- Vanguard Products Group, Inc., D/B/A Vanguard Protex Global v. Invue Security Products, Inc.Rehearing deniedPTAB · Apr 21, 2020 · IPR2020-00014 · APJ Michael R Zecher · IPR · Rehearing
The Board denied rehearing and maintained denial of institution for claims 1–6, 12, 13, and 15–18 because Vanguard did not show a sufficient, supported rationale to combine the prior art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify 1 US 2012/0019383 A1, filed July 20, 2010, published Jan. 26, 2012 (Ex. 1003). 2 US 5,317,305, filed Jan. 30, 1992, issued May 31, 1994 (Ex. 1006). specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously 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 occurs 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 findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision.” Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015). With this in mind, we address the arguments presented by Vanguard in turn.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“that there would have been a sufficient reason to combine the relevant teachings of Wheeler, Fawcett, and Campman states: “A crowded retail store would not only make monitoring the security of display merchandise more difficult, but also increase the ambient noise thereby requiring a louder audible alarm to notify employees of a theft.” Req. Reh’g 3–4 (quoting Ex. 1012 ¶ 115). This testimony, however, does not cite to any underlying facts or data and, therefore, is entitled to little or no weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Without the support of any underlying facts or data, Mr. Figh’s testimony suffers from the same hindsight reasoning that we discussed in the Decision. See Dec. 19. That is, only teachings of the ’082 patent itself suggest a need to increase the audible level of an alarm in a retail store, and it appears that Vanguard has used this particular teaching as a guide to combine the teachings of the asserted prior art references in the manner required to account for all the limitations of independent claim 1. Moreover, Fawcett teaches a dual alarm system for retail stores (Ex. 1003, code (57), ¶¶ 8, 46, 47), and there is no indication that Fawcett’s teachings are limited in any way to uncrowded retail stores. Also, Fawcett’s dual alarm system already is specifically designed for retail stores (id.), yet Vanguard proposes to modify this design with features in Campman’s personal alert safety system (Pet. 33–35). Campman provides a distress alarm that can be heard for a distance of a half-mile or more (Pet. 43, 84; Prelim. Resp. 7–8 (citing Ex. 1006, 1:22–38, 6:30–32)), and the only reason Vanguard gives for using such an alarm in Fawcett’s retail store setting is that it would have provided a louder alarm (see Pet. 33–34). On the current record, we maintain that Vanguard has not established persuasively why a person of ordinary skill in the art would have been prompted to make Fawcett’s dual alarm system louder at all, much less to the extent taught by Campman.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“that there would have been a sufficient reason to combine the relevant teachings of Wheeler, Fawcett, and Campman states: “A crowded retail store would not only make monitoring the security of display merchandise more difficult, but also increase the ambient noise thereby requiring a louder audible alarm to notify employees of a theft.” Req. Reh’g 3–4 (quoting Ex. 1012 ¶ 115). This testimony, however, does not cite to any underlying facts or data and, therefore, is entitled to little or no weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Without the support of any underlying facts or data, Mr. Figh’s testimony suffers from the same hindsight reasoning that we discussed in the Decision. See Dec. 19. That is, only teachings of the ’082 patent itself suggest a need to increase the audible level of an alarm in a retail store, and it appears that Vanguard has used this particular teaching as a guide to combine the teachings of the asserted prior art references in the manner required to account for all the limitations of independent claim 1. Moreover, Fawcett teaches a dual alarm system for retail stores (Ex. 1003, code (57), ¶¶ 8, 46, 47), and there is no indication that Fawcett’s teachings are limited in any way to uncrowded retail stores. Also, Fawcett’s dual alarm system already is specifically designed for retail stores (id.), yet Vanguard proposes to modify this design with features in Campman’s personal alert safety system (Pet. 33–35). Campman provides a distress alarm that can be heard for a distance of a half-mile or more (Pet. 43, 84; Prelim. Resp. 7–8 (citing Ex. 1006, 1:22–38, 6:30–32)), and the only reason Vanguard gives for using such an alarm in Fawcett’s retail store setting is that it would have provided a louder alarm (see Pet. 33–34). On the current record, we maintain that Vanguard has not established persuasively why a person of ordinary skill in the art would have been prompted to make Fawcett’s dual alarm system louder at all, much less to the extent taught by Campman.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for patent owner
