• Medivis, Inc. v. Novarad Corp.Rehearing denied
  PTAB · Apr 23, 2024 · IPR2023-00042 · APJ Scott Raevsky · IPR · Rehearing

  The Board denied Medivis’s rehearing request, leaving in place the decision that claims 1–6 and 11–20 were not shown unpatentable because the cited references’ public accessibility was not established.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “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, a reply, or a sur-reply. Thus, a request for rehearing is not an opportunity to present new arguments or evidence or merely to disagree with the panel’s assessment of the arguments or weighing of the evidence. With this in mind, we address the arguments presented in turn.” slip op. at 2

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “accessibility, except the references Chen, 3D Visualization, and 3D Slicer themselves. This is insufficient and tantamount to submitting no proof of public accessibility. To find public accessibility, we must determine that a “document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art[,] exercising reasonable diligence, can locate it.” SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008), quoted in Dec. 26–27. Petitioner has insufficiently explained, by a preponderance of the evidence, how Chen, 3D Visualization, and 3D Slicer themselves answer the question of whether they have been disseminated or otherwise made available to those of ordinary skill in the art. Thus, we did not overlook or misapprehend any evidence of public accessibility on pages 29–30 of the Petition.” slip op. at 4

  • Strike new argumentNew argument disregardedOther

    “declaration by reference, we exercised our discretion to address a portion of it in our Decision. Dec. 30–31. We did so because we noted that his testimony was “particularly deficient for [the 3D Slicer] reference.” Id. at 30. Petitioner now asserts that in doing so, we “misapprehended or overlooked the logic that application documentation” like 3D Slicer’s “must be accessible to potential application users because it serves to help users use the application.” Req. 7. But Petitioner’s assertion that “application documentation must be accessible to potential application users because it serves to help users use the application” is a new argument, not raised in the Petition or Reply. Even if Petitioner’s assertion were correct, it falls far short of the evidence required to prove that 3D Slicer was actually disseminated to interested members of the public. See, e.g., Weber, 92 F.4th at 1068. Thus, Petitioner’s argument fails to persuade us that we overlooked or misapprehended anything.” slip op. at 11

  § 102 anticipation
  Patents in suitUS 11,004,271
• Apple Inc. v. Maxell, Ltd.Rehearing denied
  PTAB · Feb 3, 2021 · IPR2020-00202 · APJ Kevin C Trock · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving institution of review on all challenged claims and grounds in place.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “I. ANALYSIS When reconsidering a decision on institution, we review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion 1 Patent Owner also requested rehearing by the Precedential Opinion Panel (“POP”) to “clarify the date from which Fintiv Factor 4 should be analyzed, namely, the Petition’s filing date.” Req. Reh’g 1; Ex. 3001. On October 27, 2020, POP denied Patent Owner’s request for review. Paper 19. may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See 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). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes were misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “Factor 4 must be constrained to the facts as they existed when the Petition was filed. For example, in the Board’s informative decision in Sand Revolution II, LLC v. Continental Intermodal Grp.—Trucking LLC, IPR2019-01393, Paper 24 (PTAB June 16, 2020) (informative) (“Sand Revolution”), the panel considered and gave weight to Petitioner’s stipulation to withdraw certain prior art references from a related litigation if inter partes review was instituted. Sand Revolution at 11–12. Importantly, the stipulation in Sand Revolution arose long after the Petition was filed. Compare IPR2019-01393, Paper 1, 88 (petition with July 25, 2019, filing date), with IPR2019-01393, Ex. 1015 (stipulation to withdraw prior art dated April 13, 2020). Here, we also considered the parties’ more recent efforts in the underlying litigation to narrow the issues at trial, which reduced concerns of duplicative efforts between the District Court and the Board and minimized the potential for conflicting decisions. See, e.g., Dec. 15–16. This is consistent with the policy considerations underlying Factor 4 in Fintiv, namely, “concerns of inefficiency and the possibility of conflicting decisions.” Fintiv at 12.” slip op. at 4

