- Intel Corporation / Lenovo (United States) Inc. et al. v. Collision Communications, Inc.Institution deniedPTAB · May 28, 2025 · IPR2025-00301 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution of review for claims 1–11, 16, and 21 under § 314(a), finding the Fintiv factors favored discretionary denial, and denied joinder.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“2026. This date is nearly five months prior to the date on which the final written decision would be due if trial were instituted in this proceeding. And, even if we assume Petitioner’s alleged February–March 2026 trial date, this date too is several months prior to the projected final written decision deadline. As such, it is unlikely that a final written decision in this proceeding would issue before trial in the district court, unless the trial was delayed or rescheduled for a later time. Thus, we find this factor weighs in favor of exercising our discretion to deny institution. See ARM Ltd. v. Daedalus Prime LLC, IPR2025-00207, Paper 10 at 2 (May 16, 2025) (Before the Office of the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office) (exercising discretion to deny institution with the same relative timing between district court trial and final written decision deadline).” slip op. at 13
- PTAB / AIA Trials › Motions to amend / substitute claimsNot reached
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“presented in the petition . . . and any [preliminary] 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). Institution of inter partes review, however, is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons discussed below, we exercise discretion pursuant to 35 U.S.C. § 314(a) not to institute inter partes review. Additionally, for the same reasons and because institution was denied in IPR2024-01248, we deny Petitioner’s Motion for Joinder. See 35 U.S.C. § 315(c) (“[T]he Director . . . may join as a party . . . any person who properly files a petition under section 311 that the Director . . . determines warrants the institution of an inter partes review under section 314.”).” slip op. at 3
Discretionary denialPatents in suitUS 9,814,071 - Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Collision Communications, Inc.Institution deniedPTAB · Feb 7, 2025 · IPR2024-01247 · APJ Donald E Daybell · IPR · Institution
Institution was denied: claims 1–16 lacked a reasonable likelihood of success, and the Board declined to reach claims 17–18 because reviewing only two potentially viable claims would be inefficient.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“as of the time of the invention of the ’492 Patent “had at least a bachelor’s in EE/CE/CS, physics, or equivalent, and two years of experience with cellular telecommunications, radio-access network architectures, protocols and signal propagation in wireless networks. More education can supplement practical experience and vice versa.” Pet. 5 (citation omitted). Patent Owner does not dispute Petitioner’s assertion. At this juncture, we adopt Petitioner’s definition. This definition appears to be consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (recognizing that the applied prior art may reflect an appropriate level of skill).” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“In view of the parties’ agreement to adopt Patent Owner’s construction and the District Court’s persuasive analysis, we find that the “multi-user detector decision unit” terms in claims 1 and 10 are properly construed on the record before us to recite the functions “using decision criteria to determine a selected multi-user detector” for claim 1 and “select[ing] a multi-user detector based upon at least one threshold” for claim 10, both of which have the following corresponding structure: a MUD decision unit 220 (or, alternatively, decision logic unit 520) configured to perform one or more of the several decision algorithms (e.g., the BER/User, SINR/Symbol, Filtered SINR/Symbol, Detected Amount/Symbol, Correlation Matrix Ratio/User, Correlation Matrix Eigenvalues, Computational Complexity, Number of Bits, Number of Users, and other algorithms) disclosed at 8:12–18, 13:35–14:40, 15:3–21, 19:43– 48, 19:56–62, and 20:41–49 of the ’492 Patent.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“a reasonable likelihood of success in establishing that Onggosanusi teaches or suggests these limitations. Petitioner does not rely on Egnor for these limitations. Therefore, Petitioner fails to show a reasonable likelihood of success in establishing that claims 1 and 10 would have been obvious over Onggosanusi and Egnor. Claims 2–9 and 11–16 depend from claims 1 and 10 respectively, and thus Petitioner likewise fails to show a reasonable likelihood of success that those dependent claims would have been obvious over Onggosanusi and Egnor. Therefore, we find that Petitioner fails to show a reasonable likelihood of success for Ground 1.” slip op. at 15
- PTAB / AIA Trials › Discretionary denialInstitution denied discretionary otherInstitution denied
“Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). “Even when a petitioner demonstrates a reasonable likelihood of prevailing with respect to one or more claims, . . . institution of review remains discretionary.” Chevron Oronite Co. v. Infineum USA L.P., IPR2018-00923, Paper 9 at 10 (PTAB Nov. 7, 2018) (informative) (citing SAS Inst. v. Iancu, 138 S. Ct. 1348, 1356 (2018); Harmonic, 815 F.3d at 1367). Where a Petition presents a reasonable likelihood of success as to only a small number of the challenged claims, the Board has the discretion to decline to institute review, because instituting a full review on all challenged claims may be an inefficient use of the Board’s limited resources. See, e.g., Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 at 42–43 (PTAB Jan. 24, 2019) (informative) (denying institution where a petitioner demonstrated a reasonable likelihood of success on only two out of twenty- a petitioner demonstrated a reasonable likelihood of success on only two out of twenty claims). Of the eighteen challenged claims, we have found that Petitioner failed to establish a reasonable likelihood of success as to sixteen of those claims. This leaves a single independent claim (claim 17) and a single dependent claim (claim 18) remaining for consideration. Even were we to conclude that Petitioner had established a reasonable likelihood of success as to claims 17 and 18, this would leave at most two claims subject to a single ground upon which such a showing had been made, out of eighteen challenged claims. Based on the particular circumstances of this case, it would be inefficient for the Board to expend resources on a full review of all eighteen challenged claims, where Petitioner has failed to establish even a reasonable likelihood of success as to the vast majority of those claims. Accordingly, we need not, and do not, take any position as to Petitioner’s showing on Ground 2 but instead exercise our discretion to deny review.” slip op. at 21
Claim constructionDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,593,492 - Iko Industries, Inc. / Iko Industries Ltd. v. Kirsch Research And Development, LLCInstitution deniedPTAB · May 20, 2022 · IPR2022-00416 · APJ Charles J Boudreau · IPR · Institution
The Board denied institution on all challenged claims because IKO Industries, Inc. and real party in interest Tarco were served more than one year before the petition, barring review under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“We agree with Patent Owner. Despite Petitioner’s “certif[ication],” quoted by Patent Owner in the Preliminary Response, that “Petitioner is not barred or estopped from requesting inter partes review challenging the patent claims on the grounds identified herein” (Pet. 2), the uncontroverted evidence before us demonstrates otherwise. As Patent Owner points out, the January 7, 2022, filing date of the Petition is more than twenty months after both Petitioner IKO Industries, Inc. and real party in interest Tarco were served in the IKO and Tarco lawsuits, respectively. See Exs. 2003, 2005.1” slip op. at 4
Discretionary denialPatents in suitUS 6,308,482 - 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 - Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Regents Of The University Of MinnesotaRehearing deniedPTAB · Sep 18, 2020 · IPR2017-01186 · APJ Robert J Weinschenk · IPR · Rehearing
The Board denied Ericsson’s rehearing request, leaving institution denied because the petition was time-barred under § 315(b) based on privity with district court defendants.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS When considering a request for rehearing of a decision whether to institute an inter partes review, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“In the Decision, we explained that 35 U.S.C. § 315(b) provides that an inter partes review “may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Dec. 4. We also explained that in determining whether a petitioner is in privity with another party, we consider the Supreme Court’s decision in Taylor v. Sturgell, 553 U.S. 880 (2008). Dec. 4–5. Taylor provides six categories of exceptions to the rule against nonparty preclusion, namely 1) when “[a] person . . . agrees to be bound by the determination of issues in an action between others”; 2) “based on a” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“In the Decision, we explained that 35 U.S.C. § 315(b) provides that an inter partes review “may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Dec. 4. We also explained that in determining whether a petitioner is in privity with another party, we consider the Supreme Court’s decision in Taylor v. Sturgell, 553 U.S. 880 (2008). Dec. 4–5. Taylor provides six categories of exceptions to the rule against nonparty preclusion, namely 1) when “[a] person . . . agrees to be bound by the determination of issues in an action between others”; 2) “based on a” slip op. at 2
Discretionary denialPatents in suitUS 8,774,309 - Google LLC v. Uniloc 2017 LLCRehearing deniedPTAB · May 12, 2020 · IPR2020-00115 · APJ Juliet Mitchell Dirba · IPR · Rehearing
The Board denied Google’s rehearing request, leaving in place its discretionary denial of institution for claims 1–3 under § 314(a).
