- LG Electronics Inc. / LG Electronics USA, Inc. v. Image Processing Technologies, LLCInstitution deniedPTAB · May 11, 2023 · IPR2023-00104 · APJ Barbara A Benoit · IPR · Institution
The Board denied institution on claim 1, finding the petition presented the same or substantially the same art or arguments previously considered by the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“under 35 U.S.C. § 325(d) to deny institution of an inter partes review. See 37 C.F.R. § 42.4(a) (The Director delegated her authority to determine whether trial should be instituted to the Board.). Section 325(d) of Title 35 of the United States Code states, in relevant part: “In determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” We use a two-part framework for evaluating arguments under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 12
- Prior constructionPrior construction adoptedDecided for petitioner
“applied the construction of “the [at least two] calculation units being configured to form a histogram representative of the parameter” (the “common parameter” limitation) as meaning “the histogram calculation units being configured to each form a histogram representative of at least one common parameter.” Ex. 1005 (IPR 336 Final Written Decision), 12– 14; see Ex. 1006 (IPR 1189 Decision Denying Institution), 9; Ex. 1007 (Reexam 056 Decision finding claim 1 patentable), 8.” slip op. at 11
Claim constructionDiscretionary denialcites Phillips · GrahamPatents in suitUS 6,959,293 - ROKU, Inc. v. Universal Electronics, Inc.Rehearing deniedPTAB · May 25, 2021 · IPR2019-01619 · APJ Minn Chung · IPR · Rehearing
The Board denied Roku’s rehearing request, leaving in place the denial of institution on claim 1 under § 325(d) because the petition did not show material Office error.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. Because Petitioner seeks rehearing of our Decision denying the Petition, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988).” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“whether the art or arguments presented in the Petition are the same or substantially the same as those previously presented to the Office. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019- 01469, Paper 6 at 10 (PTAB Feb. 13, 2020) (designated precedential Mar. 24, 2020) (“Advanced Bionics”). Factors (c), (e), and (f) “relate to whether the petitioner has demonstrated a material error by the Office” in its prior consideration of that art or arguments. Id. Under a two-part framework set forth in Advanced Bionics, we first determine 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 by considering factors (a), (b), and (d). Id. at 8, 10. If “either condition of first part of the framework is satisfied”—that is, if “the same or substantially the same art previously was presented to the Office” or “the same or substantially the same arguments previously were presented to the Office,” we then consider factors (c), (e), and (f) to determine whether Petitioner has demonstrated a material error by the Office. Id. at 8, 10.” slip op. at 4
- BurdenDecided for patent owner
“argument by Petitioner that “the detailed mapping in the Petition” demonstrated material error by the Examiner by showing that Herz discloses various limitations of claim 1, including “limitations [1.0]–[1.3], and [1.5].” Req. 5–6. But Petitioner did not present such an argument in the Petition or the Reply. See Pet. 46–48; Reply 1–5. In addition, Petitioner did not explain how its mapping of Herz to disclose certain limitations of claim 1 demonstrates material error by the Examiner. See Advanced Bionics, 9 (“If 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.”). That is, Petitioner did not meaningfully connect its obviousness mapping to a demonstration of Examiner error during the Reexamination Proceeding. See Pet. 15–48; Reply 1–5. We could not have misapprehended or overlooked arguments or evidence that were not presented or developed in the Petition or the Reply.” slip op. at 11
Discretionary denialPatents in suitUS 7,782,309 - PNC Bank, N.A. v. Secure Axcess, LLCInstitution deniedPTAB · Jul 10, 2015 · CBM2015-00039 · APJ Barbara A Benoit · CBM · Institution
The Board denied institution of CBM review for claims 1–32, exercising discretion under §§ 324(a) and 325(d) because PNC’s petition repeated substantially similar arguments and prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“Under 35 U.S.C. § 325(d), the AIA grants broad discretion to determine the course that best balances the parties’ competing interests in these proceedings. We recognize the need to balance permitting Petitioner to present new evidence and arguments in multiple petitions against protecting Patent Owner from harassment in the form of repetitive, serial petitions challenging the same patent. See H.R. Rep. No. 112-98, pt.1, at 48 (2011) (AIA proceedings “are not to be used as tools for harassment or a means to prevent market entry through repeated litigation and administrative attacks on the validity of a patent. Doing so would frustrate the purpose of the section as providing quick and cost effective alternatives to litigation.”). We also are mindful of the need for efficiency. It is more efficient for the parties and the Board to address a matter once rather than multiple times.” slip op. at 19
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Petitioner fails to provide, however, evidence or analysis as to why a diligent search would not have discovered the prior art relied upon in this Petition. Petitioner’s unsupported, conclusory statements are not persuasive in view of the relationship between the prior art asserted in the two Petitions. In CBM2014-00100, the SHTTP reference asserted in CBM2014-00100 is the SHTTP standard by the Internet Engineering Task Force. CBM2014- 00100 Pet. viii, 20. In the present Petition, the Petitioner indicates that “cited prior art relates to Secure HyperText Transfer Protocol (SHTTP) and browsers implementing SHTTP.” Pet. 17. Although not the same references, Petitioner challenges the same claims using the same or substantially the same prior art or arguments. Under 35 U.S.C. § 325(d), the AIA grants broad discretion to determine the course that best balances the parties’ competing interests in these proceedings. We recognize the need to balance permitting Petitioner to present new evidence and arguments in multiple petitions against protecting Patent Owner from harassment in the form of repetitive, serial petitions challenging the same patent. See H.R. Rep. No. 112-98, pt.1, at 48 (2011) (AIA proceedings “are not to be used as tools for harassment or a means to prevent market entry through repeated litigation and administrative attacks on the validity of a patent. Doing so would frustrate the purpose of the section as providing quick and cost effective alternatives to litigation.”). We also are mindful of the need for efficiency. It is more efficient for the parties and the Board to address a matter once rather than multiple times.” slip op. at 19
- Other 314aInstitution denied discretionary otherInstitution denied
“Under 35 U.S.C. § 325(d), the AIA grants broad discretion to determine the course that best balances the parties’ competing interests in these proceedings. We recognize the need to balance permitting Petitioner to present new evidence and arguments in multiple petitions against protecting Patent Owner from harassment in the form of repetitive, serial petitions challenging the same patent. See H.R. Rep. No. 112-98, pt.1, at 48 (2011) (AIA proceedings “are not to be used as tools for harassment or a means to prevent market entry through repeated litigation and administrative attacks on the validity of a patent. Doing so would frustrate the purpose of the section as providing quick and cost effective alternatives to litigation.”). We also are mindful of the need for efficiency. It is more efficient for the parties and the Board to address a matter once rather than multiple times.” slip op. at 19
Discretionary denialPatents in suitUS 7,631,191
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.