- PTAB · Apr 25, 2025 · IPR2024-00912 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied Micron’s rehearing requests, leaving institution denied because the petitions did not show that the prior-art combinations disclose or render obvious fast-charge removal.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When rehearing a decision on institution, we do not review the merits of the decision de novo, but instead review the decision for an abuse of discretion. 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.” Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000)). The party requesting rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, 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 a motion, an opposition, or a reply.” Id.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“It was Petitioner’s burden to establish that Seo and Nam, alone or in combination with Choi, disclose Limitation [1.D]. We are not persuaded that we misapprehended the nature of Petitioner’s argument when we determined that Petitioner did not meet that burden.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“determined that the combinations of Seo or Nam with Choi were not persuasive. Dec. 14–15, 19–20. For example, we determined that “Dr. Liu’s statement that ‘[a] POSITA would have recognized that the lateral-electrical-field-inducing voltage differential, as Seo discloses, is what Choi describes as driving the lateral fast-charge loss,’ is not supported by objective evidence or sufficient explanation as to why a POSITA would have come to that understanding” and was therefore insufficient to support Petitioner’s asserted motivation to combine Seo with Choi. Id. at 14–15. In particular, we were not persuaded that “Seo creates a large lateral electric field like the one described in Choi,” and, in any case, we disagreed that “Choi teaches that a large lateral electric field removes fast charges.” Id. at 15. Accordingly, regardless of the duration of the voltage application described in Seo, Petitioner failed to show that the combination of Seo and Choi would result in removal of fast charges. We further determined that Petitioner’s combination of Nam with Choi was problematic for similar reasons, given Petitioner’s reliance on similar arguments. See id. at 20.” slip op. at 10
- Expert testimonyPetitioner expert discountedOther
“the knowledge of one of ordinary skill in the art relating to charge-trap memory devices demonstrates fast charge removal. See Pet. 36, 81–82. And although Petitioner cites its declarant, Dr. Liu, for the proposition that “Seo discloses, and would have been understood to disclose, performing its read operation on charge-trap memories, which removes fast charges,” Dr. Liu does not cite objective evidence to support this assertion, aside from the ’342 patent itself. Id. at 36 (citing Ex. 1003 ¶ 136). Moreover, Dr. Liu’s testimony simply circles back to logic similar to that relied on with respect to the inherency theory, namely that, given certain similarities between Seo and the ’342 patent, Seo removes fast charges because the ’342 patent teaches removing fast charges, even though Seo does not explicitly teach doing so. See Ex. 1003 ¶ 136 (“[A] POSITA would have immediately understood from reading Seo that Seo is disclosing its read operation as applicable to Flash memories, including Flash charge-trap memories. And as the ’342 states, Seo’s operation would remove fast charges in a charge-trap memory.” (citing Ex. 1001, Abstract)). As already discussed, we disagree with this logic based on the lack of sufficient evidence to support its conclusion. See Dec. 13 (“Petitioner and Dr. Liu do not provide any objective evidence or explanation as to how or why a POSITA would have understood that Seo’s voltage amounts applied during Seo’s time periods operate the same way [as in the ’342 patent] on Seo’s memory device to generate fields with sufficient magnitude and duration to remove fast charges.”). Petitioner’s assertions regarding Nam suffer from the same shortcomings. See Dec. 19–20; Pet 82 (“[A] POSITA would have found that Nam’s teachings are applicable to charge-trap devices”); Ex. 1003 ¶¶ 293–298.” slip op. at 8
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,600,342 - Mobileye Global, Inc. v. Facet Technology Corp.Rehearing deniedPTAB · Apr 22, 2025 · IPR2024-01110 · APJ Sean P O’Hanlon · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution in place on claim 15 based on the Gallagher–Lumia obviousness challenge.
