- Universal Imaging Industries, LLC v. Lexmark International, Inc.Rehearing deniedPTAB · May 4, 2020 · IPR2019-01383 · APJ Justin T Arbes · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution for claims 1–22, finding no reasonable likelihood on four grounds and denying the Adkins ground under § 325(d).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“testimony because we mistakenly found it to rely on unsupported inherency theories. Req. Reh’g 9–10. According to Petitioner, “Dr. Direen’s Declaration does not rely on any inherency theories.” Id. As pointed out in the Decision, however, Dr. Direen, in multiple instances, clearly bases his testimony on alleged “inherent device operation,” rather than express disclosure in Adkins. See Dec. 20; Ex. 1002, App. 1002-C, 8–18, 23, 26–27, 32, 36. We did not misapprehend his testimony. We maintain our conclusions that Petitioner did not show Examiner error and that Dr. Direen’s testimony did not warrant reconsideration of the prior art or arguments presented during prosecution. See Dec. 19–20. Thus, we are not persuaded by Petitioner’s arguments regarding factors (e) and (f). Petitioner has not shown that we abused our discretion in weighing the Becton, Dickinson factors and denying institution as to the asserted ground based on Adkins under § 325(d). Our evaluation of the Becton, Dickinson factors in the Decision demonstrates that our denial of institution of this ground was warranted under the two-part framework of Advanced Bionics, which was recently designated precedential, because the same art (Adkins) previously was presented to the Office and Petitioner has not demonstrated that the Office erred in a manner material to the patentability of the challenged claims.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”).1 With respect to the first issue, previously “presented” art includes, among other things, “art provided to the Office by an applicant, such as on an Information Disclosure Statement (IDS), in the prosecution history of the challenged patent.” Id. at 7–8. With respect to the second issue, institution generally will be denied if a “petitioner fails to make a showing of material error,” and “[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 8–9. “[T]his framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“III. ANALYSIS Petitioner asserted five grounds of unpatentability in its Petition. See Paper 1 (“Pet.”), 3; Dec. 7. In the Decision, we determined that Petitioner had not established a reasonable likelihood of prevailing as to four of those grounds. Dec. 21–41. As to the fifth asserted ground—alleged obviousness of claims 1–22 of the ’079 patent over U.S. Patent Application Publication No. 2010/0306431 A1 (Ex. 1006, “Adkins”)—we found that the evidence weighed in favor of exercising our discretion and denying institution of review as to the ground under 35 U.S.C. § 325(d). Dec. 21, 41. Petitioner in its Request for Rehearing does not dispute our determination as to the four asserted grounds for which we found no reasonable likelihood of prevailing, and instead only disputes our conclusion as to the ground based on Adkins. Req. Reh’g 1 & n.1.” slip op. at 2
- Expert testimonyPetitioner expert discountedDecided for patent owner
“overlooked its argument in the Petition regarding claim 1 that the slave device “implements [the] address change functionality upon instruction from the master, no matter how many times the master sends the instruction. With each address change request, the slave will change its address.” Id. at 9 (quoting Pet. 43; citing Ex. 1002, App. 1002-C, 7 (similar testimony from Petitioner’s declarant, Harry Direen, Ph.D., P.E.)). Petitioner, however, does not explain why we should have understood that vague statement to be the detailed arguments it now makes in the Request for Rehearing. Even if the vague statement was sufficient for claim 1, Petitioner states that “[t]he same argument was presented in connection with each of the challenged claims,” but fails to explain how it would apply to claims that further specify the timing and nature of interaction with the master, such as the “substantially immediately following a