- PTAB · Nov 17, 2021 · IPR2021-00544 · APJ Terrence W Mcmillin · IPR · Rehearing
Rehearing was granted and review instituted on all challenged claims and grounds after the Board found the ITC target date made Fintiv factor 2 neutral and Petitioner’s broadened stipulation favored institution.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Institution stated, “[t]he evidentiary hearing in the ITC investigation is scheduled to begin January 5, 2022, and the final determination is due April 29, 2022.” DDI 9 (citing Ex. 2004, 5; emphasis added). Petitioner is correct that the statement did not correctly state the target date for the ITC’s final determination. According to the Adopted Procedural Schedule for the ITC Investigation, the “Final ID” is due April 29, 2022, and the “Target Date” is August 29, 2022. Ex. 2004, 5. We agree that the ITC’s target date for final determination is more appropriate for evaluating Fintiv factor 2, consistent with the Board’s prior decisions. See Request 2–3 (identifying numerous proceedings). Applying the August 29, 2022, date, we conclude that Fintiv factor 2 is neutral in this proceeding, because of the close proximity between the ITC’s target final determination and our expected final written decision based on the mailing date of this Decision.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied discretionary otherDecided for petitioner
“Institution stated, “[t]he evidentiary hearing in the ITC investigation is scheduled to begin January 5, 2022, and the final determination is due April 29, 2022.” DDI 9 (citing Ex. 2004, 5; emphasis added). Petitioner is correct that the statement did not correctly state the target date for the ITC’s final determination. According to the Adopted Procedural Schedule for the ITC Investigation, the “Final ID” is due April 29, 2022, and the “Target Date” is August 29, 2022. Ex. 2004, 5. We agree that the ITC’s target date for final determination is more appropriate for evaluating Fintiv factor 2, consistent with the Board’s prior decisions. See Request 2–3 (identifying numerous proceedings). Applying the August 29, 2022, date, we conclude that Fintiv factor 2 is neutral in this proceeding, because of the close proximity between the ITC’s target final determination and our expected final written decision based on the mailing date of this Decision.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Summary as to Claim 1 Petitioner has shown a reasonable likelihood of showing that claim 1 of the ’423 patent would have been obvious in view of the combined teachings of Jeon, Everett, and Abramson. 5. Claims 2–4, 6–10, 12–15, 18–23, 25, and 26 Petitioner also contends that claims 2–4, 6–10, 12–15, 18–23, 25, and 26 would have been obvious in view of a combination of the asserted references. See Pet. 26–80. As noted previously, Patent Owner does not address the merits of any portion of the Petitioner’s obviousness showing. See generally Prelim. Resp. Thus, at this stage, Petitioner’s obviousness showing as to claims 2–4, 6–10, 12–15, 18–23, 25, and 26 is undisputed. We have determined that there is a reasonable likelihood that the Petitioner will prevail with respect to at least one of the claims challenged in the Petition pursuant to 35 U.S.C. § 314 and that inter partes review should be instituted. Accordingly, we institute as to all the challenged claims and all the challenges raised in the Petition. SAS Institute Inc. v. Iancu, 138 S.Ct. 1348, 1358 (2018); 37 C.F.R. §42.108 (a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). III. CONCLUSION Petitioner has persuaded us that rehearing is appropriate and we grant the Request for Rehearing. After reconsidering our discretionary denial of the Petition, we determine that discretionary denial is inappropriate. And, we determine that Petitioner has demonstrated a reasonable likelihood of showing at least one of the claims challenged in the Petition would have been obvious. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Request for Rehearing is granted; FURTHER ORDERED that an inter partes review is instituted on all challenged claims under all challenged grounds; and FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter partes review of the ʼ423 patent is hereby instituted commencing on the entry date of this Decision, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial.” