- Solaredge Technologies Ltd. v. Koolbridge Solar, Inc.Institution deniedPTAB · Apr 19, 2022 · IPR2022-00008 · APJ Brian J Mcnamara · IPR · Institution
The Board declined to institute IPR on claims 1–13 and 20, exercising its discretion because Petitioner’s multiple petitions did not justify reviewing this petition.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“As to the Group 1 claims, we agree with Patent Owner. The instant Petition contends that Mori anticipates challenged claims 1–3, 8–10, and 12 and that all the challenged claims are at least obvious. For example, Petition 1 asserts that Tracy anticipates claims 1–3 and 8–10 and that all the claims are obvious. Petition 3 asserts that Schmidt anticipates claims 1–3 and 8–10 and that all the claims are obvious. Petitioner contends that the question of which of the Petitions is most paramount could also depend upon the constructions applied to the claims, particularly if the claims are construed to include means-plus-function limitations. Ranking 3. As an example, Petitioner argues that, if independent claim 8 is construed “to allow for the single-phase output and control scheme of the Fig. 15 inverter, Schmidt (Petition 3) provides the most straightforward teaching of the claim 8 ‘sequence.’ But if claim 8 requires multiple phases and in Fig. 16, Tracy (Petition 1) would be the only reference to address this construction.” Id. We decline Petitioner’s invitation to provide advisory opinions by entertaining different Petitions advancing alternative claim constructions. As Petitioner has expressed its preference for Petition 1, which cites Tracy We decline to institute inter partes review based on Petitions 2 and 3.” slip op. at 12
Discretionary denialPatents in suitUS 8,937,822 - Solaredge Technologies Ltd. v. Koolbridge Solar, Inc.Institution deniedPTAB · Apr 19, 2022 · IPR2022-00015 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution of review of claims 1–17 because three petitions challenging the same patent were not justified under § 314(a).
RulingsInstitution decision- Parallel petitionsDenied
“Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations.” Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 59, available at https://www.uspto.gov/TrialPracticeGuideConsolidated (“Trial Practice Guide”). The Board recognizes that there may be “rare” circumstances in which two petitions by a petitioner may be needed, but “finds it unlikely that circumstances will arise where three or more petitions by a petitioner with respect to a particular patent will be appropriate.” Id. Accordingly, the Board asks a petitioner who files two or more petitions challenging the same patent to identify: (1) a ranking of the petitions in the order in which it wishes the Board to consider the merits, . . . and (2) a succinct explanation of the differences between the petitions, why the issues addressed by the differences are material, and why the Board should exercise its discretion to institute additional petitions if it identifies one petition that satisfies petitioner's burden under 35 U.S.C. § 314(a). slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“improperly incorporates declarant testimony by reference. See id. at 10–16. But these are contentions that bear on the sufficiency of the Petition rather than on whether we should deny the Petition as a matter of discretion. We accordingly address those issues in a concurrently issued decision in IPR2022-00013, where we institute review of the ’710 patent after determining that Petitioner’s highest-ranked petition demonstrates a reasonable likelihood of prevailing on the merits.4 But for the reasons expressed above, we otherwise exercise our discretion under 35 U.S.C. § 314(a) to deny the instant petition. III. ORDER In consideration of the foregoing, it is ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 11
Discretionary denialPatents in suitUS 10,784,710 - ZTE (USA) Inc. v. Fractus, S.A.Rehearing deniedPTAB · Oct 4, 2019 · IPR2018-01457 · APJ Kevin C Trock · IPR · Rehearing
The Board denied ZTE’s rehearing request and left institution denied, finding no abuse of discretion under § 325(d) or § 314(a).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“DISCUSSION 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 › Discretionary denial › §325(d) same art / argumentsDecided for patent owner
“Petitioner appears to limit the inquiry to evaluation of the prior art by a particular examiner, namely the ’069 examiner. However, § 325(d) provides that “the Director may take into account whether . . . the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d) (emphasis added). Moreover, the Becton Dickinson factors are non-exclusive, and factor 4 considers, “the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection.” Becton Dickinson at 17 (emphasis added). Neither Section 325(d) nor Becton Dickinson appears to limit the inquiry to a particular examiner as Petitioner argues. Consideration of the asserted prior art by the Office during previous examination of the patent at issue or closely related patents is, therefore, a relevant consideration under Section 325(d).” slip op. at 5
- Other 314aDecided for patent owner
“The parties’ Joint Notice Regarding Scheduling Conference from the district court litigation appears to indicate that the case is going forward. We further note that district court has completed claim construction. See Ex. 2038. As such, our reasoning from the Decision regarding section 314(a) remains sound. See Dec. 16 (stating that we were “persuaded that granting institution would have the Board consider the same prior art and essentially identical evidence and arguments already under consideration in the Texas District Court Case. Given these circumstances, our discretion under 35 U.S.C. § 314(a) falls in favor of denying institution.”). In its Request for Rehearing, Petitioner has not presented any persuasive evidence or arguments to demonstrate that our exercise of discretion under 35 U.S.C. § 314(a) was based on an erroneous interpretation of the law or on factual findings that are not supported by substantial evidence, represents an unreasonable judgment in weighing relevant factors, or misapprehended or overlooked a significant fact.” slip op. at 9
