- Cambridge Industries USA, Inc. v. Applied Optoelectronics, Inc.Rehearing deniedPTAB · Dec 19, 2025 · IPR2025-00434 · APJ Mitchell G Weatherly · IPR · Rehearing
The Board denied Petitioner’s rehearing request, leaving institution denied because Shen and Soldano did not establish a reasonable likelihood of anticipating claims 1–7.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on 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. See Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party challenging the decision has the burden of showing the decision should be modified, and the request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in its papers. 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“II. ANALYSIS In our Decision, we concluded that Petitioner had failed to carry its burden of demonstrating a reasonable likelihood of prevailing that either Shen or Soldano anticipated claims 1–7. Dec. 18, 26. Petitioner argues that we should institute review for three reasons. First, Petitioner argues that we abused our discretion by (a) “refusing” to interpret the scope of the claimed” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Owner’s interpretation of “carrier” as meaning “one or more components for supporting ROSA components such as an AWG.” Dec. 9 (quoting Pet. 11). For our analysis of Petitioner’s challenges, we referred to this interpretation of “carrier” as Petitioner’s second alternative construction. Id. We also noted that Petitioner appeared to dispute Patent Owner’s interpretation when it argued that “carrier” should mean “a ceramic or silicon substrate.” Id. (quoting Pet. 10). We referred to this interpretation of “carrier” as the first alternative construction. Id. Rather than resolve this apparent dispute about the meaning of “carrier,” we found that both of Petitioner’s anticipation challenges failed under both interpretations of “carrier.” Id. at 10–26. Because we found that Petitioner had failed to carry its burden regardless of which interpretation of “carrier” applied, we found it unnecessary to resolve the dispute over that interpretation. Id. at 9–10. For the reasons expressed in Parts II.B–C below, we maintain our conclusion that Petitioner has failed to demonstrate a reasonable likelihood of proving that either Shen or Soldano anticipates any claim under either interpretation of “carrier.” Accordingly, Petitioner fails to demonstrate an abuse of discretion in our alleged “refusal” to interpret “carrier.”” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Reh’g Req. 14. We cannot weigh Petitioner’s arguments based on its assertions about “caselaw” because Petitioner cited no cases to support its arguments. See id. Nevertheless, we infer that Petitioner intends its statements of “caselaw” to refer to the requirements to make out a case for anticipation. If so, Petitioner demonstrably miscasts what appear to be the legal principles for proving anticipation. As stated in our Decision: “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987).” Dec. 7. Making a showing that a prior art reference anticipates a patent claim thus necessarily requires proof that a single reference “expressly or inherently” describes every element of that claim and with all elements being arranged in the reference as they are in the” slip op. at 7
Claim construction§ 102 anticipationPatents in suitUS 10,379,301 - Njoy, LLC / Njoy Holdings, Inc. v. Juul Labs, Inc.Rehearing deniedPTAB · Aug 12, 2024 · IPR2024-00267 · APJ Avelyn M Ross · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because Petitioner did not show a reasonable expectation of success for the proposed § 103 combination.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW Pursuant to 37 C.F.R. § 42.71(d): A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. 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. 