- Nokia Of America Corporation v. Alexander Soto And Walter SotoInstitution deniedPTAB · Nov 3, 2023 · IPR2023-00681 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution under § 325(d), finding substantially the same art had been presented to the Office and Petitioner had not shown material Office error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“In light of these similarities, we find that the Petition relies on art and arguments that are substantially the same as previously evaluated by the Office.” slip op. at 23
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“III. CONCLUSION For the foregoing reasons, we exercise discretion under 35 U.S.C. § 325(d) to deny institution of an inter partes review.5 IV. ORDER In consideration of the foregoing, it is ORDERED that the Petition is denied, and no trial is instituted. 5 Because we deny the Petition under 35 U.S.C. § 325(d), we do not reach Patent Owner’s request that we deny the Petition under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 13–14 (PTAB Mar. 20, 2020) (precedential). See Prelim. Resp. 53–60. Nor do we reach the parties’ merits arguments.” slip op. at 26
Discretionary denialPatents in suitUS 10,263,723 - Nokia Of America Corporation v. Alexander Soto And Walter SotoInstitution deniedPTAB · Nov 3, 2023 · IPR2023-00682 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution under § 325(d), finding substantially the same art had been presented to the Office and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”), the Board applied a two-part framework in considering whether to exercise discretion to deny institution under § 325(d): “(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics at 8.” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“D. Conclusion We conclude that (1) substantially the same art was previously presented to the Office, and (2) Petitioner has not demonstrated that the Office erred. We therefore conclude that it is appropriate to exercise discretion under 35 U.S.C. § 325(d) to deny the Petition. III. CONCLUSION For the foregoing reasons, we exercise discretion under 35 U.S.C. § 325(d) to deny institution of an inter partes review.5 IV. ORDER In consideration of the foregoing, it is ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 25
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“5 Because we deny the Petition under 35 U.S.C. § 325(d), we do not reach Patent Owner’s request that we deny the Petition under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 13–14 (PTAB Mar. 20, 2020) (precedential). See Prelim. Resp. 53–60. Nor do we reach the parties’ merits arguments.” slip op. at 26
Discretionary denialPatents in suitUS 10,771,181 - Hugel, Inc. v. Medytox Inc.Institution deniedPTAB · Aug 28, 2023 · IPR2023-00604 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board denied institution: Ground 1 did not show claims 1–9 likely obvious over Jung and Ton; it denied Ground 2 under § 325(d).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner “has the burden from the outset to show with particularity why the patent it challenges is unpatentable.” Harmonic, Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); see also SAS Inst., Inc. v. Iancu, 138 S.Ct. 1348, 1355 (2018) (“in an inter partes review, the petitioner is the master of its complaint”). A petition for inter partes review must identify how the challenged claims are unpatentable, and must specify where each element of the claim is found in the relied-upon prior art. 37 C.F.R. § 42.104(b); see also 35 U.S.C. § 312(a)(3) (a petition must identify, “with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim”). A petition must also include “a detailed explanation of the significance of the evidence including material facts, and the governing laws, rules, and precedent.” 37 C.F.R. § 42.22(a)(2). What is missing from both the Petition and the supporting testimony is an adequate explanation of how or why a POSA would have understood that Jung teaches the isolation of a botulinum toxin type A macro complex in particular, when Jung is silent as to the form of the toxin being produced. In this case, it is not enough to simply cite evidence; an explanation of the significance of that evidence is necessary. Based on our review of the record, we find that there is insufficient explanation and insufficient supporting evidence that Jung teaches isolating a botulinum toxin type A macro complex. Petitioner’s statements, and Dr. Bates’s testimony, that Jung teaches isolating a botulinum toxin, and that botulinum toxins “naturally comprise[] a complex with a variety of non-toxic proteins bound thereto” that can be intermediate, large, or macro in size, are conclusory because they do not explain why the form of toxin ultimately isolated in Jung is a macro complex. Therefore, Petitioner does not sufficiently show that the combination of Jung and Ton discloses “[a] method of isolating a botulinum toxin type A macro complex from a botulinum containing solution” or “separating the botulinum toxin type A macro complex from the cation exchange chromatography medium” as required by claim 1 of the ’598 patent.