- Groupon, Inc. v. International Business Machines Corp.Rehearing deniedPTAB · Dec 7, 2017 · IPR2017-01158 · APJ Michelle N Wormmeester · IPR · Rehearing
The Board denied Groupon’s rehearing request, leaving institution denied on both § 103 grounds because the Petition did not adequately explain how the combinations would provide a federated computing environment.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“reviews the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked,” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Petitioner’s arguments with these principles in mind.” slip op. at 3
- BurdenDecided for patent owner
“we noted that the only claim element that Petitioner mentions as missing in Sunada and Mellmer is a “federated computing environment.” Inst. Dec. 11, 16. We found that Petitioner’s proffered rationale for combining Sunada or Mellmer with the LA Specifications to arrive at the claimed invention was inadequate because Petitioner did not address how modifying Sunada or Mellmer to implement Liberty Alliance’s method of exchanging attributes would provide a federated computing environment (i.e., the missing claim element). Id. at 11, 16.” slip op. at 7
- Strike new argumentNew argument disregardedDecided for patent owner
“new argument that Petitioner presents in order to offer more explanation, which does not address what we overlooked or misapprehended in our Institution Decision. In its Petition, Petitioner proposed combining the references by “us[ing] the methods for transferring attributes described in the LASpecs in the exchanges specifically described in Sunada and Mellmer.” Pet. 21–23. Petitioner explained that such combination “would allow a POSITA to obtain predictable results,” which Petitioner identified explicitly as “the transfer of information described in Sunada and Mellmer” (id. at 23), not as “a compliant implementation of Sunada or Mellmer to operate in a federated computing environment” (Req. Reh’g 7). At this stage, it is too late for Petitioner to add further explanation in a request for rehearing. See 37 C.F.R. § 42.71(d).” slip op. at 9
NonePatents in suitUS 7,631,346 - Mastercard International Incorporated v. William GreciaRehearing deniedPTAB · Dec 4, 2017 · IPR2017-00788 · APJ Jameson Lee · IPR · Rehearing
The Board denied Mastercard’s rehearing request, leaving in place the denial of institution on claims 1–26 because the Petition did not adequately explain how the prior art met the electronic identification reference limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“On request for rehearing, the burden of showing a decision on whether to institute trial should be modified lies with the party challenging the decision. 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). “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). For reasons discussed below, we decline to modify the Decision to institute trial on any claim. Thus, Petitioner’s Request is denied.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Board concluded that the Petitioner’s evidence showed steps 1–5 and subpart (a) of step 6. (Decision pp. 32– 33). However, the Board determined that Petition did not show that the prior art taught subpart (b) of step 6, specifically “branding metadata of the encrypted digital media by writing . . . (b) the electronic identification reference into the metadata.”” slip op. at 3
- BurdenDecided for patent owner
“Petitioner in the Petition regarding subpart (b) of step 6 of independent claims 1 and 15, including the state of the art at the time of the claimed invention. Rather, as we indicated in the Decision, Petitioner has not adequately explained why that which Petitioner regards as the electronic identification reference written into the metadata, as recited in subpart (b) of step 6, is or comes from the login information supplied by the user, i.e., the user’s email address, that the iTunes® system had requested and received according to the prior steps of claims 1 and 15. Dec. 32–33. That is what claims 1 and 15 require, and sufficient explanation is lacking in the Petition.” slip op. at 3
NonePatents in suitUS 8,402,555 - Samsung Electronics Co., Ltd. v. Huawei Technologies Co., Ltd.Institution deniedPTAB · Dec 4, 2017 · IPR2017-01465 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution because Petitioner did not show Baldemair was entitled to its provisional's priority date, so it was not shown to be prior art for claims 3–5 and 9–11.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Based on the record before us, we find that Petitioner has not linked the Baldemair Provisional with any of the Baldemair claims in a manner sufficient to meet its burden. Accordingly, Petitioner has not shown that Baldemair is entitled to the benefit of priority to the filing date of the Baldemair Provisional. Therefore, Petitioner has not shown that Baldemair is prior art to the ’587 patent. Because each of Petitioner’s asserted grounds relies on Baldemair, Petitioner has not demonstrated on the record before us a reasonable likelihood of showing that claims 3–5 and 9–11 would have been obvious over (1) Baldemair; (2) Baldemair and TS 36.213; or (3) Damnjanovic and Baldemair.” slip op. at 6
