- Vovomart (HK) Enterprises Co., Ltd. / HK Sanodesk Co., Ltd. et al. v. Office Kick, Inc.Institution deniedPTAB · Jan 12, 2023 · PGR2022-00048 · APJ James A Tartal · PGR · Institution
The Board denied institution under § 325(d), finding the same or substantially the same art had been presented to the Office and Petitioner showed no material Office error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“previously presented to the Office under our framework for evaluating discretionary denial under Section 325(d), we next consider whether Petitioner “has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics, Paper 6 at 8; see also id. at 8–9 (further explaining that if “petitioner fails to make a showing of material error,” generally discretion will be exercised to deny institution of review). In the second part of our framework, we consider (i) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (ii) whether Petitioner has pointed out sufficiently how the Examiner erred in evaluating the asserted prior art; and (iii) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art. See id. at 9 n.10, 10– 11 (citing factors (c), (e), and (f) of Becton, Dickinson). For the reasons that follow, we find that Petitioner does not demonstrate an error material to patentability.” slip op. at 13
Discretionary denialPatents in suitUS 11,160,367 - Nespresso USA, Inc. v. K-Fee System GMHBInstitution deniedPTAB · Jan 18, 2022 · IPR2021-01222 · APJ James J Mayberry · IPR · Institution
The Board denied institution under § 325(d), finding substantially the same prior art or arguments had been presented to the Office and no material examiner error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“stated in the Petition, standing alone, supports a finding of material examiner error, that argument is not developed adequately and, therefore, is unpersuasive on this record. Pet. 84–85. Petitioner bears the burden of showing that the Office erred, for example, by “misapprehending or overlooking specific teachings of the relevant prior art whose teachings impact patentability of the challenged claims.” Advanced Bionics, Paper 6 at 8. Where “the record of the Office’s previous consideration of the art is not well developed or silent, then a petitioner may show the Office erred by overlooking something persuasive under” Becton, Dickinson factors (e) and (f). Advanced Bionics, Paper 6 at 10. As explained above, when assessing factor (e), we consider whether Petitioner “point[s] out sufficiently how the examiner erred in its evaluation of the asserted prior art.” Supra 8. When assessing factor (f), in turn, we look for some explanation of how or why “the extent to which additional evidence and facts presented in the petition warrant reconsideration of the prior art or arguments.” Id. Petitioner addresses neither of those issues adequately, if at all. Pet. 81–85; Prelim. Reply 5–10. The closest Petitioner comes to addressing those issues is by observing, “the obviousness analysis” in the Petition “is supported by expert testimony, which the Examiner did not have.” Pet. 85. That observation is undeveloped by further analysis and, therefore, is ineffective to show that the Examiner materially erred by failing to discuss the same prior art combinations advanced in the Petition, or that “additional evidence and facts presented in the Petition warrant reconsideration of the prior art” previously presented to the Office. Becton, Dickinson, Paper 8 at 18.” slip op. at 26
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“institute review. See also 37 C.F.R. § 42.4(a) (2021) (permitting the Board to institute trial on behalf of the Director). To institute an inter partes review, we must determine that the information presented in the Petition shows “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) (2018). For the reasons set forth below, upon considering the Petition, Preliminary Response, Preliminary Reply, Preliminary Sur-reply, and evidence of record, we exercise discretion under 35 U.S.C. § 325(d) and do not institute an inter partes review.” slip op. at 2
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for patent owner
“namely, whether the claimed invention is entitled to a priority date of July 22, 2010, based on certain German priority documents, thereby disqualifying Jarisch as prior art under 35 U.S.C. § 102(e). See Pet. 15–18 (discussing priority to the German applications), 22–23 (asserting Jarisch as prior art under § 102(e)), 85 (arguing that the examiner did not consider Jarisch because of an error in priority); Ex. 1002–176, Part 1, 278. Pet. 15–18 (arguing that the challenged claims are not entitled to priority based on the German priority documents), 85 (arguing the examiner applied an incorrect priority date, based on the German priority documents, to antedate Jarisch); Prelim. Resp. 4–6, 16–22; Prelim. Reply 8–10; Prelim. Sur-reply 7–10. Petitioner focuses only on whether the examiner erred in assessing that argument. Pet. 85. Petitioner does not, and cannot, submit that the Office never considered the issue during patent prosecution, at least with respect to applications in the priority chain of the ’177 patent. The Office, in fact, expressly considered whether “Jarisch is not prior art” because the challenged claims are “entitled to a priority date of 22 July 2010” based on the German priority documents. Ex. 1002–176, Part 1, 278 (prosecution history for the grandparent application). The Office also expressly responded to Patent Owner’s argument on that point as follows: “This urging is not deemed persuasive.” Id. This issue represents a second, significant argument previously presented to the Office.” slip op. at 20