Discretionary denialPatents in suitUS 8,976,069 - ZTE (USA) Inc. v. Fractus, S.A.Rehearing deniedPTAB · Oct 2, 2019 · IPR2018-01455 · APJ Kevin C Trock · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution under § 325(d) and § 314(a).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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 › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“similarities and differences between the asserted art and the prior art involved during examination; and (2) the cumulative nature of the asserted art and the prior art evaluated during examination. Becton, Dickinson at 17– 18. Here, Petitioner concedes that the art asserted in the Petition, namely Misra I, Misra II, and Grangeat, was involved in the prior PTO reexamination proceedings, but argues that the asserted art was considered in a substantially different way than presented in the Petition. Req. Reh’g 8. The manner in which a petitioner relies on the prior art, however, is considered as part of Becton Dickinson factor 4 (the extent of the overlap between the arguments made during examination and the manner in which a petitioner relies on the prior art or a patent owner distinguishes the prior art), not factors 1 and 2. We do not agree that the Board was unreasonable in determining that factors 1 and 2 weighed in favor of denying institution, given that the art asserted in the Petition was also presented and considered in the reexamination proceedings.” slip op. at 4
- Other 314aInstitution denied discretionary otherDecided for patent owner
“litigation is stayed. Opp. 1. Patent Owner advises, “on March 15, 2019, the court issued a claim construction order reaffirming the earlier construction of the terms relevant to the present proceeding. Id. (citing Ex. 2028, passim). Patent Owner argues, “the claim construction order evidences the new court’s clear intent to proceed with the case.” Id. Patent Owner also advises that “[o]n April 12, 2019, the parties submitted a Joint Notice Regarding Scheduling Conference (1) requesting a trial date predating any conclusion to an instituted IPR, (2) confirming that fact discovery has completed, and (3) requesting a close to expert discovery on May 31, 2019.” Id. (citing Ex. 2029, 1–3). The parties’ Joint Notice Regarding Scheduling Conference from the district court litigation appears to indicate that the case is going forward. See Ex. 2029. We further note that district court has completed claim construction. See Ex. 2028. As such, our reasoning from the Decision regarding section 314(a) remains sound. See Dec. 20 (stating that we were “persuaded that granting institution would have the Board consider the same prior art and essentially identical evidence and arguments already under consideration in the Texas District Court Case. Given these circumstances, our discretion under 35 U.S.C. § 314(a) falls in favor of denying institution.”).” slip op. at 8
Discretionary denialPatents in suitUS 7,394,432 - ZTE (USA) Inc. v. Fractus, S.A.Rehearing deniedPTAB · Oct 1, 2019 · IPR2018-01451 · APJ Kevin C Trock · IPR · Rehearing
The Board denied ZTE’s rehearing request and maintained denial of institution under § 325(d) and § 314(a), finding no abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“DISCUSSION 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 › Discretionary denial › §325(d) same art / argumentsDecided for patent owner
“similarities and differences between the asserted art and the prior art involved during examination; and (2) the cumulative nature of the asserted art and the prior art evaluated during examination. Becton, Dickinson at 17– 18. Here, Petitioner concedes that the art asserted in the Petition, namely Misra I, Misra II, and Grangeat, was involved in the prior PTO reexamination proceedings, but argues that the asserted art was considered in a substantially different way than presented in the Petition. Req. Reh’g 8–9. The manner in which a petitioner relies on the prior art, however, is considered as part of Becton Dickinson factor 4 (the extent of the overlap between the arguments made during examination and the manner in which a petitioner relies on the prior art or a patent owner distinguishes the prior art), not factors 1 and 2. We do not agree that the Board was unreasonable in determining that factors 1 and 2 weighed in favor of denying institution, given that the art asserted in the Petition was also presented and considered in the reexamination proceedings.” slip op. at 4
- Other 314aDecided for patent owner
“The parties’ Joint Notice Regarding Scheduling Conference from the district court litigation appears to indicate that the case is going forward. See Ex. 2030. We further note that district court has completed claim construction. See Ex. 2029. As such, our reasoning from the Decision regarding section 314(a) remains sound. See Dec. 20 (stating that we were “persuaded that granting institution would have the Board consider the same prior art and essentially identical evidence and arguments already under consideration in the Texas District Court Case. Given these circumstances, our discretion under 35 U.S.C. § 314(a) falls in favor of denying institution.”). In its Request for Rehearing, Petitioner has not presented any persuasive evidence or arguments to demonstrate that our exercise of discretion under 35 U.S.C. § 314(a) was based on an erroneous interpretation of the law or on factual findings that are not supported by substantial evidence, represents an unreasonable judgment in weighing relevant factors, or misapprehended or overlooked a significant fact.” slip op. at 9
Discretionary denialPatents in suitUS 7,397,431 - Juniper Networks, Inc. v. Finjan, Inc.Rehearing deniedPTAB · Jul 16, 2019 · IPR2019-00060 · APJ Miriam L Quinn · IPR · Rehearing
The Board granted rehearing only to address the overlooked construction dispute, but again denied institution because Jensen did not teach “mobile protection code.”
