision, we refer herein to that feature of the claimed invention as “the aerosol outlet limitation.” Id. at 6. Based on the information presented in the Petition and Preliminary Response, we determined Petitioner did not show sufficiently, for purposes of trial institution, that Benalikhoudja discloses the aerosol outlet limitation. Id. at 9–10. Petitioner argues we erred on that point. Req. Reh’g 1–6.” slip op. at 3
§ 103 obviousnessPatents in suitUS 9,480,767 - Intel Corporation v. VLSI Technology LLCRehearing deniedPTAB · Sep 25, 2020 · IPR2019-00034 · APJ Minn Chung · IPR · Rehearing
The Board denied Intel’s rehearing request and left in place the denial of institution for claims 11, 12, 13, 15, and 17 because the Petition did not sufficiently show Schuckle taught limitation 11[l].
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the party challenging the decision,” and the challenging party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in a paper of record. 37 C.F.R. § 42.71(d). Because Petitioner seeks rehearing of our Decision denying institution of trial based on the Petition, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). With these principles in mind, we address the arguments presented in Petitioner’s Request.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“When it comes to limitation 11[l] (reciting “and [the processing core operable to] enter the first mode of operation in response to the status information indicating data corresponding to the data stored at the first memory has changed”), the Petition does not discuss Schuckle’s memory controller entering the first mode of operation, but instead relies on the operations of processor 110 (rather than memory controller 140) of Schuckle to teach the step recited in limitation 11[l]. Dec. 18–19 (citing Pet. 69–70 (quoting Ex. 1203, 10:58–66, 11:44–53) (citing Ex. 1202 ¶¶ 199–200)). As also discussed in the Decision, in the cited paragraphs of his Declaration, Dr. Jacob similarly identified the operations of processor 110 as corresponding to the step recited in limitation 11[l]. Id. at 19 (quoting Ex. 1202 ¶¶ 199–200). After considering the argument and evidence presented in the Petition, we determined in the Decision that Petitioner did not demonstrate sufficiently how Schuckle’s memory controller 140 satisfies limitation 11[l] of claim 11. Id. at 21.” slip op. at 4
- BurdenDecided for patent owner
“affirmative duty to explain in the Petition how the challenged claims should be construed and how, as so construed, they are unpatentable. See 37 C.F.R. § 42.104(b)(3)–(4). Thus, had Petitioner intended to rely on the purported plain meaning construction of “first mode of operation” as “when the processing core can access both the first and second memories” and argue, under that claim construction, Schuckle’s memory controller 140 teaches limitation 11[1], such an analysis should have been set forth explicitly in the Petition. It was Petitioner’s burden to demonstrate sufficiently in the Petition that the cited prior art renders the challenged claims unpatentable, including showing that the Petition’s contentions are supported by evidence. See 35 U.S.C. § 314(a); see also Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” (emphases added)) (citing 35 U.S.C. § 312(a)(3)); Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (requiring “the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” (emphases added)). The record shows that, rather than overlooking or misapprehending any argument or evidence in the Petition, the Decision simply considered the arguments and explanations of the evidence Petitioner presented in the four corners of the Petition, and properly determined that the Petition did not meet the burden required on Petitioner for institution of an inter partes review.” slip op. at 16
NonePatents in suitUS 7,675,806 - Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Regents Of The University Of MinnesotaRehearing deniedPTAB · Sep 18, 2020 · IPR2017-01186 · APJ Robert J Weinschenk · IPR · Rehearing
The Board denied Ericsson’s rehearing request, leaving institution denied because the petition was time-barred under § 315(b) based on privity with district court defendants.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS When considering a request for rehearing of a decision whether to institute an inter partes review, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“In the Decision, we explained that 35 U.S.C. § 315(b) provides that an inter partes review “may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Dec. 4. We also explained that in determining whether a petitioner is in privity with another party, we consider the Supreme Court’s decision in Taylor v. Sturgell, 553 U.S. 880 (2008). Dec. 4–5. Taylor provides six categories of exceptions to the rule against nonparty preclusion, namely 1) when “[a] person . . . agrees to be bound by the determination of issues in an action between others”; 2) “based on a” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“In the Decision, we explained that 35 U.S.C. § 315(b) provides that an inter partes review “may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Dec. 4. We also explained that in determining whether a petitioner is in privity with another party, we consider the Supreme Court’s decision in Taylor v. Sturgell, 553 U.S. 880 (2008). Dec. 4–5. Taylor provides six categories of exceptions to the rule against nonparty preclusion, namely 1) when “[a] person . . . agrees to be bound by the determination of issues in an action between others”; 2) “based on a” slip op. at 2
Discretionary denialPatents in suitUS 8,774,309 - Google LLC v. Uniloc 2017 LLCRehearing deniedPTAB · Sep 9, 2020 · IPR2020-00448 · APJ Scott Raevsky · IPR · Rehearing
