- 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 - Universal Imaging Industries, LLC v. Lexmark International, Inc.Institution deniedPTAB · Feb 3, 2020 · IPR2019-01369 · APJ Justin T Arbes · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim, and § 325(d) also supported denying the claim 10 grounds based solely on Schön and Robb or …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. An obviousness determination requires finding “both ‘that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367–68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418 (for an obviousness analysis, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does”). “Although the KSR test is flexible, the Board ‘must still be careful not to allow hindsight reconstruction of references . . . without any explanation as to how or why the references would be combined to produce the claimed invention.’” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016) (citation omitted). Further, an assertion of obviousness “cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal 3 Additionally, secondary considerations, such as “commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.” Graham, 383 U.S. at 17–18. Neither party, however, has presented any such evidence for us to consider. conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); accord In re NuVasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016) (stating that “‘conclusory statements’” amount to an “insufficient articulation[] of motivation to combine”; “instead, the finding must be supported by a ‘reasoned explanation’” (citation omitted)); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (“To satisfy its burden of proving obviousness, a petitioner cannot employ mere conclusory statements. The petitioner must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.”).” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“institute an inter partes review, “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.” In evaluating whether to exercise our discretion when the same or substantially the same prior art or arguments previously were presented to the Office under section 325(d), we have weighed some common non-exclusive factors, such as: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) 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; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. 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) (“Becton, Dickinson”).” slip op. at 37
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the ’657 patent would have had “a bachelor’s degree in electrical and/or computer engineering with training and one or more years of experience in embedded systems including both hardware and embedded software design,” as well as “a working understanding of communication on an electronics bus.” Pet. 8 (citing Ex. 1002 ¶¶ 25–28). Patent Owner argues that an ordinarily skilled artisan would have had “a bachelor’s degree in electrical and/or computer engineering with one or more years of work experience in printer design, including hardware and/or embedded software design for printer applications.” Prelim. Resp. 7–8 (citing Ex. 2001 ¶¶ 29–33). The parties’ proposed definitions differ in that Petitioner’s definition requires experience with “embedded systems” and “communication on an electronics bus,” whereas Patent Owner’s definition more specifically requires experience with “printer design.” The Specification of the ’657 patent states that the disclosure relates to “master and slave devices communicating on a shared bus,” and specifically, “addressing schemes to provide security to the system.” Ex. 1001, col. 1, ll. 15–19. The claims of the ’657 patent similarly each recite “slave circuitry” for communicating as a “slave device” and an “address generator” generating plural addresses. Based on the record presented, including our review of the ’657 patent and the types of problems and solutions described in the ’657 patent and cited prior art, we agree with and apply Petitioner’s proposed definition of the level of ordinary skill in the art for purposes of this Decision.” slip op. at 10
- Expert testimonyPatent owner expert creditedOther