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artDecided for patent owner
“To show that Baldemair is entitled to the benefit of priority to the filing date of the Baldemair Provisional, Petitioner must show that the claims of Baldemair are supported by the Baldemair Provisional. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1381 (Fed. Cir. 2015) (“A reference patent is only entitled to claim the benefit of priority to the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.”). Recognizing this requirement (Pet. 18), Petitioner cites several passages from the Baldemair Provisional, and asserts that the cited passages “provide[] support for the relevant claims in Baldemair, such as claim 1.” Id. at 18–19.” slip op. at 5
- BurdenDecided for patent owner
“Baldemair Provisional may disclose the limitations recited in claim 1 of Baldemair, Petitioner does not explain how those cited portions disclose the claim limitations. As Patent Owner points out, claim 1 of Baldemair has several limitations, none of which Petitioner specifically discusses with respect to any of the cited passages from the Baldemair Provisional. Prelim. Resp. 21–22. Petitioner should not expect the Board to cull the evidence necessary to support Petitioner’s arguments. Based on the record before us, we find that Petitioner has not linked the Baldemair Provisional with any of the Baldemair claims in a manner sufficient to meet its burden. Accordingly, Petitioner has not shown that Baldemair is entitled to the benefit of priority to the filing date of the Baldemair Provisional. Therefore, Petitioner has not shown that Baldemair is prior art to the ’587 patent. Because each of Petitioner’s asserted grounds relies on Baldemair, Petitioner has not demonstrated on the record before us a reasonable likelihood of showing that claims 3–5 and 9–11 would have been obvious over (1) Baldemair; (2) Baldemair and TS 36.213; or (3) Damnjanovic and Baldemair.” slip op. at 5
§ 102 anticipationPatents in suitUS 8,885,587 - Talari Networks, Inc. v. Fatpipe Networks India LimitedSome claims unpatentablePTAB · Nov 1, 2017 · IPR2016-00976 · APJ Stacey G White · IPR · Final written decision
Claims 4, 5, and 7–15 are unpatentable; claim 19 was not shown unpatentable, because Karol anticipates some claims and Karol, alone or with Stallings, renders others obvious.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“selecting paths. See id. 5:48–50. These methods allow for the selection to “be performed once per packet, or a given selection may pertain to multiple packets.” Id. at 14:40–46 (emphasis added). Thus, we find that the specification discloses both selection for each individual packet and selection for a group of packets.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“with either a manual or an automated environment. The cited passage distinguished routing by departments from dynamic load balancing by stating that the department-based routing is not dynamic because in dynamic load balancing the “router loads dynamically in response to actual traffic.” Id. at 2:63–64. We find that the cited passages show that the contemplated load balancing is performed based on actual traffic, but are insufficient to establish that the Patentee intended load balancing to be equated with a manual selection process. See Id. at 2:61–65, 7:31–32. Further, we are not convinced by Patent Owner’s arguments regarding the alleged requirement that traffic be assessed at some point after the packet’s arrival. The portion of the specification cited in support of this assertion refers to multiple scenarios or “cases.” See PO Resp. 16 (citing Ex. 1001, 14:53–58). The specification states that in one of those cases the path may be determined after the packet arrives and states that, for example, the path determination may be done using dynamic load balancing. See Ex. 1001, 14:53–58. This passage does not provide any specific temporal limitation to the term “dynamic load balancing,” but rather it illustrates an example of when load balancing could be used. It is improper to limit the claims to this one exemplary embodiment without more express language in the claims or the specification that would narrow the scope of this term. Thus, we find that the proper construction of dynamic load balancing is “distributing packets based on actual traffic.”” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“selection for each packet then Karol would have rendered this limitation obvious. Pet. 45. Petitioner asserts that this limitation would have been obvious because (1) modifying Karol to select networks on a per-packet basis would have amounted to nothing more than the simple substitution of one known element for another to obtain predictable results (id. at 45); and (2) the combination of Karol and the knowledge of one of ordinary skill in the art would have been obvious to try (id. at 46).” slip op. at 19
