- Padagis Israel Pharmaceuticals Limited / Padagis US LLC et al. v. Bausch Health Ireland LimitedInstitution deniedPTAB · Jan 12, 2024 · IPR2023-01114 · APJ Michael A Valek · IPR · Institution
The Board denied institution of IPR challenging claims 1–11 because substantially the same art and arguments were previously considered, and Petitioner did not show material error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“factors. In the first part, we consider factors (a), (b), and (d) to determine whether the art or arguments presented in the petition are the same or substantially the same as those previously presented to the Office. Advanced Bionics, 8–10. “If, after review of factors (a), (b), and (d), it is determined that the same or substantially the same art or arguments previously were presented to the Office,” then we advance to the second part of the analysis to determine “whether the petitioner has demonstrated a material error by the Office” in view of factors (c), (e), and (f). Id. Advanced Bionics instructs that “[i]f reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability.” Id. at 9.” slip op. at 12
Discretionary denialPatents in suitUS 11,311,482 - LG Electronics Inc. / LG Electronics USA, Inc. v. Image Processing Technologies, LLCInstitution deniedPTAB · May 11, 2023 · IPR2023-00104 · APJ Barbara A Benoit · IPR · Institution
The Board denied institution on claim 1, finding the petition presented the same or substantially the same art or arguments previously considered by the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“under 35 U.S.C. § 325(d) to deny institution of an inter partes review. See 37 C.F.R. § 42.4(a) (The Director delegated her authority to determine whether trial should be instituted to the Board.). Section 325(d) of Title 35 of the United States Code states, in relevant part: “In determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” We use a two-part framework for evaluating arguments under § 325(d): (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.” slip op. at 12
- Prior constructionPrior construction adoptedDecided for petitioner
“applied the construction of “the [at least two] calculation units being configured to form a histogram representative of the parameter” (the “common parameter” limitation) as meaning “the histogram calculation units being configured to each form a histogram representative of at least one common parameter.” Ex. 1005 (IPR 336 Final Written Decision), 12– 14; see Ex. 1006 (IPR 1189 Decision Denying Institution), 9; Ex. 1007 (Reexam 056 Decision finding claim 1 patentable), 8.” slip op. at 11
Claim constructionDiscretionary denialcites Phillips · GrahamPatents in suitUS 6,959,293 - Eyenovia, Inc. v. Sydnexis.Institution deniedPTAB · Nov 8, 2022 · IPR2022-00963 · APJ Susan L C Mitchell · IPR · Institution
The Board denied institution of IPR on claims 1–27 under § 325(d), finding substantially the same art and arguments had been presented to the Office and no material error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“substantially the same as those previously presented to the Office. Advanced Bionics, 8–10. “If, after review of factors (a), (b), and (d), it is determined that the same or substantially the same art or arguments previously were presented to the Office,” then we advance to the second part of the analysis to determine “whether the petitioner has demonstrated a material error by the Office” in view of factors (c), (e), and (f). Id. Advanced Bionics instructs that “[i]f reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability.” Id. at 9–10.” slip op. at 10
Discretionary denialPatents in suitUS 9,421,199 - Eyenovia, Inc. v. Sydnexis.Institution deniedPTAB · Nov 7, 2022 · IPR2022-00965 · APJ Michael A Valek · IPR · Institution
The Board denied institution on claims 1–20 under § 325(d), finding substantially the same art and arguments had been considered during prosecution and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“For these reasons, we determine that both the art and the arguments presented in the Petition are substantially the same as those previously presented to the Examiner.” slip op. at 21
Discretionary denialPatents in suitUS 10,076,515 - Eyenovia, Inc. v. Sydnexis.Institution deniedPTAB · Nov 7, 2022 · IPR2022-00964 · APJ Michael A Valek · IPR · Institution
The Board denied institution of inter partes review of claims 1–19 under § 325(d), finding the art and arguments substantially similar to those previously presented and no material Office error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“We again determine that Patent Owner has the better position. As explained above, the Examiner considered substantially the same art during prosecution. Although there was no rejection issued over the particular references cited in the Petition, those references were either before the Examiner (Siegel) or are cumulative of references (Chua & Tan and Lund) before the Examiner. There is no evidence that suggests the Examiner overlooked the most pertinent teachings in the art presented during prosecution. Indeed, the Teva rejection presented substantially the same arguments as the grounds in the Petition, including Patent Owner’s argument that there was “insufficient rationale to combine Teva and other references to produce a D2O-based formulation in which atropine is the monotherapeutic agent because atropine and its derivatives are specifically recognized as stable in ordinary water.” Ex. 2003, 69, 87–88. The Examiner credited this argument by withdrawing the Teva rejection and allowing the ’447 patent. Thus, we do not agree with Petitioner’s argument that the Examiner failed to consider whether it would have been “obvious to improve low-concentration atropine with D2O as a monotherapy for treating myopia.” See Pet. 63.” slip op. at 22