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” The Board uses a two-part framework for evaluating arguments under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). In applying this framework, we consider the Becton, Dickinson10 factors that address discretion to deny institution when a petition presents the same or substantially the same prior art or arguments previously presented to the Office, including:” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“To support a conclusion of obviousness when combining the teachings of multiple references, an articulated reason with some rational underpinning to combine the known elements in the fashion claimed must be provided. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007); see also In re Magnum Oil Tools, Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (It is the petitioner’s “burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention[s], and that the skilled artisan would have had a reasonable expectation of success in doing so.” (citation and internal quotation marks omitted)). Here, the Petition lacks an adequate explanation as to why a POSA reading Kim ’741 would have looked to Jung for its teachings regarding anion exchange chromatography, and how a POSA would have combined the teachings of Kim ’741 and Jung in the manner claimed. Because we are not persuaded that Petitioner sufficiently establishes a motivation to combine Kim ’741 and Jung with respect to the anion exchange chromatography limitation of claim 1, we are not persuaded that Petitioner’s alternative assertion of Jung for this limitation warrants reconsideration of the prior art and arguments previously considered by the Office. Accordingly, we find that the Examiner’s failure to consider Jung in combination with Kim ’741 with respect to the anion exchange chromatography limitation of claim 1 is not an error that weighs in favor of institution.” slip op. at 29
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the graduate degree.” Pet. 17 (citing Ex. 1021 ¶ 22). Patent Owner states that, for purposes of its Preliminary Response, it does not challenge Petitioner’s proposed definition of a POSA. Prelim. Resp. 20. For purposes of this Decision, and based on the current record, we adopt the uncontested assessment offered by Petitioner.” slip op. at 6
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 11,331,598 - Sandoz Inc. v. Acerta Pharma B.V.Institution deniedPTAB · Aug 7, 2023 · IPR2023-00478 · APJ Ulrike W Jenks · IPR · Institution
The Board denied institution of review of claims 8–12, 19, and 20 under § 325(d), finding the asserted art substantially the same as art previously presented and no material Office error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“we agree with Patent Owner that, because Barf is nearly identical to Barf-PCT in its disclosure – Barf is “substantially the same art” as Barf-PCT, which was previously presented to the Office. Advanced Bionics, 8.” slip op. at 15
- PTAB / AIA Trials › Motions to amend / substitute claimsDenied
“for a certificate of correction is meritorious; instead, we are tasked with simply assessing whether there is a sufficient basis to support Patent Owner’s position. If so, it is up to the Director to decide whether to exercise the authority under § 255 and issue a certificate of correction. We have reviewed the arguments in the Motion and conclude that “there is a sufficient basis supporting Patent Owner’s position that the mistake may be correctable.” Honeywell, 939 F.3d at 1349. However, because as discussed above (see supra Section III), we deny institution here pursuant to our discretion under Section 325(d), we find that whether Barf is or is not prior art is immaterial to this proceeding and Patent Owner’s request and any certificate of correction here is moot. Therefore, we deny as moot the Motion for leave to file a Certificate of Correction.” slip op. at 22
Discretionary denialPatents in suitUS 10,272,083 - Vital Connect, Inc. v. Bardy Diagnostics, Inc.Institution deniedPTAB · Jul 11, 2023 · IPR2023-00381 · APJ Kristi L R Sawert · IPR · Institution
The Board denied institution of review of claims 11–20 under § 325(d), finding the asserted art previously presented and no material error shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“The Board has discretion to determine whether to institute inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). Under 35 U.S.C. § 325(d), “[i]n determining whether to institute [inter partes review], the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” For the reasons stated below, we determine that the same or substantially the same prior art or arguments previously were presented to the Office and Petitioner has failed to show error in the consideration of that art or argument. Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8–9 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). We, therefore, deny institution of inter partes review.” slip op. at 2
Discretionary denialPatents in suitUS 11,051,743 - Gator Bio, Inc. v. Sartorius Bioanalytical Instruments, Inc.Institution deniedPTAB · Jun 20, 2023 · IPR2023-00215 · APJ Grace Karaffa Obermann · IPR · Institution