“combine Schön with I2C Spec. Prelim. Resp. 50–54. In particular, Patent Owner argues that Schön already discloses an address format, and neither Schön, I2C Spec, nor the Petition identifies any disadvantages with Schön’s address format that would have been improved by I2C Spec’s address format. Id. at 52. Patent Owner argues that Petitioner does not explain why an ordinarily skilled artisan would have replaced Schön’s exemplary 8-bit address format, which allows for up to 256 addresses, with I2C Spec’s 7-bit address format with a limited number of variable bits, allowing fewer addresses to be generated in response to an address generation command. Id. at 52–53. Dr. Folkins’s testimony supports Patent Owner’s arguments. See Ex. 2001 ¶¶ 101, 105‒113. In particular, Dr. Folkins testifies that replacing Schön’s addressing scheme with I2C Spec’s addressing would limit the flexibility of Schön’s addressing. Id. ¶¶ 105‒107. Dr. Folkins further testifies that I2C Spec’s addressing scheme would have caused inefficiencies in Schön’s system because a smaller pool of addresses would lead to more duplicate addresses, causing additional cycles of address generation. Id. ¶¶ 108‒111. We credit Dr. Folkins’s uncontroverted testimony. We recognize that, according to our rules, we “will take into account a patent owner preliminary response where such a response is filed, including any testimonial evidence, but a genuine issue of material fact created by such testimonial evidence will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review.” 37 C.F.R. § 42.108(c). However, in this case, Dr. Folkins’s testimony does not implicate a genuine issue of material fact. Petitioner does not provide any argument or cite to any testimony regarding the advantages or disadvantages of using I2C Spec’s addressing scheme in place of Schön’s. See Pet. 15‒21. Petitioner merely asserts, without further explanation, that Schön teaches “generating slave addresses,” I2C Spec teaches one “addressing format[],” and a person of ordinary skill in the art would have been motivated to use the latter. Id. at 16. Dr. Direen’s testimony regarding combining the teachings of Schön and I2C Spec also makes no mention of advantages or disadvantages of replacing Schön’s addressing scheme with I2C Spec’s addressing scheme. See Ex. 1002, App. 1002-A, 7 (concluding that “[i]t would be natural for a [person of ordinary skill in the art] to combine the teaching of the I2C standard with [Schön’s] teachings as they both relate to similar computer bus systems,” without addressing advantages or disadvantages of the addressing schemes).” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,386,657 - 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 - Google LLC v. Uniloc Luxembourg S.A.Institution deniedPTAB · Jan 11, 2018 · IPR2017-01665 · APJ David C Mckone · IPR · Institution
The Board denied institution for claims 1–25 because both obviousness grounds presented substantially the same prior art or arguments previously presented to the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Multiple, staggered petitions challenging the same patent and same claims raise the potential for abuse. The absence of any restrictions on follow-on petitions would allow petitioners the opportunity to strategically stage their prior art and arguments in multiple petitions, using our decisions as a roadmap, until a ground is found that results in the grant of review. All other factors aside, this is unfair to patent owners and is an inefficient use of the inter partes review process and other post-grant review processes. Id. at 17–18 (footnote omitted). The reasoning in General Plastic is pertinent here. Petitioner waited until after Patent Owner filed its Preliminary Response in the ’948 proceeding to file its Petition challenging the ’960 patent based on the same prior art and substantially the same arguments. In the process, Petitioner took the opportunity to attempt to correct deficiencies alleged by Patent Owner in Amazon’s petition. This is precisely the type of roadmapping General Plastic counsels against. If we were to institute on this ground, Patent Owner would be forced to defend its patent in an iterative fashion against challenges based on the same prior art and substantially the same arguments, with the aforementioned roadmapping. As General Plastic explains, this has the potential to be unfair and inefficient.” slip op. at 22
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingDenied
“For the reasons given above, institution of a trial based on the Petition is inappropriate because Petitioner’s challenges are substantially the same as those raised by Amazon in the ’948 proceeding. The differences amount, at most, to attempts by Petitioner to respond to the arguments in Patent Owner’s preliminary response in the ’948 proceeding. If we were to join this proceeding to the ’948 proceeding under the terms to which Petitioner would agree, the impact would be that Patent Owner would be forced to respond to serial challenges to the same patent based on the same prior art with the second petitioner having the benefit of seeing Patent Owner’s arguments in advance. Joinder under Petitioner’s proposed terms is inappropriate for the same reasons given above for denying institution based on § 325(d). As neither party has filed a request to join this proceeding to the ’948 proceeding under the terms to which Patent Owner would agree and, indeed, Petitioner expressly opposes joinder on those terms, we decline to exercise our discretion to join this proceeding to the ’948 proceeding.” slip op. at 30