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“With regard to combining the relevant teachings of Jeon and Everett relating to this limitation, the Petition states: It would have been obvious to combine this well-known, reduced base station approach velocity with [ ]Jeon . . . Doing so is nothing more than substituting a known feature (e.g., Everett’s reduced base station approach velocity) in an existing system ([ ]Jeon’s robot cleaner) according to known methods (e.g., function of stand-off distance) to achieve a predictable result (avoiding collision with and/or increased maneuverability for accurate alignment with the base station). Id.; KSR, 550 U.S. at 416-418. Selecting a reduced base station approach velocity is a known, obvious, trivial selection from a limited number of options (increasing, decreasing, or maintaining velocity). Likhachev, ¶ 82. Given the benefits of reducing the velocity (e.g., avoiding collision and/or increased maneuverability), to the extent not already understood from [ ]Jeon and the knowledge of a skilled artisan, a skilled artisan would have found it obvious to try reducing the base station approach velocity of [ ]Jeon’s robot cleaner as taught by Everett. Id.; KSR, 550 U.S. at 421. Pet. 19–20. At least at this stage of the proceedings, we determine that Petitioner provides sufficient rationale for combining the relied upon teachings of Jeon and Everett. We determine that, for purposes of institution, Petitioner has shown sufficiently that the cited art teaches this limitation.” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,884,423 - Supercell OY v. Gree, Inc.Rehearing deniedPTAB · Nov 18, 2020 · PGR2020-00041 · APJ Lynne H Browne · PGR · Rehearing
The Board denied Supercell’s rehearing request, upholding denial of institution based on the Fintiv factors and the risk of duplicated efforts and inconsistent results.
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” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“this factor or that we misapprehended the trial date. At the time of our Decision, trial was scheduled in the parallel proceeding for December 7, 2020, approximately nine months before our final written decision would have been due, if we were to institute trial. Dec. 10–11. As such, this gap in timing created a cognizable risk of inconsistent results and duplication of efforts, which weighed toward denying institution. Id. at 7, 11. Additionally, the Decision notes that some uncertainty exists regarding trial dates, as Petitioner again argues in its Request. Id. at 11; Req. Reh’g 4. However, the Decision goes on to determine that even if trial in the parallel proceeding was delayed by two months, consistent with Petitioner’s prior requested delay, the proximity of the trial date to our final written decision would still favor denying institution. Dec. 12 (citing Ex. 2002, 2). As such, Petitioner has not shown that the Board misapprehended the trial date.” slip op. at 5
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“contentions. In our Decision, we relied in part upon Dr. Claypool’s testimony from related litigation between the parties in determining that Petitioner failed to meet its burden of demonstrating that Mastermind was” slip op. at 8
- BurdenDecided for patent owner
“Petitioner was provided an opportunity to respond to this evidence to address any “time-based distinctions in Dr. Claypool’s testimony,” however, Petitioner declined to address this testimony in its Preliminary Reply, despite having the opportunity to do so. Prelim. Reply 5–7. We decline to consider now, on rehearing, arguments that Petitioner failed to make in its pre-institution papers. It is Petitioner’s burden to demonstrate that Mastermind was publicly accessible. As we stated in our Decision, this prior testimony casts serious doubt on Petitioner’s ability to satisfy that burden. Dec. 25. We also decline to consider new testimonial evidence submitted on rehearing on this issue, as Petitioner does not show good cause for admitting this new evidence. See Huawei Device Co. v. Optics Cellular Tech., LLC, IPR2018-00816, Paper 19 (PTAB Jan. 8, 2019) (precedential) (showing of “good cause” required prior to filing a rehearing request or in the request itself for new exhibits to be admitted). We could not have misapprehended or overlooked evidence and arguments that were not made before our Decision.” slip op. at 9
§ 102 anticipationDiscretionary denialPatents in suitUS 10,307,677 - Supercell OY v. Gree, Inc.Rehearing deniedPTAB · Nov 18, 2020 · PGR2020-00039 · APJ Lynne H Browne · PGR · Rehearing
The Board denied Supercell’s rehearing request, leaving in place denial of institution of PGR challenging claims 1–24 based on the Fintiv factors and parallel litigation.