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“D. Conclusion Based on the foregoing, we determine that the circumstances of this case warrant the exercise of discretion under 35 U.S.C. § 325(d) and therefore deny institution. ORDER After due consideration of the record before us, and for the foregoing reasons, it is: ORDERED that the Petition is denied, and no inter partes review is instituted.” slip op. at 25
Discretionary denialPatents in suitUS 9,770,447 - Eyenovia, Inc. v. Sydnexis.Institution deniedPTAB · Nov 7, 2022 · IPR2022-00966 · APJ Jamie T Wisz · IPR · Institution
The Board denied institution of inter partes review of claims 1–13, 15–27, and 29–30 under § 325(d), finding substantially the same art and arguments had been presented to the Office and no material error shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“For these reasons, we determine that both the art and the arguments presented in the Petition are substantially the same as those previously presented to the Examiner.” slip op. at 20
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“D. Conclusion Based on the foregoing, we determine that the circumstances of this case warrant the exercise of discretion under 35 U.S.C. § 325(d) and therefore deny institution. ORDER After due consideration of the record before us, and for the foregoing reasons, it is: ORDERED that the Petition is denied, and no inter partes review is instituted.” slip op. at 26
Discretionary denialPatents in suitUS 10,201,534 - PNC Bank, N.A. v. Secure Axcess, LLCInstitution deniedPTAB · Jul 10, 2015 · CBM2015-00039 · APJ Barbara A Benoit · CBM · Institution
The Board denied institution of CBM review for claims 1–32, exercising discretion under §§ 324(a) and 325(d) because PNC’s petition repeated substantially similar arguments and prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“Under 35 U.S.C. § 325(d), the AIA grants broad discretion to determine the course that best balances the parties’ competing interests in these proceedings. We recognize the need to balance permitting Petitioner to present new evidence and arguments in multiple petitions against protecting Patent Owner from harassment in the form of repetitive, serial petitions challenging the same patent. See H.R. Rep. No. 112-98, pt.1, at 48 (2011) (AIA proceedings “are not to be used as tools for harassment or a means to prevent market entry through repeated litigation and administrative attacks on the validity of a patent. Doing so would frustrate the purpose of the section as providing quick and cost effective alternatives to litigation.”). We also are mindful of the need for efficiency. It is more efficient for the parties and the Board to address a matter once rather than multiple times.” slip op. at 19
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Petitioner fails to provide, however, evidence or analysis as to why a diligent search would not have discovered the prior art relied upon in this Petition. Petitioner’s unsupported, conclusory statements are not persuasive in view of the relationship between the prior art asserted in the two Petitions. In CBM2014-00100, the SHTTP reference asserted in CBM2014-00100 is the SHTTP standard by the Internet Engineering Task Force. CBM2014- 00100 Pet. viii, 20. In the present Petition, the Petitioner indicates that “cited prior art relates to Secure HyperText Transfer Protocol (SHTTP) and browsers implementing SHTTP.” Pet. 17. Although not the same references, Petitioner challenges the same claims using the same or substantially the same prior art or arguments. Under 35 U.S.C. § 325(d), the AIA grants broad discretion to determine the course that best balances the parties’ competing interests in these proceedings. We recognize the need to balance permitting Petitioner to present new evidence and arguments in multiple petitions against protecting Patent Owner from harassment in the form of repetitive, serial petitions challenging the same patent. See H.R. Rep. No. 112-98, pt.1, at 48 (2011) (AIA proceedings “are not to be used as tools for harassment or a means to prevent market entry through repeated litigation and administrative attacks on the validity of a patent. Doing so would frustrate the purpose of the section as providing quick and cost effective alternatives to litigation.”). We also are mindful of the need for efficiency. It is more efficient for the parties and the Board to address a matter once rather than multiple times.” slip op. at 19
- Other 314aInstitution denied discretionary otherInstitution denied
“Under 35 U.S.C. § 325(d), the AIA grants broad discretion to determine the course that best balances the parties’ competing interests in these proceedings. We recognize the need to balance permitting Petitioner to present new evidence and arguments in multiple petitions against protecting Patent Owner from harassment in the form of repetitive, serial petitions challenging the same patent. See H.R. Rep. No. 112-98, pt.1, at 48 (2011) (AIA proceedings “are not to be used as tools for harassment or a means to prevent market entry through repeated litigation and administrative attacks on the validity of a patent. Doing so would frustrate the purpose of the section as providing quick and cost effective alternatives to litigation.”). We also are mindful of the need for efficiency. It is more efficient for the parties and the Board to address a matter once rather than multiple times.” slip op. at 19
Discretionary denialPatents in suitUS 7,631,191
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.