• Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Institution denied
  PTAB · Mar 22, 2022 · IPR2021-01520 · APJ Steven M Amundson · IPR · Institution

  The Board denied institution of inter partes review of claims 1, 2, 4, 9-11, 13, 18, and 19 under § 325(d), finding the same art had been evaluated and no material Office error was shown.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “If “either condition of first part of the framework is satisfied,” we must then determine “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. “An example of a material error may include misapprehending or overlooking specific teachings of the relevant prior art where those teachings impact patentability of the challenged claims.” Id. at 8 n.9.” slip op. at 16

  • Other 314aNot reached

    “III. DISCRETIONARY DENIAL Patent Owner argues that we should exercise our discretion under § 314(a) or § 325(d) to deny institution. See Prelim. Resp. 13–43; Prelim. Sur-reply 1–8; 35 U.S.C. §§ 314(a), 325(d). Petitioner argues that we should decline to exercise our discretion to deny institution. See Pet. 8–12; Prelim. Reply 1–10. For the reasons explained below, we exercise our discretion under § 325(d) to deny institution. Because we exercise our discretion under § 325(d) to deny institution, we do not reach discretionary denial under § 314(a).” slip op. at 15

  Discretionary denial
  Patents in suitUS 9,686,193
• Agamatrix, Inc. v. Dexcom, Inc.Institution denied
  PTAB · Mar 13, 2019 · IPR2018-01717 · APJ Patrick R Scanlon · IPR · Institution

  The Board denied institution of inter partes review of claims 14–69 under § 325(d), finding that the same prior art had previously been presented to the Office.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “Examiner found that the prior art, including Berner, failed to disclose applying a voltage to the electrochemical sensor, wherein applying the voltage comprises at least one process selected from the group consisting of switching, cycling, and pulsing a voltage applied to the electrochemical glucose sensor. Ex. 1002, 259. The Examiner explicitly found that Berner “teaches the switching of a voltage to the electrodes, but disclosed such a feature as part of an iontophoretic electrodes embodiment for collection purposes.” Id. AgaMatrix now relies on the same disclosure in Berner of application of a voltage to the iontophoretic electrodes as evidence of disclosure of the applying and the switching, cycling, and pulsing claim elements that the Examiner found missing in Berner.” slip op. at 14

  Discretionary denial
  Patents in suitUS 9,750,460
• NVIDIA Corporation v. Samsung Electronics Company, Ltd.Institution denied
  PTAB · May 4, 2016 · IPR2016-00134 · APJ Jameson Lee · IPR · Institution

  The Board denied institution on all challenged claims, exercising discretion against the follow-on petition and alternatively rejecting it under § 325(d) because Hsu and Yamakawa were substantially the same.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied

    “Given the undisputed facts as noted above, it would be unjust to Patent Owner to institute review in this proceeding. Petitioner has provided no rationale on why it waited until November 4, 2015, more than five months after filing of the first petition on June 1, 2015, in IPR2015-01318, to file the Petition in this proceeding, given that Petitioner was aware of Hsu at least by May 8, 2015. Notably, in IPR2015-01318, Patent Owner’s preliminary response was filed on September 10, 2015. On the other hand, not instituting review in this proceeding would not be unjust to Petitioner, because Petitioner was aware of Hsu when the first petition was filed on June 1, 2015, in IPR2015-01318, and subsequently waited too long to file the second petition relying on Hsu with no apparent justification. Under the circumstances of this case, as explained above, we hold Petitioner accountable for its own actions and inactions. Given the limited resources of the Board, we exercise our discretion not institute review in this proceeding, which is the second petition filed by Petitioner against claims 1– 8 and 10–15 of the ’675 patent. See 35 U.S.C. § 314(a); 37 C.F.R. § 42.108(a).” slip op. at 11

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “discussion of Hsu, we find that Yamakawa and Hsu are substantially the same insofar as claims 1–8 and 10–15 of the ’675 patent are concerned. In IPR2015-01318, Petitioner asserted that claims 1–8 and 10–15 of the ’675 patent are anticipated by Yamakawa. In this proceeding, Petitioner asserts that claims 1–8 and 10–15 of the ’675 patent are anticipated by Hsu. Neither assertion is based on any inherency argument, and both assertions rely on a direct reading of each claim limitation onto the prior art. Nothing in either Yamakawa or Hsu had to be specially construed and neither Yamakawa nor Hsu sets forth any special definition of terms. With respect to the challenged claims, we are not cognizant of any necessary disclosure that is provided by Hsu but not Yamakawa. The differences between Hsu and Yamakawa have not been shown to be significant with respect to the challenged claims. The types of steps said to be disclosed by Hsu are the types of steps said to be disclosed by Yamakawa, and vice versa. If Yamakawa anticipates the challenged claims, it would be expected that the same assertion would be made about Hsu, and the same is true the other way around.” slip op. at 13

  Discretionary denial
  Patents in suitUS 8,252,675

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.