- Ecto World, LLC / Sv3, LLC v. Rai Strategic Holdings, Inc.Institution deniedPTAB · Mar 6, 2025 · IPR2024-01280 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board denied institution of IPR challenging claims 1–30 because the asserted art was previously presented to the Office and Petitioner did not show material Office error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“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.” The Board uses a two-part framework for evaluating arguments under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). In applying this framework, we consider the Becton, Dickinson1 factors that address discretion to deny institution when a petition presents the same or substantially the same prior art or arguments previously presented to the Office, including:” slip op. at 8
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that a person of ordinary skill in the art (“POSA”) would have had “a bachelor’s degree in electrical engineering, mechanical engineering, chemistry, physics, or an equivalent field, as well as 3–4 years of industry experience, or a master’s degree in the above fields, and 1–2 “[s]uch a POSA would have been familiar with electrically powered smoking articles and/or the components and underlying technology used therein.” Id. (citing Ex. 1003 ¶ 63. Patent Owner states that, for purposes of the Preliminary Response, “Patent Owner maintains that Petitioners’ arguments fail even under Petitioners’ POSA definition.” Prelim. Resp. 13. On this record, we preliminarily adopt Petitioner’s undisputed proposed definition because it appears to be consistent with the cited prior art and the disclosure of the ’202 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). B. Claim Construction” slip op. at 6
Discretionary denialcites PhillipsPatents in suitUS 11,925,202 - Ube Maxell Co., Ltd. v. Celgard, LLCInstitution deniedPTAB · Jan 7, 2016 · IPR2015-01511 · APJ Christopher L Crumbley · IPR · Institution
The Board denied institution on all challenged claims, finding the petition raised substantially the same prior art or arguments as earlier IPRs and that the circumstances favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“focused on a particular issue we found lacking in the prior related IPRs, we do not consider them to be sufficiently different in any material respect such that we could conclude them not to be “substantially the same” as those previously presented. Ube Maxell’s arguments are not of a different character than those previously presented, nor do they advance a different theory of the prior art or how a particular element of the claims is taught or suggested. Rather, the instant Petition attempts to buttress the same arguments previously considered and found insufficient by the Board, by citing additional facts and testimony. As the Board has held, however, permitting petitioners to “use our decisions on institution as a roadmap, until a ground is advanced that results in review [is] a practice that would tax Board resources, and force patent owners to defend multiple attacks.” Conopco, Inc. v. Procter & Gamble Co., Case IPR2014-00506, slip op. at 4 (PTAB Dec. 10, 2014) (Paper 25). Merely bolstering previously-made arguments that the Board found lacking does not change the argument sufficiently for us to consider the arguments not “substantially the same” for the purposes of § 325(d).11” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“The Petition is before us pursuant to 35 U.S.C. § 314(a), which provides that an inter partes review may not “be instituted unless the Director1 determines that the information presented in the petition [] shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and Preliminary Response, we conclude that the Petition presents substantially the same art or arguments as those previously presented to the Board, and exercise our discretion to deny institution of an inter partes review as to claims 1–6 and 11.” slip op. at 2
Discretionary denialPatents in suitUS 6,432,586 - Initiative For Responsibility In Drug Pricing LLC v. Wyeth LLCInstitution deniedPTAB · Feb 13, 2015 · IPR2014-01259 · APJ Christopher L Crumbley · IPR · Institution
The Board denied institution for claims 1–23 under § 325(d), because the petition repeated substantially the same prior art and arguments presented in an earlier IPR.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“MULTIPLE PROCEEDINGS -- Notwithstanding sections 135(a), 251, and 252, and chapter 30, during the pendency of any post-grant review under this chapter, if another proceeding or matter involving the patent is before the Office, the Director may determine the manner in which the post-grant review or other proceeding or matter may proceed, including providing for the stay, transfer, consolidation, or termination of any such matter or proceeding. 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.2 Several factors counsel against institution in the present case. As we noted above, in the 115 Decision, we instituted inter partes review of claims 1–23 of the ’828 patent on the same ground presented in the instant Petition. The Petition, therefore, presents the same art previously presented to the Office in IPR2014-00115.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“Wyeth argues that institution of an inter partes review in this case would be “entirely duplicative and wasteful.” Prelim. Resp. 6. On these facts, and given the stage of the proceedings in IPR2014-00115, we agree. In light of the foregoing, and exercising our discretion under 35 U.S.C. §§ 314(a) and 325(d), and 37 C.F.R. § 42.108(b), we decline to institute an inter partes review in the instant proceeding. III. ORDER Accordingly, it is ORDERED that the petition is denied as to all challenged claims of the ’828 patent.” slip op. at 7
Discretionary denialPatents in suitUS 7,879,828
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.