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  • 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
  • PTAB · Aug 25, 2022 · IPR2021-01556 · APJ Kevin C Trock · IPR · Rehearing

    The Board denied rehearing and left in place its § 314(a) denial of institution, finding no abuse of discretion in its Fintiv analysis.

    RulingsRehearing decision
    • RehearingRehearing, deniedDenied

      “decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Huawei Device Co., Ltd., v. Optis Cellular Tech., LLC, IPR2018-00816, Paper 19, 3 (PTAB Jan. 8, 2019) (precedential) (citations omitted). Further, “[a]bsent a showing of ‘good cause’ . . . , new evidence will not be admitted” in connection with a request for rehearing. Patent Trial and Appeal Board Consolidated Trial Practice Guide 90 (Nov. 2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (citing Huawei Device Co., IPR2018-00816, Paper 19 at 4). Thus, a request for rehearing is not generally an opportunity to present new arguments or evidence.” slip op. at 3

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

      “patent’s ‘current [trial] date is well before the Board’s projected deadline’ is inaccurate.” Id. at 2. Petitioner’s argument that Patent Owner’s statement concerning the district court trial date is inaccurate, however, is based on speculation. In the Request, Petitioner calculates that “there is only a one-out-of-three chance that the ’198 Patent will be included” in the district court trial. Id. at 5. But, as Petitioner acknowledges in the Request, “whether or not the ’198 Patent is included in the first trial is entirely under Patent Owner’s control.” Id. at 4. Petitioner presents no evidence that Patent Owner has decided not to include the ’198 patent in the district court trial. Thus, Petitioner’s argument that Patent Owner’s statement “is inaccurate” is based on Petitioner’s speculation as to what Patent Owner will, or will not, do.” slip op. at 7

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

      “in weighing relevant factors.” Huawei Device Co., Ltd., v. Optis Cellular Tech., LLC, IPR2018-00816, Paper 19, 3 (PTAB Jan. 8, 2019) (precedential) (citations omitted). Further, “[a]bsent a showing of ‘good cause’ . . . , new evidence will not be admitted” in connection with a request for rehearing. Patent Trial and Appeal Board Consolidated Trial Practice Guide 90 (Nov. 2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (citing Huawei Device Co., IPR2018-00816, Paper 19 at 4). Thus, a request for rehearing is not generally an opportunity to present new arguments or evidence.” slip op. at 4

    Discretionary denial
    Patents in suitUS 10,776,198
  • PTAB · Aug 25, 2022 · PGR2022-00005 · APJ Ken B Barrett · PGR · Rehearing

    The Board denied NXP’s rehearing request, leaving in place the denial of PGR institution on claims 1–20 based on its holistic Fintiv analysis.

    RulingsRehearing decision
    • RehearingRehearing, deniedDenied

      “decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Huawei Device Co., Ltd., v. Optis Cellular Tech., LLC, IPR2018-00816, Paper 19, 3 (PTAB Jan. 8, 2019) (precedential) (citations omitted). Further, “[a]bsent a showing of ‘good cause’ . . . , new evidence will not be admitted” in connection with a request for rehearing. Patent Trial and Appeal Board Consolidated Trial Practice Guide 90 (Nov. 2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (citing Huawei Device Co., IPR2018-00816, Paper 19 at 4). Thus, a request for rehearing is not generally an opportunity to present new arguments or evidence.” slip op. at 3

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

      “with the Request. “Ideally, a party seeking to admit new evidence with a rehearing request would request a conference call with the Board prior to filing such a request so that it could argue ‘good cause’ exists for admitting the new evidence. Alternatively, a party may argue ‘good cause’ exists in the rehearing request itself.” Huawei Device Co., IPR2018-00816, Paper 19 at 4; see also Consolidated Trial Practice Guide at 90 (quoting the same). Petitioner did not request a conference call prior to filing the Request to argue that good cause exists and does not present arguments in the Request regarding good cause. Accordingly, we find that Petitioner has not met its burden of showing that good cause exists to justify consideration of those exhibits to evaluate whether we erred by overlooking or misapprehending anything in the Decision. B. We Did Not Misapprehend the Significance of the Facts Pertaining to” slip op. at 4

