- Skechers U.S.A., Inc. v. Nike, Inc.Institution deniedPTAB · Jun 10, 2025 · IPR2025-00141 · APJ Ken B Barrett · IPR · Institution
The Board denied institution on all challenged claims under §325(d), finding the petition relied on previously presented art and did not show material error by the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“The Board uses a two-part framework in determining whether to exercise its discretion under § 325(d), specifically: (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. Advanced Bionics, Paper 6 at 8.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“single §102 rejection based solely on Nishida.” Pet. § 325(d) Reply 3 (emphasis omitted). Specifically, Petitioner argues that: The examiner seemingly failed to consider how it would have been obvious to combine Nishida (or any other reference of record, such as Orei) with knowledge in the art, including the fact that it was “well known to use double needle-bar raschel machines . . . to knit textile elements simultaneously with surrounding textile structures” (Pet., 37–38), and that simultaneous knitting would be obvious because it would “increase yield and reduce manufacturing steps,” as explained in the Petition and supporting evidence. See Pet., 42–44. Id. (alterations in original); see also id. at 4 (Petitioner arguing that the Examiner clearly erred for “failing to seemingly even consider if it would 10 We quote here, to give context to “otherwise,” both aspects that a petitioner must demonstrate in order to meet its burden. In order to determine whether Petitioner has met its overall burden, we need not and do not reach the issue of whether “the previously presented art [Nishida] teaches the limitations of the challenged claims.” Ecto World, Paper 13 at 6. have been obvious to combine Nishida with other prior art, or to implement Nishida using well-known techniques for simultaneously knitting textile elements and surrounding structures having differing textures.”). We do not find this argument persuasive. The cited portion of the Petition is the contention that Orei—not Nishida—would render obvious claim 1. See Pet. 37–38, 42–44 (Ground 1A). Thus, Petitioner has not shown persuasively that the Examiner erred in not making an obviousness rejection based on Nishida because the disputed limitation was purportedly well-known. Additionally, Petitioner’s support for the assertion that this limitation is well-known is not persuasive. The Petition parenthetically quotes from a source stating that plural “articles . . . can be simultaneously knitted side-by-side,” not that an article (a textile element) and surrounding textile structure are known to be simultaneously knitted. See Pet. 38 (quoting Ex. 1050, 201) (emphasis added); see also Pet. § 325(d) Reply 3 (Petitioner quoting its own argument and characterizing it as a “fact” (“The examiner seemingly failed to consider . . . the fact that it was ‘well known . . . “)).” slip op. at 21
§ 103 obviousnessDiscretionary denialPatents in suitUS 8,266,749 - Panduit Corp. v. Corning Optical Communications LLCInstitution deniedPTAB · Apr 6, 2022 · IPR2021-01562 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution of IPR for claims 1–30 under § 325(d), finding substantially the same art and arguments had been considered and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“interest to this proceeding. Pet. 75; Paper 9, 2. Patent Owner argues the “Petition’s identification of the real parties-in-interest is fatally defective” because “the RPI identified in the Petition is different from the real parties in interest identified in the Power of Attorney.” Prelim. Resp. 41–42 (citing Pet. 75). In an Updated Mandatory Notice, Petitioner identifies Panduit Corp., The Siemon Company, FS.Com, Inc., and Reichle & De-Massari Holding AG as the real parties in interest. Paper 17, 2. To the extent that the identification of the real parties in interest in the Petition may have been defective because it differed from Petitioner’s Powers of Attorney (see Papers 1–4), that defect has been cured in Petitioner’s Updated Mandatory Notice.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“part of the Advanced Bionics framework, that the Petition “presents to the Office the same or substantially the same art previously presented to the Office.” See Advanced Bionics, IPR2019-01469, Paper 6 at 7.” slip op. at 16
