- PTAB · Dec 21, 2020 · IPR2020-00337 · APJ Charles J Boudreau · IPR · Rehearing
Denied Patent Owner’s request to reverse institution of review of claims 1–3, 7, 16, and 18; Patent Owner did not show an erroneous construction or abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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. 29. 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
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“We nevertheless preliminarily construed “conversational flow” as a “sequence of packets that are exchanged in any direction as a result of an activity.” Inst. Dec. 29. We explained that we saw no “reason to include the additional phrases of the prior Board and district court constructions”— namely, the phrases “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.” Id. (emphases added). 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. 29. 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 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 1–3, 7, 16, and 18 of the ’646 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 constructionPatents in suitUS 6,771,646 - Renesas Electronics Corporation v. Broadcom CorporationAll claims unpatentablePTAB · Nov 12, 2020 · IPR2019-01040 · APJ Norman H Beamer · IPR · Final written decision
Claims 1 and 9–14 are unpatentable as obvious; the motion to amend is denied for substitute claim 15 and granted for substitute claims 16–19.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we instituted an inter partes review of claims 1 and 9–14. Paper 9 (“Institution Dec.”). In the Institution Decision, we determined that Petitioner demonstrated a reasonable likelihood that it would prevail as to the challenged claims, and we instituted trial on all challenged claims and all grounds in the Petition. Institution Dec. 35.” slip op. at 2
- Skill levelOther
“B. Level of Ordinary Skill in the Art Petitioner contends that “a person of ordinary skill in the art” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“Accordingly, we construe “configurable” in this context to mean” slip op. at 20
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Accordingly, based on our review of the record and the parties’ submissions, we determine that the record establishes that each of Video Processor 280, H.221/BCH decoder 240, and Huffman decoder 260 disclosed in Fandrianto ’459 are hardware accelerators as claimed, and that Fandrianto ’459 would have taught the second limitation of claim 1. d) Claim 1 Summary In sum, based on our review of the record and the parties’ submissions, we determine that the record establishes that RISC microprocessor 220 disclosed in Fandrianto ’459 is a “processor,” as required by claim 1, and each of Video Processor 280, H.221/BCH decoder 240, and Huffman decoder 260 disclosed in Fandrianto ’459 are hardware accelerators as required by that claim. Accordingly, we determine that Petitioner has proved by a preponderance of the evidence that claim 1 of the ’844 patent would have been obvious in light of Fandrianto ’459.” slip op. at 33
Patent outcomesUS 8,284,844 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · Graham · NautilusPatents in suitUS 8,284,844 - Polygroup Limited Mco v. Willis Electric Co., Ltd.Some claims unpatentablePTAB · Oct 8, 2020 · IPR2016-01612 · APJ Jeremy M Plenzler · IPR · Remand
On remand, claims 1, 3, 4, 6, 8, and 9 of the ’186 patent were held unpatentable; other remanded challenged claims were not, and substitute claims 29 and 30 were allowed.
