- Apple Inc. v. Qualcomm IncorporatedRehearing deniedPTAB · Mar 14, 2019 · IPR2018-01280 · APJ Scott B Howard · IPR · Rehearing
The Board denied Apple’s rehearing request, leaving in place the denial of institution because it had not overlooked or misapprehended material facts about Brown or the prosecution history.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“a panel will review the decision for an abuse of discretion.” The party requesting rehearing has the burden of showing that the decision from which rehearing is sought should be modified and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Dec. 8–9 (emphasis added). Similarly, when weighting the Becton factors, we explicitly found that although the Examiner originally rejected the claims based on Brown, “[f]ollowing an amendment to the claims adding the prompting step along with arguments by the applicant explaining why Brown did not teach that new limitation, the Examiner shifted to new references and no longer relied on Brown.” Id. at 14 (citing Ex. 1002, 142– 149, 156–168, 178–181). In other words, twice we explicitly acknowledged what Petitioner now argues we overlooked.” slip op. at 5
- Strike new argumentNew argument disregardedOther
“For the reasons explained above, we are not persuaded that we misapprehended or overlooked any material facts. Moreover, Petitioner never explicitly nor implicitly addressed the Becton factors in the Petition, and new arguments are not permitted in a request for rehearing absent exceptional circumstances, of which none have been identified here.” slip op. at 8
Discretionary denialPatents in suitUS 7,844,037 - Align Technology, Inc. v. 3shape A/SRehearing deniedPTAB · Dec 4, 2018 · IPR2018-00198 · APJ Eleni Mantis Mercader · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution because the petition relied on the same or substantially the same art or arguments previously presented to the Office.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“I. LEGAL STANDARD 37 C.F.R. § 42.71(d) provides: “The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” In addition, “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“navigational controls, for which it cited Paley ’112 ¶ 77, and found that identical disclosure was in Paley ’591 considered during prosecution. See Req. Reh’g 3–4 (citing Pet. 27–28).” slip op. at 4
Discretionary denialPatents in suitUS 9,329,675 - Google LLC v. Uniloc Luxembourg S.A.Institution deniedPTAB · Jan 11, 2018 · IPR2017-01665 · APJ David C Mckone · IPR · Institution
The Board denied institution for claims 1–25 because both obviousness grounds presented substantially the same prior art or arguments previously presented to the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“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. All other factors aside, this is unfair to patent owners and is an inefficient use of the inter partes review process and other post-grant review processes. Id. at 17–18 (footnote omitted). The reasoning in General Plastic is pertinent here. Petitioner waited until after Patent Owner filed its Preliminary Response in the ’948 proceeding to file its Petition challenging the ’960 patent based on the same prior art and substantially the same arguments. In the process, Petitioner took the opportunity to attempt to correct deficiencies alleged by Patent Owner in Amazon’s petition. This is precisely the type of roadmapping General Plastic counsels against. If we were to institute on this ground, Patent Owner would be forced to defend its patent in an iterative fashion against challenges based on the same prior art and substantially the same arguments, with the aforementioned roadmapping. As General Plastic explains, this has the potential to be unfair and inefficient.” slip op. at 22
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingDenied
“For the reasons given above, institution of a trial based on the Petition is inappropriate because Petitioner’s challenges are substantially the same as those raised by Amazon in the ’948 proceeding. The differences amount, at most, to attempts by Petitioner to respond to the arguments in Patent Owner’s preliminary response in the ’948 proceeding. If we were to join this proceeding to the ’948 proceeding under the terms to which Petitioner would agree, the impact would be that Patent Owner would be forced to respond to serial challenges to the same patent based on the same prior art with the second petitioner having the benefit of seeing Patent Owner’s arguments in advance. Joinder under Petitioner’s proposed terms is inappropriate for the same reasons given above for denying institution based on § 325(d). As neither party has filed a request to join this proceeding to the ’948 proceeding under the terms to which Patent Owner would agree and, indeed, Petitioner expressly opposes joinder on those terms, we decline to exercise our discretion to join this proceeding to the ’948 proceeding.” slip op. at 30
- RehearingNot reached
Discretionary denialPatents in suitUS 8,566,960 - Viptela, Inc. v. Fatpipe Networks Private LimitedInstitution deniedPTAB · Oct 3, 2017 · IPR2017-01125 · APJ Christa P Zado · IPR · Institution
The Board denied institution on claims 4–15, 19, and 22–24, exercising discretion under §§ 314(a) and 325(d) based on overlapping petitions, follow-on arguments, and inefficient use of resources.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“’684 IPR, which in turn was a “copy-cat” of the ’976 IPR petition. Prelim. Resp. 2, 5. However, in deciding whether we should exercise our discretion and decline to go forward with this Petition, our concern is not only whether “the same or substantially the same prior art or arguments previously were presented to the Office,” as expressed in § 325(d), but also whether other factors weigh in favor of denying institution in light of the discretion afforded to us pursuant to § 314(a).” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“whether at the time of filing of the ’684 petition, Petitioner knew, or should have known, of Pearce, Zhang, and McCullough (“the Additional References”); the length of time that elapsed between learning of the Additional References, and the filing of the instant Petition; whether Petitioner has provided adequate explanation for the time lapse; whether at the time of filing of the instant Petition, Petitioner already had access to Patent Owner’s response in the ’976 IPR; and the finite resources of the Board. See Gen. Plastic Indus. at 16 (Paper 19) (informative). Petitioner provides no explanation of whether it knew or should have known of the Additional References when filing the ’684 petition; of when it first learned of these references; or of any time lapse between learning of these references and the filing of the instant Petition.” slip op. at 13
- Other 314aInstitution denied discretionary otherInstitution denied
“August 14, 2017, and a final decision is due by November 2, 2017. At this point, the decision in the ’976 IPR as to whether to see the matter through to final determination is squarely in our hands, regardless of whether any settlement is reached between the parties. See 37 C.F.R. § 42.74(a) (“The parties may agree to settle any issue in a proceeding, but the Board is not a party to the settlement and may independently determine any question of jurisdiction, patentability, or Office practice.”). Thus, if we deem it appropriate, we can reach a final decision on the grounds presented in the ’976 IPR with or without participation from the parties in that matter. These facts weigh in favor of us exercising our discretion not to move forward with the instant Petition, at least with respect to the ’976 instituted claims insofar as Petitioner’s arguments relate to Karol and are substantially identical to those in the ’976 IPR, because the issues raised are fully briefed and ripe for a final decision in the ’976 IPR, and Petitioner’s non-participation in that proceeding is at best neutral to our analysis. Petitioner is a party to the ’684 IPR, and in that proceeding the petition is directed to the same claims of the same patent as in this Petition. This fact weighs in favor of us not moving forward with the instant Petition. Also, at least with respect to the ’684 instituted claims, insofar as Petitioner’s arguments relate to Karol and are substantially identical to those in the ’684 IPR, Petitioner has the opportunity to address the same art and arguments in the ’684 proceeding. It would be an inefficient use of Office resources, and would run counter to securing the just, speedy, and inexpensive resolution of the challenges to the patentability of the ’235 patent, if we were to allow Petitioner to proceed on the same art and arguments in two separate proceedings.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner submits a list of terms for which Patent Owner has proposed construction in a co-pending district court case. Pet. 7–8. Petitioner, however, asserts that for the purposes of this Decision no terms need to be construed. Id. Patent Owner does not address claim construction in its Preliminary Response. See generally Prelim. Resp. We reviewed the parties’ arguments, and, for the purposes of this Decision, we have determined that no terms require express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 7
Claim constructionDiscretionary denialPatents in suitUS 6,775,235
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.