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 specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 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. 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).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“or overlooked any matter. As we explained in the Institution Decision, the ’255 patent discloses that the recited characterization profile allows the system to convert the intensity values measured by the intensity sensor into luminance values based on the sensor’s ability to sense the particular color of the measured light. Inst. Dec. 21; Ex. 1001, 11:41–48. The ’255 patent states that “the light intensity sensor’s 280 ability to sense . . . a particular color” is the “the light intensity sensor’s 280 profile for [that] particular color.” Ex. 1001, 11:45–47. The ’255 patent further states that this “[l]ight intensity sensor 280 characterization is essential for high precision computations.” Id. at 11:48–49. Thus, as we stated in the Institution Decision, the recited “characterization profile” refers to a conversion factor used to convert the measured light intensity into luminance. As this conversion factor is based on the light intensity sensor’s ability to sense the particular color of light reflected by the road sign, we agree that it is empirical information. Patent Owner fails to explain adequately how the fact that the ’255 patent discloses storing multiple conversion factors for multiple colors of measured light in a digital look-up-table (see id. at 11:56–59 (“The light intensity sensor characterization 275 is empirical information about the light intensity sensor 280 that is used to create the [look-up table] 475.”)) has any bearing on our interpretation.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Owner to the Institution Decision where we fully addressed Patent Owner’s contentions. See Inst. Dec. 29–31. As we explained, “Petitioner proposes to incorporate Lumia’s teaching of measuring luminance values into Gallagher’s system, and argues that an ordinarily skilled artisan would have had a reasonable expectation of success given Gallagher’s disclosure of determining calibration factors for each individual sensor in the array of sensors.” Id. at 30. In other words, Petitioner proposes to use Gallagher’s array of sensors to measure luminance in the manner taught by Lumia. We also explained in the Institution Decision how Lumia discloses using a video camera to measure the luminance of a road sign. Id. at 27–29. We further explained that, in the Petition, “Petitioner sets forth reasoning with rational underpinning to support its contentions that it would have been obvious to combine the teachings of Gallagher and Lumia” by, for example, “argu[ing] that implementing Lumia’s teaching of determining the luminance of traffic signs in Gallagher’s system would allow Gallagher’s system to calculate the retroreflectivity of road markers as a means of identifying any markers that do not meet minimum acceptable reflectance levels.” Id. at 30–30 (citing Pet. 46). We further explained that Petitioner’s arguments were supported by the testimony of it witness, Dr. Thorpe. Id. at 31 (citing Ex. 1003 ¶ 116).” slip op. at 7
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,335,255 - Apple Inc. v. THL Holding Company, LLCRehearing deniedPTAB · Sep 27, 2024 · IPR2024-00399 · APJ Christopher M Kaiser · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no abuse of discretion in instituting review of claims 1–19 despite the later disclaimer of claims 1–10.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“be treated as never having existed, and because claim 1 is the only claim on which Petitioner has shown a reasonable likelihood of prevailing, we should overturn our decision instituting review. As noted above, when rehearing a decision on petition, we review the decision for an abuse of discretion, and 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.” 37 C.F.R. § 42.71(c); PPG Indus. Inc., 840 F.2d at 1567. But Patent Owner has not explained how we erred in any way in reaching our decision instituting review. Instead, Patent Owner’s argument is new and was not presented previously, and Patent Owner bases its rehearing argument on circumstances having changed since we issued our decision. Req. Reh’g 4 (stating statutory disclaimer was “filed following, and in view of, the Board’s guidance in the [decision on institution]”). For this reason, the Rehearing Request does not “identify [any] matters [Patent Owner] believes [we] misapprehended or overlooked,” nor does it “identify . . . the place where each matter was previously addressed in a motion, an opposition, a reply, or a sur-reply.” 37 C.F.R. § 42.71(d). For this reason, we deny Patent Owner’s Request for Rehearing. In addition, we note that statutory disclaimers are “considered as part” slip op. at 4