RulingsRemand decision- RemandOther
“On appeal, the U.S. Court of Appeals for the Federal Circuit vacated our Original Decision in part and remanded the cases for further proceedings. Polygroup Ltd. MCO v. Willis Elec. Co., Ltd, 759 F. App’x 934 (Fed. Cir. 2019). After conferring with the parties, we permitted additional briefing to address the issues on remand from the Federal Circuit. Paper 196.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“electrical connection in a single step (e.g., “‘when’ the mechanical connection is made, an electrical connection is also made”) as Patent Owner alleges. Rather, claim 1 requires “a first trunk electrical connector” and “a second trunk electrical connector” with “the second tree portion [being] electrically connectable to the first tree portion such that a portion of the first trunk electrical connector of the first trunk portion contacts a portion of the second trunk electrical connector of the second trunk portion.” Although the claim also requires that “the second tree portion is mechanically coupleable to the first tree portion about a central vertical axis,” the claim permits that mechanical connection to be independent of the electrical connection. Giving claim 1 its proper reading, there is no dispute that Miller teaches first and second trunk electrical connectors or that its tree portions are coupleable about a central vertical axis as outlined in the Petition. See Pet. I 45–48.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Petitioner contends that one skilled in the art would have modified Miller’s teachings based on those from Lessner. Pet. II 65–70. Petitioner reasons, for example, that “[i]t would have been obvious . . . to enhance the mechanical and electrical connections between the electrical contacts sets and wiring assemblies of Miller[] with the detachable electrical connectors of Lessner” for “ease and speed of assembly and disassembly.” Id. at 65–66 (citing Ex. 1006 ¶¶ 261–67). Petitioner further reasons that “the detachable connectors of Lessner provide a quick-connect engagement allowing the builder to easily and quickly attach the wires to the terminals on the trunk connector during assembly,” which “also allows for easy separation of the wires from the trunk connectors, as needed for repair or replacement of parts.” Id. at 66. Petitioner’s contentions as to why one skilled in the art would have modified Miller’s teachings are unpersuasive. As discussed above, Petitioner cited Miller’s plug and socket connectors as corresponding to the recited trunk connectors. Petitioner’s proposed modification in the Miller alone challenge adds an additional connection point in Miller’s plug and socket connectors, further complicating assembly, rather than providing greater “ease and speed of assembly and disassembly” as alleged. Petitioner’s additional reasoning that the proposed modification “also allows for easy separation of the wires from the trunk connectors, as needed for repair or replacement of parts” is equally unpersuasive. The only difference resulting from the modification is that the plug and socket connectors could be removed from their respective wiring assemblies. That is, it provides for removal of one connector by providing yet another connector, which fails to provide a benefit because Miller’s plug and socket connectors are loose, rather than fixed within the trunk portions like Patent Owner’s connectors. For at least these reasons, Petitioner has failed to establish unpatentability of claim 7 of the ’186 patent by a preponderance of the evidence.” slip op. at 19
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia outweighedDecided for petitioner
“D. Secondary Considerations As explained in the Original Decision, Patent Owner provides evidence related to non-obviousness of the claims. Original Decision 43–60. Considering that evidence, as explained in the Original Decision, relative to the fact that Miller alone teaches each element of these claims in a single embodiment16, we determine that Patent Owner’s evidence does not outweigh Petitioner’s case of obviousness for claims 1, 3, 4, 6, 8, and 9. For the reasons set forth above, Petitioner has established by the preponderance of the evidence that claims 1, 3, 4, 6, 8, and 9 are unpatentable. Petitioner has failed to establish by the preponderance of the evidence that claim 7 is unpatentable.” slip op. at 21
Patent outcomesUS 8,454,187 mixedClaim construction§ 103 obviousnessPatents in suitUS 8,454,187 - Polygroup Limited Mco v. Willis Electric Co., Ltd.Some claims unpatentablePTAB · Oct 8, 2020 · IPR2016-01610 · APJ Jeremy M Plenzler · IPR · Remand
On remand, claims 1, 3, 4, 6, 8, and 9 of the ’186 patent were held unpatentable; other remanded challenged claims were not shown unpatentable, and substitute claims 29 and 30 were allowed.