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 2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. 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). Additionally, 37 C.F.R. § 42.71(d) further provides that “[t]he burden of showing a decision should be modified lies with the party challenging the decision,” i.e., Petitioner, and “[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.”” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“the parties jointly requested a trial delay in the prior proceeding, from December 7, 2020, to March 1, 2021, which the district court granted. Ex. 1024, 1. Even considering these post-Decision developments, this three month delay results in a trial date in the parallel proceeding set six months before our final written decision would be due. Similar to the potential delay discussed in our Decision, a jury trial set to begin six months before a final written decision also weighs in favor of denying institution. Dec. 12; see Prelim. Resp. 11 (identifying three prior PTAB proceedings in which institution was denied where trial was scheduled to occur six months before a final written decision, including the precedential NHK Spring decision). We decline to speculate, absent case-specific evidence, as to any future additional delay of the parallel proceeding’s trial date that may— or may not—be requested by the parties, and that may—or may not— be granted by the district court. See Ex. 1024, 1, 4 (indicating that the trial date “cannot be changed without showing good cause,” which “is not shown merely by indicating that the parties agree that the deadline should be changed”) (emphasis omitted). On the current record, a cognizable risk of inconsistent results exists, due to the scheduled date of trial and the statutory due date of a final written decision.3” slip op. at 6
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedOther
“contentions. In our Decision, we relied in part upon Dr. Claypool’s testimony from related litigation between the parties in determining that Petitioner failed to meet its burden of demonstrating that Mastermind was publicly accessible. Dec. 24–25. Specifically, we relied upon Dr. Claypool’s prior testimony that, 4 “Mastermind’s In-Game Builder Idea (with LOADS of pictures!)” (“Mastermind”), available at https://web.archive.org/web/20130915081112/http:/forum.supercell.net:80/s howthread.php/149687-Mastermind-s-In-Game-Builder-Idea-(with-LOADSof-pictures!) (in two parts) (Ex. 1015, “Olesiuk Decl.”). it is my opinion that a diligent, skilled researcher engaged in a reasonable search for prior art would not have found Mastermind as a prior art reference even with the benefit of [Patent Owner’s] infringement contentions before the filing of the Petition for Post-Grant Review. A diligent, skilled researcher would not spend time sifting through the suggestions provided on Internet message boards, as they would normally not include useful or sufficiently detailed suggestions. Ex. 2009 ¶ 164 (emphasis added); Dec. 25.” slip op. at 8
- Other 314aDecided for patent owner
“different posture of PGR proceedings as compared to IPR proceedings, when exercising discretion to deny institution. As summarized above, the Decision discusses that common statutory language exists in § 314(a)— directed toward IPR proceedings—and in § 324(a)—directed to post-grant review proceedings. See supra § I.A; Dec. 5–8. The Decision also discusses the common policy justifications implicated when determining whether to institute either an IPR proceeding or a PGR proceeding. Dec. 6–7. The Decision then goes on to recognize and discuss certain differences between PGR proceedings and IPR proceedings. Id. at 7–8. Despite these differences, we determined that the Board’s binding precedent set forth in NHK Spring and Fintiv applies to this PGR proceeding. Id. In doing so, we additionally evaluated certain differences between PGR proceedings and IPR proceedings, when considering the Fintiv Order factors. See, e.g., id. at 12, 15–16, 18–20. Petitioner has not demonstrated that we abused our discretion in doing so.” slip op. at 11