RulingsRehearing decision- RehearingRehearing, deniedDenied
“(“Dec. on Inst.”). The panel concluded that Petitioner had not shown a reasonable likelihood of prevailing in the asserted obviousness grounds because, for a particular ground, Petitioner failed to demonstrate sufficiently that Jensen1 teaches “mobile protection code.” Dec. on Inst. 11−12.2 Petitioner has filed a Request for Rehearing. Paper 8 (“Req. Reh’g”). Petitioner argues that the scope for the claim term “mobile protection code” was in dispute, and that we “failed to resolve the key claim construction dispute between the parties.” Id. at 1. According to Petitioner, rehearing is warranted to resolve the claim construction dispute and “fix the plain error in the Institution Decision.” Id. We are persuaded that in failing to address Petitioner’s construction, we overlooked the matter raised in Petitioner’s Request for Rehearing. Nevertheless, for the reasons discussed infra, after giving due consideration to Petitioner’s argument, we are persuaded that our decision to deny institution was correct, and therefore we deny the request insofar as it calls upon us to institute trial.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“(“Dec. on Inst.”). The panel concluded that Petitioner had not shown a reasonable likelihood of prevailing in the asserted obviousness grounds because, for a particular ground, Petitioner failed to demonstrate sufficiently that Jensen1 teaches “mobile protection code.” Dec. on Inst. 11−12.2 Petitioner has filed a Request for Rehearing. Paper 8 (“Req. Reh’g”). Petitioner argues that the scope for the claim term “mobile protection code” was in dispute, and that we “failed to resolve the key claim construction dispute between the parties.” Id. at 1. According to Petitioner, rehearing is warranted to resolve the claim construction dispute and “fix the plain error in the Institution Decision.” Id. We are persuaded that in failing to address Petitioner’s construction, we overlooked the matter raised in Petitioner’s Request for Rehearing. Nevertheless, for the reasons discussed infra, after giving due consideration to Petitioner’s argument, we are persuaded that our decision to deny institution was correct, and therefore we deny the request insofar as it calls upon us to institute trial.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“1 Protection Wrappers: A Simple and Portable Sandbox for Untrusted Applications, Proceedings on the 8th ACM SIGOPS European Workshop on Support for Composing Distributed Applications, filed in the record as Exhibit 1006. 2 We also exercised our discretion under 35 U.S.C. §§ 314(a) and 325(d) and denied institution. Petitioner does not challenge the exercise of discretion in this request for rehearing.” slip op. at 2
- Other 314aInstitution denied discretionary otherInstitution denied
“1 Protection Wrappers: A Simple and Portable Sandbox for Untrusted Applications, Proceedings on the 8th ACM SIGOPS European Workshop on Support for Composing Distributed Applications, filed in the record as Exhibit 1006. 2 We also exercised our discretion under 35 U.S.C. §§ 314(a) and 325(d) and denied institution. Petitioner does not challenge the exercise of discretion in this request for rehearing.” slip op. at 2
Claim constructionDiscretionary denialPatents in suitUS 7,647,633 - Eset, LLC / Eset Spol S.R.O. v. Finjan, Inc.Rehearing deniedPTAB · Feb 15, 2018 · IPR2017-01969 · APJ Patrick M Boucher · IPR · Rehearing
The Board denied ESET’s rehearing request, leaving in place denial of its petition and joinder motion because the added grounds, evidence, and arguments weighed against joinder.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“To the extent that ESET has identified matter that we misapprehended or overlooked, we have reconsidered our Decision. In doing so, we exercise our discretion in accordance with the mandate that our regulations “be construed to secure the just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R. § 1(b). For the reasons expressed above, consideration of the full scope of relevant factors continues to weigh against granting ESET’s Petition or Joinder Motion. III. ORDER In consideration of the foregoing, it is hereby: ORDERED that ESET’s Rehearing Request is denied.” slip op. at 9
- Other 314aInstitution denied discretionary otherInstitution denied
