- Lenovo (United States) Inc. / Dell Inc. et al. v. Universal Connectivity Technologies, Inc.Institution deniedPTAB · Apr 17, 2025 · IPR2024-01482 · APJ Thomas L Giannetti · IPR · Institution
The Board denied institution on claims 1, 2, 4, 8–10, 12, 13, 15, 18–20, and 25, exercising § 314(a) discretion after balancing the Fintiv factors and finding the merits not particularly strong.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied
“partes review “allays concerns about inefficiency and duplication of efforts,” and strongly weighs against exercising our authority to deny institution. Fintiv, Paper 11 at 6. Of the three district court proceedings, the Lenovo Group case, pending in the Eastern District of Texas, is the most significant to our analysis here. In the Lenovo Group case, Lenovo Group has not requested a stay. Prelim. Resp. 16. Patent Owner argues that the Lenovo Group case is not likely to be stayed based on that court’s low grant rate in other cases and the progress of that case in particular. Id. at 17. The district court in the HP case denied a stay without prejudice and stated that a stay could be reconsidered in the future depending on the outcome at the PTAB. Prelim. Reply 3. The Dell case has been stayed. Id. On this record, we decline to speculate as to how any of the involved district courts where no stay is pending might rule on any future motion to stay. Thus, we determine that, while one stay has been granted, the lack of a stay in the other underlying district court cases, especially the Lenovo Group case, is not sufficiently persuasive to weigh this factor against exercising discretion. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020) (informative), cautions against speculating whether the district court would grant a stay if one were requested. Therefore, this factor has a neutral effect on the overall balancing of the Fintiv factors. B. Proximity of Trial Date to Projected Statutory Deadline (Factor 2) The scheduled trial date for the Lenovo Group case is November 3, 2025, which is about six months prior to the expected date for the final written decision here (i.e., late April 2026). See Prelim. Resp. 20; IPR2024- 01429, Ex. 2002 (Lenovo Group case Docket Control Order), 1. Petitioner argues this trial date is uncertain. Prelim. Reply 3. Further, Petitioner focuses its argument on what it terms a “growing backlog” in the Eastern District of Texas and “associated scheduling uncertainty.” Id. at 4. Petitioner refers to the status of the HP case, which is currently set for trial on September 21, 2026, and the stay in the Dell case. Id. Patent Owner responds that “[b]oth the scheduled trial date and the date of trial [in the Lenovo Group case] based on median time-to-trial statistics occur months before a final written decision would be expected here.” Prelim. Sur-reply 4. Patent Owner asserts that the time-to-trial statistics for the Eastern District of Texas project a median time-to-trial of 21.9 months. Prelim. Resp. 20–21 (citing Ex. 2007, U.S. District Courts Federal Court Management Statistics–Profiles—September 30, 2024). This projection yields a trial date that is prior to the expected final written decision date of April 2026. Prelim. Sur-reply 4. As with the previous factor, the status of the Lenovo Group case is our focus here. As stated, that trial is set to occur about six months before a final written decision would issue in this proceeding. The district court has stated that this trial date setting “cannot be changed without an acceptable showing of good cause.” Prelim. Resp. 20. We are not persuaded by Petitioner’s unsupported argument that the trial date is uncertain. We also consider the fact that the median time-to-trial statistic discussed by both parties projects a trial date earlier than the actual date set by the district court. Ex. 2007; Prelim. Sur-reply 1. The fact that the time-to-trial statistic is earlier than the trial date set in the Lenovo Group case confirms that the schedule set by the district court is credible and should be given weight. From this evidence, we are persuaded that we should rely on the trial” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“E. Conclusion Regarding the Merits Petitioner does not present particularly strong merits. Petitioner’s arguments on the “bus limitation,” to succeed at trial, would require addressing a claim construction issue that was never addressed in the Petition and is arguably contradicted by the ’520 patent, which discloses transmitting packets representing a plurality of different control signals on a single bus. See Prelim. Sur-reply 2 (citing Ex. 1001, 7:34–38, 9:23–25, 9:50–54). Similarly, prevailing on the “modified protocol” issue would require proving that the HDMI–C protocol, which uses the same separate channel arrangement for CEC and DDC as standard HDMI, is sufficiently “modified” to meet the claim. Taking into account Patent Owner’s persuasive arguments supra in response, and for the reasons given, we do not find the merits of Petitioner’s position on either of these dispositive issues to be particularly strong.