  Discretionary denial
  Patents in suitUS 10,212,586
• Apple Inc. v. Maxell, Ltd.Rehearing denied
  PTAB · Feb 3, 2021 · IPR2020-00200 · APJ Kevin C Trock · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, finding no abuse of discretion in its Fintiv analysis and decision to institute review of claims 1–5 and 8–12.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See 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). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes were misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 3

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “Factor 4 must be constrained to the facts as they existed when the Petition was filed. For example, in the Board’s informative decision in Sand Revolution II, LLC v. Continental Intermodal Grp.—Trucking LLC, IPR2019-01393, Paper 24 (PTAB June 16, 2020) (informative) (“Sand Revolution”), the panel considered and gave weight to Petitioner’s stipulation to withdraw certain prior art references from a related litigation if inter partes review was instituted. Sand Revolution at 11–12. Importantly, the stipulation in Sand Revolution arose long after the Petition was filed. Compare IPR2019-01393, Paper 1, 88 (petition with July 25, 2019, filing date), with IPR2019-01393, Ex. 1015 (stipulation to withdraw prior art dated April 13, 2020). Here, we also considered the parties’ more recent efforts in the underlying litigation to narrow the issues at trial, which reduced concerns of duplicative efforts between the District Court and the Board and minimized the potential for conflicting decisions. See, e.g., Dec. 16. This is consistent with the policy considerations underlying Factor 4 in Fintiv, namely, “concerns of inefficiency and the possibility of conflicting decisions.” Fintiv at 12.” slip op. at 4

  Discretionary denial
  Patents in suitUS 10,084,991
• Apple Inc. v. Maxell, Ltd.Rehearing denied
  PTAB · Dec 15, 2020 · IPR2020-00199 · APJ John A Hudalla · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving institution in place because its Fintiv analysis was not an abuse of discretion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion 1 Patent Owner also requested rehearing by the Precedential Opinion Panel (“POP”) to “clarify the date from which Fintiv Factor 4 should be analyzed, namely, the Petition’s filing date.” Req. Reh’g 1. POP denied Patent Owner’s request for review. Paper 20. Notwithstanding, we consider Petitioner’s arguments regarding Fintiv Factor 4 below. may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See 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). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “We do not agree with Patent Owner that our analysis of Fintiv Factor 4 must be constrained to the facts as they existed when the Petition was filed. In the Board’s informative Sand Revolution decision, the panel considered and gave weight to a petitioner’s stipulation to withdraw certain prior art references from a related litigation if inter partes review was instituted. Sand Revolution II, LLC v. Cont’l Intermodel Grp.–Trucking LLC, IPR2019-01393, Paper 24 at 11–12 (June 16, 2020) (informative) (“Sand Revolution”). Importantly, the stipulation in Sand Revolution arose long after the Petition was filed. Compare IPR2019-01393, Paper 1, 88 (petition with July 25, 2019, filing date), with IPR2019-01393, Ex. 1015 (stipulation to withdraw prior art dated April 13, 2020). Just as in Sand Revolution, our consideration of post-filing developments here (i.e., Petitioner’s Final Election of Prior Art in the underlying litigation) is consistent with the policy considerations underlying Factor 4 in Fintiv, namely, “concerns of inefficiency and the possibility of conflicting decisions.” Fintiv at 12. Thus, we do not agree with Patent Owner that it was unreasonable for us to consider Petitioner’s post-filing election of prior art, which greatly diminished the overlap between the underlying litigation and this case.” slip op. at 4

  Discretionary denial
  Patents in suitUS 6,329,794
• Apple Inc. v. Maxell, Ltd.Rehearing denied
  PTAB · Dec 15, 2020 · IPR2020-00204 · APJ John A Hudalla · IPR · Rehearing

  The Board denied Maxell’s rehearing request, leaving institution in place because it reasonably weighed the Fintiv factors and did not abuse its discretion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See 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). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 3