- RehearingNot reached
Discretionary denialPatents in suitUS 8,566,960 - 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 - T-Mobile US, Inc. / T-Mobile USA, Inc. et al. v. Tracbeam, LLCInstitution deniedPTAB · May 25, 2016 · IPR2016-00729 · APJ Barbara A Parvis · IPR · Institution
The Board denied institution on claims 1, 2, and 44 under § 325(d), and denied joinder with IPR2015-01712.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“some or all grounds for unpatentability for some or all of the challenged claims.” 37 C.F.R. § 42.108(b). Our discretionary determination of whether to institute review is guided by 35 U.S.C. § 325(d), which states, in relevant part, that “[i]n 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.”4 Petitioner’s second attempt to challenge claims 1, 2, and 44 of the ’327” slip op. at 8
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“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 time for filing such a response, determines warrants the institution of an inter partes review under section 314. 35 U.S.C. § 315(c) For the reasons above, based on the circumstances of this case, we exercise our discretion under 35 U.S.C. § 325(d), and deny the Petition requesting institution of inter partes review in IPR2016-00729. Accordingly, we deny Petitioner’s request to join IPR2016-00729 with IPR2015-01712.” slip op. at 11
Discretionary denialPatents in suitUS 7,298,327 - T-Mobile US, Inc. / T-Mobile USA, Inc. et al. v. Tracbeam, LLCInstitution deniedPTAB · May 25, 2016 · IPR2016-00728 · APJ David C Mckone · IPR · Institution
The Board denied institution for claim 25 under § 325(d), finding the petition repeated prior art and arguments from an earlier petition; it denied joinder as moot.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Previous panels of this Board have expressed concern with permitting a petitioner to file an inadequate first petition and subsequently allowing the petitioner to correct errors in the first petition through the filing of a second petition. For example, in ZTE Corp. v. ContentGuard Holdings Inc., Case IPR2013-00454 (PTAB Sept. 25, 2013) (Paper 12), slip op. at 5–6, a panel explained: The Board is concerned about encouraging, unnecessarily, the filing of petitions which are partially inadequate. A decision to institute review on some claims should not act as an entry ticket, and a how-to guide, for the same Petitioner who filed an unsuccessful joinder motion, and is outside of the one-year statutory period, for filing a second petition to challenge those claims which it unsuccessfully challenged in the first petition. Similarly, another panel denied a petition with grounds that served as “second bites at the apple” and used a prior decision “as a roadmap to remedy [the first petition’s] prior, deficient challenge,” explaining that “[a]llowing 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.” Butamax Advanced Biofuels LLC, v. Gevo, Inc., Case IPR2014-00581, 2014 WL 5299385, at *6 (PTAB Oct. 14, 2014) (Paper 8). Patent Owner contends that we should follow this guidance and deny the Petition. Prelim. Resp. 10–19. We agree with Patent Owner that this is a factor that weighs against institution of the Petition.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“We have considered Petitioner’s proffered justifications as well as Patent Owner’s concerns regarding allowing Petitioner to correct its first petition through filing a second Petition advancing the same prior art. We exercise our discretion, under Section 325(d), to deny the Petition because “the same or substantially the same prior art or arguments previously were presented to the Office.” III. CONCLUSION We exercise our discretion to deny the Petition under 35 U.S.C. § 325(d). Because we deny the Petition, we deny Petitioner’s Motion for Joinder as moot. IV. ORDER Accordingly, it is: ORDERED that, pursuant to 35 U.S.C. § 325(d), an inter partes review is not instituted for claim 25 of U.S. Patent No. 7,525,484 B2; and” slip op. at 14
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“Joinder, however, is appropriate only when the underlying petition sought to be joined warrants institution. According to 35 U.S.C. § 315(c) (emphasis added): 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. As explained below, we have considered the Petition and the Preliminary Response and determine that the Petition does not warrant the institution of an inter partes review. Accordingly, we do not reach whether the Petition is time barred or whether joinder otherwise would be appropriate. Petitioner’s Motion for Joinder is denied as moot.” slip op. at 9
Discretionary denialPatents in suitUS 7,525,484 - 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.