§ 102 anticipationDiscretionary denialPatents in suitUS 10,307,676 - Supercell OY v. Gree, Inc.Rehearing deniedPTAB · Nov 2, 2020 · PGR2020-00038 · APJ Amanda F Wieker · PGR · Rehearing
The Board denied rehearing of its decision denying institution of PGR on claims 1-30, finding no abuse of discretion in applying the Fintiv factors to the parallel litigation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“B. Request for Rehearing Standards When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). Additionally, 37 C.F.R. § 42.71(d) further provides that “[t]he burden of showing a decision should be modified lies with the party challenging the decision,” i.e., Petitioner, and “[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.”” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“the parties jointly requested a trial delay in the prior proceeding, from December 7, 2020, to March 1, 2021, which the district court granted. Ex. 1026, 1 (requesting delay); see also Ex. 1029, 1. Even considering these post-Decision developments, this three month delay results in trial in the parallel proceeding occurring six months before our final written decision. Similar to the potential delay discussed in our Decision, a jury trial set to begin six months before a final written decision also weighs in favor of denying institution. Dec. 12; see Prelim. Resp. 10 (identifying three prior PTAB proceedings in which institution was denied where trial was scheduled to occur six months before a final written decision, including the precedential NHK Spring decision). We decline to speculate, absent case-specific evidence, as to any future additional delay of the parallel proceeding’s trial date that may— or may not—be requested by the parties, and that may—or may not— be granted by the district court. See Ex. 1029, 1, 4 (indicating that the trial date “cannot be changed without showing good cause,” which “is not shown merely by indicating that the parties agree that the deadline should be changed”) (emphasis omitted). On the current record, a cognizable risk of inconsistent results exists, due to the scheduled date of trial and the statutory due date of a final written decision.3” slip op. at 6
- Other 314aDecided for patent owner
“different posture of PGR proceedings as compared to IPR proceedings, when exercising discretion to deny institution. As summarized above, the Decision discusses that common statutory language exists in § 314(a)— directed toward IPR proceedings—and in § 324(a)—directed to post-grant review proceedings. See supra § I.A; Dec. 5–8. The Decision also discusses the common policy justifications implicated when determining whether to institute either an IPR proceeding or a PGR proceeding. Id. at 7. The Decision then goes on to recognize and discuss certain differences between PGR proceedings and IPR proceedings. Id. at 7–8. Despite these differences, we determined that the Board’s binding precedential case law set forth in NHK Spring and Fintiv applies to this PGR proceeding. Id. In doing so, we additionally evaluated certain differences between PGR proceedings and IPR proceedings, when considering the Fintiv Order factors. See, e.g., id. at 12–13, 15–17, 19–21. Petitioner has not demonstrated that we abused our discretion in doing so.” slip op. at 11
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Decision, accompanied by a Motion to Excuse Late Filing, which explained that Petitioner attempted to file its Request on October 5, 2020 and contended that good cause exists for excusing the late filing of the Request. Paper 15 (“Mot.”); Paper 16 (“Req. Reh’g”). Petitioner’s Motion demonstrates a lack of prejudice to Patent Owner, who does not oppose the Motion and was served timely with the Request on October 5, 2020, and sufficient good cause in these circumstances. Mot. 1–2, 4. Accordingly, we grant Petitioner’s Motion to Excuse Late Filing.” slip op. at 3
Discretionary denialPatents in suitUS 10,307,675 - Supercell OY v. Gree, Inc.Rehearing deniedPTAB · Nov 2, 2020 · PGR2020-00034 · APJ Amanda F Wieker · PGR · Rehearing
The Board denied Supercell’s rehearing request, leaving in place the denial of institution based on the Fintiv factors and the parallel district court proceeding.