RulingsRemand decision- RemandMixed
“On appeal, the U.S. Court of Appeals for the Federal Circuit vacated our Original Decision in part and remanded the cases for further proceedings. Polygroup Ltd. MCO v. Willis Elec. Co., Ltd, 759 F. App’x 934 (Fed. Cir. 2019). After conferring with the parties, we permitted additional briefing to address the issues on remand from the Federal Circuit. Paper 196.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“and the second wire are detachably connected to the first trunk electrical connector of the first trunk portion.” Petitioner acknowledges that “Miller does not expressly teach that the wiring assembly is ‘modular’ or ‘separably connected.’” Pet. II 65. Petitioner contends that “assemblies for providing a detachable connection between electrical contact sets and wiring harnesses were well-known in the art.” Id. (citing Ex. 1006 ¶¶ 261–67). Petitioner contends that “Lessner teaches a ‘quick-disconnect electrical connector for receiving and releasably retaining a male tab connector’ and a [person of skill in the art (POSA)] would recognize that it may be used to create detachable connections between the electrical contacts of a connector or plug, and the wires of a wiring assembly.” Id. (citing Ex. 1008, 1:10–11; Ex. 1006 ¶¶ 261–67). Petitioner contends that one skilled in the art would have modified Miller’s teachings based on those from Lessner. Pet. II 65–70. Petitioner reasons, for example, that “[i]t would have been obvious . . . to enhance the mechanical and electrical connections between the electrical contacts sets and wiring assemblies of Miller[] with the detachable electrical connectors of Lessner” for “ease and speed of assembly and disassembly.” Id. at 65–66 (citing Ex. 1006 ¶¶ 261–67). Petitioner further reasons that “the detachable connectors of Lessner provide a quick-connect engagement allowing the builder to easily and quickly attach the wires to the terminals on the trunk connector during assembly,” which “also allows for easy separation of the wires from the trunk connectors, as needed for repair or replacement of parts.” Id. at 66. Petitioner’s contentions as to why one skilled in the art would have modified Miller’s teachings are unpersuasive. As discussed above, Petitioner cited Miller’s plug and socket connectors as corresponding to the recited trunk connectors. Petitioner’s proposed modification in the Miller alone challenge adds an additional connection point in Miller’s plug and socket connectors, further complicating assembly, rather than providing greater “ease and speed of assembly and disassembly” as alleged. Petitioner’s additional reasoning that the proposed modification “also allows for easy separation of the wires from the trunk connectors, as needed for repair or replacement of parts” is equally unpersuasive. The only difference resulting from the modification is that the plug and socket connectors could be removed from their respective wiring assemblies. That is, it provides for removal of one connector by providing yet another connector, which fails to provide a benefit because Miller’s plug and socket connectors are loose, rather than fixed within the trunk portions like Patent Owner’s connectors. For at least these reasons, Petitioner has failed to establish unpatentability of claim 7 of the ’186 patent by a preponderance of the evidence.” slip op. at 19
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia outweighedUnpatentable
“D. Secondary Considerations As explained in the Original Decision, Patent Owner provides evidence related to non-obviousness of the claims. Original Decision 43–60. Considering that evidence, as explained in the Original Decision, relative to the fact that Miller alone teaches each element of these claims in a single embodiment16, we determine that Patent Owner’s evidence does not outweigh Petitioner’s case of obviousness for claims 1, 3, 4, 6, 8, and 9. For the reasons set forth above, Petitioner has established by the preponderance of the evidence that claims 1, 3, 4, 6, 8, and 9 are unpatentable. Petitioner has failed to establish by the preponderance of the evidence that claim 7 is unpatentable.” slip op. at 21
- BurdenNot shown unpatentable