- Expert testimonyPatent owner expert creditedDecided for patent owner
“We are not persuaded by Petitioner’s contention that Karol discloses sending different packets of a given message to different parallel networks. Karol does not describe any logical grouping of datagrams into a message. Ex. 2001 ¶¶72–74. On behalf of Patent Owner, Mr. Williams testifies that “Karol . . . never describes dividing up messages and sending those across disparate networks.” Id. ¶ 73. We note, that Karol uses the terms datagram and message in an interchangeable manner. See Ex. 1006, 1:10, 3:34–35 (“datagrams (sometimes hereinafter called messages)”). Karol also interchanges the terms packet and datagram. See id. 5:23–25. Thus, the mere use of the term “message” in Karol is not sufficient to show that Karol uses the term in the same manner as it is used in claim 19. We find Karol’s use of the terms datagram, packet, and message to be consistent with the ’235 patent’s use of the term packet because Karol treats these terms as disclosing a discrete unit of transmission that may be stored, halted, or turned around. Petitioner’s discussion of UDP segments is insufficient to establish that packets from a given message are sent to different networks because it is not clear from Karol’s disclosures that these UDP segments should be considered to be a “message.” Thus, we determine that Petitioner has not demonstrated by a preponderance of the evidence that claim 19 is anticipated by Karol.” slip op. at 37
Patent outcomesUS 6,775,235 mixedClaim construction§ 103 obviousnessPatents in suitUS 6,775,235 - Talari Networks, Inc. v. Fatpipe Networks India LimitedAll claims unpatentablePTAB · Nov 1, 2017 · IPR2016-00977 · APJ Stacey G White · IPR · Final written decision
Claims 1–24 are unpatentable: claims 1, 3, 4, 6, 7, 9, 10, 12, 13, 15, 16, 18, 19, 21, 22, and 24 are anticipated by Karol; all claims are obvious over Karol.
RulingsFinal written decision- Skill levelOther
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownGranted in part
“information to be gleaned by construing the words selecting/selects to mean “make a choice.” We also are not persuaded that there is a basis for inserting the word “discrete” into this construction. Therefore, based on the disputes before us, we see no reason to provide an express construction for the common terms select/selection.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Figure 5 of Karol depicts the packet forwarding process. Ex. 1006, 3:6–8. In step 501, a packet arrives at Karol’s CL router/switch 420. Id. 8:56–58. Step 503, then inquires as to whether the received packet is “a packet from a flow that needs CO Service.” Id. at Fig. 5, element 503 (emphasis added). Thus, we determine that Karol’s routing decisions are made for a flow of packets and not for an individual packet. As discussed above, we construed “selecting/selects, . . . within the controller on a per-packet basis” to require “selecting a network path for each packet.” See supra § II. Thus, we find that Karol does not disclose the per-packet selection required in claims 7 and 19. Therefore, we determine that Petitioner has not met its burden to establish that claims 7 and 19 are anticipated by Karol.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Path First) to determine routing prior to a packet being received at the gateway. PO Resp. 22. Patent Owner further contends that “[t]he OSPF routing protocol expressly excludes the possibility of making packet routing decisions on a per-packet basis.” Id. at 24. We find this to be an overly narrow view of Karol’s disclosures because Karol is not limited to OSPF. See Ex. 1006, 14:20–22 (“the description below assumes the OSPF routing protocol, the concept is readily applicable to other IP routing protocols”). We determine that Petitioner has shown that it would have been obvious to modify Karol to select networks on a per-packet basis. Petitioner has proposed a modification to Karol that is “much simpler” and, therefore, we find that one of ordinary skill in the art would have been motivated to make this modification in order to reduce system complexity. See Ex. 1005 ¶ 335. Petitioner has provided arguments and evidence sufficient to show that this modification would be within the abilities of one of ordinary skill in the art and that there would have been a reasonable expectation of success. See id. Thus, we find that Petitioner has put forth sufficient evidence to demonstrate that it would have been obvious to modify Karol in a manner that would have taught this limitation.” slip op. at 24
