- Facebook, Inc. v. Palo Alto Research Center Inc.Institution deniedPTAB · Mar 29, 2022 · IPR2021-01536 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution on all challenged claims and grounds because a parallel IPR had already begun on the same claims and grounds, making another trial inefficient.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherInstitution denied
“§ 314(a). Here, it is unnecessary to institute review of claims 1, 4, 6, 7, 9–12, 15, 17, and 18 of the ’599 patent because trial has already been commenced on these claims on the same grounds in the -01294 IPR. Compare Pet. 3–4, with -01294 Dec. 6. Neither party advocates that trial be instituted under these circumstances. Stmt. 5; Prelim. Resp. 26. To institute inter partes review under these circumstances would not be an efficient use of the parties’ or the Board’s resources. Accordingly, we exercise our discretion under 35 U.S.C. § 314(a) to deny inter partes review.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons described below, we do not institute an inter partes review of the challenged claims.” slip op. at 2
Discretionary denialPatents in suitUS 8,489,599 - Comcast Cable Communications, LLC v. Rovi Guides, Inc.Institution deniedPTAB · Jan 30, 2020 · IPR2019-01423 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution on all challenged claims because the petitions did not show sufficiently material differences to justify additional reviews.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“[b]ased on the Board’s prior experience, one petition should be sufficient to challenge the claims of a patent in most situations. Two or more petitions filed against the same patent at or about the same time . . . may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns. Trial Practice Guide Update, 26 (July 2019), https://www.uspto.gov/sites/ default/files/documents/trial-practice-guide-update3.pdf. However, more than one petition may be necessary when, for example, “there is a dispute about priority date requiring arguments under multiple prior art references.” Id.” slip op. at 6
Discretionary denialPatents in suitUS 9,118,948 - Comcast Cable Communications, LLC v. Rovi Guides, Inc.Institution deniedPTAB · Jan 30, 2020 · IPR2019-01422 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution on all challenged claims because the second and third petitions did not differ materially enough to justify additional reviews after instituting on claims 1–26 in IPR2019-01421.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“In the Notice, Petitioner requests that we first consider the petition in IPR2019-01421. Notice, 2. For the reasons provided in our concurrent decision on institution in IPR2019-01421, we conclude that Petitioner establishes a reasonable likelihood of prevailing in showing that at least one of the challenged claims of the ’948 patent is unpatentable, and, thus, we institute on all the challenged claims in that case. Therefore, all of the claims challenged in these proceedings are subject to inter partes review in IPR2019-01421. Here, Petitioner contends that multiple proceedings are necessary because Patent Owner may attempt to antedate the asserted references. Notice, 3–4. However, Patent Owner stipulates it will not attempt to antedate any of the references in the three proceedings. Response, 3. Thus, the possibility of Patent Owner antedating the asserted references does not warrant instituting multiple inter partes reviews of the ’948 patent. Petitioner also argues that multiple inter partes reviews are necessary because each petition relies on different references to disclose claim elements. Notice, 2, 5. Specifically, the challenged claims require user equipment and simultaneous recording of programs. Id. As Petitioner indicates, the three petitions rely on different references to teach the user equipment and simultaneously recording limitations. Id. Yet Petitioner does not sufficiently clarify why these differences warrant three proceedings. See id. For instance, Petitioner lists the different combinations of user equipment taught by the references but does not explain why this distinction among the petitions is important. Id. at 2. Therefore, although there may be differences among the petitions, Petitioner does not show that the distinctions are sufficiently material to warrant institution in multiple proceedings. Petitioner further asserts that multiple proceedings are warranted because each petition cites new prior art, i.e., references that were either not cited or not applied by the Examiner during prosecution. Id. at 3–4. We are unpersuaded, though, that simply relying on prior art that was not considered during examination justifies instituting multiple inter partes reviews of the same claims of the ’948 patent. In sum, per Petitioner’s request, we first considered Petitioner’s arguments and Patent Owner’s responses in IPR2019-01421. As set forth in the decision on institution in IPR2019-01421, we instituted, on all grounds set forth in that petition, inter partes review of claims 1–26 of the ’948 patent. We subsequently reviewed the parties’ submissions in IPR2019- 01422 and IPR2019-01423. The Petitions addressed here do not contain sufficiently material differences to support instituting any additional inter partes reviews of the ’948 patent. Accordingly, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of review in IPR2019-01422 and IPR2019-01423.