“testimony suffers from the same hindsight reasoning that we discussed in the Decision. See Dec. 19. That is, only teachings of the ’082 patent itself suggest a need to increase the audible level of an alarm in a retail store, and it appears that Vanguard has used this particular teaching as a guide to combine the teachings of the asserted prior art references in the manner required to account for all the limitations of independent claim 1. Moreover, Fawcett teaches a dual alarm system for retail stores (Ex. 1003, code (57), ¶¶ 8, 46, 47), and there is no indication that Fawcett’s teachings are limited in any way to uncrowded retail stores. Also, Fawcett’s dual alarm system already is specifically designed for retail stores (id.), yet Vanguard proposes to modify this design with features in Campman’s personal alert safety system (Pet. 33–35). Campman provides a distress alarm that can be heard for a distance of a half-mile or more (Pet. 43, 84; Prelim. Resp. 7–8 (citing Ex. 1006, 1:22–38, 6:30–32)), and the only reason Vanguard gives for using such an alarm in Fawcett’s retail store setting is that it would have provided a louder alarm (see Pet. 33–34). On the current record, we maintain that Vanguard has not established persuasively why a person of ordinary skill in the art would have been prompted to make Fawcett’s dual alarm system louder at all, much less to the extent taught by Campman.” slip op. at 6
§ 103 obviousnessPatents in suitUS 10,008,082 - Samsung Electronics Co. Ltd. / Samsung Electronics America, Inc. et al. v. Rosetta-Wireless CorporationRehearing deniedPTAB · Oct 20, 2017 · IPR2016-00622 · APJ John A Hudalla · IPR · Rehearing
The Board denied Rosetta’s rehearing request, finding it had not shown the Board overlooked or misapprehended its § 318(a) and constitutional arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. See 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Not reached
“property right. Req. Reh’g 4–5. Thus, Rosetta contends “[i]nter partes review is an adjudicatory proceeding which, as in this case, may result in extinguishment of a patentee’s property rights by action of the Board and without the right to trial by jury.” Id. at 3. According to Rosetta, this violates the Seventh Amendment and Article III of the Constitution. Id. Rosetta cites to a pending case before the U.S. Supreme Court that has taken up this issue. Id. (citing Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 137 S. Ct. 2239 (2017)). Accordingly, Rosetta asks us to vacate our Final Written Decision. Id. at 6. Rosetta never made arguments during trial about the purported unconstitutionality of inter partes review. Nor does Rosetta’s request for rehearing attempt to identify such arguments in the trial record. As such, we could not have misapprehended or overlooked this issue.” slip op. at 4
NonePatents in suitUS 7,149,511 - Apple Inc. v. Immersion CorporationRehearing deniedPTAB · Apr 27, 2017 · IPR2016-01777 · APJ Minn Chung · IPR · Rehearing
The Board denied Apple’s rehearing request, leaving in place the denial of institution because the Petition did not analyze the determining a press limitation as an integral whole.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the party challenging the decision,” and the challenging party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in a paper of record. 37 C.F.R. § 42.71(d). Because Petitioner seeks rehearing of our Decision denying the Petition, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“construe the “determining a press limitation” or interpreted the limitation to require the first two conditions recited in the limitation be maintained for the duration of a first interval. See Dec. 7–8. Rather, we found that, as illustrated in Figure 3 of the ’507 patent, “the meaning of the ‘first interval has elapsed’ condition as an integral part of the ‘determining a press limitation’ may be very different from its meaning in isolation.” Id. at 14–15 (emphasis added). We determined, based on the plain language of the claim limitation and the disclosure in the Specification, that the “determining a press limitation” recites a single concept of determining a press when all three conditions recited in the limitation are satisfied. Id. at 11–12. We found, therefore, a proper obviousness analysis must address the “determining a press limitation” as an integral whole, including the meaning of the “first interval has elapsed” condition as a part of the “determining a press limitation,” and show how a reference or a combination of references teaches or renders the limitation as a whole obvious. Id. at 12, 14–15 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)). We found that the Petition did not present such an analysis. Id. at 12, 15.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“an analysis. Instead, Petitioner argues that, because the claims use the openended transitional phrase “comprising,” the broadest reasonable interpretation of the “determining a press limitation” “requires only that there be at least one scenario in which the satisfaction of [the three recited conditions] . . . results in a determination of a press.” Req. Reh’g 8–10. Petitioner, however, does not identify where in the Petition this argument was presented. Petitioner’s argument appears to be a new argument presented for the first time in its Request for Rehearing to address the deficiencies in the Petition that were identified in our Decision. It was Petitioner’s affirmative duty to explain how the challenged claims should be construed and how, as so construed, they are unpatentable. See 37 C.F.R. § 42.104(b)(3)–(4). Hence, had Petitioner intended to argue, based on the open-ended transitional phrase “comprising” used in the claims, an interpretation of the “determining a press limitation” that differs from the meaning indicated by the plain language of the claim limitation or the disclosure in the Specification, such an analysis should have been made explicit in the Petition. A rehearing request is not a supplemental petition. Nor is it an opportunity to present new arguments or evidence that could have been presented and developed in the first instance in the Petition. Simply put, we could not have misapprehended or overlooked arguments or evidence that were not presented or developed in the Petition.” slip op. at 4