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” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“this factor. At the time of our Decision, trial was scheduled in the parallel proceeding for December 7, 2020, approximately nine months before our final written decision would have been due, if we were to institute trial. Dec. 10–11. As such, this gap in timing created a cognizable risk of inconsistent results and duplication of efforts, which weighed toward denying institution. Id. at 6, 11–12. Additionally, the Decision notes that some uncertainty exists regarding trial dates, as Petitioner again argues in its Request. Id. at 11; Req. Reh’g 3–4. However, the Decision goes on to determine that even if trial in the parallel proceeding was delayed by two months, consistent with Petitioner’s prior requested delay, the proximity of the trial date to our final written decision would still favor denying institution. Dec. 12 (citing Ex. 2002, 2). As such, Petitioner has not shown that the Board misapprehended the trial date.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Thus, unlike the Request, the Petition did not contend that a skilled artisan would have found it obvious that “[Cho’s communication] may comprise one player specifying, to the server, information identifying another player to be involved in the game.” Compare id. at 46–47, with Req. Reh’g 6–7 (emphasis added). To the contrary, the Petition simply stated that a skilled artisan would understand that Cho taught transmissions through a server, but did not state that it would have been obvious, in light of Cho’s teachings, for this transmission to include first information. As discussed in our Decision, the Petition’s reliance on GSB to supply the transmission of “first information” fails because Petitioner has not explained persuasively why it would have been obvious to transmit GSB’s first information when Cho already establishes a communication between players and because Petitioner fails to explain “how the additional transmission of identifying information would simplify communications or allow easier connection, over the communication that Cho already establishes.” Dec. 24.” slip op. at 9
- Other 314aDecided for patent owner
“different posture of PGR proceedings as compared to IPR proceedings, when exercising discretion to deny institution. As summarized above, the Decision discusses that common statutory language exists in § 314(a)— directed toward IPR proceedings—and in § 324(a)—directed to post-grant review proceedings. See supra § I.A; Dec. 5–7. The Decision also discusses the common policy justifications implicated when determining whether to institute either an IPR proceeding or a PGR proceeding. Id. at 7. The Decision then goes on to recognize and discuss certain differences between PGR proceedings and IPR proceedings. Id. Despite these differences, we determined that the Board’s binding precedential case law set forth in NHK Spring and Fintiv applies to this PGR proceeding. Id. In doing so, we additionally evaluated certain differences between PGR proceedings and IPR proceedings, when considering the Fintiv Order factors. See, e.g., id. at 12, 15–17, 20–21. Petitioner has not demonstrated that we abused our discretion in doing so.” slip op. at 11
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,300,385 - Unified Patents Inc. v. American GNC CorporationRehearing deniedPTAB · Mar 17, 2020 · IPR2019-00505 · APJ Patrick R Scanlon · IPR · Rehearing
The Board denied Unified Patents’ rehearing request and left institution denied because it had not shown JSC was reasonably likely to qualify as a publicly accessible printed publication.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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. We review our Decision under an abuse of discretion standard. 37 C.F.R. § 42.71(c). An abuse of discretion may arise 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).” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“likelihood” standard applicable to decisions to institute an inter partes review. We agree with Petitioner that the “reasonable likelihood” standard applies to the issue of whether a reference asserted in a petition for inter partes review qualifies as a prior art printed publication. See id. at 3. As the Board held in a recent precedential decision, “at the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 4
- BurdenInstitution denied meritsDecided for patent owner
“are factual disputes that reach beyond the ‘reasonable likelihood’ standard and are more appropriately developed during an instituted trial.” Id. We disagree with this broad assertion because it ignores the fact that, in this case, as explained on pages 15‒16 of the Decision, Petitioner’s evidence does not meet a minimum threshold showing to even present a factual dispute as to availability and dissemination of the reference. See Hulu, Paper 29 at 13 (establishing that the Petition must identify, with particularly, evidence sufficient to establish a reasonable likelihood of public accessibility before the critical date).” slip op. at 5
§ 102 anticipationPatents in suitUS 6,411,871 - Supercell OY v. Gree, Inc.Rehearing deniedPTAB · Oct 15, 2019 · IPR2019-00756 · APJ Amanda F Wieker · IPR · Rehearing
Denied Supercell Oy’s rehearing request; the Board maintained its denial of institution because the claims require subtracting before adding, and the Petition did not show Reizei teaches that sequence.