RulingsRehearing decision- Other 314aInstitution denied discretionary otherDenied
“that the relevant facts were substantially the same as those presented in NHK. Decision 6–9. The district court had scheduled trial for August 2 Although the Consolidated TPG was published after the Petition was filed, the earlier version (available when the Petition was filed) also includes this guidance. See July 2019 Office Trial Practice Guide Update, 84 Fed. Reg. 33,925 (July 16, 2019). 2020—more than seven months before a final written decision would be due—and the record included “no evidence that the district court has granted (or would grant) a stay pending inter partes review.” Id. at 7. Further, Petitioner “present[ed] overlapping arguments in the Texas Litigation and in the Petition.” Id. at 8 (citing Pet. 24; Ex. 2003, 5, 14–15, 18). Although “the Texas Litigation and the Petition [did] not involve an identical set of claims”—as dependent claims 2 and 3 were not asserted in the Texas Litigation, but were challenged in the Petition—we were not persuaded that this fact alone justified a trial here, as the Board had already instituted two other inter partes review proceedings challenging all claims of the ’609 patent. Id. at 9 (citing Sling TV, L.L.C. v. Uniloc 2017 LLC, IPR2019- 01367, Paper 7 (PTAB Feb. 4, 2020) (Institution Decision); Netflix, Inc. v. Uniloc 2017, IPR2020-00041, Paper 10 (PTAB Mar. 25, 2020) (Institution Decision)). For these reasons, we exercised our discretion to deny the Petition. Id. at 10.” slip op. at 3
- RehearingRehearing, deniedDenied
“III. ANALYSIS 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 lies with the party challenging the decision.” Id.” slip op. at 4
Discretionary denialPatents in suitUS 8,407,609 - Juniper Networks, Inc. v. Finjan, Inc.Rehearing deniedPTAB · Feb 27, 2020 · IPR2019-01403 · APJ Patrick M Boucher · IPR · Rehearing
The Board denied Juniper’s rehearing request, finding no abuse of discretion in denying institution because the petition was time-barred under § 315(b).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS The applicable standard for granting a request for rehearing of a petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party seeking rehearing has the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › §315(b) time barInstitution denied time barDecided for patent owner
“district court and the June 13, 2018 vacatur of that grant, we determined that “service occurred at a time authorized by the district court.” Dec. 6. In its Request, Petitioner contends that, because the district court originally granted leave to serve the complaint in “error,” “Patent Owner’s June 8, 2018 filing was not properly served and cannot start the clock on Petitioner’s one-year deadline.” Req. Reh’g 1. But in advancing this contention, Petitioner misconstrues the meaning of “properly served” in the context of the Board’s precedential decision in GoPro, Inc. v. 360Heros, Inc., IPR2018-01754, Paper 38 (PTAB Aug. 23, 2019) (precedential). In recognizing that a complaint “improperly served” does not trigger the § 315(b) time bar, the Precedential Opinion Panel in GoPro cites IpDatatel, LLC v. ICN Acquisition, LLC, IPR2018-01823, Paper 17 at 10–18 (PTAB Apr. 17, 2019) for the interpretation of “served” in § 315(b) as “requir[ing] compliance with Rule 4 of the Federal Rules of Civil Procedure.” GoPro at 14. Although we alerted the parties in our Decision that “we discern no evidence on this record that service failed to comply with Rule 4 of the Federal Rules of Civil Procedure,” Petitioner offers no evidence or argument in its Request that prompts us to reconsider that finding. See Dec. 6.” slip op. at 3
- Other 314aOther
“In this case, the Chief Judge has considered Petitioner’s suggestion for an expanded panel, but has determined that an expanded panel is not warranted.” slip op. at 2
Discretionary denialPatents in suitUS 7,418,731 - Google LLC v. Uniloc Luxembourg S.A.Institution deniedPTAB · Mar 29, 2018 · IPR2017-02067 · APJ Miriam L Quinn · IPR · Institution
