- Apple Inc. v. Saint Lawrence Communications, LLCRehearing deniedPTAB · Dec 26, 2017 · IPR2017-01244 · APJ Daniel N Fishman · IPR · Rehearing
The Board denied Apple’s rehearing request, leaving in place the denial of institution because Petitioner did not show a reasonable likelihood of proving claims 1–21 and 29–42 unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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,” and, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the record. 37 C.F.R. § 42.71(d). A request for rehearing is not an opportunity to present new arguments. See id. An abuse of discretion may arise 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. 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).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We discern no teaching or suggestion in this text of Salami that the preemphasized signal is used on a perceptual weighting filter. We find no support in the cited portions of Salami for Petitioner’s assertion that the preemphasized signal is first applied to LP analysis and then the same preemphasized signal is perceptually weighted (i.e., applied to a perceptually weighted filter). Petitioner’s argument in the Petition does not explain specifically how the cited text teaches the identified claim limitations and, thus, amounts to little more than an unsupported conclusory remark. Dr. Cohen merely repeats the same argument without providing any further explanation.” slip op. at 4
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We discern no teaching or suggestion in this text of Salami that the preemphasized signal is used on a perceptual weighting filter. We find no support in the cited portions of Salami for Petitioner’s assertion that the preemphasized signal is first applied to LP analysis and then the same preemphasized signal is perceptually weighted (i.e., applied to a perceptually weighted filter). Petitioner’s argument in the Petition does not explain specifically how the cited text teaches the identified claim limitations and, thus, amounts to little more than an unsupported conclusory remark. Dr. Cohen merely repeats the same argument without providing any further explanation.” slip op. at 4
NonePatents in suitUS 6,807,524 - Semiconductor Components Industries, LLC (D/B/A On Semiconductor) v. Power Integrations, Inc.Rehearing deniedPTAB · Dec 21, 2017 · IPR2016-00995 · APJ Daniel N Fishman · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 26 and 27 unpatentable as anticipated by MC33362.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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,” and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the record. 37 C.F.R. § 42.71(d). A request for rehearing is not an opportunity to present new arguments. See id. An abuse of discretion may arise 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).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for petitioner
“arguments. Our claim construction made clear in interpreting “multi-function circuit” that we agree with Patent Owner that the circuit is separate and distinct from the recited “control circuit” in the sense that the claim recites two distinct elements. Dec. 18. However, our interpretation further determined that although we agree “that the multi-function circuit and the control circuit are separate and distinct components in the claims, the claim language does not require that the functions performed by the two distinct circuits must be similarly separate and distinct.” Id. at 22. We further observed that, contrary to Patent Owner’s assertions, the Specification of the ’908 patent mentions certain functions of the multi-function circuit that are clearly tightly coupled to the “core regulation” function of the recited “control circuit.” Id. at 24–25 (e.g., shutting down the power supply in response to detecting over-voltage or under-voltage conditions). Thus, our Decision is consistent with our interpretation of “multi-function circuit” and expressly disagrees with Patent Owner’s arguments that the functions of the two circuits must also be separate and distinct.” slip op. at 3