The Board denied institution of review of claims 1–19 under § 325(d), finding substantially the same art or arguments had been considered and no material Examiner error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Becton, Dickinson factors (a), (b), and (d) relate to whether the art or arguments presented in the Petition are the same or substantially the same as those previously presented to the Office. Advanced Bionics, Paper 6 at 10. Factors (c), (e), and (f) “relate to whether the petitioner has demonstrated a material error by the Office” in its prior consideration of the prior art or arguments. Id. In general, only if the same or substantially the same art or arguments previously were presented to the Office, do we turn to whether Petitioner has established a material error. Id. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“We have authority to institute an inter partes review only where the information presented establishes “a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a). The Board also has discretion to deny review if “the same or substantially the same prior art or arguments previously were presented to the Office,” for example, during patent prosecution. 35 U.S.C. § 325(d). We exercise our discretion under § 325(d) and decline to institute an inter partes review of the ’585 patent without addressing whether Petitioner satisfies the evidentiary threshold for review under § 314(a).” slip op. at 2
Discretionary denialPatents in suitUS 8,305,585 - LG Electronics Inc. / LG Electronics USA, Inc. v. Image Processing Technologies, LLCInstitution deniedPTAB · May 11, 2023 · IPR2023-00104 · APJ Barbara A Benoit · IPR · Institution
The Board denied institution on claim 1, finding the petition presented the same or substantially the same art or arguments previously considered by the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“under 35 U.S.C. § 325(d) to deny institution of an inter partes review. See 37 C.F.R. § 42.4(a) (The Director delegated her authority to determine whether trial should be instituted to the Board.). Section 325(d) of Title 35 of the United States Code states, in relevant part: “In determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” We use a two-part framework for evaluating arguments under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 12
- Prior constructionPrior construction adoptedDecided for petitioner
“applied the construction of “the [at least two] calculation units being configured to form a histogram representative of the parameter” (the “common parameter” limitation) as meaning “the histogram calculation units being configured to each form a histogram representative of at least one common parameter.” Ex. 1005 (IPR 336 Final Written Decision), 12– 14; see Ex. 1006 (IPR 1189 Decision Denying Institution), 9; Ex. 1007 (Reexam 056 Decision finding claim 1 patentable), 8.” slip op. at 11
Claim constructionDiscretionary denialcites Phillips · GrahamPatents in suitUS 6,959,293 - Ivantis, Inc. / Alcon Research, LLC et al. v. Sight Sciences, Inc.Institution deniedPTAB · Mar 27, 2023 · IPR2022-01533 · APJ Ulrike W Jenks · IPR · Institution
The Board denied institution of review of claims 1, 2, 5, 7, 8, 10, 11, 15, 18, 21, 23, 32, 33, 36, 38, 39, 41, 42, 46, 49, 52, 54, 63, 65, 68–70, 73, 77, …
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Id. at 8.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“6 Patent Owner presents an alternative basis for denying institution under 35 U.S.C. § 314(a) based on Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) and the Director’s Memo re Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (“Vidal Memo”), at 4 (June 21, 2022). Prelim Resp. 76–81. Because we deny institution based on 35 U.S.C. § 325(d) need not separately reach a conclusion based on Fintiv in this decision.” slip op. at 9
Discretionary denialPatents in suitUS 8,287,482 - Ivantis, Inc. / Alcon Research, LLC et al. v. Sight Sciences, Inc.Institution deniedPTAB · Mar 27, 2023 · IPR2022-01530 · APJ Ulrike W Jenks · IPR · Institution
The Board denied institution of IPR for claims 1–3, 6–9, 12, 13, 15, and 17–20 under § 325(d), finding the art or arguments substantially similar to those previously considered and no material examiner error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“4. Summary Considering the above Becton Dickson factors as they are incorporated into the two-part Advanced Bionic framework, we find that the factors weigh in favor of exercising our discretion and denying institution under § 325(d). The asserted art is either the same as, or cumulative to, the prior art that Examiner has already considered during prosecution of the ’742 patent and its parent application. Further, the arguments Petitioner Examiner during prosecution. Thus, we deny institution under § 325(d). III. CONCLUSION Because the same or substantially the same art previously were presented to the Office and Petitioner has not demonstrated that Examiner materially erred when considering the prior art, we exercise our discretion under § 325(d) and decline to institute inter partes review of the ’742 patent.” slip op. at 29