- ExcludeNot reached
“In support of its claim construction argument, Petitioner submits an Administrative Law Judge’s order on claim construction from the related U.S. International Trade Commission proceeding, which was not evidence of record at the time of our Decision. Req. Reh’g 7 (citing Ex. 1010, 59). In general, new evidence is not allowed in a Request for Rehearing, absent showing of good cause. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Petitioner does not explain why there is good cause to admit Exhibit 1010 with its Request for Rehearing. Nonetheless, even when we consider Exhibit 1010, it would not change the outcome of the Petitioner’s Request for Rehearing because we could not have misapprehended or overlooked evidence that was not presented or developed in the Petition.” slip op. at 5
§ 103 obviousnesscites KSRPatents in suitUS 8,749,507 - Apple Inc. v. Contentguard Holdings, Inc.Rehearing deniedPTAB · Oct 6, 2015 · IPR2015-00445 · APJ Jennifer S Bisk · IPR · Rehearing
The Board denied Apple's rehearing request, leaving institution denied for claims 1 and 8 because the petition did not show a reasonable likelihood of prevailing on the Rosen and Hartrick obviousness ground.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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 burden of showing a decision should be modified lies with the party challenging the decision[,]” which party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“We specifically addressed, in our Decision, the difficulty we had understanding what Petitioner’s proposed modifications were, how they were to be made, and why a person of ordinary skill would have made them. Dec. 12–15. Petitioner’s Request—even while characterizing the modifications as “a single change”—does not persuade us otherwise. Although Petitioner asserts that we misunderstood the changes being proposed, we are not persuaded that the Request clarifies the issue. And while we agree that the need for extensive modification, alone, does not necessarily doom a proposed ground of obviousness (Reh’g Req. 5–6), extensive modification was just one of many problems we had in attempting to understand the ground being asserted in this Petition. We explained in the Decision that combined with the many other deficiencies of the Petition, we were not persuaded that Petitioner had shown a reasonable likelihood of prevailing on any of the challenged claims. Dec. 4–15 (discussing the Petition’s vague, nested string citations to broad swaths of references; clarity problems created by pervasive use of internal cross-references and nested citations; improper incorporation by reference of the Sherman Declaration to support conclusory statements, thin analysis, and inadequate reasoning; and lack of sufficient information to enable us to do a proper Graham analysis). Similarly, Petitioner asserts that we evaluated this Petition using an impermissibly rigid form of proof and, thus, misunderstood substantial portions of it. Reh’g Req. 6–13. It is true we struggled to understand most of this Petition. As we explained above, however, the combination of problems with the Petition, described in detail in the Decision, made deciphering Petitioner’s contentions extraordinarily difficult. We are not persuaded that denying institution on this basis was an abuse of our discretion.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“problems we encountered with the Petition. First, Petitioner states that the Petition clearly explained only a single limitation is not covered by Rosen—“how [restrictions on usage of the electronic object] are specified or enforced.” Id. at 3. Petitioner goes on to suggest that we misapprehended that there is only a single change required to integrate Hartrick into Rosen to remedy this deficiency. Id. at 3–4 (“The Board also failed to appreciate the Petition actually described a single change to Rosen: integrating Hartrick’s usage rights specification and enforcement features to support Rosen’s ‘Usage’ field.”). However, in the very next sentence, Petitioner explains that making this one change actually requires four separate modifications to Rosen. Id. at 4 (“The Petition explained doing this would cause the skilled person to make four modifications to Rosen.”). We specifically addressed, in our Decision, the difficulty we had understanding what Petitioner’s proposed modifications were, how they were to be made, and why a person of ordinary skill would have made them. Dec. 12–15. Petitioner’s Request—even while characterizing the modifications as “a single change”—does not persuade us otherwise. Although Petitioner asserts that we misunderstood the changes being proposed, we are not persuaded that the Request clarifies the issue. And while we agree that the need for extensive modification, alone, does not necessarily doom a proposed ground of obviousness (Reh’g Req. 5–6), extensive modification was just one of many problems we had in attempting to understand the ground being asserted in this Petition. We explained in the Decision that combined with the many other deficiencies of the Petition, we were not persuaded that Petitioner had shown a reasonable likelihood of prevailing on any of the challenged claims. Dec. 4–15 (discussing the Petition’s vague, nested string citations to broad swaths of references; clarity problems created by pervasive use of internal cross-references and nested citations; improper incorporation by reference of the Sherman Declaration to support conclusory statements, thin analysis, and inadequate reasoning; and lack of sufficient information to enable us to do a proper Graham analysis).” slip op. at 3
§ 103 obviousnessPatents in suitUS 7,523,072
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.