Claim constructionPatents in suitUS 6,538,908 - Hengdian Group Dmegc Magnetics Co., Ltd. / Zhejiang Innuovo Magnetics Co., Ltd. et al. v. Hitachi Metals, Ltd.Rehearing deniedPTAB · Dec 21, 2017 · IPR2017-01313 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied Petitioner’s rehearing request and left in place its § 325(d) denial of institution for claims 1–8 because materially the same prior art had been considered by the Office.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A request for rehearing must identify specifically all matters the party believes we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d). Additionally, Petitioner, as the party challenging the Decision, has the burden of showing it should be modified. Id. When rehearing a decision on a petition, the Board will review the decision 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.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000)).” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“As an initial matter, we note that Petitioner states that, for purposes of its Request, it “do[es] not argue Uchida and Uchida II are not materially the same.” Req. Reh’g 3. Because we have discretion to reject a petition if “the same or substantially the same prior art or arguments previously were presented to the Office,” see 35 U.S.C. § 325(d) (emphasis added), Petitioner has not established that we abused our discretion in denying the Petition. Given that Uchida (asserted here) and Uchida II (previously presented to the Office) are “materially the same,” substantially the same prior art was previously before the Office. Indeed, the presence of Uchida in the Petition and the materially-identical Uchida II in the prosecution history alone is a sufficient basis to exercise our discretion under Section 325(d).” slip op. at 3
Discretionary denialPatents in suitUS 6,527,874 - Roquette Freres, S.A. v. Tate & Lyle Ingredients Americas LLCRehearing deniedPTAB · Dec 19, 2017 · IPR2017-01506 · APJ Grace Karaffa Obermann · IPR · Rehearing
The Board denied rehearing, leaving claim 4 in the instituted trial because it had not overlooked the digestibility limitation or the concurrent decision.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We did not overlook the digestibility limitation in claim 4. Nor did we overlook the decision that we entered concurrently in IPR1507. On the contrary, having determined that Petitioner met the threshold for review of claim 1 of the ’436 patent (Dec. 10), we ordered (as permitted by our authorizing statute) “that trial shall proceed on all other claims challenged as anticipated” or obvious over Shah (Ex. 1008). Id. at 10 (citing 35 U.S.C. § 314(a)), 11 (for obviousness grounds based on Shah). We specifically included those other claims in the trial “without reaching any preliminary findings or conclusions on the merits.” Id. at 10. We pointed out that doing so serves our mission of securing the just, speedy, and efficient resolution of the parties’ dispute. Id. (citing 37 C.F.R. §§ 42.1(b), 42. 108). That action was not inconsistent with any finding in the decision declining to institute trial in IPR1507. Nor does it establish that we overlooked or misapprehended any matter in the Decision entered in this proceeding.” slip op. at 2
NonePatents in suitUS 7,608,436 - Smith & Nephew, Inc. / Arthrocare Corp. v. Arthrex, Inc.Rehearing deniedPTAB · Dec 15, 2017 · IPR2016-00918 · APJ Barry L Grossman · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 10 and 11 unpatentable as obvious because the cited commercial-success evidence had little probative weight.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“(d) Rehearing. . . . 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.” slip op. at 2
- Obviousness (§103) › Objective indicia / secondary considerations › Commercial successObjective indicia no nexusNot shown unpatentable
“Moreover, even if we were now to consider Exhibit 2013 and Professor Gall’s Declaration testimony about Ex. 2013, at best this evidence would merely create a presumption of nexus. Req. Reh’g. 6 (“a nexus should be presumed”). Establishing a presumption of nexus, however, does not establish commercial success or patentability. In re Kao, 639 F.3d at 1067 (when secondary considerations are present, “they are not always dispositive”); see also Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir. 2007) (“Although secondary considerations must be taken into account, they do not necessarily control the obviousness conclusion.”). As discussed above, the evidence of commercial success based on the sales data presented in the declaration testimony of Mr. Holter (Ex. 2029) and Mr. Vellturo (Ex. 2025) is entitled to little probative weight. Even if we were to attempt to balance this commercial success evidence against the substantial prior art evidence that claims 10 and 11 would have been obvious, as discussed in our Final Written Decision, it would not change our conclusion that a preponderance of the evidence establishes that claims 10 and 11 would have been obvious. See Fin. Dec. 68, 75. We disagree with Patent Owner’s argument “that the evidence of record regarding commercial success sufficiently rebuts any showing of obviousness of claims 10 and 11.” Req. Reh’g. 6.” slip op. at 9
§ 103 obviousnessPatents in suitUS 8,821,541 - PTAB · Dec 12, 2017 · IPR2017-01253 · APJ Jeremy M Plenzler · IPR · Rehearing
The Board denied the rehearing requests, leaving in place the denials of institution because the petitions did not sufficiently support the challenges based on Aboul-Hosn.