The Board denied institution: it declined review of claims 1–12, 14–17, 25, and 26 under §§ 315(d) and 325(d), and found no reasonable likelihood for claims 13, 18–24, and 27.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Here, our exercise of discretion to deny institution under §§ 315(d) and 325(d) is warranted for several reasons. To start with, the previous IPRs and the present Petition rely on Zydney as the primary reference against which the majority of the claim limitations are mapped. Petitioner has proffered no reasoning regarding how it has relied on Zydney in any way that differs materially from the previous IPRs. And Petitioner’s reliance on different secondary references does not remedy this shortcoming. Moreover, Petitioner, here, does not explain whether the secondary references in this case are used in a different manner or add anything materially different to the secondary references used in the previous IPRs. Further, Zydney is being considered on the merits in pending IPRs. In fact, two trials regarding the ’433 patent are ongoing, with Zydney as the hallmark, i.e., a distinctive feature, of those trials. See IPR2017-01427 and IPR2017-01428. Under these circumstances, we look to Petitioner to provide some reason that convinces us to institute yet another trial that features Zydney as prominently as the previously presented IPRs. Again, if there was a manner in which Petitioner here distinguishably relied on Zydney, Petitioner did not proffer that fact explicitly. Moreover, the time of filing of this Petition leads us to conclude that Petitioner gained the benefit of Patent Owner’s preliminary responses in the previous IPRs. Patent Owner filed those responses on September 9, 2017. Three days later Petitioner filed the instant petition. Petitioner, as the party with the knowledge of this fact, failed to allege that it did not gain the benefit of the preliminary responses in previous IPRs. We look to Petitioner to explain its delay in its filing. Petitioner provides no reason here. Finally, although not a dispositive fact, we note that in the previous IPRs, Patent Owner requested authorization to file a motion to amend challenged claims of the ’433 patent. This fact raises concerns regarding the complexity and potential for inconsistency inherent in allowing this proceeding to occur in tandem with ongoing trials that arise in large part from the considerable role Zydney plays each proceeding. Further, we are concerned not only with ensuring consistency across multiple trials focused on Zydney, but also with administrative efficiency because significant resources of the Board would be consumed reconciling arguments, issues, and evidence across multiple, independent trials,3 especially in light of the forthcoming motion to amend in the previous IPRs. Cf. Heckler v. Chaney, 470 U.S. 821, 831 (1985) (indicating an agency, when deciding whether to take action in a particular matter, must determine whether its resources are best spent on one matter or another).” slip op. at 9
- Other 314aInstitution denied discretionary otherDenied
“authority, under 37 C.F.R. § 42.122, to issue “any appropriate order regarding the additional matter[, i.e., this proceeding,] including providing for the stay, transfer, consolidation, or termination or any such matter.” See 35 U.S.C. § 315(d). We recognize that in exercising our discretion we determine the proper course of conduct in a proceeding (37 C.F.R. § 42.5) in a manner consistent with securing the just, speedy, and inexpensive resolution of the proceeding (37 C.F.R. § 42.1(b)). Here, our exercise of discretion to deny institution under §§ 315(d) and 325(d) is warranted for several reasons. To start with, the previous IPRs and the present Petition rely on Zydney as the primary reference against which the majority of the claim limitations are mapped. Petitioner has proffered no reasoning regarding how it has relied on Zydney in any way that differs materially from the previous IPRs. And Petitioner’s reliance on different secondary references does not remedy this shortcoming. Moreover, Petitioner, here, does not explain whether the secondary references in this case are used in a different manner or add anything materially different to the secondary references used in the previous IPRs. Further, Zydney is being considered on the merits in pending IPRs. In fact, two trials regarding the ’433 patent are ongoing, with Zydney as the hallmark, i.e., a distinctive feature, of those trials. See IPR2017-01427 and IPR2017-01428. Under these circumstances, we look to Petitioner to provide some reason that convinces us to institute yet another trial that features Zydney as prominently as the previously presented IPRs. Again, if there was a manner in which Petitioner here distinguishably relied on Zydney, Petitioner did not proffer that fact explicitly.