Discretionary denialPatents in suitUS 10,444,456 - Sonos, Inc. v. Google, LLCInstitution deniedPTAB · Nov 9, 2021 · IPR2021-00963 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution of IPR for claims 1–11 and 13–20 under § 325(d), finding the art previously presented or substantially similar and no material Office error shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In evaluating arguments under § 325(d), we use [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 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); see also 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) (listing factors to consider in evaluating the applicability of § 325(d)). With regard to whether the same or substantially the same art previously was presented to the Office, the file history of the challenged ’375 patent evidences that Lim and Adar were previously presented to the Office and that Horn is substantially the same as art previously presented to the Office.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“III. CONCLUSION For the reasons set forth above, we exercise our discretion to deny institution under 35 U.S.C. § 325(d). IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that no inter partes review as to any claim of U.S. Patent No. 10,140,375 B2 is instituted, and the Petition is denied.” slip op. at 12
Discretionary denialPatents in suitUS 10,140,375 - Microsoft Corporation v. Ipa Technologies Inc.Rehearing deniedPTAB · Apr 3, 2020 · IPR2019-00840 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Microsoft’s rehearing request, leaving institution denied because it did not show error in the Board’s § 325(d) analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. 37 C.F.R. § 42.71(d). “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.” Id. When rehearing a decision on a petition, we 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 / argumentsDecided for patent owner
“Petitioner did not argue, in the Petition, that FIPA97 was released as individual parts. Petitioner’s Rehearing Request (page 8) cites to the Petition at page 20 and Exhibit 1054. Page 20 of the Petition, however, contains Petitioner’s argument that FIPA97 was made publicly available as a single document, as discussed above. It does not include any argument or suggestion that FIPA97 was released as individual parts. Additionally, Exhibit 1054 is not cited on page 20 of the Petition in the discussion of FIPA97 nor does it appear that Exhibit 1054 was cited anywhere in the Petition. Thus, because Petitioner did not argue, in the Petition, that FIPA97 was released as individual parts, we could not have overlooked that argument. Petitioner’s contention of error in our determination that FIPA97 was involved during examination of the ’128 patent application is premised upon finding that FIPA97 existed as individual parts. Because Petitioner fails to demonstrate that we overlooked an argument that was not made, we are not persuaded of error.” slip op. at 4
Discretionary denialPatents in suitUS 7,036,128 - Microsoft Corporation v. Ipa Technologies Inc.Rehearing deniedPTAB · Apr 3, 2020 · IPR2019-00838 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Microsoft’s rehearing request, leaving institution denied under § 325(d) because Microsoft did not show the Board overlooked arguments made in the petition.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “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.” Id. When rehearing a decision on a petition, we 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
“and the prior art relied upon in Petitioner’s challenges to the ’128 patent, Petitioner did not address 35 U.S.C. § 325(d) in the Petition (Paper 1). Instead, Petitioner made two critical representations—(1) that the Examiner of the ’128 patent “did not have FIPA97 before him, or any other FIPA reference for that matter” (Pet. 1) and (2) that despite there being seven “Parts” to FIPA97, “FIPA97 was made publicly available as a single document” and was “developed and published as a single, integrated work.” Pet. 20 (citing Ex. 1055 (FIPA97 Table of Contents for Parts 1–7)); Ex. 1026, 5 (Foundation for Intelligent Physical Agents, “Resolution of Munich meeting”). In the Petition (Paper 1), Petitioner never contended that FIPA97 was published or available as separate and distinct parts, such that access to one part might not mean access to each other part. Rather, Petitioner’s sole statement regarding separate parts was that it filed FIPA97 as seven separate exhibits “due to its size and numbering schedule.” Id. at 20. Accordingly, on the record presented, we agreed with Petitioner’s representation and we found that FIPA97 (Exs. 1006–1012) constitutes a single document, which we then found was involved during examination of the ’128 patent application. Inst. Dec. 15.” slip op. at 3
Discretionary denialPatents in suitUS 7,036,128 - Microsoft Corporation v. Ipa Technologies Inc.Rehearing deniedPTAB · Apr 3, 2020 · IPR2019-00839 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Microsoft's rehearing request, leaving institution denied under § 325(d) because it did not show the Board overlooked arguments about FIPA97 or misweighed the Becton factors.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “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.” Id. When rehearing a decision on a petition, we 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