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. 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). We further note that 37 C.F.R. § 42.71(d) states: 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.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“assessment of all evidence in the record to determine whether the challenged claims would have been obvious. Rather, the Decision to deny institution of inter partes review was based on Petitioner’s failure to establish a reasonable likelihood of success at trial based on the arguments presented in the Petition, and the evidence relied upon in support of those particular arguments. Petitioner has the burden of showing, in its petition, a reasonable likelihood that it would prevail. 35 U.S.C. § 314(a). That reasonable likelihood is measured by considering the analysis offered by Petitioner. 37 C.F.R. § 42.104(b) (setting forth the requirements of a petition, including specificity and identification of support).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“supporting evidence presented in the Petition and determined it insufficient to institute trial. See, e.g., Dec. 10 (“Ultimately, the ’1026 and ’1027 Petitions are deficient because of the failure to explain sufficiently and support the challenges therein.”). We are not persuaded that we abused our discretion in reaching that determination.9 Disagreeing with our Decision is not, by itself, an appropriate basis for rehearing. 8 Even if Aboul-Hosn’s statement was intended only to contrast Figure 23 with Figure 24, the Petition remains deficient for failing to establish sufficiently that Figure 23 is part of the Figure 1–13 embodiment or provide a sufficient rationale to modify the embodiments disclosed in Aboul-Hosn. See Dec. 9–10. 9 Petitioner includes additional argument in its Request directed to rationale for the combination of Aboul-Hosn’s teachings from Figures 1–13 with those from Figure 23. In the Petition, Petitioner did not propose sufficient rationale for combining the various teachings from Aboul-Hosn with one another. See Dec. 10.” slip op. at 5
§ 103 obviousnessPatents in suitUS 9,597,437 - PTAB · Dec 12, 2017 · IPR2017-01207 · APJ Jeremy M Plenzler · IPR · Rehearing
The Board denied Petitioner’s rehearing requests, finding no abuse of discretion in denying institution because the petitions insufficiently supported their challenges.
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. 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). We further note that 37 C.F.R. § 42.71(d) states: 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.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“assessment of all evidence in the record to determine whether the challenged claims would have been obvious. Rather, the Decision to deny institution of inter partes review was based on Petitioner’s failure to establish a reasonable likelihood of success at trial based on the arguments presented in the Petition, and the evidence relied upon in support of those particular arguments. Petitioner has the burden of showing, in its petition, a reasonable likelihood that it would prevail. 35 U.S.C. § 314(a). That reasonable likelihood is measured by considering the analysis offered by Petitioner. 37 C.F.R. § 42.104(b) (setting forth the requirements of a petition, including specificity and identification of support).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“There is no express disclosure from Aboul-Hosn identified by Petitioner, in the Petition, or even in its Request, that the pump in Figures 1– 13 is included in Figure 23. In fact, and as noted in our Decision (Dec. 9), Aboul-Hosn expressly states that “Figure[] 23 . . . illustrate[s a] different embodiment[] of the present invention” (Ex. 1004, 30:20–21). Petitioner faults our characterization of the above passage from Aboul-Hosn, noting “[t]he ellipses, missing language and brackets are materially important.” Req. 12. Petitioner contends that “[t]he Board’s errant paraphrase gives the misimpression that Figure 23 is an entirely different invention than any other in Aboul-Hosn. But, in context, the meaning is different. Figure 23 is a different embodiment than Figure 24.” Id. The entire sentence spanning lines 20–21 on page 30 of Aboul-Hosn reads: “Figures 23 and 24 illustrate two different embodiments of the present invention.” Ex. 1004, 30:20–21. We are not persuaded that we misread that sentence. That sentence specifically references Figures 23 and 24 as two different embodiments, meaning that Figures 23 and 24 are each different embodiments, not only with respect to one another, but also with respect to the other embodiments disclosed.8” slip op. at 4
§ 103 obviousnessPatents in suitUS 9,597,437 - PTAB · Dec 12, 2017 · IPR2017-01029 · APJ Jeremy M Plenzler · IPR · Rehearing
The Board denied Petitioner’s rehearing requests, leaving in place the denials of institution because the petitions did not sufficiently support their obviousness challenges.
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. 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). We further note that 37 C.F.R. § 42.71(d) states: 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.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“assessment of all evidence in the record to determine whether the challenged claims would have been obvious. Rather, the Decision to deny institution of inter partes review was based on Petitioner’s failure to establish a reasonable likelihood of success at trial based on the arguments presented in the Petition, and the evidence relied upon in support of those particular arguments. Petitioner has the burden of showing, in its petition, a reasonable likelihood that it would prevail. 35 U.S.C. § 314(a). That reasonable likelihood is measured by considering the analysis offered by Petitioner. 37 C.F.R. § 42.104(b) (setting forth the requirements of a petition, including specificity and identification of support).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“There is no express disclosure from Aboul-Hosn identified by Petitioner, in the Petition, or even in its Request, that the pump in Figures 1– 13 is included in Figure 23. In fact, and as noted in our Decision (Dec. 9), Aboul-Hosn expressly states that “Figure[] 23 . . . illustrate[s a] different embodiment[] of the present invention” (Ex. 1004, 30:20–21). Petitioner faults our characterization of the above passage from Aboul-Hosn, noting “[t]he ellipses, missing language and brackets are materially important.” Req. 12. Petitioner contends that “[t]he Board’s errant paraphrase gives the misimpression that Figure 23 is an entirely different invention than any other” slip op. at 4
§ 103 obviousnessPatents in suitUS 9,327,068 - PTAB · Dec 12, 2017 · IPR2017-01027 · APJ Jeremy M Plenzler · IPR · Rehearing
The Board denied Petitioner's rehearing requests, leaving in place the denial of institution because the petitions did not sufficiently support the asserted challenges.