predetermined event” and “continual series of a plurality of address change requests” limitations in independent claim 7 (which are recited similarly in independent claims 12 and 17). See id. Indeed, Petitioner in its Petition cited only a single paragraph of Adkins as identify in the Petition any “predetermined event” in Adkins. Dec. 19–20. As to Dr. Direen’s similar testimony, we found that it was “entitled to little weight because it consists primarily of quotations from Adkins, many of which are not cited in the Petition.” Id. at 20 (citing 37 C.F.R. §§ 42.6(a)(3), 42.65(a)). We see no reason to conclude otherwise now.” slip op. at 9
Discretionary denialPatents in suitUS 8,850,079 - Universal Imaging Industries, LLC v. Lexmark International, Inc.Rehearing deniedPTAB · May 4, 2020 · IPR2019-01387 · APJ David C Mckone · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution for the Adkins-based ground under § 325(d), finding no abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“testimony because we mistakenly found it to rely on unsupported inherency theories. Req. 9. According to Petitioner, “Dr. Direen’s Declaration does not rely on any inherency theories.” Id. As pointed out in the Decision (at 18–19), Dr. Direen, in multiple instances, clearly bases his testimony on “inherent device operation,” rather than express disclosure in Adkins. Ex. 1002-C, at C5, C8, C11–C12, C17, C20, C23–C24, C29, C34–C35. We did not misapprehend his testimony. We maintain our conclusions (Dec. 18–19) that Petitioner did not show Examiner error and that Dr. Direen’s testimony did not warrant reconsideration of the prior art or arguments presented during prosecution. Thus, we did not abuse our discretion in finding that Becton, Dickinson factors (e) and (f) weighed in favor of denial. Petitioner has not shown that we abused our discretion in weighing the Becton, Dickinson factors and denying institution as to the asserted ground based on Adkins under § 325(d). Our evaluation of the Becton, Dickinson factors in the Decision demonstrates that our denial of institution of this ground was warranted under the two-part framework of Advanced Bionics, which was recently designated precedential, because the same art” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In the Decision we explained that Becton, Dickinson factors (a) and (b) weighed in favor of exercise of our discretion under § 325(d) because the identical art (the patent and underlying patent application pertaining to Adkins) was presented to the Examiner during prosecution. Dec. 15. This is consistent with Advanced Bionics, which has confirmed that “[p]reviously to the Office by an applicant, such as on an Information Disclosure Statement (IDS), in the prosecution history of the challenged patent.” Advanced Bionics, slip op. at 7–8. Thus, we did not abuse our discretion in finding that factors (a) and (b) weighed in favor of denial as to the asserted ground based on Adkins.” slip op. at 5
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Req. 8 (quoting Ex. 1002-C, at C4–C5 (emphasis in original)).2 Petitioner did not cite to this testimony with particularity in the Petition. See Pet. 47; see also 37 C.F.R. §§ 42.104(4), (5). Rather, Petitioner simply cited to the 2 This testimony would not have been helpful to Petitioner. Rather, it was presented as part of Dr. Direen’s opinion that the master’s behavior recited in claim 1 would have been inherent in Adkins. Ex. 1002-C, at C4–C5. Dr. Direen did not testify that claim 1 does not require a finding as to the master’s behavior, so long as Adkins’ slave device was capable of responding appropriately. We considered Dr. Direen’s inherency opinion and decided that it was unsupported and, thus, did not support a finding of Examiner error. Dec. 18–19. without providing any specificity. Id. Thus, we could not have overlooked the testimony on which Petitioner now seeks to rely. In any case, as a general matter, we found that “Dr. Direen’s testimony is entitled to little weight because it consists primarily of quotations from Adkins, many of which are not cited in the Petition.” Dec. 18–19 (citing 37 C.F.R. §§ 42.6(a)(3), 42.65(a)). Thus, we