- Telebrands Corp. v. Tinnus Enterprises, LLCRehearing deniedPTAB · Feb 7, 2018 · PGR2017-00024 · APJ Frances L Ippolito · PGR · Rehearing
The Board denied Telebrands’ rehearing request, leaving institution of post-grant review denied under § 325(d) because the arguments did not show the Board overlooked or misapprehended the record.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“review the decision for an “abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing [the] decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). The request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in” the briefing. Id.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“Dr. Kamrin’s testimony and Petitioner’s arguments presented in the Petition, but, ultimately, determined that the testimony and Petitioner’s arguments, as a whole, did not meaningfully distinguish the record from that present before the Examiner during prosecution. Dec. 8–14. As stated in the Decision, we considered Dr. Kamrin’s testimony, including his testimony regarding Donaldson’s disclosure (e.g., Figures 2–5). Dec. 12–13. Moreover, in our Decision, we discussed at length the Examiner’s review of the prior art of record, including Donaldson, during the prosecution of the ’779 patent. Dec. 10–14. In doing so, we explained that the Examiner considered the same exact issue, presented in the Petition, of whether the prior art references of record in prosecution (including Donaldson) expressly or inherently disclosed the “elastic ring” recited in the challenged claims. Id. at 12 (citing Ex. 1008, 87–88); see Ex. 1008, 87 (“Because it is not true that all elastic bands have the same elastic force as an inherent property, it cannot be presumed that all elastic bands would function the same way.”). More specifically, we noted that the Examiner reviewed and considered the Donaldson reference, and determined that “[n]one of the prior art teaches the subject matter” of the claimed “elastic ring.” Dec. 11; Ex. 1008, 87.” slip op. at 3
Discretionary denialPatents in suitUS 9,533,779 - Telebrands Corp. v. Tinnus Enterprises, LLCInstitution deniedPTAB · Nov 30, 2017 · PGR2017-00024 · APJ Frances L Ippolito · PGR · Institution
The Board denied institution on all challenged claims, finding the § 103 and written-description challenges previously considered under § 325(d), and the remaining written-description and indefiniteness challenges insufficient.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“We agree with Patent Owner that we should exercise our discretion in denying institution of review based on Petitioner’s § 103 challenges because the same art and arguments were considered by the Examiner during the original prosecution. There is no dispute that Saggio and Lee were expressly considered by the Examiner and discussed in the Examiner’s Reasons for Allowance in the May 24, 2016 Notice for Allowance. See Ex. 1008, 86–88. In the Notice of Allowance, the Examiner considered expressly the teachings of Saggio and Lee, and explained in detail that neither one of these disclosed the claimed “elastic fastener.” Id. Moreover, the Examiner expressly also considered Donaldson and found that it was “cumulative with Lee [ ] in that both references disclose that moving mechanical components must be used to detach the balloons.” Id. at 17.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Based on our review of the record, including the claim language and the Specification of the ’779 patent, we agree with Patent Owner’s position. Here, the restriction of the claimed elastic ring is limited such that the balloon, if filled with a sufficient amount of water, is detachable by (1) gravity or (2) by gravity combined with a manually applied acceleration of the tube. Further, we agree with Patent Owner’s explanation that a person of ordinary skill in the art would know when the amount of water has reached a “sufficient amount,” because the elastic rings would allow detachment by gravity or by gravity and manually applied acceleration of the tube. See Prelim. Resp. 42. Indeed, the claim language itself provides the conditions” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the effective filing date of the ’779 patent (“POSA”) was a person having general knowledge about, and experience with, expandable containers, including, without limitation, balloons, and at least an associate’s degree in a technical science or engineering. Pet. 19 (citing Ex. 1020 ¶¶ 10–14). For purposes of this Decision, we agree with Petitioner and determine that a POSA would have been a person having a general knowledge about, 2 Claims 38, 46, 54, and 60 issued as claims 4, 7, 10, and 13. and experience with, expandable containers, including, without limitation, balloons, and at least an associate’s degree in mechanical engineering, or the equivalent. This level of skill is consistent with the types of problems and solutions described in the ’779 patent and cited prior art.” slip op. at 14
- Expert testimonyOther
“Petitioner argues that the present record is different than the one before the Examiner. Pet. 80. In particular, Petitioner asserts that the testimony of Dr. Kamrin was not before the Examiner. Id. Petitioner contends that “one of the issues in this petition is inherency of the prior art references, which benefits from the consideration of expert testimony.” Id. at 81. Nonetheless, having reviewed the record, we disagree with Petitioner’s position. The technology here does not appear to be particularly complex, and the Examiner’s explanation shows that he expressly considered the issues of inherency, and offered detailed findings why the functional limitations related to the elastic fastener were not necessarily present in the art at issue. See Ex. 1008, 87–88. Although not referred to expressly in the Examiner’s explanation, the Information Disclosure Sheet considered by the Examiner includes the Petitions in PGR2016-00030 and PGR2016-00031, which contain similar explanations of inherency to those at issue in this case. See PGR2016-00031, Paper 2, 43–45 (Petition discussing inherency issue with respect to Lee). Although the Examiner’s explanation does not refer to those papers expressly, the fact that those papers were listed on an IDS is, nevertheless, circumstantial evidence that Petitioner’s inherency arguments were considered when the Examiner provided his explanation concerning inherency. See Ex. 1008, 87 (“Because it is not true that all elastic bands have the same elastic force as an inherent property, it cannot be presumed that all elastic bands would function the same way.”). Moreover, as Patent Owner notes, Dr. Kamrin fails to even address Donaldson’s use of a mechanical means, i.e., a spring, to release the balloon. Prelim. Resp. 32. Thus, we are not persuaded that Dr. Kamrin’s testimony meaningfully distinguishes the record that is before us from the record that was before the Examiner.” slip op. at 12
§ 112 disclosureDiscretionary denialPatents in suitUS 9,533,779 - 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 - Netapp Inc. v. Crossroads Systems, Inc.Institution deniedPTAB · Sep 3, 2015 · IPR2015-00777 · APJ Kevin W Cherry · IPR · Institution
The Board denied institution on claims 1–14 under § 325(d), finding the petition presented substantially the same prior art and arguments as an earlier proceeding.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“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. The Petition in this proceeding presents the same prior art and substantially the same arguments previously presented in the ’1197 proceeding. As in the ’1197 proceeding, Petitioner relies on CRD-5500 User Manual, CRD-5500 Data Sheet, Smith, Kikuchi, Bergsten, and Hirai. Compare Pet. 3 with ’1197 proceeding Paper 1, 5 (“’1197 Pet.”). Petitioner also presents substantially the same arguments regarding the proposed combinations of (1) the CRD-5500 User Manual, CRD-5500 Data Sheet, and Smith; (2) Kikuchi and Bergsten; (3) Kikuchi, Bergsten, and Smith; and (4) Bergsten and Hirai. Compare Pet. 6–57 with ’1197 Pet. 11–56. To the extent that there are any substantive differences in the arguments or new arguments, we agree with Patent Owner that those different or new arguments could have been submitted in the ’1197 proceeding. See Prelim. Resp. 1. For the foregoing reasons, we determine that, in the present Petition, the “same or substantially the same prior art or arguments previously were presented to the Office” in the ’1197 proceeding.” slip op. at 6
Discretionary denialPatents in suitUS 6,425,035
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.