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

      “argument, we stated that, “[b]ecause the currently scheduled trial in the parallel proceeding is scheduled to begin over two months before our deadline to reach a final decision, this factor weighs somewhat in favor of discretionary denial.” Dec. 9. After discussing all of the Fintiv factors and after “consider[ing] ‘a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review,’” we exercised discretion to deny institution of a post-grant review. Id. at 12–13 (quoting Fintiv, Paper 11 at 6).” slip op. at 6

    Discretionary denial
    Patents in suitUS 10,929,734
  • 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
  • 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
  • PTAB · Jan 5, 2021 · IPR2020-00483 · APJ Brian J Mcnamara · IPR · Rehearing

    The Board denied Patent Owner’s rehearing request, leaving institution in place after finding no pertinent matter was overlooked or misapprehended.

    RulingsRehearing decision
    • RehearingRehearing, deniedDenied

      “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.” slip op. at 2

    • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

      “we do not hold the Petition to recite the exact wording of Advanced Bionics that– “the Office erred in a manner material to the patentability of the challenged claims.” Nevertheless, we reviewed the challenges in the Petition and the prosecution history to assess whether Petitioner had demonstrated material error by the Office. We noted that challenged claim 29 (application claim 50) was allowed after it was amended to include 4 The Petition has been accorded a filing date of February 3, 2020. The decision in Advanced Bionics was issued on February 13, 2020 and designated precedential on March 24, 2020. command keys positioned on the handle. Dec. to Inst. 19; see also Pet. 15‒ 16 (discussing prosecution history and the Examiner’s identification of allowable subject matter). We also found persuasive Petitioner’s arguments that these same features are found in Rosenhan. Id. (referencing Pet. 31‒ 33). As a result, we determined that the Office’s failure to recognize Rosenhan discloses features that prompted the Examiner to allow the claims was an error material to the patentability of the challenged claims. Id. Patent Owner’s Request for Rehearing does not dispute the substance of this analysis. Req. Reh’g. 2–5. Patent Owner’s argument that our approach “bootstraps” reasonable likelihood of success into the analysis of Office error is incorrect. Req. Reh’g. 5. Our analysis of the Office’s error focuses on the features that led the Examiner to allow the claim. Dec. to Inst. 19. That analysis is separate and distinct from our analysis of whether Petitioner demonstrated a reasonable likelihood of success by showing the reference teaches each of the elements of the claim to a person of ordinary skill. Id. at 23–25.” slip op. at 4

    • Other 314aDecided for petitioner

      “Here, as discussed below, the Decision to Institute weighed the factors argued in the Preliminary Response concerning discretionary denial of institution under Section 314(a). Section 314(a) states “the Director may not authorize an inter partes review unless the Director determines the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Although Section 314(a) does not require the Director to institute inter partes review in any particular case (see Oil States Energy Servs., LLC v. Greene’s Energy Grp., 138 S. Ct. 1365, 1371 (2018)), the Decision to Institute concluded that the Petition in this case satisfied the requirements for institution under Section 314(a) and that the circumstances of this case do not support exercising discretion to deny Petitioner its ability under the statute to obtain inter partes review.” slip op. at 8

    Discretionary denial
    Patents in suitUS 9,503,627
  • 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
  • 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
  • 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
  • PTAB · Jul 17, 2020 · IPR2019-01651 · APJ Jameson Lee · IPR · Rehearing

    The Board denied Square’s rehearing request; all claims remain in trial on all asserted grounds, including obviousness of claims 1 and 4 over Bear and Vrotsos.

    RulingsRehearing decision
    • RehearingRehearing, deniedDenied

      “At this stage of the proceeding, whether our statement was correct is of no moment, because we instituted review of all challenged claims on all asserted grounds of unpatentability. Dec. 38. As explained in the Decision,” slip op. at 2

    None
    Patents in suitUS 9,443,239
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