- 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 - Apple, Inc. v. Koss CorporationInstitution deniedPTAB · Oct 12, 2021 · IPR2021-00686 · APJ Gregg I Anderson · IPR · Institution
The Board denied institution of IPR on all challenged claims because two petitions were unnecessary and the General Plastic factors did not justify the follow-on petition.
RulingsInstitution decision- Parallel petitionsDenied
“To that end, the CTPG states that “one petition should be sufficient to challenge the claims of a patent in most situations.” CTPG 59. Thus, “multiple petitions by a petitioner are not necessary in the vast majority of cases.” Id. “Two or more petitions filed against the same patent at or about the same time (e.g., before the first preliminary response by the patent owner) may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns.” Id. (citing 35 U.S.C. § 316(b)). “Nonetheless, the Board recognizes that there may be circumstances in which more than one petition may be necessary, including, for example, when the patent owner has asserted a large number of claims in litigation,” although even then, granting two petitions “should be rare.” See id.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“Nevertheless, Petitioner’s stated reason for filing two petitions is that it could not challenge the large volume of asserted claims in one petition, not that it became aware of the prior art after filing the ’381 IPR petition. The implication is that Petitioner was ready to challenge those claims (and aware of the basis to do so) but for limitations on briefing space. As further evidence of Petitioner’s early knowledge of the prior art, Patent Owner argues that Petitioner was aware of Seshadri-818 and other references by the same inventor at least as early as January 2021, when Petitioner served invalidity contentions with those references in the District Court case. Prelim. Resp. 25 (citing Ex. 2023). Patent Owner further argues that Petitioner was aware of Seshadri at least as early as February 22, 2021, when it filed IPR2021-00546 advancing Seshadri as a reference. Id. at 26. Logically, Petitioner would have been aware of those references even earlier, as it would have spent significant time preparing its invalidity contentions and the Petition. In light of the evidence that Petitioner likely was aware of Seshadri before the filing of the Petition in March 2021, along with Petitioner’s silence as to its knowledge, this factor weighs against institution.” slip op. at 16
Discretionary denialPatents in suitUS 10,491,982 - Fedex Corporation v. Intellectual Ventures II LLCRehearing deniedPTAB · Jul 17, 2018 · IPR2017-02030 · APJ Barbara A Parvis · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, finding no overlooked or misapprehended basis to authorize a motion to terminate the reexamination.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id. With this in mind, we address the arguments presented by Patent Owner.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for patent owner
“First, IV requested that the Board exercise its discretion under 35 U.S.C. § 315(d) and 37 C.F.R. § 42.122(a) to terminate the reexamination request because it was abusive to IV and an unmistakable attempt to circumvent General Plastic. Second, IV requested that the Board exercise its discretion under 35 U.S.C. § 325(d) to terminate the reexamination request because that request presented the same references and substantially the same arguments that FedEx presented in Case IPR2017-00729 and Case IPR2017-02030. Id. For the reasons that follow, we are not persuaded by Patent Owner’s contentions that we misapprehended or overlooked its arguments in connection with its request for authorization to file a motion to terminate. Id. at 1–8.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for patent owner
“First, IV requested that the Board exercise its discretion under 35 U.S.C. § 315(d) and 37 C.F.R. § 42.122(a) to terminate the reexamination request because it was abusive to IV and an unmistakable attempt to circumvent General Plastic. Second, IV requested that the Board exercise its discretion under 35 U.S.C. § 325(d) to terminate the reexamination request because that request presented the same references and substantially the same arguments that FedEx presented in Case IPR2017-00729 and Case IPR2017-02030. Id. For the reasons that follow, we are not persuaded by Patent Owner’s contentions that we misapprehended or overlooked its arguments in connection with its request for authorization to file a motion to terminate. Id. at 1–8.” slip op. at 4
Discretionary denialPatents in suitUS 8,494,581 - Nikon Corporation v. ASML Netherlands B.V. And Carl Zeiss AGInstitution deniedPTAB · Jun 4, 2018 · IPR2018-00220 · APJ David C Mckone · IPR · Institution
