- U.S. Venture, Inc. v. Sunoco Partners Marketing & Terminals L.P.Rehearing deniedPTAB · Dec 17, 2020 · IPR2020-00728 · APJ Brent M Dougal · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution for claims 16–17 based on the Fintiv factors and its § 314(a) discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on institution, the Board reviews the 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). The burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Thus, a request for rehearing is not an opportunity to present new arguments or evidence or merely to disagree with the panel’s assessment of the arguments or weighing of the evidence.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“the evidence laid out an approximate time frame for when the trial would likely be held. Dec. 9 (citing Ex. 2003); see also id. at 8–9 (citing PO Resp. 35; Ex. 1026) (Discussing the Court’s Procedures and timeline for trial after the docket call). Thus, we determined that this factor favored denying institution under our analysis of the factors under Fintiv. Id. at 9.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner acknowledges that the proposed combination of the references relies on “us[ing] the cumulative totals of the flow rates of the unblended components in the Hoffman compensation process” (id.), however Patent Owner identifies that Hoffman appears to teach away from using the flow rates of the unblended components in its calculations because of the uncertainty in the flow rate of the blended line. Prelim. Resp. 19, 21– 22. Contrary to Petitioner’s position, it is not Patent Owner’s burden to show why “a person of ordinary skill in the art would be discouraged from measuring flow rates upstream for use in the Hoffman compensation process” (Reh. Req. 9), but rather, Petitioner bears the burden to show why a person of ordinary skill in the art would measure flow rates upstream for use in the Hoffman compensation process in view of the all of the teachings of the references (35 U.S.C. § 314(a) (Institution only authorized if “the information presented in the petition . . . 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.”)). Petitioner’s arguments do not show that we misapprehended or” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageNot reached
“argument concerning the construction of the term “in-line blending.” Id. at 13.” slip op. at 6
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 9,207,686 - Google LLC / Samsung Electronics Co., Ltd. et al. v. Agis Software Development, LLCInstitution deniedPTAB · Nov 25, 2020 · IPR2020-00871 · APJ Frederick C Laney · IPR · Institution
The Board denied institution of IPR on claims 1–68 under § 314(a), finding that the parallel litigation’s timing, investment, and overlapping issues made review inefficient.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Petition is particularly problematic in this case because there is significant overlap between the subject matter and alleged grounds of unpatentability found in the Petition and those petitions previously filed. See Apple Inc. v. AGIS Software Dev. LLC, IPR2018-01471, Paper 1 (PTAB July 31, 2018); Google LLC v. AGIS Software Dev. LLC, IPR2018-01086, Paper 2 (PTAB May 15, 2018). In fact, the Petition includes portions that are substantially identical to the petitions previously filed. Compare, e.g., Pet. 1–5, 8–34 with IPR2018-01471, Paper 1 at 1–2, 6–8, 12–39. This similarity shows that Petitioner was fully capable of filing the Petition at or around the time Petitioner was served with a complaint giving them notice that the ’829 patent was being asserted by Patent Owner. Moreover, Petitioner is challenging the patentability of every claim in the ’829 patent, which suggests that there was no need for Petitioner to delay filing until Patent Owner identified which specific claims of the ’829 patent were being asserted. When “the evidence shows that the petitioner[s] did not file the petition expeditiously . . . or even if the petitioner cannot explain the delay in filing its petition,” we weigh this factor toward exercising discretion to deny Petitioner had everything it needed to file the Petition much earlier in the parallel District Court proceeding and because Petitioner offers no explanation for why the filing was delayed, we find the timing of the Petition weighs heavily toward exercising discretion to deny institution.