- Adverse judgmentOther
“proposition that “[c]laims disclaimed under § 253(a) are treated as though they never existed.” Prelim. Resp. 3 (citing Vectra Fitness, 162 F.3d at 1383; Guinn, 96 F.3d at 1422). Neither Guinn nor Vectra Fitness involved a situation in which a determination about the patent, once made, was required to be unwound in light of a subsequent statutory disclaimer. Instead, Vectra Fitness related to a question of how to resolve post-disclaimer proceedings, and Guinn dealt with whether to apply a rule treating the disclaimer of all claims involved in an interference proceeding as a request for adverse judgment against the disclaiming party. Vectra Fitness, 162 F.3d at 1381 (disclaimer filed Feb. 16, 1990; reissue application at issue filed May 9, 1991; reissue patent issued Mar. 29, 1994; infringement suit filed Dec. 4, 1996); Guinn, 96 F.3d at 1420–21. In fact, contrary to the result that Patent Owner urges here of reversing our institution of review, Guinn held that it was appropriate to resolve an interference even after all the involved claims had been disclaimed. 96 F.3d at 1422 (“We hold that the Board had the authority and the responsibility pursuant to 35 U.S.C. § 135(a) to resolve the interference and render judgment against Guinn as a result of his disclaimer of claim 9 of the ’812 patent.”).” slip op. at 5
NonePatents in suitUS 11,350,246 - 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 - PTAB · Jan 26, 2022 · IPR2020-00870 · APJ Frederick C Laney · IPR · Rehearing
The Board denied rehearing of its decision denying institution, finding no overlooked or misapprehended facts that changed its Fintiv analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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. 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 burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): 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, or a reply. 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 (“CTPG”) (citing Huawei Device Co. v. Optis Cellular Tech., LLC, IPR2018-00816, Paper 19 at 4 (PTAB Jan. 8, 2019) (precedential)). 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.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“the District Court held a hearing regarding venue related issues. Ex. 1044, 6:8–15. During the course of that hearing, the District Court set forth procedures that the parties should follow to address some outstanding venue related issues. Id. at 26:1–10. The District Court also stated that, after the parties followed those procedures and reported back, it would “determine whether [the Court] should leave the current schedule in place or whether [the Court] should enter some kind of a temporary stay to facilitate [additional venue-related discovery].” Id. at 26:11–16. Petitioner argues that this comment by the District Court should tip the Fintiv factor 1 in favor of institution. Reh. Req. 8–9. We disagree. Although the December 20th hearing may indicate the District Court’s willingness to consider whether “some kind of a temporary stay” should be entered to resolve the outstanding venue issues, it provides little, if any, actual evidence that the District Court would, in fact, enter a stay. Even if we were to guess that the District Court would enter a stay, we would still have to speculate further about the length of the “temporary” stay because, if it were for only a few days or weeks, it would still not avoid the concerns of inefficiency and duplicative efforts addressed by Fintiv factor 1. Regarding our alleged failure to apprehend or consider fully Petitioner’s proposed stipulation, we again do not agree. In the Decision, we specifically addressed Petitioner’s proposed stipulation and explained its shortcomings. Dec. 15–16. Although Petitioner clearly does not agree with our analysis, mere disagreement with our opinion is not a valid basis for reconsideration.” slip op. at 10
- Additional discoveryAdditional discovery, grantedAdditional discovery, deniedMixed