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 exists where a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“green, left), placed inside the housing between the housing and heating element (red), and surrounding the heating element and portions of the liquid storage portion (blue). Otherwise, Combined Figure 4 is nearly the same as Annotated Figure 4. Compare Combined Fig. 4, with Ann. Fig. 4. Thus, Petitioner does not propose a simple substitution to include the mouthpiece housing of Thorens231 in the device of Thorens788 in the same manner as used in Thorens231. Rather, Petitioner proposes including the mouthpiece housing of Thorens231 in the device of Thorens788 and then further modifying its placement by inserting it into the housing. See Combined Fig. 4. Neither Petitioner nor Dr. Janet persuasively explain why this arrangement would be expected to be successful nor do they allege that such a modification would have been within the skill set of the ordinarily skilled artisan. In contrast, Patent Owner explains that Petitioner’s [Combined] Figure 4 appears to block any airflow through the device and out of the mouthpiece. Petitioner and its expert do not account for how the mouthpiece would be secured to the liquid storage portion in Thorens788. Moreover, as drawn by Petitioner, the wick touches what is presumably the air inlet for the mouthpiece (although Petitioner does not discuss where the air inlet is), which could adversely impact performance or user experience, such as draw resistance[.] Prelim. Resp. 50–51. Because Petitioner did not direct our attention to any argument or testimony to account for whether or how the modified device would function, Petitioner did not meet its initial burden of proof of showing that a person of ordinary skill in the art would have had an expectation of success in the combination. See Eli Lilly & Co. v. Teva Pharms. Int’l GmbH, 8 F.4th 1331, 1348–49 (Fed. Cir. 2021) (explaining that it is “at all times, [petitioner’s] burden to show that the claims would have” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Prelim. Resp. 50–51. Because Petitioner did not direct our attention to any argument or testimony to account for whether or how the modified device would function, Petitioner did not meet its initial burden of proof of showing that a person of ordinary skill in the art would have had an expectation of success in the combination. See Eli Lilly & Co. v. Teva Pharms. Int’l GmbH, 8 F.4th 1331, 1348–49 (Fed. Cir. 2021) (explaining that it is “at all times, [petitioner’s] burden to show that the claims would have been obvious, including that the skilled artisan would have had a reasonable expectation of success in achieving the claimed invention”).” slip op. at 8
§ 103 obviousnesscites KSRPatents in suitUS 11,134,722 - Parse Biosciences, Inc. v. 10x Genomics, Inc.Rehearing grantedPTAB · Feb 5, 2024 · IPR2023-00958 · APJ Michael J Fitzpatrick · IPR · Rehearing
Rehearing was granted and IPR instituted on claims 1–28 because the petition showed a reasonable likelihood that claim 1 was obvious over Linnarsson, McCloskey, and ordinary skill.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“III. WHETHER REHEARING IS WARRANTED Petitioner argues that we misconstrued the claims “as requiring one to add tags in a way that can provide a distinction based on a ‘polynucleotide sequence.’” Req. 6 (quoting Dec. 14 (Petitioner’s emphasis)). Petitioner is correct. More specifically, we implicitly construed the claim language reciting “a second tag sequence distinguishing said sample polynucleotide from other sample polynucleotides from said cell,” as requiring said “distinguishing” to be based on the sequences of the sample polynucleotides. See, e.g., Dec. 14 (“[E]ach strand of cDNA that is tagged in Linnarsson is tagged regardless of the polynucleotide sequence of the cDNA or its corresponding mRNA. Thus, Linnarsson’s tags do not distinguish between ‘sample polynucleotides,’ whether cDNA or mRNA, of different sequences.”). Based on that misunderstanding, we erroneously determined that the proposed modification could not achieve the claim language, stating the following: Petitioner’s proposal appears to defeat satisfaction of another portion of claim 1, namely a “second tag sequence distinguishing said sample polynucleotide from other sample polynucleotides from said cell.” Ex. 1001, 30:62–64. For if the second tag is “added to the CDS or TSO after extension,” as opposed to the sample polynucleotide, as Petitioner argues (Pet. 39 (emphasis added)), it would appear that the second tag would be incapable of distinguishing any sample polynucleotide from other sample polynucleotides. Rather, the second tag would be ligated to each and every extension product bearing a CDS or TSO without regard to the sequence of any sample polynucleotide. Dec. 16. We now reconsider whether to institute.