Patent outcomesUS 7,406,048 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 7,406,048 - HTC Corporation / HTC America, Inc. v. U.S. Philips CorporationRehearing deniedPTAB · Oct 19, 2017 · IPR2017-00856 · APJ Kristen L Droesch · IPR · Rehearing
The Board denied the rehearing request, leaving institution denied because the patent did not disclose sufficient structure for the claimed means-plus-function limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. See 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 burden of showing that the decision should be modified is on Petitioner, the party challenging the decision. See 37 C.F.R. § 42.71(d). In addition, “[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.” Id.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“[W]e understand Petitioner to assert that the claimed function includes “imparting an acceleration based motion pattern to a predetermined selection among said objects,” and the structure corresponding to the claimed function is a programmed data processor or data microprocessor 22, and the flow chart of Figure 5. Patent Owner does not dispute Petitioner’s claim constructions for “data processing means” and “programmed calculating means.” See Prelim. Resp. 12–14. Patent Owner, however, provides an explicit claim construction for “an acceleration based motion pattern” as “a pattern of motion which reflects acceleration.” Id. at 13 (citing Ex. 1001, 3:63–4:14; Ex. 2001, 11); see id. at 18. Dec. 10–11. We further explained: The ’797 Patent disclosures cited by Petitioner reveal no more than a general purpose “programmed data processor.” See Pet. 24–27; Ex. 1001, Abstract, 2:42–44, 50–53, 57–60, 4:15–39, Figs. 1, 5. The cited ’797 Patent disclosures do not describe an algorithm, expressed as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure for “imparting an acceleration based motion pattern to a predetermined selection among said objects.” See Pet. 24–27; Ex. 1001, Abstract, 2:42–44, 50–53, 57–60, 4:15–39, Figs. 1, 5. To the extent that Petitioner contends that the Figure 5 flow chart is the algorithm for the programmed data processor, as explained before, the cited ’797 Patent disclosures related to Figure 5 are silent with respect to “imparting an acceleration based motion pattern to a predetermined selection among the objects.” Dec. 12.” slip op. at 4
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner’s arguments are not persuasive because Petitioner does not identify where these arguments were raised previously. See Req. Reh’g 1–3; 37 C.F.R. § 42.71(d). We cannot overlook arguments not made on the record before us. Petitioner presents these arguments addressing the combination of the ’797 Patent disclosures directed to Figures 4 and 5 for the first time in the Request for Rehearing. Compare Req. Reh’g 7–10, with Pet. 6–7, 15–16, and Prelim. Resp. 6.” slip op. at 9
NonePatents in suitUS 5,910,797 - Mastercard International Incorporated v. William GreciaRehearing deniedPTAB · Oct 19, 2017 · IPR2017-00793 · APJ Michael W Kim · IPR · Rehearing
The Board denied rehearing of its decision denying institution on claim 1, finding that the Petition did not clearly map the claimed authorization object to Muller and the Request showed no overlooked error.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“To the extent Petitioner actually regards the entirety of Muller’s “media access response” as the recited “computer readable authorization object,” and believes a limitation with regard to the “computer readable authorization object” is met if at least a part of the identified object satisfies the limitation, that position has not been clearly articulated. Neither Patent Owner nor the Board has been provided with sufficient notice of that position. We decline to make that assumption.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To the extent Petitioner actually regards the entirety of Muller’s “media access response” as the recited “computer readable authorization object,” and believes a limitation with regard to the “computer readable authorization object” is met if at least a part of the identified object satisfies the limitation, that position has not been clearly articulated. Neither Patent Owner nor the Board has been provided with sufficient notice of that position. We decline to make that assumption.” slip op. at 3
NonePatents in suitUS 8,887,308 - FMC Technologies, Inc. v. Onesubsea IP UK LimitedSome claims unpatentablePTAB · Oct 11, 2017 · IPR2016-00907 · APJ Michelle N Wormmeester · IPR · Final written decision
Claims 1, 10–12, 17–19, 21–23, 25–29, 31–35, 38, 39, and 41 are unpatentable; claims 36 and 37 were not shown unpatentable.