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“B. Discretionary Denial under 35 U.S.C. § 314(a) Patent Owner also argues that we should exercise our discretion under 35 U.S.C. § 314(a) in light of parallel district court litigation involving the parties and the ’177 patent. Prelim. Resp. 36–44; Prelim. Sur-reply 1–4. Because we exercise our discretion under § 325(d) and deny the Petition, we do not reach this issue.” slip op. at 28
§ 102 anticipationDiscretionary denialPatents in suitUS 10,858,177 - Nespresso USA, Inc. v. K-Fee System GmbHInstitution deniedPTAB · Jan 18, 2022 · IPR2021-01223 · APJ Grace Karaffa Obermann · IPR · Institution
The Board denied institution of IPR on claims 1–16 under § 325(d), finding substantially the same art or arguments had been presented to the Office and no material Examiner error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“First, we assess whether the Examiner considered the same or substantially the same prior art or arguments asserted in the Petition and, if so, we resolve whether Petitioner shows sufficiently that the Examiner erred in a manner material to the patentability of the 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 the two-part framework articulated in Advanced Bionics,” slip op. at 9
Discretionary denialPatents in suitUS 10,870,531 - Nespresso USA, Inc. v. K-Fee System GmbHInstitution deniedPTAB · Jan 18, 2022 · IPR2021-01221 · APJ Grace Karaffa Obermann · IPR · Institution
The Board denied institution of IPR on claims 1–15 under § 325(d), finding substantially the same prior art or arguments had been presented to the Office and no material Examiner error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“the same prior art or arguments asserted in the Petition and, if so, we resolve whether Petitioner shows sufficiently that the Examiner erred in a manner material to the patentability of the challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”).” slip op. at 10
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“challenged claims and (2) that the claimed invention, including the feature relating to barcode location, would not have been obvious over the combination of prior art references applied by the Examiner, including Jarisch. Id. at 393–404. Where both alternatives were before the Examiner, it is not at all clear that “the Examiner applied an incorrect priority date” or otherwise accepted that Jarisch does not qualify as prior art. Pet. 85.” slip op. at 23
§ 102 anticipationDiscretionary denialPatents in suitUS 10,858,176 - Husky Injection Molding Systems, Ltd. / Husky Injection Molding Systems, Inc. v. Plastipak Packaging, Inc.Rehearing deniedPTAB · Jan 7, 2021 · IPR2020-00439 · APJ Meredith C Petravick · IPR · Rehearing
The Board denied Petitioner’s rehearing request, leaving in place its discretionary denial of institution under § 325(d) because the same or substantially the same art or arguments were previously presented.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD A party requesting rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters it believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision, we review the decision for an abuse of discretion. See generally 37 C.F.R. § 42.71 (b)–(d). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“applied the two-part framework set forth in Advanced Bionics. Inst. Dec. 8–20. The two-part framework is: (1) determining 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, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8. In applying the two-part framework, we considered several nonexclusive factors, including:” slip op. at 3
Discretionary denialPatents in suitUS 10,457,437 - Husky Injection Molding Systems, Ltd. / Husky Injection Molding Systems, Inc. v. Plastipak Packaging, Inc.Rehearing deniedPTAB · Jan 7, 2021 · IPR2020-00438 · APJ Meredith C Petravick · IPR · Rehearing
The Board denied Husky’s rehearing request, leaving institution denied under § 325(d) because the petition relied on art or arguments previously presented to the Office.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters it believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision, we review the decision for an abuse of discretion. See generally 37 C.F.R. § 42.71 (b)–(d). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). In that respect, section 325(d) provides that the Director may elect not to institute a proceeding if the challenge to the patent is based on matters previously presented to the Office. Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 7 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”).” slip op. at 3
Discretionary denialPatents in suitUS 10,214,312 - Husky Injection Molding Systems, Ltd. / Husky Injection Molding Systems, Inc. v. Plastipak Packaging, Inc.Rehearing deniedPTAB · Jan 7, 2021 · IPR2020-00437 · APJ Meredith C Petravick · IPR · Rehearing