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Cited”). Because we find that the same or substantially the same art was previously presented to the Office, we proceed to part two of the analysis. 2. Advanced Bionics Part Two Patent Owner argues that the Petition “fails to show any error in the Examiner’s application during prosecution of the prior art teachings Petitioner now purports to invoke from . . . McCloskey.” Prelim Resp. 23; see also id. at 24–25 (“Revisiting the same art and arguments already overcome during prosecution is a waste of the Board’s limited resources and would unfairly burden PO.”). However, Petitioner argued that “the Examiner committed major error in Examination by erroneously stating that the prior art fails to teach a dual tagging approach when, in fact, this approach is plainly taught in both McCloskey and McCloskey II.” Pet. 67. The record supports Petitioner’s position, and we agree that the error was material to patentability. See Ex. 1005, 131 (Notice of Allowance). Accordingly, and having considered all of the Becton, Dickinson factors, we do not exercise discretionary denial.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We are persuaded there is a reasonable likelihood that Petitioner would prevail in demonstrating that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the teachings of Linnarsson and McCloskey with the knowledge of a person of ordinary skill in the art to obtain the claimed subject matter. 8. Conclusion as to Claim 1 There is a reasonable likelihood that Petitioner would prevail in proving that claim 1 is unpatentable.” slip op. at 21
- Obviousness (§103) › Analogous artNot reached
“the three references is analogous art to the ’013 patent as opposed to each other. Prelim. Resp. 46 (citing Pet. 35; Sanofi-Aventis Deutschland GmbH v. Mylan Pharms. Inc., 66 F.4th 1373, 1374 (Fed. Cir. 2023)). As Sanofi- Aventis holds, a petitioner bears the burden of persuasion to establish that an asserted prior art reference is analogous art to the claimed invention. See Sanofi-Aventis, 66 F.4th at 1377 (“We agree with [the patent owner] that [the petitioner] did not carry its burden to argue that de Gennes is analogous to the [challenged] patent.”); id. (“In evaluating whether a reference is analogous, we have consistently held that a patent challenger must compare the reference to the challenged patent.”); id. at 1378–79 (“We have routinely held that the petitioner has the burden of proving unpatentability.”). However, the Petition should not be denied for failing to state explicitly that the cited prior art references are analogous art to the ’013 patent. Rather, as Sanofi-Aventis further held: “A petitioner is not required to anticipate and raise analogous art arguments in its petition; instead a petitioner can use its reply to ‘respond to arguments raised in the corresponding opposition, patent owner preliminary response, patent owner response, or decision on institution.’” Sanofi-Aventis, 66 F.4th at 1379 (quoting 37 C.F.R. § 42.23). Accordingly, we need not address this issue for purposes of deciding whether to institute trial.” slip op. at 15
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,697,013 - Parse Biosciences, Inc. v. 10x Genomics, Inc.Rehearing grantedPTAB · Feb 5, 2024 · IPR2023-00955 · APJ Michael J Fitzpatrick · IPR · Rehearing
Rehearing granted and IPR instituted on claims 1–26; the Board found a reasonable likelihood that claim 1 would have been obvious over Linnarsson and McCloskey.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“III. WHETHER REHEARING IS WARRANTED Petitioner argues that we misconstrued the claims “as requiring one to add tags in a way that can ‘provide a distinction based on a polynucleotide’s sequence.’” Req. 6 (quoting Dec. 15 (Petitioner’s emphasis)). Petitioner is correct. More specifically, we implicitly construed the claim language reciting “a second tag sequence distinguishing said sample polynucleotide from other sample polynucleotides from said cell,” as requiring said “distinguishing” to be based on the sequences of the sample polynucleotides. See, e.g., Dec. 14 (“[E]ach strand of cDNA that is tagged in Linnarsson is tagged regardless of the polynucleotide sequence of the cDNA or its corresponding mRNA. Thus, Linnarsson’s tags do not distinguish between ‘sample polynucleotides,’ whether cDNA or mRNA, of different sequences.”). Based on that misunderstanding, we denied the Petition because “adding a second tag sequence to Linnarsson’s CDS and/or TSO would do nothing to achieve such a distinction,” i.e., “a distinction based on a polynucleotide’s sequence.” Id. at 15. That was error. We now reconsider whether to institute.