The Board denied Google's rehearing request, leaving in place its discretionary denial of institution based on the duplicative parallel petitions and small number of claims.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. LEGAL STANDARDS When rehearing a decision on institution, we review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c) (2019). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005). The burden of showing that the Institution Decision should be modified is on Petitioner, the party challenging the Decision. See 37 C.F.R. § 42.71(d) (2019). In addition, “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked, and the place” slip op. at 2
- Other 314aInstitution denied discretionary otherInstitution denied
“precludes filing two petitions when the challenged patent includes potentially indefinite means-plus-function language. Although it is true that we determined Petitioner did “not persuasively argue this case is analogous to [the Trial Practice Guide’s] examples,” this was only one factor in our Decision. Decision 6. Other factors we considered were that the two parallel petitions are duplicative and each addresses only a single, nearly identical claim. Id. As we explained in our Decision, Petitioner could have filed a single petition directed to both claims. Then, even if claim 3 had an unclear means-plus-function term, we still could have instituted the petition if Petitioner had met its burden on claim 1. . . . This is not the kind of situation as in other cases where the Board has denied institution when petitioners met their institution burden on only a small subset of the challenged claims. . . . . [T]he mere fact that each petition addresses a different claim is insufficient to justify filing two petitions. . . . . The highly duplicative nature of these two petitions and the small number of claims at issue further indicates that one petition should have been sufficient. Id. at 7, 8. Thus, Petitioner’s argument that we applied a bright line rule to deny the Petition overlooks the Decision’s application of multiple factors.” slip op. at 4
Discretionary denialPatents in suitUS 6,329,934 - Square, Inc. v. 4361423 Canada Inc.Rehearing deniedPTAB · Jul 17, 2020 · IPR2019-01651 · APJ Jameson Lee · IPR · Rehearing
The Board denied Square’s rehearing request; all claims remain in trial on all asserted grounds, including obviousness of claims 1 and 4 over Bear and Vrotsos.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“At this stage of the proceeding, whether our statement was correct is of no moment, because we instituted review of all challenged claims on all asserted grounds of unpatentability. Dec. 38. As explained in the Decision,” slip op. at 2
NonePatents in suitUS 9,443,239 - Comcast Cable Communications, LLC v. Rovi Guides, Inc.Rehearing deniedPTAB · May 29, 2020 · IPR2019-01413 · APJ Karl D Easthom · IPR · Rehearing
The Board denied Rovi Guides’ rehearing request, leaving institution of inter partes review of claims 1–22 in place because the request showed no matters misapprehended or overlooked.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“institute an inter partes review, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d)” slip op. at 2
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), did not warrant terminating or staying this case. Dec. 26–27. Specifically, we explained that, according to Arthrex, “no constitutional infirmity [exists] in an institution decision.” Id. at 27 (quoting Arthrex, 941 F.3d at 1340) (alteration in Decision). We also explained that we generally do not stay cases pending an appeal to the Federal Circuit or the Supreme Court. Id.” slip op. at 2
NonePatents in suitUS 9,232,254 - Hewlett Packard Enterprise Co. v. Chrimar Systems, Inc.Rehearing deniedPTAB · Nov 26, 2019 · IPR2019-00032 · APJ Frederick C Laney · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because § 315(a)(1) barred review after Petitioner filed and voluntarily dismissed a declaratory judgment action.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). The party challenging a decision in a request for rehearing bears the burden of showing that the decision should be modified. Id.” slip op. at 2
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“institution of an inter partes review because Petitioner previously filed a declaratory judgment action challenging the validity of claims in the ’012 patent, notwithstanding Petitioner’s voluntary dismissal without prejudice of that declaratory judgment action. Dec. 5–8. We explained that our conclusion was compelled by the Federal Circuit’s analysis in Click-to-Call Technologies, LP v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018) (en banc as to footnote 3). Dec. 6–8.” slip op. at 2
Discretionary denialPatents in suitUS 8,155,012 - Carefusion Corporation v. Baxter International Inc.Rehearing deniedPTAB · Jun 13, 2018 · IPR2016-01463 · APJ Timothy J Goodson · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1–3, 6, 7, and 16 unpatentable as obvious over Bollish.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. LEGAL STANDARD In a request for rehearing, “[t]he burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). Further, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
- Expert testimonyPetitioner expert discountedDecided for petitioner
“highlighted in Patent Owner’s Request. We weighed the cross-examination testimony from Dr. Bollish with the other evidence and ultimately found that the Bollish reference teaches the limitations in question, notwithstanding Dr. Bollish’s testimony. See Dec. 21–23, 25–26. When parties present competing interpretations of a reference, it is the Board’s function to weigh those arguments and make a finding as to which is more plausible. Idemitsu Kosan Co., Ltd. v. SFC Co. Ltd., 870 F.3d 1376, 1381 (Fed. Cir. 2017).” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“[W]e generally accept Petitioner’s arguments regarding the proper construction of this phrase and conclude that the broadest reasonable interpretation of “programming the infusion pump with a medication algorithm” encompasses a clinician entering parameters into the pump for an infusion protocol to govern administration of medication to the patient. Id. at 16.” slip op. at 5
Claim constructionPatents in suitUS 6,231,560
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.