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. 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). We further note that 37 C.F.R. § 42.71(d) states: 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.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“assessment of all evidence in the record to determine whether the challenged claims would have been obvious. Rather, the Decision to deny institution of inter partes review was based on Petitioner’s failure to establish a reasonable likelihood of success at trial based on the arguments presented in the Petition, and the evidence relied upon in support of those particular arguments. Petitioner has the burden of showing, in its petition, a reasonable likelihood that it would prevail. 35 U.S.C. § 314(a). That reasonable likelihood is measured by considering the analysis offered by Petitioner. 37 C.F.R. § 42.104(b) (setting forth the requirements of a petition, including specificity and identification of support).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“supporting evidence presented in the Petition and determined it insufficient to institute trial. See, e.g., Dec. 10 (“Ultimately, the ’1026 and ’1027 Petitions are deficient because of the failure to explain sufficiently and support the challenges therein.”). We are not persuaded that we abused our discretion in reaching that determination.9 Disagreeing with our Decision is not, by itself, an appropriate basis for rehearing. 8 Even if Aboul-Hosn’s statement was intended only to contrast Figure 23 with Figure 24, the Petition remains deficient for failing to establish sufficiently that Figure 23 is part of the Figure 1–13 embodiment or provide a sufficient rationale to modify the embodiments disclosed in Aboul-Hosn. See Dec. 9–10. 9 Petitioner includes additional argument in its Request directed to rationale for the combination of Aboul-Hosn’s teachings from Figures 1–13 with those from Figure 23. In the Petition, Petitioner did not propose sufficient rationale for combining the various teachings from Aboul-Hosn with one another. See Dec. 10.” slip op. at 5
§ 103 obviousnessPatents in suitUS 8,888,728 - PTAB · Dec 12, 2017 · IPR2017-01028 · APJ Jeremy M Plenzler · IPR · Rehearing
The Board denied rehearing, leaving in place the denial of institution because Petitioner did not show a reasonable likelihood of success on its asserted challenges.
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. 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). We further note that 37 C.F.R. § 42.71(d) states: 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.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“assessment of all evidence in the record to determine whether the challenged claims would have been obvious. Rather, the Decision to deny institution of inter partes review was based on Petitioner’s failure to establish a reasonable likelihood of success at trial based on the arguments presented in the Petition, and the evidence relied upon in support of those particular arguments. Petitioner has the burden of showing, in its petition, a reasonable likelihood that it would prevail. 35 U.S.C. § 314(a). That reasonable likelihood is measured by considering the analysis offered by Petitioner. 37 C.F.R. § 42.104(b) (setting forth the requirements of a petition, including specificity and identification of support).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“There is no express disclosure from Aboul-Hosn identified by Petitioner, in the Petition, or even in its Request, that the pump in Figures 1– 13 is included in Figure 23. In fact, and as noted in our Decision (Dec. 9), Aboul-Hosn expressly states that “Figure[] 23 . . . illustrate[s a] different embodiment[] of the present invention” (Ex. 1004, 30:20–21). Petitioner faults our characterization of the above passage from Aboul-Hosn, noting “[t]he ellipses, missing language and brackets are materially important.” Req. 12. Petitioner contends that “[t]he Board’s errant paraphrase gives the misimpression that Figure 23 is an entirely different invention than any other in Aboul-Hosn. But, in context, the meaning is different. Figure 23 is a different embodiment than Figure 24.” Id. The entire sentence spanning lines 20–21 on page 30 of Aboul-Hosn reads: “Figures 23 and 24 illustrate two different embodiments of the present invention.” Ex. 1004, 30:20–21. We are not persuaded that we misread that sentence. That sentence specifically references Figures 23 and 24 as two different embodiments, meaning that Figures 23 and 24 are each different embodiments, not only with respect to one another, but also with respect to the other embodiments disclosed.8” slip op. at 4
§ 103 obviousnessPatents in suitUS 9,327,068
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.