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party proposes claim constructions for our consideration. Petitioner submits that it “for the purposes of this proceeding, the terms of the challenged claims should be given their plain and ordinary meaning, and no terms require specific construction.” Pet. 8. Patent Owner does not dispute Petitioner’s position that no terms require construction. Prelim. Resp. 11–12. We determine there are no claim terms that need to be expressly construed for this Decision.” slip op. at 15
- Skill levelDecided for patent owner
“Patent Owner states that a person of ordinary skill “would have the equivalent of a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training and three years of work experience with data communications systems or interfaces, including at least some experience with serial or display data communications systems or interfaces .” Prelim. Resp. 12. The differences between these nearly-identical definitions are minor and immaterial to our decision. We regard either description as consistent with the challenged patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill).” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 7,856,520 - 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 - Opensky Industries, LLC v. VLSI Technology LLCInstitution deniedPTAB · Dec 23, 2021 · IPR2021-01056 · APJ Jason W Melvin · IPR · Institution
The Board denied institution of IPR on claims 1–3, 5, 6, 9–11, and 13 because Petitioner likely could not produce its relied-upon expert for cross-examination.
RulingsInstitution decision- BurdenInstitution denied meritsInstitution denied
“Given the facts surrounding Dr. Singh’s testimony, we do not consider him likely to be a willing participant in this proceeding. It is Petitioner’s burden to show unpatentability, and in support of its case Petitioner has brought forth the testimony of an expert that Petitioner likely cannot produce for cross-examination and would likely be excluded.9 Under the circumstances, we determine that the Petition does not warrant institution.” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“trial is instituted. Prelim. Reply 9. That suggestion, however, stands at odds with Dr. Singh’s agreement to work exclusively with PQA. See IPR2021-01229, Ex. 1033 (declaration describing PQA’s engagement of Dr. Singh), Ex. 1034 (engagement agreement between PQA and Dr. Singh). Petitioner submits that because Dr. Singh submitted his declaration in the Intel IPR and in the PQA IPR, “[i]t is unfathomable that a witness who submits two declarations would refuse to testify.” Prelim. Reply 10. But that argument ignores that Dr. Singh has agreed to work exclusively with PQA, which has not given any indication that it would release Dr. Singh from his agreement. Moreover, we have no evidence from Dr. Singh that he would be willing to testify here. Without some factual support to demonstrate that it reasonably expects Dr. Singh to cooperate, in light of the exclusive agreement with PQA, Petitioner’s assertion is speculation and does not demonstrate sufficiently that Dr. Singh would likely participate in this proceeding. Petitioner challenges PQA’s assertion of its exclusive agreement with Dr. Singh as “vague and ethically questionable” (id. at 9–10). This is more speculation. As noted above, PQA has produced its agreement with Dr. Singh (IPR2021-01229, Ex. 1034) and we have no basis to question the agreement’s legitimacy. Petitioner allowed this unusual situation by relying on a prior declaration by Intel’s expert, rather than retaining its own expert for a new declaration. Whether the agreement with Dr. Singh complies with ethical rules and whether it permits Dr. Singh to testify here are matters not before us. Moreover, they may present issues of contract law for the courts to decide, which may cause delay and prevent us from meeting our statutory deadlines, were we to institute a trial with the issues unresolved.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Given the facts surrounding Dr. Singh’s testimony, we do not consider him likely to be a willing participant in this proceeding. It is Petitioner’s burden to show unpatentability, and in support of its case Petitioner has brought forth the testimony of an expert that Petitioner likely cannot produce for cross-examination and would likely be excluded.9 Under the circumstances, we determine that the Petition does not warrant institution.” slip op. at 9