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“the ’197 patent. See Ex. 1001, code (56) (listing McCloskey II under “References Cited”). Because we find that the same or substantially the same art was previously presented to the Office, we proceed to part two of the analysis.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We are persuaded there is a reasonable likelihood that Petitioner would prevail in demonstrating that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the teachings of Linnarsson and McCloskey to obtain the claimed subject matter. 6. Conclusion as to Claim 1 There is a reasonable likelihood that Petitioner would prevail in proving that claim 1 is unpatentable.” slip op. at 18
- Obviousness (§103) › Analogous artNot reached
“GmbH v. Mylan Pharms. Inc., 66 F.4th 1373, 1374 (Fed. Cir. 2023)). As Sanofi-Aventis holds, a petitioner bears the burden of persuasion to establish that an asserted prior art reference is analogous art to the claimed invention. See Sanofi-Aventis, 66 F.4th at 1377 (“We agree with [the patent owner] that [the petitioner] did not carry its burden to argue that de Gennes is analogous to the [challenged] patent.”); id. (“In evaluating whether a reference is analogous, we have consistently held that a patent challenger must compare the reference to the challenged patent.”); id. at 1378–79 (“We have routinely held that the petitioner has the burden of proving unpatentability.”). However, the Petition should not be denied for failing to state explicitly that the cited prior art references are analogous art to the ’197 patent. Rather, as Sanofi-Aventis further held: “A petitioner is not required to anticipate and raise analogous art arguments in its petition; instead a petitioner can use its reply to ‘respond to arguments raised in the corresponding opposition, patent owner preliminary response, patent owner response, or decision on institution.’” Sanofi-Aventis, 66 F.4th at 1379 (quoting 37 C.F.R. § 42.23). Accordingly, we need not address this issue for purposes of deciding whether to institute trial.” slip op. at 15
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,240,197 - LG Electronics, Inc. v. Constellation Designs, LLCRehearing deniedPTAB · Aug 15, 2023 · IPR2022-01549 · APJ Brent M Dougal · IPR · Rehearing
The Board denied LG Electronics’ rehearing request, leaving in place its decision denying institution because the Petition did not explain how De Gaudenzi teaches maximizing parallel decode capacity.
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. 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
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“In our Decision, we faulted the Petition for “not sufficiently identify[ing] how De Gaudenzi1 teaches the ‘maximize’ limitation in the independent claims.” Dec. 17. For example, the Petition asserts that De Gaudenzi1 teaches constellation optimization by assignment of labels, but then when explaining how, only states that De Gaudenzi1 “discloses a labelling rule,” that “can be ‘Gray labelling’/‘Gray mapping,’ or ‘the pseudo-Gray labellings.’” Pet. 61; see also Dec. 13–14 (summarizing and quoting the positions in the Petition). As a result, we determined that the Petition “does not sufficiently explain why the existence of a labeling rule maximizes parallel decode capacity,” and that “the record lacks evidence of, and it is Petitioner’s burden to explain, how predetermined constellation point labels are assigned to maximize parallel decode capacity as required by the claim.” Dec. 16, 17.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“attempts to improperly supplement the Petition by advancing two new arguments in the Request: 1) that Gray mapping is “the only specific example labeling scheme disclosed by the ’980 Patent as ‘maximize[ing] the PD capacity’ used in ‘[a]ll the PD optimized PAM constellations.’ EX1001, 10:18-20;” and 2) that “Patent Owner’s expert, Dr. Caire, in his own work (EX1013 cited by De Gaudenzi1 and Petition) states that ‘we conjecture that Gray labeling maximizes BICM capacity.’ EX1013, 6.” Req. 12. Neither of these arguments are in the Petition. The Request does not cite to the Petition in making these arguments. The Request does later cite to pages 14 and 63 of the Petition, implying support for these arguments. However, neither page makes these arguments, or even cites to the portions of the references cited in the Request. Thus, we do not consider these new arguments, as Petitioner has not shown they were previously presented in the Petition.” slip op. at 3