RulingsFinal written decision- Expert testimonyOther
“Owner now urges. Even Patent Owner’s expert admitted that the term “complete” is an “arbitrary” term that adds nothing “about what [to] decide is going to be an assembly and what’s not going to be an assembly.” Ex. 1015, 80:1–5, cited in Pet. Reply 4. As such, Patent Owner’s addition of the term “complete” sheds no light on how a skilled artisan would have understood the relationship of parts that make up an “assembly.” We reject Patent Owner’s attempt now to construe the term more narrowly than it did in the district court action. Accordingly, we construe “assembly” as “a multipart device.”” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“Owner now urges. Even Patent Owner’s expert admitted that the term “complete” is an “arbitrary” term that adds nothing “about what [to] decide is going to be an assembly and what’s not going to be an assembly.” Ex. 1015, 80:1–5, cited in Pet. Reply 4. As such, Patent Owner’s addition of the term “complete” sheds no light on how a skilled artisan would have understood the relationship of parts that make up an “assembly.” We reject Patent Owner’s attempt now to construe the term more narrowly than it did in the district court action. Accordingly, we construe “assembly” as “a multipart device.”” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“that these discrete components are not a diverter assembly.” PO Resp. 32. As support, Patent Owner points to Mr. Herrmann’s testimony that Kelly’s line 20 is part of a “production discharge line.” Id. at 32–33 (citing Ex. 2005, 248:13–249:2). Patent Owner also points to Petitioner’s explanation in its Petition that “[l]ine 20 connects from the well production string to production flowline body or collet body 22.” Id. at 33 (citing Pet. 8); see also id. (“collet body 22 is an independent component consisting of two flow passages that are connected to the production flowlines 20 and 24”). That line 20 is part of a production discharge line or that it connects from the well production string to collet body 22 does not preclude collet body 22 and line 20 from being a diverter assembly. Indeed, as discussed above, we find that collet body 22 changes the flow path of the fluid in opposite directions, thereby providing, together with line 20, “a multipart device that changes the course or direction of a fluid’s current flow path.” See also Ex. 2006 ¶ 83 (Patent Owner’s expert testifying that “[t]he production discharge line is simply a flowline that takes fluid from the tree and, in the case of Kelly, takes the fluid to a choke installed on the flowline”). Accordingly, Patent Owner’s argument here also does not adequately rebut Petitioner’s persuasive evidence and argument that Kelly discloses a “diverter assembly.”” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Petitioner must provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). In that regard, Petitioner further argues that “[o]ne of skill in the art would have modified ‘subsea choke assembly 26’ of Kelly to include one or more of a pressure sensor, temperature sensor or flow sensor, or to substitute ‘subsea choke assembly 26’ with ‘production module 61,’ as taught by Fenton.” Pet. 26– 27. According to Petitioner, “[m]odifying Kelly’s subsea choke assembly by adding one or more temperature sensors, pressure sensors, or flow meters as taught by Fenton would provide information related to fluid flow through the assembly and allow more precise control of the choke to achieve desired flow characteristics.” Id. at 27. Petitioner relies on Mr. Herrmann’s declaration testimony as support for its argument. Id. at 27–28 (citing Ex. 1003 ¶¶ 32–33). Petitioner also argues that “a person of ordinary skill would have modified Kelly’s subsea apparatus in a second manner by substituting the entire ‘subsea choke assembly 26’ of Kelly with the entire ‘production module 61’ of Fenton,” indicating that “[s]uch a modification would be a simple substitution . . . and would provide the advantages of the additional functionality present in Fenton’s module.” Id. at 28. Based on the record before us, we are persuaded by Petitioner’s proffered reasoning for modifying Kelly’s choke assembly to include Fenton’s temperature sensors, pressure sensors, or flow meters to allow for more precise control of the choke. We also are persuaded by Petitioner’s proffered reasoning for substituting Kelly’s choke assembly with Fenton’s production module. Thus, we find that Petitioner has provided adequately “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” See Kahn, 441 F.3d at 988.” slip op. at 47
Patent outcomesUS 8,573,306 mixedClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,573,306 - Nokia Solutions And Networks US LLC / Nokia Solutions And Networks OY v. Huawei Technologies Co. Ltd.Rehearing deniedPTAB · Oct 6, 2017 · IPR2017-00592 · APJ Michelle N Wormmeester · IPR · Rehearing
Denied Nokia’s rehearing request; the Board found no abuse of discretion in denying institution on the asserted obviousness grounds against claims 1–3, 5, 8, 9, 11, 16, 17, and 19.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“overlooks significant evidence” that Petitioner presented. Req. Reh’g 5. Petitioner first argues that it showed there is an explicit teaching to combine the Tdoc list with TS 23.125. Id. at 6–8. In support of that argument, Petitioner identifies evidence cited in the Petition, which Petitioner now contends was proffered in support of demonstrating a motivation to combine the Tdoc list with TS 23.125. Id. Petitioner has not identified, however, any matters that we have misapprehended or overlooked. We considered Petitioner’s evidence and argument. In our Decision, we determined that Petitioner had not sufficiently shown a rationale to combine the references in order to arrive at the claimed invention. Inst. Dec. 18–20. It is insufficient to show that a skilled artisan would have combined the references. Id. Petitioner had the burden of also demonstrating that a skilled artisan would have arrived at the claimed invention, namely a CRF providing a TPF with address information of a charging system, which we found Petitioner had not shown. Id.