Discretionary denialPatents in suitUS 7,523,373 - Decurtis LLC v. Carnival CorporationInstitution deniedPTAB · Oct 12, 2021 · IPR2021-00782 · APJ Neil T Powell · IPR · Institution
The Board denied institution under § 314(a), finding no reasonable likelihood of prevailing on claims 1–18 and 20 and declining to reach claim 19.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner contends that [a] person of ordinary skill in the art (“POSITA”) for the ʼ184 patent is a person with a Bachelor of Science degree in electrical engineering, computer science, or a related subject matter, plus at least two years of professional experience in the field of computer networks, wireless communications, or a similar field. Pet. 7 (citing Ex. 1002 ¶¶ 42–43). Petitioner elaborates that “more experience would compensate for less formal education, and vice versa.” Id. Patent Owner has not provided an assessment of the level of ordinary skill in the art. To the extent necessary, and for purposes of this Decision, we accept the assessment offered by Petitioner as it is supported by the Almeroth Declaration and is consistent with the ’184 patent and the asserted prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“B. CLAIM INTERPRETATION The Petition explains that “Petitioner and its expert have applied the plain and ordinary meaning of all claim terms of the challenged claims.” Pet. 8. In its Preliminary Response, Patent Owner does not propose any explicit claim constructions. We do not discern a need to construe expressly any claim language. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“limitation 1[d] means Barry inherently discloses limitation 1[d], Petitioner also does not support that position. Establishing inherent disclosure of a limitation requires showing that the limitation necessarily results from the prior art disclosure. Continental Can Co. v. Monsanto Co. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (“Inherency, however, may not be established by probabilities or possibilities.”). Petitioner does not allege or demonstrate that a “unique identifier of a portable guest device” necessarily results from the disclosure of Soleimani’s paragraph 175, much less that such an identifier is necessarily associated with location and a timestamp. As noted above, the Petition states that “[i]dentifiers may be associated with location and timestamp.” (Pet. 26 (emphasis added)). Because Petitioner does not support its position that “Barry discloses” limitations 1[d] and 7[d] and does not argue that limitations 1[d] and limitation 7[d] would have been obvious, Petitioner does not demonstrate a reasonable likelihood of prevailing on Ground 1.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Patent argues that Petitioner does not show sufficiently that a person of ordinary skill in the art would have combined the references’ teachings. Patent Owner first argues that Petitioner has not demonstrated a motivation to combine Berg with Soleimani. Prelim. Resp. 31–33. Patent Owner then argues that Petitioner has not demonstrated a motivation to modify Soleimani with the teachings of Brulé. Id. at 34. With respect to this issue, weighing the parties’ arguments, we see some merit in Petitioner’s arguments that a person of ordinary skill in the art would have been motivated to combine the teachings of Soleimani, Berg, and Brulé. We do not further address the merits of Petitioner’s challenge to claim 19. As explained below in Section III, given that Petitioner fails to show a reasonable likelihood of prevailing with respect to nearly all of the challenged claims, we exercise our discretion not to institute inter partes review.” slip op. at 28
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 10,045,184 - 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 - 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 - General Plastic Industrial Co., Ltd. v. Canon Kabushiki KaishaRehearing deniedPTAB · Sep 6, 2017 · IPR2016-01361 · APJ Sheila F Mcshane · IPR · Rehearing
The Board granted the expanded-panel request but denied rehearing, leaving in place the discretionary denial of institution in all five follow-on petitions.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“B. Requests for Rehearing A party requesting rehearing has the burden to show a decision should be modified by specifically identifying all matters the party believes were misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 5