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “Factor 4 must be constrained to the facts as they existed when the Petition was filed. In the Board’s informative Sand Revolution decision, the panel considered and gave weight to a petitioner’s stipulation to withdraw certain prior art references from a related litigation if inter partes review was instituted. Sand Revolution at 11–12. Importantly, the stipulation in Sand Revolution arose long after the Petition was filed. Compare IPR2019-01393, Paper 1, 88 (petition with July 25, 2019, filing date), with IPR2019-01393, Ex. 1015 (stipulation to withdraw prior art dated April 13, 2020). Just as in Sand Revolution, we focused on the effects of Petitioner’s proposal to withdraw Van der Salm here: alleviating concerns of duplicative efforts between the district court and the Board and minimizing the potential for conflicting decisions. Dec. 16. This is consistent with the policy considerations underlying Factor 4 in Fintiv, namely, “concerns of inefficiency and the possibility of conflicting decisions.” Fintiv at 12. Thus, we do not agree with Patent Owner that it was unreasonable for us to consider Petitioner’s post-filing proposal to withdraw Van der Salm.” slip op. at 4

  Discretionary denial
  Patents in suitUS 6,928,306
• Clearone, Inc. v. Shure Acquisition Holdings, Inc.Rehearing denied
  PTAB · Nov 3, 2020 · IPR2019-00683 · APJ Jon M Jurgovan · IPR · Rehearing

  The Board denied ClearOne’s rehearing request, declining to reconsider the patentability of proposed substitute claims 57–67 based on newly raised Levit and Gulbrandsen.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “B. Standard for Reconsideration The party challenging a Board decision has the burden of showing the decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d).” slip op. at 3

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied

    “New evidence is not permitted in a request for rehearing without a showing of good cause. See Huawei Device Co., Ltd. v. Optis Cellular Technology, LLC, IPR2018-00816, Paper 19 (PTAB January 8, 2019) (precedential). In this case, Petitioner appears to attempt to show good cause, though not expressly stating so, through the allegation that Patent Owner violated its duty of disclosure. Req. Reh’g 1–2. In the Order (Paper 95), the Board found Petitioner’s allegation insufficient, and did not permit briefing on a motion for sanctions for violating the duty of disclosure. Because Petitioner presents no other basis for good cause, the Board declines to admit the new evidence of Levit and Gulbrandsen into this proceeding.” slip op. at 6

  None
  Patents in suitUS 9,565,493
• Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Regents Of The University Of MinnesotaRehearing denied
  PTAB · 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 denial
  Patents in suitUS 8,774,309
• Unified Patents Inc. v. Synchview Technologies, LLCRehearing denied
  PTAB · May 28, 2020 · IPR2019-00470 · APJ Monica S Ullagaddi · IPR · Rehearing

  The Board denied rehearing and maintained denial of institution because the record lacked evidence to determine the scope of “DVR” and whether the prior art met that limitation.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “In summary, the record does not include sufficient information for a determination of the claim scope of “DVR.” It is Petitioner’s burden to show, in the Petition, “[h]ow the challenged claim is to be construed” and “[h]ow the construed claim is unpatentable.” 37 C.F.R. § 42.104(b)(3)–(4). Without such an explanation of Petitioner’s position and supporting evidence, we cannot conduct the necessary factual inquiry for determining whether Petitioner has shown a reasonable likelihood in demonstrating that the prior art meets this limitation. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) (reversing the Board’s decision of obviousness because it relied on “what at best are speculative assumptions as to the meaning of the claims”).” slip op. at 5

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

    “In summary, the record does not include sufficient information for a determination of the claim scope of “DVR.” It is Petitioner’s burden to show, in the Petition, “[h]ow the challenged claim is to be construed” and “[h]ow the construed claim is unpatentable.” 37 C.F.R. § 42.104(b)(3)–(4). Without such an explanation of Petitioner’s position and supporting evidence, we cannot conduct the necessary factual inquiry for determining whether Petitioner has shown a reasonable likelihood in demonstrating that the prior art meets this limitation. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) (reversing the Board’s decision of obviousness because it relied on “what at best are speculative assumptions as to the meaning of the claims”). We are unable to conclude, therefore, that there is a reasonable likelihood that Petitioner would prevail in demonstrating the unpatentability of any of the challenged claims.” slip op. at 5