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“relevant circumstances, Petitioner contends that this factor “favors institution because the grounds in the petition provide a strong showing of obviousness.” Pet. 67. Although we do not undertake here a full analysis of the merits, our initial inspection of the record and the parties’ arguments suggest that there is a reasonable likelihood that Petitioner would prevail with respect to at least 1 of the claims challenged in the Petition. The showing, however, is not so strong as to tip the balance in favor of institution. See Fintiv, Paper 11 at 14 (“[I]f the merits of a ground raised in the petition seem particularly strong on the preliminary record, this fact has favored institution”) (emphasis added). In a balanced assessment of the relevant evidence of record, this factor neither weighs in favor nor against exercising our discretion to deny institution. G. Conclusion Based on the particular circumstances of this case, we determine that instituting an inter partes review would be an inefficient use of Board resources. As discussed above, the trial in the underlying litigation is currently scheduled to begin in about four months and may conclude several months before we would reach a final decision in this proceeding. Furthermore, the record shows that Petitioner delayed filing the Petition without any excuse for the delay and, therefore, bears significant expended effort in preparing for the upcoming trial that will address issues that substantially overlap with those raised in the Petition. On balance, after a holistic consideration of the relevant facts, we conclude that efficiency and integrity of the system are best served by denying institution. Thus, we exercise our discretion under § 314(a) to deny institution of inter partes review. IV. ORDER Accordingly, it is ORDERED that the Petition is denied; and FURTHER ORDERED that no inter partes review is instituted.” slip op. at 17
Discretionary denialPatents in suitUS 9,749,829 - Google LLC / Samsung Electronics Co., Ltd. et al. v. Agis Software Development, LLCInstitution deniedPTAB · Nov 25, 2020 · IPR2020-00873 · APJ Trevor M Jefferson · IPR · Institution
The Board denied institution on all challenged claims under § 314(a), finding that the Fintiv factors favored denial because trial was near, the petition was delayed, and issues substantially overlapped.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“relevant circumstances, Petitioner contends that this factor “favors institution because the grounds in the petition provide a strong showing of obviousness.” Pet. 73. Although we do not undertake here a full analysis of the merits, our initial inspection of the record and the parties’ arguments suggest that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. In a balanced assessment of the relevant evidence of record, and in view of the possible strength of Petitioner’s showing on the present record, this factor is neutral.” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“On the record before us at this time, the only persuasive facts that we have regarding the proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision is an Order by the District Court that sets trial for April 5, 2021, which will require “good cause” to be changed, and our projected statutory deadline, which would be toward the end of November 2021. While we appreciate that the trial date is susceptible to change if and when the District Court determines good cause exists to do so, we decline to speculate whether such a contingency will occur. Instead, we must base our evaluation on the existing facts supported by the evidence of record. This factor, therefore, significantly favors the exercise of discretionary denial.” slip op. at 9
Discretionary denialPatents in suitUS 9,820,123 - Supercell OY v. Gree, Inc.Rehearing deniedPTAB · Nov 18, 2020 · PGR2020-00041 · APJ Lynne H Browne · PGR · Rehearing
The Board denied Supercell’s rehearing request, upholding denial of institution based on the Fintiv factors and the risk of duplicated efforts and inconsistent results.