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 the Board is alleged to have misapprehended or overlooked, and the place where each matter was addressed previously in a paper of record. Id. Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” The abuse of discretion standard of review is the same heightened standard federal appeals courts use to review district court factual findings. See, e.g., PNY Techs., Inc. v. Phison Elecs. Corp., IPR2013-00472, Paper 16 at 2 (PTAB Apr. 23, 2014) (“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.” (citing Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005))).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“that the subtracting limitation occur sequentially after the step of updating the first field with a new game content” is both untimely and insufficiently supported. The excerpt of claim 1, reproduced above, recites three actions taken by the control unit: “updat[ing] the first field with a new game content . . . sequentially subtract[ing] the second parameter value . . . and add[ing] a predetermined amount to the third parameter value at appropriate timing.” Ex. 1001, 21:23–32. In its ordinary meaning, “sequential” involves things in a sequence. The Board applied this ordinary meaning in construing the claims to require that the actions recited in the “sequentially” limitation—subtracting and adding—occur in sequence, i.e., “the plain language of the challenged claims require sequentially (1) subtracting the second parameter value of the selected game content from the third parameter value, and then (2) adding a predetermined amount to the third parameter value at appropriate timing.” Dec. 22. This is consistent with the intrinsic record. The “detailed description” provided in the ’481 Specification discusses the “sequentially” limitation only once. The Specification describes “sequentially subtract[ing] . . . and add[ing],” using the same language as in the claims. Ex. 1001, 7:33–38. This discussion of subtracting and adding appears in a paragraph separate from other paragraphs discussing selecting game contents and updating the first field. Id. at 6:12–7:32. The discussion of “sequentially” only in the context of subtracting and adding supports the understanding that the claim defines the order of those actions, i.e., a sequence of subtracting and then adding, and does not define the order of separately described actions like selecting or updating. This is also consistent with the formatting of claims 1, 7, and 8, in which the selecting and updating steps are removed from the steps of “sequentially subtract[ing] . . . and add[ing],” which, again, are recited together. Petitioner does not cite the intrinsic record to support its position.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Notwithstanding these disclosures, however, the Petition does not show that Reizei discloses a sequential, turn-based game, in which additional points are added to the first player’s total, after the conclusion of an opponent’s turn, as Petitioner now argues. Req. 8–9. Petitioner contends that the Petition relies upon Reizei and the Friedman declaration for the proposition that, after the first player executes its turn, “‘[t]he process repeats for the opponent, at which time, the first player again receives “five (5) AP of actions points” at the start of the turn.’” Id. at 9 (citing Pet. 44; Ex. 1003 ¶ 94; Ex. 1005 ¶¶ 94, 172). We disagree that this teaches that points are added, as claimed. As discussed in our Decision, paragraph 172 3 The Decision notes that paragraph 127 of the Friedman Declaration does not support the contention that Reizei teaches the adding limitation. Dec. 22, 24. Paragraph 127 cites back to paragraph 94 (discussed in the Decision) and otherwise discusses claim limitations not relevant to our Decision, e.g., “remov[ing] the game content.” of Reizei explains that control is transferred from the player to an opponent, after the player makes a turn finish declaration. Dec. 23–24; Ex. 1005 ¶ 172. “It is not apparent how this transfer of control [to an opponent] also results in a transfer of another five action points to the player.” Dec. 23–24 (also discussing paragraph 94 of the Friedman declaration). Indeed, Petitioner fails to explain how or why the first player would receive points at the start of an opponent’s turn. See also id. at 24 n.4.” slip op. at 9
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,956,481 - Supercell OY v. Gree, Inc.Rehearing deniedPTAB · Oct 15, 2019 · IPR2019-00754 · APJ Amanda F Wieker · IPR · Rehearing
