- Aylo Freesites Ltd v. DISH Technologies L.L.C.Institution deniedPTAB · Nov 21, 2024 · IPR2024-00941 · APJ John A Hudalla · IPR · Institution
The Board denied institution on claims 1–20 under § 314(a), finding a second review would impose unnecessary burden without sufficient efficiency or fairness justification.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherInstitution denied
“We agree with Patent Owner that Petitioner fails to explain why the Leaning grounds in IPR2024-00940 are not sufficient for challenging claims 1–20 of the ’234 patent. Indeed, “both petitions contain strong invalidating prior art” by Petitioner’s own reckoning (Pet. Ranking 2), and Petitioner characterizes Leaning as “undoubtably very strong invalidating prior art” (id. at 4). We further note that both petitions challenge all 20 claims of the ’234 patent, so the scope of the challenges is exactly the same in both cases. As a result, we are not persuaded that the differences between the petitions militate in favor of instituting both proceedings.” slip op. at 10
Discretionary denialPatents in suitUS 11,991,234 - Google LLC v. Proxense, LLCInstitution deniedPTAB · Nov 20, 2024 · IPR2024-01318 · APJ Thu A Dang · IPR · Institution
The Board denied institution on claims 1, 5, 6, 8–11, 13, and 14 because the related original petition had already been instituted, and denied joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“claims 1, 5, 6, 8–11, 13, and 14 of U.S. Patent No. 8,646,042 B1 (“the ’042 patent”) (Paper 1) and a Motion for Joinder (“Motion”) (Paper 3) to join Microsoft’s instituted proceeding in IPR2024-00573 (“Microsoft IPR”), along with a Notice Ranking Multiple Petitions (“Notice”) (Paper 4). Petitioner also acknowledges that it previously filed a petition (“Original Petition”) for inter partes review of claims 1–6, 8–15, and 17–20 of the ’042 patent in IPR2024-00782. Notice 1. Thus, Petitioner “requests that action on this motion be held in abeyance until, and only if, the Board declines to institute Petitioner’s Original Petition.” Id.; see also Motion 1. The Board has instituted an inter partes review of the ’042 patent in IPR2024-00782. See IPR2024-00782, Paper 13. That is, we have not declined to institute Petitioner’s Original Petition in IPR2024-00782. Id. Accordingly, the condition on which Petitioner’s Petition and Motion for Joinder is based, i.e., “in abeyance until, and only if, the Board declines to institute [in IPR2024-00782],” has not come to pass. Therefore, we deny the Petition and the Motion for Joinder.” slip op. at 2
- Parallel petitionsDenied
“Here, Petitioner acknowledges that it “has two concurrent petitions challenging the validity of the same patent.” Notice 1. Although Petitioner provides “a ranking of the petitions in the order in which it wishes the Board to consider the merits” and “a succinct explanation of the differences” (id.), Petitioner requests that “should the Board decide to institute only a single petition against the ’042 patent, . . . the Board institute Petitioner’s Original Petition (in IPR2024-00782).” Id. Since, as discussed above, the Board has instituted an inter partes review of the ’042 patent in IPR2024-00782, we deny the Petition and the Motion for Joinder in the current IPR.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“claims 1, 5, 6, 8–11, 13, and 14 of U.S. Patent No. 8,646,042 B1 (“the ’042 patent”) (Paper 1) and a Motion for Joinder (“Motion”) (Paper 3) to join Microsoft’s instituted proceeding in IPR2024-00573 (“Microsoft IPR”), along with a Notice Ranking Multiple Petitions (“Notice”) (Paper 4). Petitioner also acknowledges that it previously filed a petition (“Original Petition”) for inter partes review of claims 1–6, 8–15, and 17–20 of the ’042 patent in IPR2024-00782. Notice 1. Thus, Petitioner “requests that action on this motion be held in abeyance until, and only if, the Board declines to institute Petitioner’s Original Petition.” Id.; see also Motion 1. The Board has instituted an inter partes review of the ’042 patent in IPR2024-00782. See IPR2024-00782, Paper 13. That is, we have not declined to institute Petitioner’s Original Petition in IPR2024-00782. Id. Accordingly, the condition on which Petitioner’s Petition and Motion for Joinder is based, i.e., “in abeyance until, and only if, the Board declines to institute [in IPR2024-00782],” has not come to pass. Therefore, we deny the Petition and the Motion for Joinder.” slip op. at 2
Discretionary denialPatents in suitUS 8,646,042 - 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
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.