The Board denied Husky’s rehearing request, leaving in place the discretionary denial of institution under § 325(d) across the related proceedings.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD A party requesting rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters it believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision, we review the decision for an abuse of discretion. See generally 37 C.F.R. § 42.71 (b)–(d). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“In evaluating the parties’ contentions concerning section 325(d), we applied the two-part framework set forth in Advanced Bionics. Inst. Dec. 8–20. The two-part framework is: (1) determining 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, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8. In applying the two-part framework, we considered several nonexclusive factors, including: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III.C.5, first paragraph) (“Becton, Dickinson”). After review of factors (a), (b), and (d), we determined that the same or substantially the same art or arguments previously were presented to the Office, and addressed factors (c), (e), and (f) as to whether Petitioner demonstrated that the Office erred in a manner material to the patentability of the challenged claims. See Advanced Bionics, Paper 6 at 10.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“Further, we note that Petitioner argued that discretionary denial was unwarranted under § 325(d) in its Reply to Patent Owner’s Preliminary Response. See e.g., Paper 17, 1–6. These arguments focused on Colloud and did not mention The US Standard. See id. We could not have abused our discretion by overlooking an argument that discretionary denial was unwarranted based on the inclusion of The US Standard, when Petitioner did not make such an argument in its Reply.” slip op. at 6
Discretionary denialPatents in suitUS 10,214,311 - Husky Injection Molding Systems, Ltd. / Husky Injection Molding Systems, Inc. v. Plastipak Packaging, Inc.Rehearing deniedPTAB · Jan 7, 2021 · IPR2020-00436 · APJ Meredith C Petravick · IPR · Rehearing
The Board denied Husky’s rehearing request, leaving institution denied under § 325(d) because the same or substantially the same art or arguments had previously been presented.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD A party requesting rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters it believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision, we review the decision for an abuse of discretion. See generally 37 C.F.R. § 42.71 (b)–(d). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“applied the two-part framework set forth in Advanced Bionics. Inst. Dec. 8–20. The two-part framework is: (1) determining 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, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8. In applying the two-part framework, we considered several nonexclusive factors, including:” slip op. at 3
Discretionary denialPatents in suitUS 10,266,299 - Husky Injection Molding Systems, Ltd. / Husky Injection Molding Systems, Inc. v. Plastipak Packaging, Inc.Rehearing deniedPTAB · Jan 7, 2021 · IPR2020-00435 · APJ Meredith C Petravick · IPR · Rehearing
The Board denied rehearing, leaving in place the discretionary denial of institution under § 325(d) because the rehearing request showed no abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“unreasonable judgement in weighing the Becton, Dickinson[] factors underlying Advanced Bionics’[s] framework and thus abuse its discretion.” Req. Reh’g. 1. We have considered all of Petitioner’s allegations of error, but are not persuaded that we abused our discretion by denying institution pursuant to section 325(d). The alleged errors amount to no more than mere disagreement with our weighing of the Becton, Dickinson factors in the Advanced Bionics’s framework. Mere disagreement is not a proper basis for rehearing.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“applied the two-part framework set forth in Advanced Bionics. Inst. Dec. 8–20. The two-part framework is: (1) determining 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, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8. In applying the two-part framework, we considered several nonexclusive factors, including:” slip op. at 3
Discretionary denialPatents in suitUS 10,023,345 - Husky Injection Molding Systems, Ltd. / Husky Injection Molding Systems, Inc. v. Plastipak Packaging, Inc.Rehearing deniedPTAB · Jan 7, 2021 · IPR2020-00434 · APJ Meredith C Petravick · IPR · Rehearing
The Board denied Husky’s rehearing request, leaving institution denied under § 325(d) because the same or substantially the same art or arguments were previously presented.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters it believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision, we review the decision for an abuse of discretion. See generally 37 C.F.R. § 42.71 (b)–(d). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“applied the two-part framework set forth in Advanced Bionics. Inst. Dec. 8–20. The two-part framework is: (1) determining 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, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8. In applying the two-part framework, we considered several nonexclusive factors, including:” slip op. at 3
Discretionary denialPatents in suitUS 9,738,409
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.