“Although Petitioner did bring the District Court’s Orders to our attention in a timely manner, we are not persuaded good cause has been shown to exist for us to consider these Orders. First, the Orders are all from cases that are separate and distinct from the parallel litigation involving the parties before us. Ex. 1040, 1; Ex. 1041, 1; Ex. 1042, 1; Ex. 1043, 1. Second, each Order is limited to cases that are “set for in-person jury trials during December of 2020 and January through February of 2021.” Id. That limitation further diminishes the value of the Orders in this proceeding because the jury trial in the parties’ parallel litigation was scheduled to begin on April 5, 2021 (Ex. 2003, 1). In fact, Petitioner acknowledges that the Orders have “not yet been applied in the underlying litigation.” See Reh. matter to be speculative at best. In the Rehearing Request, Petitioner argues that Exhibits 1040–1043 provide evidence that the parallel litigation may be stayed. Reh. Req. 7. However, in addition to the fact that the Orders in those exhibits do not relate to the parties’ or their parallel litigation, none of the Orders actually stays a case, which diminishes the relevance of the Orders to the first Fintiv factor even further. Petitioner argues additionally that these Orders along with other COVID-related facts demonstrate the uncertainty of the trial date in the parties’ parallel litigation. Nevertheless, Petitioner never argued prior to our Decision that the parallel litigation was uncertain because of COVIDrelated facts. See Pet. 70–71; Pet. Reply 1–5. In other words, Petitioner is not offering this new information to support an argument that was made before the Decision was entered. Petitioner instead offers Exhibits 1040– 1043 to support a new argument introduced for the first time in the Rehearing Request, which is improper and immaterial as to any alleged errors in the Decision. Therefore, we do not find Petitioner has carried its burden of showing good cause exists to justify consideration of those exhibits to evaluate whether we erred by “overlooking or misapprehending” anything in the Decision.” slip op. at 5
Discretionary denialPatents in suitUS 9,749,829 - SNF S.A. v. Solenis Technologies, L.P.Rehearing deniedPTAB · Nov 4, 2021 · IPR2020-01730 · APJ David Cotta · IPR · Rehearing
The Board denied rehearing and, despite finding a reasonable likelihood of obviousness for claims 12 and 13, denied institution because most challenged claims did not meet the threshold and review would be inefficient.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be found 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. 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. 37 C.F.R. § 42.71(d).” slip op. at 2
- Obviousness (§103) › KSR rationalesNot reached
“Petitioner offers to waive its arguments with respect to invalidity grounds 2 and 3 if we institute inter partes review. Id. This offer makes our exercise of discretion a closer call, but even absent grounds 2 and 3, granting institution would require that we institute on all claims. We have determined that, for a sizeable majority of challenged claims, Petitioner has not demonstrated a reasonable likelihood of prevailing. Under the circumstances presented here, we determine it would not be an efficient use of the Board’s time and resources to institute review. See Chevron, Paper 9 at 10–11; Deeper, Paper 7. Accordingly, we exercise discretion under 35 U.S.C. § 324(a) to decline to institute post-grant review.” slip op. at 11
- Other 314aInstitution denied discretionary otherInstitution denied
“reasons discussed herein and in the Decision, Petitioner has failed to demonstrate a reasonable likelihood that it will prevail with respect to challenged claims 1–11 and 14–21. However, based on the preliminary record, Petitioner has demonstrated a reasonable likelihood that claims 12 and 13 would have been obvious over the cited art. Accordingly, this case presents the question whether we should exercise our discretion to deny institution. Our decision as to whether discretionary denial is warranted is guided by Chevron Oronite Co. v. Infineum USA L.P., IPR2018-00923, Paper 9 (PTAB Nov. 7, 2018) (informative) and Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 (PTAB Jan. 24, 2019) (informative). Both of these cases explain that “the Board may consider the number of claims and grounds that meet the reasonable likelihood standard when deciding whether to institute inter partes review under 35 U.S.C. § 314(a).” Chevron, Paper 9 at 10–11; Deeper, Paper 7 at 42. In Chevron, the panel ultimately exercised discretion to deny institution where “Petitioner demonstrate[d], at most, a reasonable likelihood of prevailing with respect to two dependent claims out of a total of twenty challenged claims.” Chevron, Paper 9 at 12. Similarly, in Deeper, the panel exercised discretion to deny institution where Petitioner demonstrated a reasonable likelihood of prevailing with respect to only two out of twenty three challenged claims. Deeper, Paper 7 at 43.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Mixed