NonePatents in suitUS 10,567,980 - PNC Bank N.A. v. United Services Automobile AssociationRehearing deniedPTAB · Mar 8, 2023 · IPR2021-01077 · APJ Juliet Mitchell Dirba · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving in place the final written decision finding claims 1–18 unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD FOR REHEARING 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 in a motion, an opposition, a reply, or a sur-reply.” 37 C.F.R. § 42.71(d). “The burden of showing a decision should be modified lies with the party challenging the decision.” Id.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“misapprehended or overlooked matters relevant to whether an ordinary artisan would have reasonably expected success in combining Garcia and Randle. Req. 1–5. We have reviewed and carefully considered all of the arguments presented, but determine Patent Owner fails to show that the Decision misapprehended or overlooked any material arguments or evidence. To provide context for our discussion, we begin with a targeted summary of the Decision, and then we turn to Patent Owner’s specific arguments.” slip op. at 2
§ 103 obviousnessPatents in suitUS 10,621,559 - Cardiovascular Systems, Inc. v. Shockwave Medical, Inc.Rehearing grantedPTAB · Feb 2, 2023 · IPR2019-00405 · APJ Mitchell G Weatherly · IPR · Rehearing
On rehearing, the Board held claims 1–4 and 6–17 unpatentable as obvious, claim 5 not shown unpatentable, and denied both motions.
RulingsRehearing decision- RehearingGranted in part
“preponderance of evidence that claims 1–4 and 6–17 are unpatentable, but for the reasons expressed below rather than those expressed in our Decision. Additionally, we maintain our prior conclusion that Petitioner has failed to demonstrate that claim 5 is unpatentable without any modification to our reasoning expressed in the Decision. We repeat our prior analysis of claim 5 from our Decision so that this single paper contains the substance of our analysis of all of Petitioner’s challenges to the claims. Accordingly, for the reasons set forth below, we determine that Petitioner has demonstrated by a preponderance of evidence that claims 1–4 and 6–17 are unpatentable but has failed to show that claim 5 is unpatentable.” slip op. at 6
- ExcludeMotion to exclude, deniedDenied
“FURTHER ORDERED that Petitioner’s Motion to Exclude Exhibits 2002–2004, 2006, 2008, 2016, 2017, 2124, 2125, 2126, 2132, 2133, 2139, 2141, 2149, 2152, 2161, 2162, 2163, 2164, 2170–2176, 2196, and 2100 (¶¶ 18, 19, 59, 60, 66, 132, 143, 144, 165, 170, 175, 199, 201, 205, 217, 218, 220, 221, 222, and 229) is denied;” slip op. at 96
- Additional discoveryAdditional discovery, deniedDenied
“FURTHER ORDERED that Patent Owner’s Motion for Additional Discovery is denied; and” slip op. at 96
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundMotivation foundMixed
“laser as enough of a concern that its balloon could be cooled by circulating liquid through the balloon. Pet. 18, 29 (citing Ex. 1002 ¶¶ 96, 120); Reply 31 (citing Ex. 1003, 3–5). However, Petitioner fails to adduce evidence that an EHL shockwave generator produces less heat than a laser-based shockwave generator such as Levy’s. Accordingly, we determine that Petitioner has failed to prove by a preponderance of evidence that an ordinarily skilled artisan would have been motivated to substitute an EHL probe for Levy’s laser probe to reduce heat generated by the probe.” slip op. at 38
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,956,371 - Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Rehearing deniedPTAB · Jan 4, 2023 · IPR2022-00182 · APJ Steven M Amundson · IPR · Rehearing