“The figure reproduced above is a portion of Miller’s Figure 2, which is a front, partial section view of its artificial tree, along with Petitioner’s annotations noting Miller’s electrical connections (circled in red). Pet. I 29. As seen above, Petitioner cites Miller’s plug and socket connection as the electrical connection recited in the claims. See Pet. I 33 (“Miller also teaches that wires 22 of trunks 3, 5 are electrically connectable via plug and socket connectors of Fig. 2.”), 42, 57–58 (presenting similar contentions for claims 20 and 28). The problem with Petitioner’s contentions that rely on Miller alone is that the electrical connection in Miller is independent of the mechanical connection of tree portions (i.e., the mechanical connection does not result in the electrical connection in the manner claimed). For at least this reason, Petitioner’s challenges to claims 10, 20, and 28 based on Miller alone fail.” slip op. at 23
Patent outcomesUS 8,454,186 mixed§ 103 obviousnessPatents in suitUS 8,454,186 - Eis GmbH v. Novoluto GmbHRehearing grantedPTAB · Sep 25, 2020 · IPR2020-00007 · APJ Susan L C Mitchell · IPR · Rehearing
Granted EIS GMBH’s rehearing request and instituted IPR of claims 1–3, 5, 7, 8, 11, 14, 15, 17–21, and 23–26 on all asserted grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“We find that Dr. Prisco’s testimony is a reasonable interpretation of how Taylor works if the bellows are bidirectional, and the bellows are expanded and contracted when the suction cup is sealingly engaged. Figure 3 of Taylor shown above appears to support Dr. Prisco’s testimony that the bellows may be expanded or contracted from the initial position shown in Figure 3 and does not appear to show any valve or second opening in the bellows to provide unidirectional flow as Dr. Jensen, Patent Owner’s declarant, asserts. Also, as Petitioner asserts, Taylor indicates that a squeeze ball may be substituted for the bellows expressly indicating a device with a bidirectional flow. Although Patent Owner raises valid arguments concerning a common definition of bellows indicating unidirectional flow and provides testimony from Dr. Jensen reasonably supporting such a position, these dueling positions create a genuine issue of material fact that we weigh in favor of Petitioner on institution. See 37 C.F.R. 42.108(c).” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We conclude from a review of Fang and Taylor that they are not substantially the same art nor is Petitioner making substantially the same argument as was presented the Office during prosecution of the ’061 Patent based on Fang. We find that the way in which Fang and Taylor work appear to be materially different. Fang appears to apply only suction to the skin whereas Taylor, with the sealingly connected suction cup, appears to apply a cyclical vacuum that Dr. Prisco testifies meets the claim limitations requiring generation of a pattern of negative and positive pressures, modulated with respect to a reference pressure. Ex. 1002 ¶¶ 62–64, 75. Thus Taylor appears to teach the claim element Patent Owner argued during prosecution was missing from Fang. Also, in applying factors (b) and (d) of Becton, Dickinson, because of such differences noted above, we find that Taylor is not cumulative of Fang, which was considered and applied by the Office during prosecution of the ’061 Patent. 4. Conclusion Thus, we find that Taylor and Fang are not substantially the same art, nor were substantially the same arguments based on these references presented in the Petition and during prosecution of the ’061 Patent, respectively. As discussed above, because Petitioner primarily relies on Taylor in all four grounds for teaching the modulation of positive and negative pressures with respect to a reference pressure as required by all of the challenged claims, we also find that, overall, the same or substantially the same art was not previously presented to the Office nor were the same or substantially the same arguments previously presented to the Office. Therefore, we do not need to reach the application of the remaining Becton, Dickenson factors relating to whether the Petitioner has demonstrated a material error by the Office. Thus, we decline to exercise our discretion under § 325(d) to deny institution of an inter partes review here.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“how Taylor works if the bellows are bidirectional, and the bellows are expanded and contracted when the suction cup is sealingly engaged. Figure 3 of Taylor shown above appears to support Dr. Prisco’s testimony that the bellows may be expanded or contracted from the initial position shown in Figure 3 and does not appear to show any valve or second opening in the bellows to provide unidirectional flow as Dr. Jensen, Patent Owner’s declarant, asserts. Also, as Petitioner asserts, Taylor indicates that a squeeze ball may be substituted for the bellows expressly indicating a device with a bidirectional flow. Although Patent Owner raises valid arguments concerning a common definition of bellows indicating unidirectional flow and provides testimony from Dr. Jensen reasonably supporting such a position, these dueling positions create a genuine issue of material fact that we weigh in favor of Petitioner on institution. See 37 C.F.R. 42.108(c).” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We find that Dr. Prisco’s testimony is a reasonable interpretation of how Taylor works if the bellows are bidirectional, and the bellows are expanded and contracted when the suction cup is sealingly engaged. Figure 3 of Taylor shown above appears to support Dr. Prisco’s testimony that the bellows may be expanded or contracted from the initial position shown in Figure 3 and does not appear to show any valve or second opening in the bellows to provide unidirectional flow as Dr. Jensen, Patent Owner’s declarant, asserts. Also, as Petitioner asserts, Taylor indicates that a squeeze ball may be substituted for the bellows expressly indicating a device with a bidirectional flow. Although Patent Owner raises valid arguments concerning a common definition of bellows indicating unidirectional flow and provides testimony from Dr. Jensen reasonably supporting such a position, these dueling positions create a genuine issue of material fact that we weigh in favor of Petitioner on institution. See 37 C.F.R. 42.108(c).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 9,849,061 - American National Manufacturing Inc v. Sleep Number Corporation F/K/A Select Comfort CorporationRehearing deniedPTAB · Sep 24, 2020 · IPR2019-00500 · APJ Scott A Daniels · IPR · Rehearing
The Board denied ANM’s rehearing request, but amended the Final Written Decision to clarify that the declarants testified the products “read on” the claims.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. THE REQUEST FOR REHEARING In pertinent part, 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. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. Moreover, “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).” slip op. at 2
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusOther
“copying and nexus is consistent with ANM’s position that neither Dr. Abraham nor Dr. Edwards states an opinion as to infringement. Dr. Edwards’s testimony explains his analysis of several versions of ANM’s source code and comparison with the claims of the ’154 patent, concluding that “at least Version 1.8, Version 1.97, and Version 2.0 of ANM’s source code read on the software-related limitations of claims 1–19 of the ‘154 Patent and claims 1–18 of the ‘747 Patent.” Ex. 2029 ¶ 41. Dr. Abraham performed a physical review of various ANM air controllers, and determined “that ANM’s products sold with Gen 3 Arco and Gen 3 Koge air controllers read on the claimed mechanical related elements of (i.e. structural components of) the ‘154 and ‘747 Patents.” Ex. 2027 ¶ 29. Thus, Dr. Abraham and Dr. Edwards testimony is more accurately that ANM’s software and air controllers “read on” on the claims of the ’154 patent.” slip op. at 3
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“Substitute Claims Proposed in the Amendment 23–41 Substitute Claims: Motion to Amend Granted 23–25, 30–31, 38–41 Substitute Claims: Motion to Amend Denied 27, 28, 32–37 Substitute Claims: Not Reached 26, 29” slip op. at 6
§ 103 obviousnessPatents in suitUS 9,737,154 - Ingenico Inc. v. Ioengine, LLCSome claims unpatentablePTAB · Sep 21, 2020 · IPR2019-00929 · APJ Elizabeth M Roesel · IPR · Final written decision
Claims 55, 57–63, 67–72, 74, 77, 78, 81–87, 89, 92–98, 100, 103, 104, 106–112, 116–121, 123, and 126–129 are unpatentable; the remaining challenged claims were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“the Board’s adopted definition of a POSITA. PO Resp. 3; Ex. 2139 ¶¶ 12, 13. Both parties’ experts state, however, that their opinions would not change based upon which party’s definition of a POSITA is adopted. Ex. 2139 ¶ 13; Ex. 2110, 240:24–241:6.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“For these reasons, we find that Petitioner has shown by a” slip op. at 40