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

    “In summary, the record does not include sufficient information for a determination of the claim scope of “DVR.” It is Petitioner’s burden to show, in the Petition, “[h]ow the challenged claim is to be construed” and “[h]ow the construed claim is unpatentable.” 37 C.F.R. § 42.104(b)(3)–(4). Without such an explanation of Petitioner’s position and supporting evidence, we cannot conduct the necessary factual inquiry for determining whether Petitioner has shown a reasonable likelihood in demonstrating that the prior art meets this limitation. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) (reversing the Board’s decision of obviousness because it relied on “what at best are speculative assumptions as to the meaning of the claims”).” slip op. at 5

  Claim construction
  Patents in suitUS 6,788,882
• Vanguard Products Group, Inc., D/B/A Vanguard Protex Global v. Invue Security Products Inc.Rehearing denied
  PTAB · May 26, 2020 · IPR2019-01209 · APJ Lynne E Pettigrew · IPR · Rehearing

  The Board denied rehearing and left in place its denial of institution because the Petition lacked adequate evidence and reasoning to support the proposed obviousness combination.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Id. § 42.71(c); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”). “An abuse of discretion is found if the decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact finding; or (4) involves a record that contains no evidence on which the Board could” slip op. at 2

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

    “As the Petition makes clear, the linchpin of Petitioner’s argument for modifying Brenner is that a person of ordinary skill in the art would have recognized reliability issues due to signal loss in the optical waveguide of Brenner’s device. See Pet. 21 (“Thus, a [person of ordinary skill in the art] would have recognized that the security device of Brenner is prone to reliability issues due to signal loss in the optical waveguide.”); id. at 34 (“A [person of ordinary skill in the art] would recognize that . . . the security device will likely suffer from reliability issues associated with signal loss within the optical waveguide.”); id. at 35 (“[T]he optical transceivers of the sensor unit and the base unit may not be able to reliably communicate with one another due to optical signal loss within the optical waveguide.”); id. 6 The Petition and our Decision refer to this book by its title (“Communications Standard Dictionary”), but Petitioner now refers to it by the last name of its author (“Weik”). Compare Pet. 6, 19, with Req. Reh’g 2. For convenience and consistency with the Request for Rehearing, we refer to the book herein as “Weik.” Notably, Petitioner did not submit Weik as a prior art printed publication to be considered as part of an unpatentability ground, as set forth in 35 U.S.C. § 311(b) (2018). See Pet. 5. Rather, the Petition cites Weik as support for its proposed claim construction and as support for an alleged “well-known fact” that an optical waveguide subjected to bending or winding is prone to signal loss. Id. at 6, 19. skill in the art] to improve the reliability of the security device of Brenner . . . .”); see also Dec. 14–15, 17–18 (citing Pet. 21, 35). Because we determined in our Decision that Petitioner failed to show sufficiently that a person of ordinary skill in the art would have recognized reliability issues in Brenner’s device, we concluded Petitioner did not provide adequate reasoning with rational underpinning for why a person of ordinary skill in the art would have been motivated to modify Brenner as proposed. Dec. 16– 18.” slip op. at 4