Denied Patent Owner’s rehearing request; the Board found no abuse of discretion in instituting IPR of claims 1, 24, and 25 on the stated § 103 grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d) (2022). In a rehearing request, the party challenging the decision “must specifically identify” (1) “all matters the party believes the Board misapprehended or overlooked” and (2) “the place where each matter was previously addressed” in an earlier submission. Id.; see Consolidated Trial Practice Guide at 90.3 “A rehearing request is not an opportunity for the requesting party to reargue its case or merely to express disagreement with the underlying decision.” MicroSurgical Tech., Inc. v. Regents of Univ. of Colo., PGR2021-00026, Paper 14 at 2 (PTAB Aug. 12, 2021). “Nor is it an opportunity for the moving party to present new arguments that were not in its original submissions.” Id.” slip op. at 3
- Obviousness (§103) › Objective indicia / secondary considerations › CopyingObjective indicia no nexusDecided for petitioner
“Patent Owner does not explain why issue preclusion permits the Board to hold the district court’s finding that Cisco “copied software functionality from the [infringed] patents” against Petitioner. See Prelim. Resp. 16, 54–56; Req. Reh’g 3, 14–15. Issue preclusion “is appropriate only if”: (1) “the issue is identical to one decided in the first action”; (2) “the issue was actually litigated in the first action”; (3) “resolution of the issue was essential to a final judgment in the first action”; and (4) the party defending against preclusion “had a full and fair opportunity to litigate the issue in the first action.” SynQor, Inc. v. Vicor Corp., 988 F.3d 1341, 1353 (Fed. Cir. 2021). Patent Owner does not address any of these requirements for issue preclusion. See Prelim. Resp. 16, 54–56; Req. Reh’g 3, 14–15.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Regarding the policy’s whitelist processing, if the security device determines that a newly received packet with encrypted data is correlated to the hostname corresponding to the whitelisted destination domain, the security device filters the packet by forwarding it to the remote server with the whitelisted destination domain. See Ex. 1004, 7:52–59, 16:36–42; Ex. 1003 ¶ 90; see also Ex. 1004, 6:1–11. Filtering the newly received packet with encrypted data by forwarding it to the remote server with the whitelisted destination domain occurs “without having to decrypt the encrypted secure tunnel session traffic.” Ex. 1004, 5:24–27, 5:35–42, 7:1–9, 11:7–19; see Ex. 1003 ¶¶ 94, 113. Further, filtering the newly received packet with encrypted data by forwarding it to the remote server with the whitelisted destination domain results from applying a packet-filtering rule (a whitelisted destination domain) to the packet. Hence, we disagree with Patent Owner that Buruganahalli’s security devices process whitelisted packets by “forward[ing] the entire encrypted stream without . . . filtering encrypted packets.” See Req. Reh’g 10. We also disagree with Patent Owner that “encrypted packets in whitelisted sessions” are (1) “forwarded without applying any packet-filtering rules” and (2) “allowed uninspected.” See id. at 11 n.1, 13. Regarding the policy’s blacklist processing, if the security device determines that a newly received packet with encrypted data is correlated to the hostname corresponding to the blacklisted destination domain, the security device either blocks the packet (as Patent Owner contends) or filters the packet by forwarding it to a decryption engine. See Ex. 1004, 7:60–67, 9:61–67, 14:33–36, 16:43–48; Ex. 1003 ¶¶ 90–91, 94, 97, 108, 118, 127, 137; Req. Reh’g 10–11, 13. Filtering the newly received packet with encrypted data by forwarding it to a decryption engine occurs “without having to decrypt the encrypted secure tunnel session traffic.” Ex. 1004, 5:24–27, 5:35–42, 7:1–9, 11:7–19; see Ex. 1003 ¶¶ 94, 113, 135. Further, filtering the newly received packet with encrypted data by forwarding it to a decryption engine results from applying a packet-filtering rule (a blacklisted destination domain) to the packet and corresponds to limitation [1.g] and the similar limitations in claims 24 and 25. See Ex. 1003 ¶¶ 109, 134–135. The Institution Decision explained how Buruganahalli’s security devices may filter packets comprising unencrypted data and packets comprising encrypted data according to claims 1, 24, and 25 by applying a whitelist/blacklist policy to the packets. See, e.g., Inst. Dec. 57–60, 66–67, 69–71. As