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“meet claims 74, 89, 100, and 123 because Davis “does not have two different devices on the client side.” PO Resp. 63–64. Patent Owner’s argument does not persuasively rebut Petitioner’s obviousness case, which relies on Iida, not Davis, to teach two devices on the client side—Iida’s digital camera 12 (a portable device) and terminal 14. Pet. 13–16, 60; Ex. 1003 ¶ 57, Figs. 1A, 1B. Furthermore, in Petitioner’s combination, a digital certificate is substituted for Iida’s user ID and password. Pet. 61. Patent Owner does not dispute Petitioner’s contention that Iida discloses transmitting a user ID and password stored in memory 48 of camera 12 to image server 18 through terminal 14. Id. at 43–44 (addressing claim 71; citing Ex. 1003 ¶¶ 110, 113). Accordingly, Petitioner persuades us that the combination of Iida and Davis discloses the limitations of claims 74, 89, 100, and 123 (and claims 71, 86, 97, and 120 from which they depend).” slip op. at 89
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“First, Patent Owner has not argued that the licensed products are coextensive with the claims of the ’703 Patent, accordingly, there is no presumption of a nexus. See Lectrosonics, Paper 33 at 33.” slip op. at 94
Patent outcomesUS 9,774,703 mixed§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,774,703 - Vizio, Inc. v. Polaris Powerled Technologies, LLCRehearing grantedPTAB · Sep 15, 2020 · IPR2020-00043 · APJ Kara L Szpondowski · IPR · Rehearing
The Board granted rehearing but denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“We have considered Petitioner’s Request for Rehearing and, for the reasons set forth below, we grant Petitioner’s Request for Rehearing, but we are not persuaded to change our ultimate conclusion to deny institution of inter partes review. II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). 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, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus.” slip op. at 3
- Other 314aInstitution denied discretionary otherDenied
“III. DISCUSSION OF THE REQUEST FOR REHEARING On May 4, 2020, we issued our Decision denying institution of inter partes review based upon: (1) the advanced stage of the California District Court proceeding; (2) the investment of time and resources by the District Court and the parties in the California District Court proceeding; (3) overlap in the invalidity theories that Petitioner is pursuing here and in the California District Court proceeding; and (4) overlap in the claims challenged in the California District Court proceeding. Inst. Dec. 6–12. In the Decision, we did not reach any of the ten substantive grounds for patentability. See generally Inst. Dec. Rather, the denial of institution was solely based on our findings under 35 U.S.C. § 314(a). Id.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“review under 35 U.S.C. §314(a) and 37 C.F.R. §42.4. Institution of an inter partes review is authorized when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2012); see also 37 C.F.R. § 42.4(a) (2019) (“The Board institutes the trial on behalf of the Director.”) For the reasons set forth below, upon considering the arguments and evidence of record, we are not persuaded to change our ultimate conclusion to deny institution of inter partes review.7” slip op. at 5
- BurdenDenied
“The petition must identify with particularity each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim. 35 U.S.C. § 312(a)(3); see also 37 C.F.R. § 42.22(a) (content of petitions); 37 C.F.R. 42.104 (content of petition). Petitioner’s conclusory statements, without more, are irreparably lacking in detail. Petitioner does not provide any analysis to support the assertion of obviousness over Oki. In fact, Petitioner instead asserts that Oki discloses all of the limitations in each of claims 1, 2, 4–7, 9, 15, 16, and 18, so it is unclear what modification, if any, is required to Oki, or even the basis of Petitioner’s obviousness grounds. E.g., Pet. 28– 33. Petitioner does not clearly point out the differences between the claimed invention and Oki. Nor does Petitioner explain why a person of ordinary skill in the art would have found the claimed subject matter obvious in spite of those differences. Petitioner has not provided sufficient reasoning or facts on which to base a conclusion that a person of ordinary skill in the art would have found it obvious, in light of Oki’s disclosure, to modify Oki to meet the claim limitations. Accordingly, Petitioner fails to demonstrate a reasonable likelihood that it would prevail on this ground of unpatentability.” slip op. at 28
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,223,117 - Clearone, Inc. v. Shure Acquisition Holdings, Inc.Some claims unpatentablePTAB · Aug 14, 2020 · IPR2019-00683 · APJ Christa P Zado · IPR · Final written decision
Claims 1–5, 7–33, and 35–40 are unpatentable; claims 6 and 34 were not shown unpatentable. The motion to amend was granted for substitute claims 57–67.