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“likelihood of prevailing with regard to its contention that claim 13 is anticipated by Zydney. In particular, we find that Petitioner has failed to show that Zydney’s software agent “displays a selectable control for generating an instant voice message using an intercom mode.” This is an anticipation challenge, which requires that the art disclose each and every limitation of the claim, in the same arrangement as claimed. Net MoneyIn, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). The Board cannot fill in the gaps and consider what an ordinary artisan might supplement or envisage. Net MoneyIn, 545 F.3d at 1372; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor, 851 F.3d 1270, 1274–75 (Fed. Cir. 2017) (The Board is not permitted to “fill in missing limitations simply because a skilled artisan would immediately envision them.”). The Petition sets forth that Zydney teaches a “selectable control” because the software agent permits a number of distinct modes of communication and that the originator selects a delivery mode, i.e., intercom mode. Pet. 1718. But with regard to the display of the “selectable control,” Petitioner states that “Zydney plainly teaches that its software agent’s user interface displays a selectable control for generating an instant voice message using an intercom mode based on the connectivity status (e.g., status of the recipient) of an intended recipient.” Pet. 18 (citing Ex. 1003 ¶ 58). In support, the Min Declaration mentions “display” in reference to selecting the recipients, stating, “Once the originator has selected the recipients from the display, Zydney’s system allows the originator to select a delivery option depending on which ‘core state’ the intended recipient is in—online or offline.” Id. This is insufficient support for demonstrating that Zydney discloses the display limitation of claim 13. Claim 13 recites that the “instant voice messaging application displays a selectable control for generating an instant voice message using an intercom mode.” Neither the Petition nor the Min Declaration addresses the display of the “selectable control for generating an instant voice message.” At best, the Min Declaration adduces to the display of a list of recipients and their selection. But there is no explanation as to the display of the “selectable control” in Zydney or citation of evidence that Zydney displays any selection such that it can generate a voice message in intercom mode. Without evidence that Zydney discloses the recited “display,” we are unpersuaded by Petitioner’s arguments that Zydney anticipates the claim. Therefore, Petitioner’s contention of unpatentability regarding claim 13 does not meet the reasonable likelihood institution threshold.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). The Board cannot fill in the gaps and consider what an ordinary artisan might supplement or envisage. Net MoneyIn, 545 F.3d at 1372; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor, 851 F.3d 1270, 1274–75 (Fed. Cir. 2017) (The Board is not permitted to “fill in missing limitations simply because a skilled artisan would immediately envision them.”). The Petition sets forth that Zydney teaches a “selectable control” because the software agent permits a number of distinct modes of communication and that the originator selects a delivery mode, i.e., intercom mode. Pet. 1718. But with regard to the display of the “selectable control,” Petitioner states that “Zydney plainly teaches that its software agent’s user interface displays a selectable control for generating an instant voice message using an intercom mode based on the connectivity status (e.g., status of the recipient) of an intended recipient.” Pet. 18 (citing Ex. 1003 ¶ 58). In support, the Min Declaration mentions “display” in reference to selecting the recipients, stating, “Once the originator has selected the recipients from the display, Zydney’s system allows the originator to select a delivery option depending on which ‘core state’ the intended recipient is in—online or