The Board denied institution on all challenged claims: claims 1–13, 23–26, and 28 for failure to show a reasonable likelihood of success, and claims 14–17 in its discretion.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Our rules require Petitioner to set forth in the Petition “[h]ow the challenged claim is to be construed” and specifically state that “[w]here the claim to be construed contains a means-plus-function or step-plus-function limitation as permitted under 35 U.S.C. 112(f), the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(3). It is against this backdrop that we determine whether Petitioner shows a reasonable likelihood that it would prevail with respect to at least one challenged claim. In this case, Petitioner unambiguously takes the position that the terms “error utility software module,” “logic configured to recognize erroneous operation,” and “processing means for processing a user execution of an erroneous operation” are not amenable to construction because the specification of the ’792 patent does not describe sufficient structure corresponding to these terms. Pet. 12–21. Petitioner advances unequivocal, and uncontroverted, expert testimony supporting this position. Ex. 1015 ¶¶ 26–40. Because Petitioner’s arguments and evidence are directed to the contrary position, Petitioner does not establish that these three terms are capable of being construed. If Petitioner cannot show that these claim terms are amenable to construction, Petitioner cannot apply the features of the prior art to those terms, nor expect us to do so. Cf. In re Steele, 305 F.2d 859, 862–62 (CCPA 1962) (“As we have previously indicated, our analysis of the claims leaves us in a quandary as to what in fact is covered by them. We think the examiner and the board were wrong in relying on what at best are speculative assumptions as to the meaning of the claims and basing a rejection under 35 U.S.C. § 103 thereon.”). Therefore, Petitioner does not establish that it is reasonably likely to prevail in showing that claims 1, 6, 23, and 28 would have been obvious.” slip op. at 15
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“The Federal Circuit has “stated that the use of the word ‘means’ in a claim element creates a rebuttable presumption that § 112, para. 6 applies” and that “the failure to use the word ‘means’ also creates a rebuttable presumption—this time that § 112, para. 6 does not apply.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc) (internal citations omitted). Because it recites “means,” the term “processing means” presumptively is in means-plus-function format. The terms “error utility software module” and “logic configured to recognize erroneous operation” presumptively are not. This presumption, however, is not “strong” and should not have the practical effect of “placing a thumb on what should otherwise be a balanced analytical scale.” Id. at 1349. “When a claim term lacks the word ‘means,’ the presumption can be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’” Id. Petitioner argues that “error utility software module” is in means-plus- function format. Pet. 12–13.2 As Petitioner observes (id.), “‘[m]odule’ is a well-known nonce word that can operate as a substitute for ‘means’ in the context of § 112, para. 6” because it “is simply a generic description for software or hardware that performs a specified function.” Williamson, 792 F.3d at 1350. Petitioner argues that “this term’s limitations are all simply functions the module is supposed to perform and do not specify any structure for performing the recited functions.” Pet. 13. Petitioner’s expert testifies that “[t]hese recited limitations are purely functional and provide no structure for performing them” and that “[t]he term ‘software module’ does not convey to one of ordinary skill a definite structural meaning for performing the recited function.” Ex. 1015 ¶ 26. Similarly, Petitioner argues that “logic configured to recognize erroneous operation” is purely functional and does not specify structure for performing the recited function. Pet. 17. Dr. Essa’s testimony supports this argument. Ex. 1015 ¶ 36.” slip op. at 9
- Other 314aInstitution denied discretionary otherInstitution denied
“Petitioner’s means-plus-function arguments, detailed above. Nevertheless, if we were to institute a trial on claim 14 and its dependents, we also would have to institute on the challenged means-plus-function claims. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1369–60 (2018) (The Supreme Court held that a decision to institute under 35 U.S.C. § 314 may not institute on less than all claims challenged in the petition.); see also Guidance on the Impact of SAS on AIA Trial Proceedings (April 26, 2018), available at https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial. The result of institution would be a trial in which Petitioner contends that the majority of the challenged claims are not amenable to construction. Although Petitioner is not permitted to pursue a ground of indefiniteness in an inter partes review (see 35 U.S.C. § 311(b)), indefiniteness likely would be a significant issue for those claims going forward given Petitioner’s current posture and presentation of evidence. Institution of an inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (explaining that under 35 U.S.C. § 314(a), “the PTO is permitted, but never compelled, to institute an IPR proceeding”). Because a trial on the challenged claims, including claims 14–17, likely would be dominated by issues of alleged indefiniteness of claims 1–6, 8–13, 23–26, and 28, we exercise our discretion to deny institution on all challenged claims and grounds.” slip op. at 18
Claim constructionDiscretionary denialcites PhillipsPatents in suitUS 6,972,792
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.