the Institution Decision explained and as discussed above, “for each session packets comprising unencrypted data and packets comprising encrypted data are correlated and filtered based on the hostname (destination domain) extracted from the handshake traffic, and then the correlated and filtered packets are processed separately from packets destined for other domains.” See Inst. Dec. 69–70; Ex. 1003 ¶¶ 109, 120–121, 133–135; Ex. 1004, 7:39–67, 8:55–60, 11:47–51, 14:21–33, 14:50–55, 16:32–48. Buruganahalli discloses additional filtering after forwarding a newly received packet with encrypted data to a decryption engine, e.g., as occurs in Buruganahalli’s Figure 3B embodiment. See, e.g., Ex. 1004, 6:17–22, 9:67–10:4, 12:4–64, Fig. 3B. But claims 1, 24, and 25 use the transitional term “comprising.” Ex. 1001, 25:14, 28:59, 29:29–30. Hence, the claims do not “exclude unrecited elements,” such as additional filtering after forwarding a newly received packet with encrypted data to a decryption engine. See Regeneron Pharm., Inc. v. Merus N.V., 864 F.3d 1343, 1352 (Fed. Cir. 2017) (citing Manual of Patent Examining Procedure § 2111.03).” slip op. at 8
§ 103 obviousnessPatents in suitUS 9,917,856 - Solaredge Technologies Ltd. v. Sma Solar Technology AGRehearing grantedPTAB · Oct 25, 2022 · IPR2020-00021 · APJ Scott B Howard · IPR · Rehearing
On rehearing, the Board held claims 1–10 unpatentable as obvious: claims 1–3, 5, and 7 over AAPA and Frezzolini; claims 4, 6, and 8–10 over AAPA, Frezzolini, and Iwamura.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Updated Guidance. See Opp. Reh’g 4–8. Instead, Patent Owner argues that we correctly determined in the Final Written Decision that AAPA was the foundation or starting point of the ground. Id. However, the language that we relied upon from the Guidance Memo in the Final Written Decision has been deleted from the Updated Guidance. Compare Guidance Memo 6 (directing the PTAB to determine if the applicant admitted prior art is the foundation or starting point), with Updated Guidance (language omitted). Although we properly followed the Guidance Memo in the Final Written follow the clear and unambiguous requirements of the Updated Guidance. Moreover, Patent Owner does not direct us to any Federal Circuit case law that suggests using the foundation or starting point test of the Guidance Memo. See Opp. Reh’g 4–8. Although the Qualcomm panel was aware of the Guidance Memo (see 24 F.4th at 1373), the Federal Circuit neither discussed the test set out in the Guidance Memo, nor directed that the PTAB apply the foundation or starting point test. See 24 F.4th 1367.” slip op. at 22
- Skill levelSkill level petitioner adoptedOther
“Petitioner argues—supported by the testimony of Dr. Wood—that a person having ordinary skill in the art (“PHOSITA”) “would have had a bachelor’s degree in mechanical engineering, electrical engineering, or a similar discipline and at least two years of design experience with photovoltaic systems.” Pet. 20 (emphasis added) (citing Ex. 1011 ¶¶ 18– 22). In the Institution Decision, we adopted Petitioner’s description of a person having ordinary skill in the art, “except that we delete[d] the qualifier ‘at least’ to eliminate vagueness as to the amount of practical experience.” Inst. Dec. 15–16. Patent Owner does not address that determination. See PO Resp. Accordingly, for the reasons given in the Institution Decision, we adopt Petitioner’s proposed level of ordinary skill, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of practical experience. See Inst. Dec. 16. Therefore, a person having ordinary skill in the art would have had a bachelor’s degree in mechanical engineering, electrical engineering, or a similar discipline and two years of design experience with photovoltaic systems.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that all claim terms should be construed according to their ordinary and customary meaning at the time of the invention. Pet. 20. Patent Owner argues that two terms require explicit constructions: “the power line modem” and “the data signal coupler.” PO Resp. 20–22. Patent Owner’s proposed claim constructions limit the “power line modem” and the “data signal coupler” to DC power lines. PO Resp. 20–22. However, during the Oral Hearing, Patent Owner agreed that, consistent with the plain and ordinary meaning, the other limitations of the claims require that the components operate on DC power lines. Tr. 37:5–23. As discussed in more detail below, Petitioner’s combination of prior art references uses DC power lines. Accordingly, no express construction is needed to resolve any dispute in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Strike new argumentNew argument disregardedDecided for petitioner