did consider Dr. Direen’s testimony, but found it of little value. Petitioner also argues that we improperly discounted Dr. Direen’s testimony because we mistakenly found it to rely on unsupported inherency theories. Req. 9. According to Petitioner, “Dr. Direen’s Declaration does not rely on any inherency theories.” Id. As pointed out in the Decision (at 18–19), Dr. Direen, in multiple instances, clearly bases his testimony on “inherent device operation,” rather than express disclosure in Adkins. Ex. 1002-C, at C5, C8, C11–C12, C17, C20, C23–C24, C29, C34–C35. We did not misapprehend his testimony. We maintain our conclusions (Dec. 18–19) that Petitioner did not show Examiner error and that Dr. Direen’s testimony did not warrant reconsideration of the prior art or arguments presented during prosecution. Thus, we did not abuse our discretion in finding that Becton, Dickinson factors (e) and (f) weighed in favor of denial.” slip op. at 10
Discretionary denialPatents in suitUS 9,176,921 - Universal Imaging Industries, LLC v. Lexmark International, Inc.Institution deniedPTAB · Feb 27, 2020 · IPR2019-01383 · APJ Justin T Arbes · IPR · Institution
The Board denied institution of IPR on claims 1–22, finding the Adkins ground warranted denial under § 325(d) and the other obviousness grounds lacked a reasonable likelihood of success.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“As we explain in detail below, Petitioner has not demonstrated a reasonable likelihood of prevailing on its other asserted grounds of unpatentability. Because each of Petitioner’s grounds should be denied, either for an inadequate showing on the merits or pursuant to our discretion under § 325(d), we exercise our discretion to deny the Petition under §§ 314(a) and 325(d).” slip op. at 21
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Weighing each of the factors, we conclude that the circumstances of this case, on the record presented, warrant exercise of our discretion to deny institution based on § 325(d). Patent Owner identified the Adkins application as “related” to the ’079 patent, made statements in the Specification attempting to distinguish the ’079 patent’s invention from Adkins, and cited the ’021 patent in an IDS. Further, the Examiner already was familiar with Adkins given that the same Examiner examined both the ’021 patent and the ’079 patent. We infer from these circumstances that the Examiner considered the substance of Adkins and Patent Owner’s statements regarding the disclosure of Adkins and problems with its approach, despite the lack of an express rejection over Adkins. Petitioner has not presented a convincing case that the Examiner erred in allowing the claims of the ’079 patent and Dr. Direen’s testimony does not provide persuasive support for Petitioner’s arguments.” slip op. at 20
- BurdenNot shown unpatentable
“limitation that the plurality of address change requests occurs “substantially immediately following a predetermined event.”6 Prelim. Resp. 42. We agree. In its analysis of claim 7, Petitioner does not identify any “event” at all or explain how such an event would be “predetermined” or why the alleged address change requests in Mayer or I2C Spec would occur “substantially immediately following” such an event. See Pet. 21–24. Indeed, the “substantially immediately following a predetermined event” claim language does not even appear in Petitioner’s arguments. See id. 6 Patent Owner makes a number of other arguments regarding the asserted combinations with I2C Spec in its Preliminary Response, including that Petitioner has not shown sufficiently that I2C Spec is a prior art printed publication under 35 U.S.C. § 102(b). See Prelim. Resp. 26–30, 36–37, 43–48. We need not reach these issues, however, because Petitioner has not shown a reasonable likelihood of prevailing on the asserted grounds for the reasons explained herein. Although Petitioner does not identify a “predetermined event” in its Petition, Dr. Direen appears to opine that a “power-on reset process” would trigger the plurality of address change requests. Ex. 1002, App. 1002-A, 14. Dr. Direen states that “[i]t is well understood in the electronic