- 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 - Husky Injection Molding Systems, Ltd. / Husky Injection Molding Systems, Inc. v. Plastipak Packaging, Inc.Rehearing deniedPTAB · Jan 7, 2021 · IPR2020-00429 · APJ Meredith C Petravick · IPR · Rehearing
The Board denied Husky’s rehearing request, leaving in place the § 325(d) denial of institution based on previously presented art or arguments.
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
“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 4
Discretionary denialPatents in suitUS 9,033,168 - Husky Injection Molding Systems, Ltd. / Husky Injection Molding Systems, Inc. v. Plastipak Packaging, Inc.Rehearing deniedPTAB · Jan 7, 2021 · IPR2020-00428 · 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 to the Office.
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 8,857,637 - Husky Injection Molding Systems, Ltd. / Husky Injection Molding Systems, Inc. v. Plastipak Packaging, Inc.Rehearing deniedPTAB · Jan 7, 2021 · IPR2020-00433 · APJ Meredith C Petravick · IPR · Rehearing
The Board denied Husky’s rehearing request, leaving in place the 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
“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”). 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:” slip op. at 3
- BurdenDecided for patent owner
“Contrary to Petitioner’s assertion, we did not overlook the ground that included The US Standard. The Petition’s ground 8 alleges that claims 1–34 are unpatentable over The US Standard and Colloud. Paper 1, 72–75. The Institution Decision indicates that ground 8 “combines The US Standard with Colloud and relies mainly upon Colloud’s teachings” and states “[a]s do the parties, we focus our analysis on Colloud.” Inst. Dec. 10 n.10. As the Institution Decision points out, the Petition incorporates much of its analysis from the other grounds based on Colloud into the analysis of ground 8. See Paper 1, 72–75 (relying on “the reasons set forth above in the sections of the petition discussing each respective claim”). For example, Petitioner presents ground 8 as a four-page claim chart that states, “COLLOUD teaches all the limitations of claim 1. Section 10.6.” Id. at 72. Thus, Petitioner does not persuade us that we overlooked ground 8, which included The US Standard. 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 9,850,019 - Husky Injection Molding Systems, Ltd. / Husky Injection Molding Systems, Inc. v. Plastipak Packaging, Inc.Rehearing deniedPTAB · Jan 7, 2021 · IPR2020-00431 · 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
“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 9,403,310
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.