“and the prior art relied upon in Petitioner’s challenges to the ’128 patent, Petitioner did not address 35 U.S.C. § 325(d) in the Petition (Paper 1). Instead, Petitioner made two critical representations—(1) that the Examiner of the ’128 patent “did not have FIPA97 before him, or any other FIPA reference for that matter” (Pet. 1) and (2) that despite there being seven “Parts” to FIPA97, “FIPA97 was made publicly available as a single document” and was “developed and published as a single, integrated work.” Pet. 20 (citing Ex. 1055 (FIPA97 Table of Contents for Parts 1–7)); Ex. 1026, 5 (Foundation for Intelligent Physical Agents, “Resolution of Munich meeting”). In the Petition (Paper 1), Petitioner never contended that FIPA97 was published or available as separate and distinct parts, such that access to one part might not mean access to each other part. Rather, Petitioner’s sole statement regarding separate parts was that it filed FIPA97 as seven separate exhibits “due to its size and numbering schedule.” Id. at 20. Accordingly, on the record presented, we agreed with Petitioner’s representation and we found that FIPA97 (Exs. 1006–1012) constitutes a single document, which we then found was involved during examination of the ’128 patent application. Inst. Dec. 15.” slip op. at 3
Discretionary denialPatents in suitUS 7,036,128 - Microsoft Corporation v. Ipa Technologies Inc.Institution deniedPTAB · Nov 7, 2019 · IPR2019-00838 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution of IPR on claims 1, 13–18, 22, and 33–38 under § 325(d) because the same or substantially the same prior art had been presented to the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“In evaluating whether to deny institution on the basis of § 325(d) because the same or substantially the same prior art or arguments previously were presented to the Office, the Board considers the following non-exclusive factors: (1) the similarities and material differences between the asserted art and the prior art involved during examination; (2) the cumulative nature of the asserted art and the prior art evaluated during examination; (3) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (4) 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; (5) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (6) the extent to which additional evidence and facts presented in the” slip op. at 13
Discretionary denialPatents in suitUS 7,036,128 - Apple Inc. v. California Institute Of TechnologyInstitution deniedPTAB · Sep 12, 2017 · IPR2017-00703 · APJ Ken B Barrett · IPR · Institution
The Board denied institution on claims 1–14, exercising § 325(d) discretion and finding no reasonable likelihood that the ’710 patent and MacKinnon rendered them obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“In determining whether to institute an inter partes review, we, acting on behalf of the Director, may take into account whether, and reject a petition to institute on a particular ground because, the same or substantially the same prior art or arguments previously were presented to the Office. 35 U.S.C. § 325(d).” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner bears the ultimate burden of proving unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this stage, we assess, based on the information presented in the Petition and Patent Owner’s Preliminary Response, whether Petitioner has demonstrated a reasonable likelihood of eventually satisfying that burden. 35 U.S.C. § 314(a). To be entitled to the benefit of the filing date of an earlier application, the claims at issue must have written description support in that earlier application. See 35 U.S.C. § 120. “[T]he test for sufficiency [of the written description] is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citations omitted).” slip op. at 10
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for patent owner
“To be entitled to the benefit of the filing date of an earlier application, the claims at issue must have written description support in that earlier application. See 35 U.S.C. § 120. “[T]he test for sufficiency [of the written description] is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citations omitted).” slip op. at 10
§ 112 disclosureDiscretionary denialPatents in suitUS 8,284,833 - Unified Patents Inc. v. John L. BermanRehearing deniedPTAB · Jan 31, 2017 · IPR2016-01571 · APJ Melissa A Haapala · IPR · Rehearing