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” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“this factor or that we misapprehended the trial date. At the time of our Decision, trial was scheduled in the parallel proceeding for December 7, 2020, approximately nine months before our final written decision would have been due, if we were to institute trial. Dec. 10–11. As such, this gap in timing created a cognizable risk of inconsistent results and duplication of efforts, which weighed toward denying institution. Id. at 7, 11. Additionally, the Decision notes that some uncertainty exists regarding trial dates, as Petitioner again argues in its Request. Id. at 11; Req. Reh’g 4. However, the Decision goes on to determine that even if trial in the parallel proceeding was delayed by two months, consistent with Petitioner’s prior requested delay, the proximity of the trial date to our final written decision would still favor denying institution. Dec. 12 (citing Ex. 2002, 2). As such, Petitioner has not shown that the Board misapprehended the trial date.” slip op. at 5
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“contentions. In our Decision, we relied in part upon Dr. Claypool’s testimony from related litigation between the parties in determining that Petitioner failed to meet its burden of demonstrating that Mastermind was” slip op. at 8
- BurdenDecided for patent owner
“Petitioner was provided an opportunity to respond to this evidence to address any “time-based distinctions in Dr. Claypool’s testimony,” however, Petitioner declined to address this testimony in its Preliminary Reply, despite having the opportunity to do so. Prelim. Reply 5–7. We decline to consider now, on rehearing, arguments that Petitioner failed to make in its pre-institution papers. It is Petitioner’s burden to demonstrate that Mastermind was publicly accessible. As we stated in our Decision, this prior testimony casts serious doubt on Petitioner’s ability to satisfy that burden. Dec. 25. We also decline to consider new testimonial evidence submitted on rehearing on this issue, as Petitioner does not show good cause for admitting this new evidence. See Huawei Device Co. v. Optics Cellular Tech., LLC, IPR2018-00816, Paper 19 (PTAB Jan. 8, 2019) (precedential) (showing of “good cause” required prior to filing a rehearing request or in the request itself for new exhibits to be admitted). We could not have misapprehended or overlooked evidence and arguments that were not made before our Decision.” slip op. at 9
§ 102 anticipationDiscretionary denialPatents in suitUS 10,307,677 - Supercell OY v. Gree, Inc.Rehearing deniedPTAB · Nov 18, 2020 · PGR2020-00039 · APJ Lynne H Browne · PGR · Rehearing
The Board denied Supercell’s rehearing request, leaving in place denial of institution of PGR challenging claims 1–24 based on the Fintiv factors and parallel litigation.
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 2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. 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). Additionally, 37 C.F.R. § 42.71(d) further provides that “[t]he burden of showing a decision should be modified lies with the party challenging the decision,” i.e., Petitioner, 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 a motion, an opposition, or a reply.”” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“the parties jointly requested a trial delay in the prior proceeding, from December 7, 2020, to March 1, 2021, which the district court granted. Ex. 1024, 1. Even considering these post-Decision developments, this three month delay results in a trial date in the parallel proceeding set six months before our final written decision would be due. Similar to the potential delay discussed in our Decision, a jury trial set to begin six months before a final written decision also weighs in favor of denying institution. Dec. 12; see Prelim. Resp. 11 (identifying three prior PTAB proceedings in which institution was denied where trial was scheduled to occur six months before a final written decision, including the precedential NHK Spring decision). We decline to speculate, absent case-specific evidence, as to any future additional delay of the parallel proceeding’s trial date that may— or may not—be requested by the parties, and that may—or may not— be granted by the district court. See Ex. 1024, 1, 4 (indicating that the trial date “cannot be changed without showing good cause,” which “is not shown merely by indicating that the parties agree that the deadline should be changed”) (emphasis omitted). On the current record, a cognizable risk of inconsistent results exists, due to the scheduled date of trial and the statutory due date of a final written decision.3” slip op. at 6
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedOther
“contentions. In our Decision, we relied in part upon Dr. Claypool’s testimony from related litigation between the parties in determining that Petitioner failed to meet its burden of demonstrating that Mastermind was publicly accessible. Dec. 24–25. Specifically, we relied upon Dr. Claypool’s prior testimony that, 4 “Mastermind’s In-Game Builder Idea (with LOADS of pictures!)” (“Mastermind”), available at https://web.archive.org/web/20130915081112/http:/forum.supercell.net:80/s howthread.php/149687-Mastermind-s-In-Game-Builder-Idea-(with-LOADSof-pictures!) (in two parts) (Ex. 1015, “Olesiuk Decl.”). it is my opinion that a diligent, skilled researcher engaged in a reasonable search for prior art would not have found Mastermind as a prior art reference even with the benefit of [Patent Owner’s] infringement contentions before the filing of the Petition for Post-Grant Review. A diligent, skilled researcher would not spend time sifting through the suggestions provided on Internet message boards, as they would normally not include useful or sufficiently detailed suggestions. Ex. 2009 ¶ 164 (emphasis added); Dec. 25.” slip op. at 8
- Other 314aDecided for patent owner
“different posture of PGR proceedings as compared to IPR proceedings, when exercising discretion to deny institution. As summarized above, the Decision discusses that common statutory language exists in § 314(a)— directed toward IPR proceedings—and in § 324(a)—directed to post-grant review proceedings. See supra § I.A; Dec. 5–8. The Decision also discusses the common policy justifications implicated when determining whether to institute either an IPR proceeding or a PGR proceeding. Dec. 6–7. The Decision then goes on to recognize and discuss certain differences between PGR proceedings and IPR proceedings. Id. at 7–8. Despite these differences, we determined that the Board’s binding precedent set forth in NHK Spring and Fintiv applies to this PGR proceeding. Id. In doing so, we additionally evaluated certain differences between PGR proceedings and IPR proceedings, when considering the Fintiv Order factors. See, e.g., id. at 12, 15–16, 18–20. Petitioner has not demonstrated that we abused our discretion in doing so.” slip op. at 11
§ 102 anticipationDiscretionary denialPatents in suitUS 10,307,676 - Philip Morris Products, S.A. v. Rai Strategic Holdings, Inc.Institution deniedPTAB · Nov 16, 2020 · IPR2020-00919 · APJ Elizabeth M Roesel · IPR · Institution
The Board denied institution for claims 27–30 under § 314(a), finding the Fintiv factors favored denial because the ITC was expected to decide validity before the Board.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“January 25, 2021, with a May 14, 2021 deadline for the Initial Determination and a September 15, 2021 due date for the Final Determination. Prelim. Resp. 63 (citing Ex. 2029, 3–4). If we were to institute an inter partes review, then the statutory deadline for our final written decision would be in November, 2021. Patent Owner argues that this timing “strongly favors denial of institution.” Id. at 62–63. Petitioner counters that, even though the “final written decision is due after the ITC’s target date,” the final written decision will issue “long before the district court will lift the stay and decide validity.” Reply 7. We agree with Patent Owner that the ITC is likely to reach a final determination ahead of the date of our final written decision. Thus, this factor weighs in favor of exercising discretion to deny institution.” slip op. at 9
Discretionary denialPatents in suitUS 9,901,123 - Google LLC v. Personalized Media Communications, LLCRehearing deniedPTAB · Nov 5, 2020 · IPR2020-00722 · APJ John F Horvath · IPR · Rehearing
The Board denied Google’s request for rehearing and left in place its denial of institution, finding no abuse of discretion in its Fintiv analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Standard for Reconsideration 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 occurs if the decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision.” Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (internal citations omitted). 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, or a reply.” 37 C.F.R. § 42.71(d). The burden of showing a decision should be modified on a request for rehearing lies with the party challenging the decision. Id.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDecided for patent owner
“Our Decision performed such an analysis, finding factor 3 favored denying institution because “the District Court and the parties have invested significant resources in the district court case on issues of claim construction and validity, including by completing expert discovery on July 8, 2020.” Dec. 8. The issuance of the 94-page claim construction order and the completion of expert discovery on validity, all done in preparation for a trial scheduled to commence less than two months after our Decision was due, is evidence that “the parallel proceeding is more advanced, a stay may be less likely, and instituting would lead to duplicative costs,” all of which are factors that “favor[] denial” because “the court and parties have invested sufficient time in the parallel proceeding to favor denial.” Fintiv, Paper 11 at 9–10.” slip op. at 7
Discretionary denialPatents in suitUS 7,747,217 - Google LLC v. Personalized Media Communications, LLCRehearing deniedPTAB · Nov 5, 2020 · IPR2020-00723 · APJ John F Horvath · IPR · Rehearing