“art – selecting values within the ranges disclosed in the prior art to calculate a ratio – did not support institution because Petitioner never explained how or why it selected any of the specific values it used to calculate the claimed ratio. Dec. 13. We concluded that Petitioner’s second use of the ranges disclosed in the art – optimizing within the disclosed ranges – did not support institution because the prior art did not disclose that the ratio of WAMW to % DADMAC was a result effective variable (id. at 17) and because Petitioner had not shown that independently optimizing WAMW and % DADMAC would lead to copolymer having the claimed ratio (id. at 17–20).” slip op. at 4
§ 103 obviousnessDiscretionary denialPatents in suitUS 9,644,320 - Energysource Minerals, LLC v. Terralithium LLCRehearing deniedPTAB · Aug 26, 2021 · IPR2019-01603 · APJ Hubert C Lorin · IPR · Rehearing
The Board denied EnergySource’s rehearing request, finding no overlooked or misapprehended arguments or evidence that warranted changing the final written decision on claims 1–18.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A request for rehearing must identify specifically all matters that the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 3
- BurdenNot shown unpatentable
“In that regard, Petitioner contends that Christopher’s “aging process resulted in a reduction in ‘at least one elemental component’ (i.e., silica).” Pet. Reply 5–6 (emphasis added). However, this is not buttressed with any evidence. Petitioner has not presented any evidence showing Christopher’s “aging” process reduces “the concentration of at least one … elemental component” to support its contention that Christopher’s brine of Table 1 is a “treated” brine as claimed. Accordingly, on this record, Petitioner has not shown that the “treated” brine of the claims reads on Christopher’s “aged” brine by a preponderance of the evidence.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable
“The Petition discusses Grounds I and II on pages 27–30 of the Petition. Ground I challenges the patentability of claims 1–20 as anticipated by Christopher and Ground II challenges the patentability of claims 1–20 as anticipated and/or obvious over Christopher. Reading pages 27–30 it is plainly evident that it is focused on making the case that Christopher discloses all that is claimed. It is devoid of any reasoning with respect to the obviousness of the claims over Christopher. The Graham factors are not addressed. See Graham v. John Deere Co., 383 U.S. 1 (1966). The differences between the claimed invention and Christopher are not identified and no rationale as to why one of ordinary skill would have been led to modify Christopher to reach the claimed subject matter is provided. Rather, the entire discussion goes to explaining why, in fact, Christopher discloses all that is claimed. The Board was consistent with that position. Petitioner cites page 12–14 of the Reply as evidence that an obviousness challenge was presented. We disagree. The Reply does not add anything significant to the obviousness challenge presented in the Petition. The Reply is likewise devoid of any reasoning with respect to the obviousness of the claims over Christopher. It repeats that “Christopher teaches using air oxidation and pH modification to selectively precipitate silica, iron, and other heavy metals from a Salton Sea geothermal brine” (Reply 13, emphasis added), where “a POSITA could readily ‘tune’ these parameters to produce the desired results if such were not obtained immediately.” Id. The Board addressed that argument. See Dec. 17.” slip op. at 14
- Expert testimonyOther
“Petitioner cites footnote 3 [sic. 1] in the Petition but it merely states “mg/kg=(g/L*1000)/1.18kg/L due to the density of Salton Sea geothermal brines.” There is no evidence cited to support it. Petitioner cites “Reply, 3; Ex. 2025, 337:5-9” and “337:5-13” (Req. 6) but the Reply does not cite to those lines in Dr. Gallup’s Declaration. See Pet. Reply 3 (“Ex. 2025, 336:3-5-337:2”). We were unable to locate these lines of testimony in the Reply. The Board could not have misapprehended or overlooked evidence demonstrating Petitioner’s 1.18 kg/L density that was not before it.” slip op. at 11
