- Medivis, Inc. v. Novarad Corp.Rehearing deniedPTAB · 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 anticipationPatents in suitUS 11,004,271 - Apple Inc. v. Maxell, Ltd.Rehearing deniedPTAB · 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 denialPatents in suitUS 10,212,586 - Apple Inc. v. Maxell, Ltd.Rehearing deniedPTAB · 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 denialPatents in suitUS 10,084,991 - Apple Inc. v. Maxell, Ltd.Rehearing deniedPTAB · 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 denialPatents in suitUS 6,928,306 - Clearone, Inc. v. Shure Acquisition Holdings, Inc.Rehearing deniedPTAB · 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
NonePatents in suitUS 9,565,493 - Vanguard Products Group, Inc., D/B/A Vanguard Protex Global v. Invue Security Products Inc.Rehearing deniedPTAB · 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 KSRPatents in suitUS 10,062,253 - Vanguard Products Group, Inc., D/B/A Vanguard Protex Global v. Invue Security Products Inc.Rehearing deniedPTAB · 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 KSRPatents in suitUS 9,818,274 - 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 - PTAB · Mar 16, 2020 · IPR2019-01111 · APJ Joni Y Chang · IPR · Rehearing
The Board denied rehearing and maintained denial of the petition as time-barred under § 315(b), because Amazon was a privy of several Petitioner Entities.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Here, Requesters simply disagree with the way in which we resolved the disputed privity issue in our Decision. Mere disagreement with our Decision is not proper basis for rehearing when we had considered and addressed Petitioner Entities’ arguments in the Decision itself. Requesters do not show that we misapprehended or overlooked an argument that they made in the Petition or Reply. Moreover, Requesters have not identified persuasively in the Request an erroneous interpretation of the law or factual findings not supported by substantial evidence such that the Decision should be modified.” slip op. at 9
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“In particular, we explained that the District Court’s ruling is on appeal, and Amazon has intervened in the appeal to continue its defense of Petitioner Entities’ interests in Amazon’s products. Id. at 29−30; Ex. 2017 (Patent Owner’s Appeal Brief); Ex. 2018 (Amazon’s Motion to Intervene). Thus, we concluded that the circumstances present here, which include the above-noted preexisting legal relationship between Amazon and some of the Petitioner Entities, have not changed and that Amazon and Petitioner Entities remain in privity. Dec. 23−24, 27−30, 35.” slip op. at 8
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“concerns by evaluating whether one or more of the Taylor’s categories apply. Dec. 18−36. We separately and expressly analyzed three grounds— namely, Taylor’s second, third, and fifth categories identified above. Id. For example, the third Taylor category, addressing due process concerns, is whether a party not involved in a lawsuit nevertheless was represented adequately by someone with the same interests who was a party to the lawsuit. See Taylor, 553 U.S. at 894; WesternGeco, 889 F.3d at 1319. We determined that Amazon is a privy of several Petitioner Entities under this ground, as well as two additional grounds. Dec. 18−36.” slip op. at 5
Discretionary denialPatents in suitUS 7,802,310 - PTAB · Mar 16, 2020 · IPR2019-01092 · APJ David C Mckone · IPR · Rehearing
The Board denied rehearing and maintained its denial of the petition as time-barred under § 315(b) because Petitioner entities remained in privity with Amazon.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“an abuse of discretion. See 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. See 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 entities, the parties challenging the Institution Decision. See 37 C.F.R. § 42.71(d) (2018). In addition, “[t]he request must specifically identify 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.” Id.” slip op. at 3
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“particular, we explained that the District Court’s ruling is on appeal, and Amazon has intervened in the appeal to continue its defense of Petitioner entities’ interests in Amazon’s products. Dec. 18, 20–21; Exs. 2017–2018. Thus, we concluded that the circumstances present here, which include the above-noted preexisting legal relationship between Amazon and at least some of the Petitioner entities, have not changed, and that Amazon and Petitioner entities remain in privity. Dec. 18, 21.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiDecided for patent owner
“the customer cases [, which include at least some Petitioner entities,3] are in privity with Amazon because they share the same interest in the unfettered use of Amazon’s web services, and Amazon adequately represented this interest in the [2011] Texas Action.” Ex. 2012, 14 (emphases added), quoted in Dec. 14. We do not understand Petitioner entities to be arguing that this determination was incorrect—Petitioner entities are the clear beneficiaries of the District Court’s ruling. In our Decision, we noted that the District Court’s articulation “is very similar, if not identical, to category three (adequate representation by the named party) in Taylor, where nonparty preclusion based on a privity relationship may be found.”” slip op. at 5
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for patent owner
“preclusion is, of course, subject to due process limitations,” and that “[a] person who was not a party to a suit generally has not had a ‘full and fair opportunity to litigate’ the claims and issues settled in that suit.” Taylor v. Sturgell, 533 U.S. 880 (2008), 891–92. Thus, “[a]s informed by Taylor and other cases, the standards for the privity inquiry must be grounded in due process.” WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1319 (Fed. Cir. 2018). According to the U.S. Court of Appeals for the Federal Circuit, “[b]ecause nonparty preclusion risks binding those who have not had a full and fair opportunity to litigate, the Supreme Court has cautioned that there is a general rule against nonparty preclusion, subject to certain exceptions.” Id. (emphasis added); accord Taylor, 533 U.S. at 893 (“[T]he rule against nonparty preclusion is subject to exceptions.”). Taylor groups such exceptions into six categories, 533 U.S. at 893–95, three of which we analyzed in the Decision, at 13–27 (analyzing exceptions 2, 3, and” slip op. at 4
Discretionary denialPatents in suitUS 6,928,442
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.