- 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 - Apple Inc. v. Qualcomm IncorporatedRehearing deniedPTAB · Mar 14, 2019 · IPR2018-01280 · APJ Scott B Howard · IPR · Rehearing
The Board denied Apple’s rehearing request, leaving in place the denial of institution because it had not overlooked or misapprehended material facts about Brown or the prosecution history.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“a panel will review the decision for an abuse of discretion.” The party requesting rehearing has the burden of showing that the decision from which rehearing is sought should be modified and “[t]he 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.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Dec. 8–9 (emphasis added). Similarly, when weighting the Becton factors, we explicitly found that although the Examiner originally rejected the claims based on Brown, “[f]ollowing an amendment to the claims adding the prompting step along with arguments by the applicant explaining why Brown did not teach that new limitation, the Examiner shifted to new references and no longer relied on Brown.” Id. at 14 (citing Ex. 1002, 142– 149, 156–168, 178–181). In other words, twice we explicitly acknowledged what Petitioner now argues we overlooked.” slip op. at 5
- Strike new argumentNew argument disregardedOther
“For the reasons explained above, we are not persuaded that we misapprehended or overlooked any material facts. Moreover, Petitioner never explicitly nor implicitly addressed the Becton factors in the Petition, and new arguments are not permitted in a request for rehearing absent exceptional circumstances, of which none have been identified here.” slip op. at 8
Discretionary denialPatents in suitUS 7,844,037 - The Boeing Company v. Seymour LevineInstitution deniedPTAB · Apr 15, 2016 · IPR2016-00023 · APJ Trenton A Ward · IPR · Institution
The Board denied institution on all challenged claims under § 325(d) because the petition presented substantially the same prior art and arguments as the pending IPR2015-01341, and dismissed the joinder motion.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Because the Petition presents substantially the same prior art, and substantially the same arguments, as the Petition in the 1341 IPR, we exercise our discretion to deny institution of review under 35 U.S.C. § 325(d).” slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“whether to join a party to an inter partes review under 35 U.S.C. § 315(c): JOINDER.–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. Thus, joinder in an inter partes review may be warranted in certain circumstances, but is not required in any. See Sony Corp. v. Network-1 Sec. Solutions, Inc., Case IPR2013-00386, slip. op. at 3 (PTAB July 29, 2013) (Paper 16) (“[t]he Board will determine whether to grant joinder on a caseby-case basis, taking into account the particular facts of each case, substantive and procedural issues, and other considerations”). The statute does, however, set forth at least one circumstance in which we do not have the discretion to join a party: if the Board determines that the second petition does not warrant institution. 35 U.S.C. § 315(c) (“the Director . . . may join as a party . . . any person who properly files a petition . . . that the Director . . . determines warrants the institution of an inter partes review under section 314”).” slip op. at 8
Discretionary denial - 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.