industry and by [persons of ordinary skill in the art] that complex devices such as a microprocessor or I2C slave device will go through a power-on reset process to ensure internal states are at known states. This is inherent device operation.” Id. Dr. Direen, however, cites no support for this opinion and does not explain in any detail what a power-on reset process would entail or why a plurality of address change requests in either Mayer or I2C Spec would occur “substantially immediately following” a power-on reset process. See id. Moreover, to the extent Dr. Direen bases his opinion on inherency, Petitioner does not assert that theory in its Petition.7 See Pet. 21–24. Petitioner has not shown sufficiently that Mayer and I2C Spec teach a “dynamic address generator” wherein “substantially immediately following a predetermined event and in a continual series of a plurality of address change requests received by the interface and corresponding acknowledgements sent thereby in reply, for each address change request received the dynamic address generator generates a new component address,” as recited in claim 7.” slip op. at 24
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Relevant to factor (f), Petitioner offers the testimony of Dr. Direen, which was not available to the Examiner. However, Dr. Direen’s testimony is entitled to little weight because it consists primarily of quotations from Adkins, many of which are not cited in the Petition, and an unsupported inherency theory that is not argued in the Petition. See, e.g., Ex. 1002, App. 1002-C, 11–16 (testimony for claim 7). See 37 C.F.R. §§ 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”), 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Thus, Dr. Direen’s testimony does not provide persuasive evidentiary support for Petitioner’s arguments regarding Adkins. This factor is, at most, neutral.” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,850,079 - Arista Networks, Inc. v. Cisco Systems, Inc.Institution deniedPTAB · Jun 11, 2016 · IPR2016-00301 · APJ Matthew R Clements · IPR · Institution
The Board denied institution of inter partes review of claims 1-5, 7-10, 12-22, and 25-31 under § 325(d), finding substantially the same art or arguments had been presented before.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“In determining whether to exercise our discretion to deny institution under § 325(d), we have reviewed the timeline of the Petition’s filings. Petitioner filed the instant Petition on December 9, 2015, approximately two months after the Board issued the decisions denying institution in the ’973 IPR. The reliance on Radia in the instant Petition appears, therefore, to be an attempt to bolster the unsuccessful challenge previously presented regarding Hendel’s alleged disclosure of the limitations of claim 1. See Prelim. Resp. 16–18 (arguing Petitioner used prior Institution Decisions as a roadmap); see also id. at 14–16 (arguing Petitioner fails to explain why Radia could not have been presented in an earlier petition). Under § 325(d), our determination here rests on whether the same or substantially the same prior art was presented previously. Finding that Hendel was presented previously in the ’973 IPR, and that the instant Petition relies on bolstering Hendel guided by our Decision in the ’973 IPR, we exercise our discretion under § 325(d) and deny institution of inter partes review. III. CONCLUSION For the foregoing reasons, we conclude that the instant Petition raises the same or substantially the same prior art or arguments as those previously presented to the Office. In light of the circumstances of the present case, we exercise our discretion not to institute inter partes review of the ’577 patent.” slip op. at 8
Discretionary denialPatents in suitUS 6,377,577 - Great West Casualty Company / Bitco General Insurance Corporation et al. v. Intellectual Ventures II LLCInstitution deniedPTAB · Jun 9, 2016 · IPR2016-00453 · APJ Michael W Kim · IPR · Institution
The Board denied institution on claims 11–20, exercising discretion under § 314(a) because this was an unjustified serial petition and separately rejecting it under § 325(d).