- Other 314aInstitution denied discretionary otherInstitution denied
“Our intent in formulating the factors was to take undue inequities and prejudices to Patent Owner into account. Thus, factor 3 is directed to Petitioner’s potential benefit from receiving and having the opportunity to study Patent Owner’s Preliminary Response, as well as our institution decisions on the first-filed petitions, prior to its filing of follow-on petitions. As discussed in our Decisions Denying Institution, we are concerned here by the shifts in the prior art asserted and the related arguments in follow-on petitions. See Dec. 11. Multiple, staggered petitions challenging the same patent and same claims raise the potential for abuse. The absence of any restrictions on follow-on petitions would allow petitioners the opportunity to strategically stage their prior art and arguments in multiple petitions, using our decisions as a roadmap, until a ground is found that results in the grant of review.14 All other factors aside, this is unfair to patent 14 The Board has addressed efficiency and potential prejudice induced by multiple petitions in multiple cases. See LG Electronics, slip op. at 12 (“The Board’s resources would be more fairly expended on first petitions rather than on a followon petition like the Petition in this case.”); Butamax Advanced Biofuels LLC v. Gevo, Case IPR2014-00581, slip op. at 12–13 (PTAB Oct. 14, 2014) (Paper 8) (“[T]he four obviousness grounds are ‘second bites at the apple,’ which use our prior decision as a roadmap to remedy Butamax’s prior, deficient challenge. owners and is an inefficient use of the inter partes review process and other post-grant review processes. Considering other factors (i.e., factors 2, 4, and 5) allows us to assess and weigh whether a petitioner should have or could have raised the new challenges earlier. We recognize that there may be circumstances where multiple petitions by the same petitioner against the same claims of a patent should be permitted, and that such a determination is dependent on the facts at issue in the case. The factors set forth above, in our view, represent a formulation of relevant considerations that permit the Board to assess the potential impacts on both the efficiency of the inter partes review process and the fundamental fairness of the process for all parties. We recognize, also, that additional factors may arise in other cases for consideration, where appropriate. However, the factors set forth above, at the very least, serve to act as a baseline of factors to be considered in our future evaluation of follow-on petitions.” slip op. at 17
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“panels to authorize, an expanded panel. See generally 35 U.S.C. § 6; 37 C.F.R. §§ 41.1–42.412; see also AOL Inc. v. Coho Licensing LLC, Case IPR2014-00771, slip op. at 2 (PTAB Mar. 24, 2015) (Paper 12) (“[P]arties are not permitted to request, and panels do not authorize, panel expansion.”). Our standard operating procedures, however, provide the Chief Judge with discretion to expand a panel to include more than three judges. PTAB SOP 1, 1–3 (§§ II, III) (Rev. 14); see id. at 1 (introductory language explaining that the Director has delegated to the Chief Judge the authority to designate panels under 35 U.S.C. § 6); see also In re Alappat, 33 F.3d 1526, 1532 (Fed. Cir. 1994) (providing that Congress “expressly granted the Commissioner the authority to designate expanded Board panels made up of more than three Board members.”). The Chief Judge may consider panel expansions upon a “suggestion” from a judge, panel, or party in a post-grant review. Id. at 3–4; see also Apple Inc. v. Rensselaer Polytechnic Inst., Case IPR2014-00319, slip op. at 2 n.1 (PTAB Dec. 12, 2014) (Paper 20) (expanded panel) (per curiam). The standard operating procedure exemplifies some of the reasons for which the Chief Judge may expand a panel. PTAB SOP 1, 3 (§ III.A). For example, an expanded panel may be appropriate when “[t]he proceeding or AIA Review involves an issue of exceptional importance.” Id. (§ III.A.1). In these cases, the Chief Judge has considered whether expansion is warranted, and has decided to expand the panel due to the exceptional nature of the issues presented.4 As we discuss further below, follow-on petitions have been at issue in multiple cases before the Board. The Chief Judge has determined that an expanded panel is warranted to provide a discussion of factors that are considered in the exercise of the Board’s discretion under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a).” slip op. at 4
Discretionary denialPatents in suitUS 8,909,094
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.