RulingsFinal written decision- ExcludeMotion to exclude, deniedMixed
“establish that it is entitled to the relief requested—namely, that the material sought to be excluded is inadmissible under the Federal Rules of Evidence. See 37 C.F.R. §§ 42.20(c), 42.62(a). For the reasons discussed below, Petitioner’s Motion is dismissed as moot, and Patent Owner’s Motion is denied-in-part and dismissed-in-part.” slip op. at 10
- Skill levelOther
“C. Level of Ordinary Skill in the Art To establish the level of ordinary skill in the art, we look to various” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“For the foregoing reasons, we determine the term “rotationally offset” slip op. at 23
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“date it becomes publicly accessible. In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986). “Whether a reference qualifies as a printed publication under § 102 is a legal conclusion based on underlying fact findings.” Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018). “A reference is considered publicly accessible if it was ‘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.’” Id.” slip op. at 24
Patent outcomesUS 9,565,493 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · GrahamPatents in suitUS 9,565,493 - PTAB · Aug 12, 2020 · PGR2019-00032 · APJ David Cotta · PGR · Final written decision
The Board granted cancellation of claim 8 and denied entry of substitute claim 11 because Petitioner showed it would have been obvious over Omura, Tsuji, and the knowledge of a person of ordinary skill.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“In our Institution Decision, we agreed with the position Patent Owners took in their Preliminary Response – i.e, that the focus of the challenged claims was enzyme-based biosensors and thus the POSA would have more than just a familiarity with enzyme-based biosensors and protein chemistry. Inst. Dec. 8–9. Accordingly, based on the record before us at the time, we accepted the definition provided in Patent Owners’ Preliminary Response, which was consistent with the level of skill reflected in the asserted prior art references and in the specification of the ‘987 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art). Neither party challenges the identification of the POSA set forth in our Institution Decision. See generally, R. Mot.; Opp.; Reply; Sur-reply. Additionally, we find that the fully developed trial record supports the POSA identification we made in our Institution Decision. Accordingly, in this decision, we apply the identification of the POSA set forth in our Institution Decision. Inst. Dec. 9.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). For purposes of this decision, we need not expressly construe any claim terms.” slip op. at 10
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“first, substitute claim 11 would have been obvious over Omura in view of the knowledge of the POSA, and second, substitute claim 11 would have been obvious over the combination of Omura and Tsuji in view of the knowledge of the POSA. Opp. 7–24. We have considered the question of patentability in view of all the evidence and arguments presented in this proceeding. Based on the record developed during this proceeding, we determine that Petitioner has shown by a preponderance of the evidence that substitute claim 11 would have been obvious over the combination of Omura, Tsuji, and the knowledge of the POSA. Because Petitioner has proven that substitute claim 11 would have been obvious, as discussed in detail below, we do not consider whether Patent Owners’ motion otherwise complies with the statutory and regulatory requirements for a motion to amend. See, 35 U.S.C. § 326(d)(1)(B) (requiring that the amendment propose a “reasonable number of substitute claims” and requiring that the substitute claims do “not enlarge the scope of the claims of the patent or introduce new matter”); 37 C.F.R. § 42.221 (additionally providing, inter alia, that a motion to amend “may be denied where . . . [t]he amendment does not respond to a ground of unpatentability involved in the trial”). Similarly, because we have determined that substitute claim 11 would have been obvious over the combination of Omura, Tsuji, and the knowledge of the POSA, as discussed in detail below, we do not reach the question of whether substitute claim 11 would also have been obvious over only Omura in view of knowledge of the POSA.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“includes “research experience and/or knowledge in enzymology . . . and biosensors,” we agree with Petitioner that it would have been obvious to a POSA to substitute FAD-conjugated glucose dehydrogenase derived from the claimed strain of Aspergillus oryzae for FAD-conjugated glucose dehydrogenase derived from Aspergillus terreus as disclosed in Omura.” slip op. at 18
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,976,125
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.