The Board denied Supercell’s rehearing request, leaving institution denied because the Petition did not show that Reizei met the claims’ sequential adding/restoring limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A request for rehearing is not an opportunity to provide belated claim construction arguments that Petitioner failed to present in the Petition. 37 C.F.R. § 42.71(d). We could not have misapprehended or overlooked arguments that were not made. Petitioner has not demonstrated that we reached an erroneous conclusion of law in interpreting the claim language.” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“show that Reizei discloses a sequential, turn-based game, in which additional points are added to the first player’s total, after the conclusion of an opponent’s turn, as Petitioner now argues. Req. 9. Petitioner contends that the Petition relies upon Reizei and the Friedman declaration for the proposition that, after the first player executes its turn, “‘[t]he process repeats for the opponent, at which time, the first player again receives “five (5) AP of actions points” at the start of the turn.’” Id. (citing Pet. 41–42; Ex. 1003 ¶ 96; Ex. 1005 ¶ 172). We disagree that this teaches that points are added/restored, as claimed. As discussed in our Decision, paragraph 172 of Reizei explains that control is transferred from the player to an opponent, after the player makes a turn finish declaration. Dec. 23; Ex. 1005 ¶ 172. “It is not apparent how this transfer of control [to an opponent] also results in a transfer of another five action points to the player.” Dec. 23 (also discussing paragraph 96 of the Friedman declaration). Indeed, Petitioner fails to explain how or why the first player would receive points at the start of an opponent’s turn. See also id. at 23 n.4.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“that the subtracting limitation occur sequentially after the step of permitting the player to select the game contents” is both untimely and insufficiently supported. The excerpt of claim 1, reproduced above, recites three actions taken by the controller: “select[ing] the game contents . . . and . . . sequentially subtract[ing] the point . . . and add[ing] . . . or restor[ing] the upper limit of the point.” Ex. 1001, 29:21–54. In its ordinary meaning, “sequential” involves things in a sequence. The Board applied this ordinary meaning in construing the claims to require that the actions recited in the “sequentially” limitation—subtracting and adding/restoring—occur in sequence, i.e., “the plain language of the challenged claims require sequentially (1) subtracting the point of the selected game content, and then (2) either (a) adding to the upper limit of the point ‘at appropriate timing,’ or (b) restoring the upper limit of the point.” Dec. 22. This is consistent with the intrinsic record. The “detailed description” of the ’137 Specification discusses “sequentially” only once. The Specification describes “sequentially subtract[ing] . . . and add[ing] . . . or restor[ing],” using the same language as in the claims. Ex. 1001, 15:47–52. This discussion of subtracting and adding/restoring appears in a paragraph separate from other paragraphs discussing selecting game contents. Id. at 14:1–15:46. The discussion of “sequentially” only in the context of subtracting and adding/restoring supports the understanding that the claim defines the order of those actions, i.e., a sequence of subtracting and then adding/restoring, and does not define the order of separately described actions like selecting. This is also consistent with the formatting of claims 1, 14, and 16, in which the selecting step is removed from the steps of “sequentially subtract[ing] . . . and add[ing] . . . or restor[ing],” which, again, are recited together. Petitioner does not cite the intrinsic record to support its position.” slip op. at 5
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,604,137 - Supercell OY v. Gree, Inc.Rehearing deniedPTAB · May 10, 2019 · PGR2018-00008 · APJ Michael W Kim · PGR · Rehearing
The Board denied Supercell's rehearing request, leaving claims 1, 8, and 10–12 unpatentable under § 101 and claims 2–7 and 9 not shown unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Even assuming that the Board did overlook or misapprehend that the Petition articulated that “in a multi-player environment” was subsumed within “creating and applying a template of positions of one or more game contents,” we note that the aforementioned portion of the Petition also identifies, as additional details, “wherein a second player can also create and apply templates within the game space.” Neither the Petition nor the Request explains why these additional details should be considered a part of the claimed concept. Furthermore, delving into the merits of those latter additional details, we were, and continue to be, unpersuaded that a second player, that can both “create” and “apply” a template, is accounted for adequately in the Petition. Specifically, even if we were to agree the Petition accounts for a second player “applying” a template “in a multi-player environment” (see Req. 5, citing Pet. 6), the Petition makes no mention of the second player being able to also create the template. As discussed in the Final Written Decision, Petitioner did not provide sufficient evidence or analysis that a second player able to also create and apply templates is included in the claimed concept of “creating and applying a template of positions of one or more game contents.” Final Dec. 43. We could not have overlooked or misapprehended something not presented adequately in the Petition.” slip op. at 5