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“patent, using substantially the same prior art, and filed so long apart that Petitioner received the benefit of having studied Patent Owner’s Preliminary Response in an earlier petition. That is especially so if Petitioner, at the time of filing of the earlier petition was aware of or should have been aware of the prior art references newly cited and applied in the later petition. To that end, Petitioner does not assert that it was unaware of Nazem prior to filing the instant Petition or any earlier petition. The potential inequity based on a petitioner’s filing of serial and similar attacks against the same claims of the same patent, while having the opportunity to adjust litigation positions along the way based on either patent owner’s contentions responding to prior challenges or the Board’s decision on prior challenges, is real and cannot be ignored. This is not to say, however, that multiple petitions against the same claims of the same patent are never permitted. Rather, each case depends on its own facts. We look to and consider, in each case, as we do here, what rationale a petitioner offers for filing multiple petitions and for the time elapsed between those filings. Generally, however, we are unpersuaded that the possibility of an adverse claim construction alone, especially where the possibility of the adverse claim construction was expressly a result of assertions made by a patent owner in the previous proceeding, is sufficient to justify serial petitions.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Emphasis added. As admitted by Petitioner, all of the grounds in the instant Petition and the petition in IPR2015-01706 rely primarily on MyLibrary. Furthermore, the only reference cited additionally in the instant proceeding is Nazem, and Nazem mentions, on multiple occasions, variations of “MyYahoo” or “my.yahoo.com.” Ex. 1047, Figs. 1, 3, 4, 5A, 5B; 2:63-3:2; Appendices A and B. Moreover, Petitioner asserts the following: For example, one such prior art personalized portal, referenced by MyLibrary as an inspiration, was the MyYahoo system, Ex. 1005 at 1, a system described in U.S. Patent No. 5,983,227 to Nazem et al. (issued Nov. 9, 1999) (Ex. 1047). Ex. 1047 at Face, Fig. 5a (“MyYahoo!”). Pet. 21. A person having ordinary skill in the art would have been motivated to add content, such as disclosed in Nazem, to the personalized web pages of MyLibrary because MyYahoo was an inspiration for the system of MyLibrary, thereby suggesting the additional MyYahoo functionality would work well with MyLibrary. Pet. 22. Given these articulated connections between the substance of MyLibrary and Nazem, we have no trouble determining that presenting MyLibrary and Nazem in this proceeding is “the same or substantially the same prior art or arguments” as was presented previously to the Office in IPR2015-01706, with MyLibrary alone.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“III. CONCLUSION For the foregoing reasons, we exercise discretion not to institute inter partes review of any of claims 11–20 of the ’177 patent, and also reject the Petition under 35 U.S.C. § 325(d). IV. ORDER It is ORDERED that no trial or inter partes review is instituted for any claim of the ’177 patent on any ground in this proceeding.” slip op. at 14
Discretionary denialPatents in suitUS 7,516,177 - Arista Networks, Inc. v. Cisco Systems, Inc.Rehearing deniedPTAB · Mar 29, 2016 · IPR2015-01710 · APJ Bryan F Moore · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution under § 325(d), finding the request did not show that it overlooked or misapprehended any matter.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS When considering a request for rehearing, we review the Decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the Decision should be modified, and “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“35 U.S.C. § 325(d). Petitioner does not address the Decision’s discussion of the anticipation ground presented in the ’974 Petition. The Decision found that the anticipation ground presented the same arguments regarding Habraken as were presented regarding Habraken in the ’974 Petition. Dec. 9–10.” slip op. at 3
Discretionary denialPatents in suitUS 7,224,668 - Arista Networks, Inc. v. Cisco Systems, Inc.Institution deniedPTAB · Feb 16, 2016 · IPR2015-01710 · APJ Bryan F Moore · IPR · Institution