“discretionary. See General Plastic Industrial Co., Ltd. v. Canon Kaushiki Kaisha, Case IPR2016-01347, slip op. at 15 (PTAB Sept. 6, 2017) (Paper 19) (precedential) (citing 35 U.S.C. § 314(a); 37 C.F.R. § 42.108(a)). And the decision whether to join a petitioner to an instituted proceeding, even when the petitioner files a petition that “warrants institution of an inter partes review,” is also discretionary. 35 U.S.C. § 315(c) (“. . . the Director, in his or her discretion, may join as a party . . .”) (emphasis added). Although the circumstances presented here differ from the underlying facts of the Board’s precedential General Plastic decision—in this case, different petitioners are involved in filing multiple petitions challenging the same patent—the policy considerations guiding the application of our discretion are similar. In particular, General Plastic explains that we take into account “undue inequities and prejudices to Patent Owner,” and that we recognize that “shifts” in arguments and the use of “[m]ultiple, staggered petitions challenging the same patent and same claims raise the potential for abuse.” General Plastic at 17. Exercising our discretion in a manner that takes insufficient account of those impacts “is unfair to patent owners and is an inefficient use of the inter partes review process.” Id. at 17–18. In the instant case, we are cognizant of those impacts, particularly because ESET’s Petition presents arguments that differ materially from those presented in the original Blue Coat petition upon which the 1444 proceeding was instituted, and because ESET’s Rehearing Request introduces additional shifts in those arguments. In addition, we are mindful of the equities resulting from the procedural history, in which Patent Owner repeatedly finds itself defending its patent, in the same proceeding, against new petitioners who rise up to replace those with whom it has settled.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“discretionary. See General Plastic Industrial Co., Ltd. v. Canon Kaushiki Kaisha, Case IPR2016-01347, slip op. at 15 (PTAB Sept. 6, 2017) (Paper 19) (precedential) (citing 35 U.S.C. § 314(a); 37 C.F.R. § 42.108(a)). And the decision whether to join a petitioner to an instituted proceeding, even when the petitioner files a petition that “warrants institution of an inter partes review,” is also discretionary. 35 U.S.C. § 315(c) (“. . . the Director, in his or her discretion, may join as a party . . .”) (emphasis added). Although the circumstances presented here differ from the underlying facts of the Board’s precedential General Plastic decision—in this case, different petitioners are involved in filing multiple petitions challenging the same patent—the policy considerations guiding the application of our discretion are similar. In particular, General Plastic explains that we take into account “undue inequities and prejudices to Patent Owner,” and that we recognize that “shifts” in arguments and the use of “[m]ultiple, staggered petitions challenging the same patent and same claims raise the potential for abuse.” General Plastic at 17. Exercising our discretion in a manner that takes insufficient account of those impacts “is unfair to patent owners and is an inefficient use of the inter partes review process.” Id. at 17–18. In the instant case, we are cognizant of those impacts, particularly” slip op. at 5
- Strike new argumentNew argument disregardedDecided for patent owner
“Third, ESET introduces still further additional evidence with its Rehearing Request to support its argument that Necula is not prior art. Specifically, ESET provides a copy of a Markman Order entered in related litigation between Patent Owner and ESET, asserting that it “should inform this Board’s determination of an appropriate Phillips-type construction.” Req. Reh’g 2; Ex. 1028. It is axiomatic that we could not have misapprehended or overlooked the relevance of this evidence in our Decision when the evidence was not previously of record in the proceeding. “A request for rehearing is not an opportunity for a party to introduce new argument, bolster insufficient argument, or mend gaps in the evidence relied on in the Petition.” Ericsson Inc. v. Intellectual Ventures II LLC, Case IPR2015-01872, slip op. at 4 (PTAB Apr. 19, 2016) (Paper 15). Notably, the Markman Order that ESET only now brings to our attention was entered in the related litigation on November 14, 2017, but ESET took no steps to bring it to our attention during the several weeks that passed before our Decision was entered—even though ESET urges that it “should inform this Board’s determination.” Although the district court’s order is relevant, it comes too late as evidence in this proceeding for us to consider it.” slip op. at 8
Discretionary denialPatents in suitUS 8,079,086
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.