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“In sum, per Petitioner’s request, we first considered Petitioner’s arguments and Patent Owner’s responses in IPR2019-01421. As set forth in the decision on institution in IPR2019-01421, we instituted, on all grounds set forth in that petition, inter partes review of claims 1–26 of the ’948 patent. We subsequently reviewed the parties’ submissions in IPR2019- 01422 and IPR2019-01423. The Petitions addressed here do not contain sufficiently material differences to support instituting any additional inter partes reviews of the ’948 patent. Accordingly, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of review in IPR2019-01422 and IPR2019-01423. III. CONCLUSION For the reasons provided above, considering all the circumstances in this case, we exercise our discretion under § 314(a) and deny the Petitions requesting inter partes review of the ’948 patent in IPR2019-01422 and IPR2019-01423. IV. ORDER It is hereby ORDERED that the Petitions are denied as to all challenged claims of the ’948 patent in IPR2019-01422 and IPR2019-01423, and no trial is instituted in those cases.” slip op. at 8
Discretionary denialPatents in suitUS 9,118,948 - PNC Bank, N.A. v. Secure Axcess, LLCInstitution deniedPTAB · Jul 10, 2015 · CBM2015-00039 · APJ Barbara A Benoit · CBM · Institution
The Board denied institution of CBM review for claims 1–32, exercising discretion under §§ 324(a) and 325(d) because PNC’s petition repeated substantially similar arguments and prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“Under 35 U.S.C. § 325(d), the AIA grants broad discretion to determine the course that best balances the parties’ competing interests in these proceedings. We recognize the need to balance permitting Petitioner to present new evidence and arguments in multiple petitions against protecting Patent Owner from harassment in the form of repetitive, serial petitions challenging the same patent. See H.R. Rep. No. 112-98, pt.1, at 48 (2011) (AIA proceedings “are not to be used as tools for harassment or a means to prevent market entry through repeated litigation and administrative attacks on the validity of a patent. Doing so would frustrate the purpose of the section as providing quick and cost effective alternatives to litigation.”). We also are mindful of the need for efficiency. It is more efficient for the parties and the Board to address a matter once rather than multiple times.” slip op. at 19
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Petitioner fails to provide, however, evidence or analysis as to why a diligent search would not have discovered the prior art relied upon in this Petition. Petitioner’s unsupported, conclusory statements are not persuasive in view of the relationship between the prior art asserted in the two Petitions. In CBM2014-00100, the SHTTP reference asserted in CBM2014-00100 is the SHTTP standard by the Internet Engineering Task Force. CBM2014- 00100 Pet. viii, 20. In the present Petition, the Petitioner indicates that “cited prior art relates to Secure HyperText Transfer Protocol (SHTTP) and browsers implementing SHTTP.” Pet. 17. Although not the same references, Petitioner challenges the same claims using the same or substantially the same prior art or arguments. Under 35 U.S.C. § 325(d), the AIA grants broad discretion to determine the course that best balances the parties’ competing interests in these proceedings. We recognize the need to balance permitting Petitioner to present new evidence and arguments in multiple petitions against protecting Patent Owner from harassment in the form of repetitive, serial petitions challenging the same patent. See H.R. Rep. No. 112-98, pt.1, at 48 (2011) (AIA proceedings “are not to be used as tools for harassment or a means to prevent market entry through repeated litigation and administrative attacks on the validity of a patent. Doing so would frustrate the purpose of the section as providing quick and cost effective alternatives to litigation.”). We also are mindful of the need for efficiency. It is more efficient for the parties and the Board to address a matter once rather than multiple times.” slip op. at 19
- Other 314aInstitution denied discretionary otherInstitution denied
“Under 35 U.S.C. § 325(d), the AIA grants broad discretion to determine the course that best balances the parties’ competing interests in these proceedings. We recognize the need to balance permitting Petitioner to present new evidence and arguments in multiple petitions against protecting Patent Owner from harassment in the form of repetitive, serial petitions challenging the same patent. See H.R. Rep. No. 112-98, pt.1, at 48 (2011) (AIA proceedings “are not to be used as tools for harassment or a means to prevent market entry through repeated litigation and administrative attacks on the validity of a patent. Doing so would frustrate the purpose of the section as providing quick and cost effective alternatives to litigation.”). We also are mindful of the need for efficiency. It is more efficient for the parties and the Board to address a matter once rather than multiple times.” slip op. at 19
Discretionary denialPatents in suitUS 7,631,191
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.