The Board denied rehearing, leaving in place its § 325(d) denial of institution for claims 2–8 and 10–15; the petitioner did not challenge denial for claims 9 and 16.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We conclude that Petitioner has not identified adequately any matter that we misapprehended or overlooked. In view of the foregoing, it is: ORDERED that Petitioner’s Request for Rehearing request is denied.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Petitioner’s assertion that the Examiner never considered Russell for obviousness, but rather only for anticipation, is speculative and is premised on the assumption that the Examiner blindly analyzed the reference for compliance with 35 U.S.C. § 102 while ignoring other statutory requirements of patentability such as non-obviousness under 35 U.S.C. § 103. Petitioner presents no persuasive argument or evidence to support that assumption. Our conclusion that Russell was substantially considered during the prosecution of the challenged claims (Dec. 11) is unaltered by Petitioner’s unpersuasive argument that the Examiner did not consider Russell for obviousness. Furthermore, we disagree with Petitioner that the Examiner did not substantially consider Russell for the newly added claims. Our Decision noted that the Examiner Interview Summary evidences consideration by the Examiner of Russell for the newly added claims. Dec. 11. In particular, the Examiner stated “claims 5, 11, 12, and 18 also overcome Russell.” Ex. 1006, 52. Petitioner’s claim map of the differences between “newly added claim 5” to the original claims is immaterial because the Examiner explicitly indicated that Russell was considered for the limitations of this “newly added claim,” even though it has limitations that differ from the original claims. See id.” slip op. at 3
Discretionary denialPatents in suitUS 5,523,791 - Robert Bosch LLC / Daimler AG v. Orbital Australia Pty LtdInstitution deniedPTAB · May 13, 2016 · IPR2016-00083 · APJ Ken B Barrett · IPR · Institution
The Board denied institution on all challenged claims under § 325(d) and dismissed the motion for joinder as moot.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“whether, in our discretion, the Petition in this case warrants inter partes review. Petitioner states in the Joinder Motion that its third Petition “raises the same grounds of unpatentability as the First and Second ’365 IPRs, with the same support from the same expert, the only change being the additional evidence supporting Bernhardt’s publication.” Motion for Joinder 1; see also id. at 6–7 (same). Petitioner also represents “[t]he Third ’365 IPR Petition is identical to the First and Second ’365 IPR petitions on the grounds related to Bernhardt.” Id. at 5 (citing IPR2016-00083, Paper 3 (Petition), 58). Petitioner states: If the Board elects not to institute trial on any grounds in IPR2015-01258 and IPR2015-01259, based on insufficient evidence being presented in those petitions to prove that Bernhardt is prior art under 35 U.S.C. § 102(b), the Board should grant this petition and institute trial on all grounds because this petition provides additional evidence sufficient to prove that Bernhardt was published and sufficiently accessible to the public interested in the art prior to the ’365 patent’s earliest priority date.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“U.S.C. § 314(a), which provides that a review may not “be instituted unless the Director2 determines that the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” As we have recognized, “Congress did not mandate that an inter partes review must be instituted under certain conditions. Rather, by stating that the Director—and by extension, the Board—may not institute review unless certain conditions are met, Congress made institution discretionary.” Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., Case IPR2013-00324, slip op. at 4 (PTAB Nov. 21, 2013) (Paper 19). In determining whether to institute an inter partes review, the Board may “deny some or all grounds for unpatentability for some or all of the challenged claims.” 37 C.F.R. § 42.108(b); see 35 U.S.C. § 314(a).” slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingNot reached
“whether to join a party to an inter partes review under 35 U.S.C. § 315(c): JOINDER.–If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. Thus, joinder in an inter partes review may be warranted in certain circumstances, but is not required in any. See Sony Corp. v. Network-1 Sec. Solutions, Inc., Case IPR2013-00386, slip. op. at 3 (PTAB July 29, 2013) (Paper 16) (“[t]he Board will determine whether to grant joinder on a caseby-case basis, taking into account the particular facts of each case, substantive and procedural issues, and other considerations”). The statute does, however, set forth at least one circumstance in which we do not have the discretion to join a party: if the Board determines that a later (in this case third) petition does not warrant institution. 35 U.S.C. § 315(c) (“the Director . . . may join as a party . . . any person who properly files a petition . . . that the Director . . . determines warrants the institution of an inter partes review under section 314”).” slip op. at 10
Discretionary denialPatents in suitUS 5,655,365
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.