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

    “As the Petition makes clear, the linchpin of Petitioner’s argument for modifying Brenner is that a person of ordinary skill in the art would have recognized reliability issues due to signal loss in the optical waveguide of Brenner’s device. See Pet. 21 (“Thus, a [person of ordinary skill in the art] would have recognized that the security device of Brenner is prone to reliability issues due to signal loss in the optical waveguide.”); id. at 34 (“A [person of ordinary skill in the art] would recognize that . . . the security device will likely suffer from reliability issues associated with signal loss within the optical waveguide.”); id. at 35 (“[T]he optical transceivers of the sensor unit and the base unit may not be able to reliably communicate with one another due to optical signal loss within the optical waveguide.”); id. 6 The Petition and our Decision refer to this book by its title (“Communications Standard Dictionary”), but Petitioner now refers to it by the last name of its author (“Weik”). Compare Pet. 6, 19, with Req. Reh’g 2. For convenience and consistency with the Request for Rehearing, we refer to the book herein as “Weik.” Notably, Petitioner did not submit Weik as a prior art printed publication to be considered as part of an unpatentability ground, as set forth in 35 U.S.C. § 311(b) (2018). See Pet. 5. Rather, the Petition cites Weik as support for its proposed claim construction and as support for an alleged “well-known fact” that an optical waveguide subjected to bending or winding is prone to signal loss. Id. at 6, 19. skill in the art] to improve the reliability of the security device of Brenner . . . .”); see also Dec. 14–15, 17–18 (citing Pet. 21, 35). Because we determined in our Decision that Petitioner failed to show sufficiently that a person of ordinary skill in the art would have recognized reliability issues in Brenner’s device, we concluded Petitioner did not provide adequate reasoning with rational underpinning for why a person of ordinary skill in the art would have been motivated to modify Brenner as proposed. Dec. 16– 18.” slip op. at 4

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We are not persuaded that we overlooked evidence from Weik relied on in the Petition. Our Decision considered Weik’s description of a “microbend loss” that was quoted in the Petition: “the optical power loss caused by a microbend, i.e., a small bend, kink, or abrupt discontinuity in the direction of the optical axis of fibers, in the core-cladding interface surface, or both, usually caused by cabling, wrapping the fiber around drums and (citing Pet. 34–35 (citing Ex. 1002, 576)). But Petitioner does not identify, nor do we see, any assertion in the Petition that Weik shows a microbend loss can cause a “total failure” of an optical signal to reach its destination. See Req. Reh’g 9; Pet. 19–20, 34–35. Petitioner’s Request for Rehearing also does not identify where the Petition addressed Weik’s statement that microbends can cause radiative loss. See Pet. 19–20, 34–35. Because these arguments were not presented in the first instance in the Petition, we could not have overlooked them in our Decision.” slip op. at 5

  § 103 obviousnesscites KSR
  Patents in suitUS 10,062,253
• Vanguard Products Group, Inc., D/B/A Vanguard Protex Global v. Invue Security Products Inc.Rehearing denied
  PTAB · May 26, 2020 · IPR2019-01206 · APJ Lynne E Pettigrew · IPR · Rehearing

  The Board denied rehearing and left in place its denial of institution because the Petition lacked sufficient evidence and reasoning to show a reasonable likelihood of prevailing on obviousness.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Id. § 42.71(c); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”). “An abuse of discretion is found if the decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact finding; or (4) involves a record that contains no evidence on which the Board could” slip op. at 2

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

    “ordinary skill in the art] to improve the reliability of the security device of Brenner . . . .”); see also Dec. 14–15, 18 (citing Pet. 21, 36–37). Because we determined in our Decision that Petitioner failed to show sufficiently that a person of ordinary skill in the art would have recognized reliability issues in Brenner’s device, we concluded Petitioner did not provide adequate reasoning with rational underpinning for why a person of ordinary skill in the art would have been motivated to modify Brenner as proposed. Dec. 16– 18.” slip op. at 5

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

    “ordinary skill in the art] to improve the reliability of the security device of Brenner . . . .”); see also Dec. 14–15, 18 (citing Pet. 21, 36–37). Because we determined in our Decision that Petitioner failed to show sufficiently that a person of ordinary skill in the art would have recognized reliability issues in Brenner’s device, we concluded Petitioner did not provide adequate reasoning with rational underpinning for why a person of ordinary skill in the art would have been motivated to modify Brenner as proposed. Dec. 16– 18.” slip op. at 5

  § 103 obviousnesscites KSR
  Patents in suitUS 9,818,274

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.