NonePatents in suitUS 9,597,594 - Toyota Motor Corp. v. GE Hybrid Technologies, LLCRehearing deniedPTAB · May 9, 2019 · IPR2019-00015 · APJ Lynne H Browne · IPR · Rehearing
The Board denied rehearing, leaving institution denied for claims 1–16 because the petition did not adequately explain why the prior art would be modified to meet the vehicle-control limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. PRINCIPLES OF LAW 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. 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“pertaining to a vehicle control unit. Pet. 20, 24; Ex. 1002 ¶ 55. The Petition and the Miller Declaration provide evidence that Sugimoto discloses control device 60, and that one skilled in the art would have considered Sugimoto’s control device 60 to be a vehicle control unit, as required by each of claims 1 and 5. Id. The Petition and the Miller Declaration also provide evidence that Sugimoto’s control device 60 controls a switch. Pet. 17–19; Ex. 1002 ¶ 50. Such evidence alone, however, does not provide sufficient reasoning, with adequate rational underpinnings, for modifying Fassnacht’s process to include a vehicle control unit that is allowed to turn on a first switch when the vehicle is below a first threshold temperature. Rather, as we explained in our Decision, “[t]he allegations in the Petition rely on an assumption that mere inclusion of a vehicle control unit as part of Fassnacht’s method would result in the claimed method.” Dec. 13 (citing Pet. 20, 22–24). Further, even though we did not specifically cite paragraphs 52–53, 61–62, and 103–109 of the Miller Declaration in our Decision, we did not overlook or misapprehend them. These paragraphs provide detailed explanations of how Sugimoto’s control device 60 could have been incorporated in to Fassnacht’s vehicle, but these descriptions also start from the assumption that merely including Sugimoto’s control unit 16 in Fassnacht’s process would have resulted in the claimed method. Neither the Petition nor the Miller Declaration explain why one skilled in the art would modify Fassnacht’s process to include the step of allowing the vehicle control unit to turn on a switch when such a step is unnecessary to Fassnact’s process. In re Giannelli, 739 F.3d 1375, 1380 (Fed. Cir. 2014) (“[T]he mere capability of pulling the handles is not the inquiry that the Board should have made; it should have determined whether it would have been obvious to modify the prior art apparatus to arrive at the claimed rowing machine.”).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“pertaining to a vehicle control unit. Pet. 20, 24; Ex. 1002 ¶ 55. The Petition and the Miller Declaration provide evidence that Sugimoto discloses control device 60, and that one skilled in the art would have considered Sugimoto’s control device 60 to be a vehicle control unit, as required by each of claims 1 and 5. Id. The Petition and the Miller Declaration also provide evidence that Sugimoto’s control device 60 controls a switch. Pet. 17–19; Ex. 1002 ¶ 50. Such evidence alone, however, does not provide sufficient reasoning, with adequate rational underpinnings, for modifying Fassnacht’s process to include a vehicle control unit that is allowed to turn on a first switch when the vehicle is below a first threshold temperature. Rather, as we explained in our Decision, “[t]he allegations in the Petition rely on an assumption that mere inclusion of a vehicle control unit as part of Fassnacht’s method would result in the claimed method.” Dec. 13 (citing Pet. 20, 22–24). Further, even though we did not specifically cite paragraphs 52–53, 61–62, and 103–109 of the Miller Declaration in our Decision, we did not overlook or misapprehend them. These paragraphs provide detailed explanations of how Sugimoto’s control device 60 could have been incorporated in to Fassnacht’s vehicle, but these descriptions also start from the assumption that merely including Sugimoto’s control unit 16 in Fassnacht’s process would have resulted in the claimed method. Neither the Petition nor the Miller Declaration explain why one skilled in the art would modify Fassnacht’s process to include the step of allowing the vehicle control unit to turn on a switch when such a step is unnecessary to Fassnact’s process. In re Giannelli, 739 F.3d 1375, 1380 (Fed. Cir. 2014) (“[T]he mere capability of pulling the handles is not the inquiry that the Board should have made; it should have determined whether it would have been obvious to modify the prior art apparatus to arrive at the claimed rowing machine.”).” slip op. at 3
§ 103 obviousnessPatents in suitUS 8,409,052
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.