offline.” Id. This is insufficient support for demonstrating that Zydney discloses the display limitation of claim 13. Claim 13 recites that the “instant voice messaging application displays a selectable control for generating an instant voice message using an intercom mode.” Neither the Petition nor the Min Declaration addresses the display of the “selectable control for generating an instant voice message.” At best, the Min Declaration adduces to the display of a list of recipients and their selection. But there is no explanation as to the display of the “selectable control” in Zydney or citation of evidence that Zydney displays any selection such that it can generate a voice message in intercom mode. Without evidence that Zydney discloses the recited “display,” we are unpersuaded by Petitioner’s arguments that Zydney anticipates the claim. Therefore, Petitioner’s contention of unpatentability regarding claim 13 does not meet the reasonable likelihood institution threshold.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 8,995,433 - Blue Coat Systems, Inc. v. Finjan, Inc.Institution deniedPTAB · Jun 20, 2016 · IPR2016-00478 · APJ James B Arpin · IPR · Institution
The Board denied institution on all challenged claims as time-barred under § 315(b), after dismissing the motion for joinder as moot.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“Petitioner acknowledges that a complaint alleging infringement of the ʼ968 patent was served on Petitioner more than a year before the filing date of the Petition. Pet. 8–9. Under 35 U.S.C. § 315(b), that is a bar to the institution of inter partes review unless Petitioner’s request for joinder is granted. See id. (“[H]owever, a motion to joinder has been filed to join the inter partes review requested in the ’149 petition not later than 1 month after institution in accordance with 37 U.S.C. § 315(c).”). Because we dismiss that Joinder Motion (see supra Section II), we conclude that the Petition should be denied as time-barred under § 315(b). B. Denial on the Same Grounds as the ʼ149 IPR” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“II. DISMISSAL OF MOTION FOR JOINDER Because we denied the petition in IPR2016-00149, and we did not institute inter partes review in that case, Petitioner’s Joinder Motion is dismissed as moot. 35 U.S.C. § 315(c).1” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied time barInstitution denied
“’149 IPR, Paper 11, 7; see ’149 IPR, Paper 2, 8–9. In view of our determination that the Petition is time-barred under 35 U.S.C. § 315(b), however, we do not need to decide the separate grounds for denial urged by Patent Owner. See Prelim. Resp. 18–60. IV. ORDER It is, therefore, ORDERED that the Motion for Joinder is dismissed as moot; and FURTHER ORDERED that the Petition is denied as to all challenged claims as untimely filed, and no trial is instituted.” slip op. at 4
Discretionary denialPatents in suitUS 6,965,968 - Blue Coat Systems, Inc. v. Finjan, Inc.Institution deniedPTAB · Jun 20, 2016 · IPR2016-00479 · APJ James B Arpin · IPR · Institution
The Board denied institution on all challenged claims as untimely under § 315(b), after dismissing the motion for joinder as moot.
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“II. DISMISSAL OF MOTION FOR JOINDER Because we denied the petition in IPR2016-00150, and we did not institute inter partes review in that case, Petitioner’s Joinder Motion is dismissed as moot. 35 U.S.C. § 315(c).1” slip op. at 3
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“Petitioner acknowledges that a complaint alleging infringement of the ʼ968 patent was served on Petitioner more than a year before the filing date of the Petition. Pet. 9. Under 35 U.S.C. § 315(b), that is a bar to the institution of inter partes review unless Petitioner’s request for joinder is granted. See id. (“[H]owever, a motion to joinder has been filed to join the inter partes review requested in the ’150 petition not later than 1 month after institution in accordance with 37 U.S.C. § 315(c).”). Because we dismiss the Joinder Motion (see supra Section II), we conclude that the Petition should be denied as time-barred under § 315(b). B. Denial on the Same Grounds as the ʼ150 IPR” slip op. at 3
Discretionary denialPatents in suitUS 6,965,968
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.