- Par-Kan Company, LLC v. Unverferth Manufacturing CompanyInstitution deniedPTAB · Mar 19, 2025 · IPR2024-01427 · APJ Meredith C Petravick · IPR · Institution
The Board denied institution on claims 10–21, finding no reasonable likelihood that claims 10–20 were unpatentable and declining institution based at most on claim 21.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“1. Legal Standards A patent owner may antedate a reference by proving an earlier 4 Assembly Manual: Part Number 80504785 REV A, Hiniker Company, Jan. 2001 (“Hiniker Manual”) (Ex. 1007). 5 Screen capture of the archived version of a Hiniker Company webpage captured by the Internet Archive on March 14, 2006, available at https://web.archive.org/web/20060314112127/http://www.hiniker. com/ag_products/4800features.htm (“Hiniker Webpage”) (Ex. 1008). 237 F.3d 1359, 1365 (Fed. Cir. 2001); see 37 C.F.R. § 1.131. For an actual reduction to practice, a patent owner must show three things: (1) construction of an embodiment or performance of a process meeting all limitations in the challenged claims; (2) “that the invention would work for its intended purpose”; and (3) “sufficient evidence to corroborate inventor testimony regarding these events.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1169 (Fed. Cir. 2006). If a patent owner attempts to antedate a reference in an inter partes review, the patent owner bears the burden of producing evidence supporting an invention date before the reference’s effective date. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379–80 (Fed. Cir. 2015). At the institution stage of an inter partes review, the statutory “reasonable likelihood” standard for institution applies to the issue whether a reference qualifies as prior art. Cf. Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 12 (precedential) (citing 35 U.S.C. § 314(a)).” slip op. at 6
- Other 314aInstitution denied discretionary otherInstitution denied
“contend that Morris and Hiniker Webpage are not available as prior art with regard of claim 21 because Patent Owner does not contend the invention of claim 21 was actually reduced to practice prior to the alleged publication dates of Morris and Hiniker Webpage. Nevertheless, even assuming a reasonable likelihood of prevailing was shown by Petitioner with respect to claim 21, we still consider whether we should exercise discretion to deny the Petition. That is because when a petitioner demonstrates a reasonable likelihood of prevailing with respect to one or more claims institution of review remains discretionary. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with discretion on the question whether to institute review . . . .” (emphasis omitted)); 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.”). The Board may consider the number of claims and grounds that meet the reasonable likelihood standard when deciding whether to institute inter partes review under 35 U.S.C. § 314(a). See Chevron Oronite Co. v. Infineum USA L.P., IPR2018-00923, Paper 9 at 10–11 (PTAB Nov. 7, 2018) (informative); Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 at” slip op. at 14
- BurdenDecided for patent owner
“3500 persuaded us that Petitioner, as explained below, has not produced sufficient evidence to show a reasonable likelihood in refuting that the subject matter of claims 10–20 was actually reduced to practice (i) before February 15, 2006; (ii) no later than February 18, 2006; (iii) no later than February 28, 2006; and (iv) no later than May 16, 2006. Accordingly, Patent Owner persuaded us that Petitioner has not shown a reasonable likelihood in establishing that either Morris, which published by August 13, 2006, or Hiniker Webpage, which published by March 14, 2006, are prior art to claims 10–20 of the ’123 patent.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“4. Conclusion Petitioner’s grounds all rely upon either Morris (Ex. 1004) or Hinkier Webpage (Ex. 1008) with respect to claims 10–20 of the ’123 patent. Pet. 1. establishing that either Morris or Hiniker Webpage are prior art to claims 10–20, we determine that Petitioner fails to show a reasonable likelihood that claims 10–20 are unpatentable.” slip op. at 13
§ 103 obviousnessDiscretionary denialPatents in suitUS 9,745,123 - Par-Kan Company, LLC v. Unverferth Manufacturing CompanyInstitution deniedPTAB · Mar 19, 2025 · IPR2024-01426 · APJ Meredith C Petravick · IPR · Institution
The Board denied institution on all asserted grounds because Petitioner did not show Morris or the Hiniker Webpage was prior art for claims 16–22, and declined institution for claim 23 in view of efficiency.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review, the patent owner bears the burden of producing evidence supporting an invention date before the reference’s effective date. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379–80 (Fed. Cir. 2015). At the institution stage of an inter partes review, the statutory “reasonable likelihood” standard for institution applies to the issue whether a reference qualifies as prior art. Cf. Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 12 (precedential) (citing 35 U.S.C. § 314(a)).” slip op. at 7
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artDecided for patent owner
“partes review, the patent owner bears the burden of producing evidence supporting an invention date before the reference’s effective date. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379–80 (Fed. Cir. 2015). At the institution stage of an inter partes review, the statutory “reasonable likelihood” standard for institution applies to the issue whether a reference qualifies as prior art. Cf. Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 12 (precedential) (citing 35 U.S.C. § 314(a)).” slip op. at 7
- Other 314aInstitution denied discretionary otherInstitution denied
“The Board may consider the number of claims and grounds that meet the reasonable likelihood standard when deciding whether to institute inter partes review under 35 U.S.C. § 314(a). See Chevron Oronite Co. v. Infineum USA L.P., IPR2018-00923, Paper 9 at 10–11 (PTAB Nov. 7, 2018) (informative); Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 at” slip op. at 14
§ 102 anticipationDiscretionary denialPatents in suitUS 8,967,940 - The Hillman Group, Inc. v. Hy-Ko Products Co. LLCInstitution deniedPTAB · May 9, 2022 · IPR2022-00168 · APJ Richard H Marschall · IPR · Institution
The Board denied institution on all challenged claims under § 314(a), relying on its holistic assessment of the Fintiv factors and the advanced Texas Litigation.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“Fintiv, Paper 11 at 5‒6. “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. at 6. There is some overlap among these factors and some facts may be relevant to more than one factor. Id. In evaluating the factors, the Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review. Id.” slip op. at 7
Discretionary denialPatents in suitUS 9,656,332
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.