§ 103 obviousnesscites GrahamPatents in suitUS 9,644,126 - Energysource Minerals, LLC v. Terralithium LLCRehearing deniedPTAB · Aug 26, 2021 · IPR2019-01602 · APJ Hubert C Lorin · IPR · Rehearing
The Board denied EnergySource Minerals’ rehearing request, leaving undisturbed the final written decision that claims 1–18 were not shown unpatentable on any asserted ground.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A request for rehearing must identify specifically all matters that the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 3
- Expert testimonyPatent owner expert creditedDecided for patent owner
“to ppm by weight” (Req. 8) was not before us, therefore, we could not have overlooked it. Nevertheless, even if we take account of this new argument, the discussion on page 4 of the Reply does not support Petitioner’s position that one ordinary skill in the art reading Christopher would have no other choice but to understand “1.0” “PPM” (Ex. 1006, 42) to mean parts–per– weight. This is so because Petitioner concedes that “ppm can generally be reported as either by weight or by volume.” Req. 8. This is consistent with Dr. Gallup’s testimony. See Dec. 18: According to Patent Owner, “Dr. Gallup explained [that] ppm may be reported as ppm by weight or ppm by volume. (Ex. 2025, 119:16-25; Ex. 2002, ¶64).” Id. [PO Resp. 20] Because we are directed to no evidence contradicting it, we credit Dr. Gallup’s testimony that ppm can be reported by weight or by volume. Given this, one of ordinary skill in the art reading that iron is at a concentration of “1.0 ppm” for stream 3 in Figure 20 may understand it to refer to ppm by volume. Notwithstanding the discussion on page 4 of the Reply that the “general convention” for ppm is that it is weight based, the evidence before us showed, as Petitioner concedes, that ppm can “generally be reported” (Req. 8) by weight or volume. Thus, as we determined, it is possible that one of ordinary skill in the art may understand “ppm” in Figure 20 to “refer to ppm by volume” (Dec. 18).” slip op. at 12
- Strike new argumentNew argument disregardedOther
“Regarding Petitioner’s assertion that “[d]uring these proceedings, Petitioner has submitted that when Christopher reduces silica, it necessarily also reduces the elemental components of silicon (Si) and oxygen (O2)” (Req. Sur–Reply 1), this is not a position that Petitioner had previously taken. Rather, Petitioner’s position was only that “Christopher states the silica concentration is reduced.” Pet. 23; cf. Pet. Reply 8–9. A rehearing request is not an opportunity to raise new arguments. We could not have overlooked or misapprehended an argument not raised prior to our decision.” slip op. at 6
- BurdenNot shown unpatentable
“brine (Pet. 22; Dec. 7), Petitioner had to show that “the brine of Table 1 must ‘have been processed such that the concentration of at least one metal or elemental component has been reduced in the brine.’ Ex. 1001, 7:18–21.” Dec. 9 (emphasis added). As noted in our Decision: In that regard, Petitioner contends that Christopher’s “aging process resulted in a reduction in ‘at least one elemental component’ (i.e., silica).” Pet. Reply 6 (emphasis added). However, this is not buttressed with any evidence. Petitioner has not presented any evidence showing Christopher’s “aging” process reduces “the concentration of at least one … elemental component” to support its contention that Christopher’s brine of Table 1 is a “treated” brine as claimed. Accordingly, on this record, Petitioner has not shown that the “treated” brine of the claims reads on Christopher’s “aged” brine by a preponderance of the evidence.” slip op. at 5
NonePatents in suitUS 9,650,555 - PTAB · Mar 22, 2021 · IPR2020-00336 · APJ Stacey G White · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution in place for claims 10, 12, 13, 16, and 17 because no construction error or abuse of discretion was shown.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“IV. CONCLUSION On this record, Patent Owner neither persuades us that we overlooked or misapprehended any matter, nor sufficiently shows that instituting an inter partes review of claims 10, 12, 13, 16, and 17 of the ’725 patent was an abuse of discretion. V. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Request for Rehearing is denied.