The Board denied Google’s rehearing request and maintained its denial of institution, finding the Fintiv factors favored discretionary denial under § 314(a).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Standard for Reconsideration 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 occurs if the decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision.” Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (internal citations omitted). 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, or a reply.” 37 C.F.R. § 42.71(d). The burden of showing a decision should be modified on a request for rehearing lies with the party challenging the decision. Id.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“D. Balancing the Fintiv Factors for Abuse of Discretion We have considered carefully the arguments and evidence before us in view of the Fintiv factors Petitioner relies upon to argue we erred in our Decision. As we discussed previously, our analysis is fact driven, and no single factor is determinative of whether we exercise our discretion to deny institution under § 314(a). Fintiv factor 6 does not weigh in favor of institution because the strength of the merits are not clear and it would be inefficient to expend the resources needed to provide clarity given the significant resources already spent by the parties and the District Court. In any case, we considered a balanced assessment of all factors as required by Fintiv, including the investment in claim construction and discovery (factor 3), the pending trial date1 (factor 1), and the fact that there is no difference between the parties (factor 5), and concluded that the balance of the Fintiv factors weighed in favor of exercising our discretion to deny institution. Petitioner’s arguments show no misapprehension of our analysis or weighing of the Fintiv factors. Although Petitioner would have us weigh the factors differently, disagreement with how the Board weighed the factors is not a proper basis for requesting rehearing nor is it evidence that our Decision mistook Fintiv or overlooked or misapprehended any Fintiv factors.” slip op. at 8
Discretionary denialPatents in suitUS 7,747,217 - Google LLC v. Personalized Media Communications, LLCRehearing deniedPTAB · Nov 5, 2020 · IPR2020-00719 · APJ Georgianna W Braden · IPR · Rehearing
The Board denied Google’s rehearing request and left in place its denial of institution, finding no abuse of discretion in its Fintiv analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“B. Standard for Reconsideration 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: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision. Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015). 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 › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“factor 6 and disagree that we misapprehended or overlooked this Fintiv factor. In the Decision to Deny Institution, we did not consider the merits because we determined after a brief consideration of the prosecution history that “significant resources . . . will be required to resolve issues of claim construction to reach preliminary conclusions on the merits of the Petition.” Dec. 16. Although Fintiv provides that review includes a balanced assessment of all the factors, including the merits, here, even if we assumed that factor 6 weighed toward institution, we would still deny institution because of the significant weight of the other Apple v. Fintiv factors against institution in this case. As explained in our Decision to Deny Institution, the goal of the Fintiv balanced assessment is to determine “whether efficiency and integrity of the system are best served by denying or instituting review.” Dec. 15 (quoting Fintiv, Paper 11 at 6). In other words, the review of the prosecution history revealed that the merits of the Petition were not so sufficiently clear that we could reach a preliminary conclusion that the merits outweighed the other Fintiv factors we considered, such as the resources already expended by the parties and the timing of the district court hearing.” slip op. at 6
Discretionary denialcites PhillipsPatents in suitUS 8,739,241 - Google LLC v. Personalized Media Communications, LLCRehearing deniedPTAB · Nov 5, 2020 · IPR2020-00720 · APJ Jon M Jurgovan · IPR · Rehearing
The Board denied Google’s rehearing request and left in place its § 314(a) denial of review based on the balance of the Fintiv factors.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“B. Standard of Review 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: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision. Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (internal citations omitted). The party challenging the decision has the burden of showing a decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDecided for patent owner
“(Nov. 2019)1 (“TPG”). When a patent owner raises an argument for discretionary denial due to the advanced state of a parallel proceeding, the Board has set forth several factors that it will consider to balance considerations of system efficiency, fairness, and patent quality. See Fintiv, Paper 11 at 5–6. These factors include: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Id. at 6. [“I]n evaluating these factors, the Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id.” slip op. at 4
Discretionary denialPatents in suitUS 8,601,528
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.