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“argument that a skilled artisan would have known that the CRF could have provided the address information of a charging system to the TPF. Inst. Dec. 17–18. We found that Petitioner did not explain sufficiently, however, the rationale for why a skilled artisan would have implemented a CRF providing a TPF with address information of a charging system, rather than implementing either a User Equipment (UE) providing a TPF with the address information or a TPF that is already preconfigured with the address information, in view of the teachings of TS 23.125 and the Tdoc list. Id. at 18–20.” slip op. at 4
- Expert testimonyDecided for petitioner
“be provided only by a CRF, which Petitioner did not show, we note that the address information of a charging system could be preconfigured in the TPF and then added to a charging rule at the TPF once the rule has already been provided to the TPF. See Pet. 54 (directing us to expert testimony that “[t]he address information could either be pre-configured in the TPF or provided by another node”) (quoting Ex. 1003 ¶ 157). That scenario does not require a CRF providing a TPF with the address information of a charging system, as claimed.” slip op. at 6
§ 103 obviousnessPatents in suitUS 8,798,575 - Viptela, Inc. v. Fatpipe Networks Private LimitedInstitution deniedPTAB · Oct 3, 2017 · IPR2017-01125 · APJ Christa P Zado · IPR · Institution
The Board denied institution on claims 4–15, 19, and 22–24, exercising discretion under §§ 314(a) and 325(d) based on overlapping petitions, follow-on arguments, and inefficient use of resources.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“’684 IPR, which in turn was a “copy-cat” of the ’976 IPR petition. Prelim. Resp. 2, 5. However, in deciding whether we should exercise our discretion and decline to go forward with this Petition, our concern is not only whether “the same or substantially the same prior art or arguments previously were presented to the Office,” as expressed in § 325(d), but also whether other factors weigh in favor of denying institution in light of the discretion afforded to us pursuant to § 314(a).” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“whether at the time of filing of the ’684 petition, Petitioner knew, or should have known, of Pearce, Zhang, and McCullough (“the Additional References”); the length of time that elapsed between learning of the Additional References, and the filing of the instant Petition; whether Petitioner has provided adequate explanation for the time lapse; whether at the time of filing of the instant Petition, Petitioner already had access to Patent Owner’s response in the ’976 IPR; and the finite resources of the Board. See Gen. Plastic Indus. at 16 (Paper 19) (informative). Petitioner provides no explanation of whether it knew or should have known of the Additional References when filing the ’684 petition; of when it first learned of these references; or of any time lapse between learning of these references and the filing of the instant Petition.” slip op. at 13
- Other 314aInstitution denied discretionary otherInstitution denied
“August 14, 2017, and a final decision is due by November 2, 2017. At this point, the decision in the ’976 IPR as to whether to see the matter through to final determination is squarely in our hands, regardless of whether any settlement is reached between the parties. See 37 C.F.R. § 42.74(a) (“The parties may agree to settle any issue in a proceeding, but the Board is not a party to the settlement and may independently determine any question of jurisdiction, patentability, or Office practice.”). Thus, if we deem it appropriate, we can reach a final decision on the grounds presented in the ’976 IPR with or without participation from the parties in that matter. These facts weigh in favor of us exercising our discretion not to move forward with the instant Petition, at least with respect to the ’976 instituted claims insofar as Petitioner’s arguments relate to Karol and are substantially identical to those in the ’976 IPR, because the issues raised are fully briefed and ripe for a final decision in the ’976 IPR, and Petitioner’s non-participation in that proceeding is at best neutral to our analysis. Petitioner is a party to the ’684 IPR, and in that proceeding the petition is directed to the same claims of the same patent as in this Petition. This fact weighs in favor of us not moving forward with the instant Petition. Also, at least with respect to the ’684 instituted claims, insofar as Petitioner’s arguments relate to Karol and are substantially identical to those in the ’684 IPR, Petitioner has the opportunity to address the same art and arguments in the ’684 proceeding. It would be an inefficient use of Office resources, and would run counter to securing the just, speedy, and inexpensive resolution of the challenges to the patentability of the ’235 patent, if we were to allow Petitioner to proceed on the same art and arguments in two separate proceedings.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner submits a list of terms for which Patent Owner has proposed construction in a co-pending district court case. Pet. 7–8. Petitioner, however, asserts that for the purposes of this Decision no terms need to be construed. Id. Patent Owner does not address claim construction in its Preliminary Response. See generally Prelim. Resp. We reviewed the parties’ arguments, and, for the purposes of this Decision, we have determined that no terms require express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 7
Claim constructionDiscretionary denialPatents in suitUS 6,775,235
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.