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We maintain, at this stage of the proceeding, that the construction of conversational flow should not include “(for instance, the running of an application on a server as requested by a client), where some conversational flows involve more than one connection, and some even involve more than one exchange of packets between a client and a server.” As we explained in the Institution Decision, phrases beginning with “for instance,” “where some,” and “some” are “merely exemplary and non-limiting.” Inst. Dec. 31. Patent Owner does not persuade us, on this record, that omission of these phrases from our definition of “conversational flow” is, as a matter of claim construction, erroneous. See Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 811 (Fed. Cir. 2002) (holding that exemplary language “introduces an example of a broader genus rather than limiting the genus to the exemplary species”).” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“proceeding, that our construction of “conversational flow” is the result of a misunderstanding or misapprehension of the claimed invention or the prior art. IV. CONCLUSION On this record, Patent Owner neither persuades us that we overlooked or misapprehended any matter, nor sufficiently shows that instituting an inter partes review of claims 10, 12, 13, 16, and 17 of the ’725 patent was an abuse of discretion.” slip op. at 6
Claim constructionPatents in suitUS 6,665,725 - Mercedes-Benz USA, LLC v. Carucel Investments, L.P.Rehearing deniedPTAB · Mar 3, 2021 · IPR2019-01404 · APJ Daniel J Galligan · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1, 4–11, and 14–23 unpatentable based on its construction of “mobile device” and findings on combining CDMA and TDMA.
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, or a reply. A rehearing request is not an opportunity for the requesting party to reargue its case or merely to express disagreement with the Final Written Decision. Nor is it an opportunity for the moving party to present new arguments that were not in its original submissions.” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We disagree that we misapprehended or overlooked any matters in addressing Patent Owner’s proposed construction for “mobile device.” Rather, we provided a comprehensive analysis of the term “mobile device.” anything that was overlooked or misapprehended in this analysis, as required by 37 C.F.R. § 42.71(d). Instead, Patent Owner merely expresses its disagreement with our conclusions and proceeds to reargue points and evidence already considered and rejected in the Final Written Decision. This approach is not proper in a rehearing request. Furthermore, Patent Owner’s own arguments show the error in its proposed construction. For example, Patent Owner argues that the recited “mobile device” “must register with and be able to directly communicate with the cellular network.” PO Resp. 13; Req. Reh’g 1 n.1. Yet, Patent Owner acknowledges that “the claims of the ’023 Patent require the apparatus/movable base station to communicate directly with the cellular network (and not the ‘mobile device’).” Req. Reh’g 3 (emphasis added). As we pointed out in the Final Decision, the only claimed communication involving the mobile device is between the claimed “apparatus” (the mobile base station) and the mobile device, and Patent Owner acknowledges that this communication need not be cellular. Final Dec. 14 (citing PO Sur-reply 9). Thus, Patent Owner’s arguments undermine its proposed construction.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundOther
“[t]he Board erred in finding that that ‘CDMA and TDMA are not incompatible’ by improperly disregarding substantial evidence set forth by Patent Owner and its expert—that undermines any expectation of success and would have discouraged a [person of ordinary skill in the art] from attempting Petitioner’s combinations.” Req. Reh’g 14 (citing Final Dec. 79). Patent Owner does not attempt to identify any specific errors in citing pages from Patent Owner’s written submissions and testimony from its declarant. Req. Reh’g 14 n.31. We disagree that we misapprehended or overlooked any matters in this regard. Rather, we considered Patent Owner’s submissions and disagreed with them, finding instead that the record demonstrated that CDMA and TDMA can be combined, and we relied on, among other evidence, a prior art reference that expressly discloses a combination of CDMA and TDMA. Final Dec. 56–57 (citing Ex. 1033), 79. We further found that a person of ordinary skill in the art would have had reason to make the proposed combinations and would have had a reasonable expectation of success in doing so. Final Dec. 57–58, 79–81. slip op. at 6
Claim construction§ 103 obviousnessPatents in suitUS 7,979,023
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.