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“A. Discretion Under 35 U.S.C. 325 (d) We first consider Patent Owner’s request that we deny institution7 under 35 U.S.C. § 325(d). Prelim. Resp. 9–52. Patent Owner contends that Petitioner’s alleged prior art was presented previously to Examiner during prosecution of the ’742 patent and its parent applications. Id. In the Patent Owner Response, Patent Owner provides a patent family tree, reproduced below. The patent family tree shows that “[t]he ’443 is a parent and the ’789 is a grandparent of the ’742” patent. Prelim. Resp. 8. Patent Owner argues that the same “Primary Examiner . . . examined all patents in this family. (See 7 Patent Owner presents an alternative basis for denying institution under 35 U.S.C. § 314(a) based on Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) and the Director’s Memo re Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (“Vidal Memo”), at 4 (June 21, 2022). Prelim Resp. 76–81. Because we deny institution based on 35 U.S.C. § 325(d) need not separately reach a conclusion based on Fintiv in this decision.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“III. CONCLUSION Because the same or substantially the same art previously were presented to the Office and Petitioner has not demonstrated that Examiner materially erred when considering the prior art, we exercise our discretion under § 325(d) and decline to institute inter partes review of the ’742 patent. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that Petitioner’s request for an inter partes review, pursuant to 35 U.S.C. § 314(a), of claims 1–3, 6–9, 12, 13, 15, and 17–20 of the ’742 patent is denied, and no trial is instituted.” slip op. at 30
Discretionary denialPatents in suitUS 10,314,742 - Keysight Technologies, Inc. v. Centripetal Networks, Inc.Institution deniedPTAB · Mar 22, 2023 · IPR2022-01421 · APJ Kevin F Turner · IPR · Institution
The Board denied institution on all challenged claims under § 325(d), finding the art and arguments substantially the same as those previously presented and no material Office error shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“[a] two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were 2 U.S. Patent Publication No. 2006/0048142 A1 (filed Sept. 2, 2004) (published Mar. 2, 2006) (Ex. 1005, “Roese”). 3 K. Golnabi et al., Analysis of Firewall Policy Rules Using Data Mining Techniques, 2006 IEEE/IFIP Network Operations and Management Symposium, NOMS 2006, 10th IEEE/IFIP, 305–315 (2006) (Ex. 1008, “Golnabi”). 4 U.S. Patent Publication No. 2004/0015905 A1 (filed Oct. 26, 2001) (published Jan. 22, 2004) (Ex. 1006, “Huima”). 5 U.S. Patent No. 7,320,022 B2 (filed July 25, 2002) (issued Jan. 15, 2008) (Ex. 1007, “Hayter”). 6 U.S. Patent No. 5,226,141 (filed Nov. 18, 1991) (issued July 6, 1993) (Ex. 1009, “Esbensen”). presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“We are not persuaded by Petitioner’s assertion that, because the first prong of the Advanced Bionics test is met, Petitioner was not required to address the second step of the test. Patent Owner disclosed the ’148 FWD to the Examiner in an IDS and the Examiner acknowledged it. Under these circumstances, it was incumbent on Petitioner to demonstrate that the Office erred in a manner material to patentability of the challenged claims. Instead, Petitioner cabined its arguments to the Examiner not having considered the art and arguments. As the Examiner acknowledged the IDS disclosing the ’148 FWD and Petitioner did not plead material error, it is appropriate for us to exercise our discretion under 35 U.S.C. § 325(d) to deny institution, without further reaching the merits.” slip op. at 10
- BurdenDecided for patent owner
“was provided via an Information Disclosure Statement (IDS). See Advanced Bionics, Paper 6 at 7–8. Patent Owner also asserts that Petitioner has the burden of affirmatively demonstrating that the Office committed material error in issuing the challenged patent, and the Petition makes no allegation of error by the Office. Prelim. Resp. 12 (citing Pet. 9). We are not persuaded by Petitioner’s assertion that, because the first prong of the Advanced Bionics test is met, Petitioner was not required to address the second step of the test. Patent Owner disclosed the ’148 FWD to the Examiner in an IDS and the Examiner acknowledged it. Under these circumstances, it was incumbent on Petitioner to demonstrate that the Office erred in a manner material to patentability of the challenged claims. Instead, Petitioner cabined its arguments to the Examiner not having considered the art and arguments. As the Examiner acknowledged the IDS disclosing the ’148 FWD and Petitioner did not plead material error, it is appropriate for us to exercise our discretion under 35 U.S.C. § 325(d) to deny institution, without further reaching the merits.” slip op. at 10
Discretionary denialPatents in suitUS 10,681,009
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.