“of the background knowledge possessed by a person of ordinary skill in the art.” Guidance Memo 6–7; Updated Guidance 4–5. Although Patent Owner had the opportunity to make such an argument in the Sur-reply when addressing the Guidance Memo (and by implication, the identical language of Updated Guidance), Patent Owner chose not to do so and, accordingly, forfeited the argument. See Paper 9, 7. Although Patent Owner raised the argument at the oral hearing,17 that is not enough to preserve the argument as no new arguments can by made during the Oral Hearing. See CTPG at 85– 86 (“During an oral hearing, a party . . . may only present arguments relied upon in the papers previously submitted.”); Dell, 818 F.3d at 1301 (“[T]he Board denied Acceleron its procedural rights by relying in its decision on a factual assertion introduced into the proceeding only at oral argument, after Acceleron could meaningfully respond.”). Just as a movant may not make a new argument in a request for rehearing, a party opposing such a request cannot raise new arguments that it did not make before. See Apple Inc. v. Taction Tech., Inc., IPR2022-00057, Paper 15 at 4 (“A request for rehearing is not an opportunity . . . to present new arguments.”) (Denying Request for Rehearing). Accordingly, because Patent Owner did not argue that the limitations taught by the AAPA were not known in the prior art in its Patent Owner Response or Sur-reply, that argument is forfeited and cannot be considered on rehearing.” slip op. at 24
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,922,048 - Intel Corporation / Cavium, LLC et al. v. Alacritech, Inc.Rehearing deniedPTAB · Jun 13, 2022 · IPR2017-01410 · APJ Charles J Boudreau · IPR · Rehearing
The Board denied Petitioner’s rehearing request and maintained that claims 41–43 were not shown unpatentable because the evidence did not establish network-interface reassembly.
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 its petition. Id.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Put another way, the finding that Petitioner did not admit that the disputed limitation is not taught by Tanenbaum was not a finding that Petitioner proved that that limitation is taught or suggested by the asserted prior art. As the Federal Circuit explained, “the Board’s rejection of certain arguments made by [Patent Owner] does not necessarily support the Board’s finding that the asserted prior art teaches or suggests reassembly in the network interface,” and “[t]hat is especially the case here, where the parties’ briefing focuses on the disclosure of the reassembly limitations by one reference (Thia), but the Board appears to have relied on a different reference (Tanenbaum) to support its finding.” Id. at 1371–72 (emphasis added). The Court, accordingly, vacated the Board’s obviousness determination as to claims 41–43 and remanded “for the Board to reconsider whether the asserted prior art teaches or suggests the entirety of the reassembly limitations, including the requirement that reassembly takes place in the network interface.” Id. at 1373 (emphasis added). And as we explained in the Decision on Remand, after such reconsideration, we were not persuaded that the combination of Thia and Tanenbaum teaches or suggests “a flow re-assembler, disposed in the network interface,” as recited in claim 41, or a “network interface comprising . . . a re-assembler,” as recited in claim 43. RFWD 22–25. While Petitioner argues that “the RFWD tacitly acknowledges that the Petition’s discussion of Tanenbaum is much more extensive than the discussion on p. 77 that the Federal Circuit described as ‘conclusory’” (Req. Reh’g 3 n.4 (citing RFWD 23–24)), we find nothing in that “more extensive” discussion that establishes by a preponderance of the evidence that the asserted combination teaches or suggests reassembly in the network interface.” slip op. at 6
§ 103 obviousnessPatents in suitUS 8,131,880
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.