The Board denied institution on all challenged claims under § 325(d), finding the petition presented substantially the same art and arguments as the earlier IPR.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Habraken, which was not stated with specificity. “The [’974 IPR] Petition, therefore, fails to identify with sufficient specificity the differences between the claimed invention and the prior art.” ’974 Dec. 17. While the current Petition apparently attempts to provide such specificity (See Pet. 28–31), Patent Owner, nonetheless, has been forced to address a similar ground with similar arguments in two separate Petitions. Prelim Resp. 9, 10; ’974 Prelim. Resp. 22–25, 49–52; see Biodelivery Sciences International, Inc. v. RB Pharmaceuticals Limited, Case IPR2014-00998, slip op. at 7–8 (PTAB December 19, 2014) (Paper 12) (determining, in exercising § 325(d) discretion with respect to a ground in the second-filed petition that was based on a reference not formally included in the ground from the first-filed petition and which the prior DI merely acknowledged as a citation in a claim chart, that the ground in the second-filed petition presented was “the same arguments and relies substantially on the same prior art that the same Petitioner relied upon in its earlier Petition regarding the same claims of the same patent”). Allowing similar, serial challenges to the same patent, by the same petitioner, risks harassment of patent owners and frustration of Congress’s intent in enacting the Leahy-Smith America Invents Act. See H.R. Rep. No. 112-98, pt.1, at 48 (2011) (“While this amendment is intended to remove current disincentives to current administrative processes, the changes made by it 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.”). For these reasons, we conclude that the instant Petition advances “the same or substantially the same prior art or arguments [that] previously were presented to the Office” in the ’974 IPR, and, therefore, we have discretion under § 325(d) to deny institution of the obviousness ground based on Frazier and Habraken.” slip op. at 10
Discretionary denialPatents in suitUS 7,224,668 - Google Inc. v. Smartflash LLCInstitution deniedPTAB · Nov 18, 2015 · CBM2015-00143 · APJ Gregg I Anderson · CBM · Institution
The Board denied institution of CBM review of claims 1, 3, 5, 10, 12, 18, 19, 21, and 24 under § 325(d) because the same § 101 ground was considered in the Apple CBM.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“We determine that the present petition raises the “same or substantially the same prior art or arguments” previously presented in the Apple CBM. We exercise our discretion under 35 U.S.C. § 325(d) and decline to institute a covered business method patent review of claims 1, 3, 5, 10, 12, 18, 19, 21, and 24 in this case under the same ground as asserted in the Apple CBM. In making our determination we are cognizant that Google supports its Petition with the Tygar Declaration, a different witness than relied on in the Apple CBM. That Google cites to different factual support is an insufficient difference to cause us to institute a new trial. We have reviewed the Tygar Declaration and find that, as relevant here, it is directed to the same grounds as presented in the Apple CBM, i.e., patent eligible subject matter under 35 U.S.C. § 101. Ex. 1002 ¶¶ 51–62. As such, the Tygar Declaration is cumulative of arguments already made in the Apple CBM. Specifically, the Tygar Declaration contends the claims of the ’516 patent “are directed to the abstract idea of controlling access to something based on one or more conditions (such as payment).” Id. at ¶ 53. The Tygar Declaration also analyzes whether or not the ’516 patent includes an inventive concept that is significantly more than an abstract idea. Id. at ¶¶ 56–61. In making the analysis, the Tygar Declaration includes testimony that “claims 1, 3, 5, 10, 12, 18, 19, 21, and 24 recite the use of a general purpose computer to perform routine, conventional, well-known computer functions.” Id. at ¶ 61. Dr. Tygar concludes claims 1, 3, 5, 10, 12, 18, 19, 21, and 24 are “not directed to patent eligible subject matter and are thus invalid.” Id. at ¶ 62. In our Apple CBM Decision on Institution, we considered these issues in our analysis of Alice Corp. Pty, Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014). See Apple CBM Decision on Institution, slip. op. at 10–20.” slip op. at 4
Discretionary denialcites AlicePatents in suitUS 8,794,516 - Maxlinear, Inc. v. Cresta Technology CorporationInstitution deniedPTAB · Aug 14, 2015 · IPR2015-00593 · APJ Phillip J Kauffman · IPR · Institution
The Board denied institution under § 325(d), finding the same or substantially the same prior art or arguments had been presented in a related proceeding.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Each of the grounds advanced in the instant Petition was previously considered by the Board in the related proceeding.4 See Silicon Laboratories, Inc. v. Cresta Technology Corporation, Case IPR2014-00809, slip op. at 5–6 (PTAB Oct. 24, 2014) (Paper 10). Although, Petitioner supports its Petition with a Declaration of a different witness (Ex. 1009) than relied on by Silicon Labs in the 4 The Petition at hand does not assert some of the grounds asserted in the related proceeding. related proceeding, we agree with Patent Owner that “the declaration is substantially identical to the [related proceeding’s] declaration.” Prelim. Resp. 3. Thus, we determine that the same or substantially the same prior art or arguments previously were presented to the Office.” slip op. at 4
Discretionary denialPatents in suitUS 7,265,792
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.