- PTAB · Jul 31, 2024 · IPR2023-00682 · APJ Thu A Dang · IPR · Remand
The Board denied institution under § 325(d), finding substantially the same art had been presented to the Office and no material Office error was shown.
RulingsRemand decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“In light of these similarities, we find that the Petition relies on art that is substantially the same as art previously evaluated by the Office. 3. Advanced Bionics Part II: Office Error Because the first part of the Advanced Bionics framework is satisfied, we next determine whether Petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8.” slip op. at 32
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“7 Because we deny the Petition under 35 U.S.C. § 325(d), we do not reach Patent Owner’s request that we deny the Petition under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 13–14 (PTAB Mar. 20, 2020) (precedential). See Prelim. Resp. 53–60. Nor do we reach the parties’ merits arguments.” slip op. at 34
Discretionary denialPatents in suitUS 10,771,181 - PTAB · Jul 31, 2024 · IPR2023-00681 · APJ Thu A Dang · IPR · Remand
On remand, the Board denied institution under § 325(d), finding substantially the same art had been presented to the Office and no material Office error was shown.
RulingsRemand decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“(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 18
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“III. CONCLUSION For the foregoing reasons, we exercise discretion under 35 U.S.C. § 325(d) to deny institution of an inter partes review.7 IV. ORDER In consideration of the foregoing, it is ORDERED that the Petition is denied, and no trial is instituted. 7 Because we deny the Petition under 35 U.S.C. § 325(d), we do not reach Patent Owner’s request that we deny the Petition under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 13–14 (PTAB Mar. 20, 2020) (precedential). See Prelim. Resp. 53–60. Nor do we reach the parties’ merits arguments.” slip op. at 35
Discretionary denialPatents in suitUS 10,263,723 - PTAB · Jul 31, 2024 · IPR2023-00680 · APJ Thu A Dang · IPR · Remand
On remand, the Board denied institution for all challenged claims under § 325(d), finding substantially the same art and arguments had been presented and no material Office error shown.
RulingsRemand decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“1. Framework In evaluating the exercise of discretion to deny institution under Section 325(d), the Board uses the following two-part framework: (1) determining 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, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). Within this two-part framework, the Board considers a number of non-exclusive factors in evaluating whether to exercise its discretion under § 325(d). See Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first para.) (“Becton, Dickinson”); see also Advanced Bionics at 9–11. The factors set forth in Becton, Dickinson are as follows: (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, Paper 8 at 17–18. Becton, Dickinson factors (a), (b), and (d) relate to 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, Paper 6 at 10. The art or arguments presented in the Petition are not “substantially the same” as those previously presented to the Office when there are differences between them that are material to the Office’s prior consideration of the art and arguments. Wolfspeed, Inc. v. Trs. of Purdue Univ., IPR2022-00761, Paper 13 at 7–8 (Vidal Mar. 30, 2023) (“Wolfspeed”). Factors (c), (e), and (f) “relate to whether the petitioner has” slip op. at 19
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“4 Because we deny the Petition under 35 U.S.C. § 325(d), we do not reach Patent Owner’s request that we deny the Petition under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 13–14 (PTAB Mar. 20, 2020) (precedential). See Prelim. Resp. 52–59; Sur-reply 1–5. Nor do we reach the parties’ merits arguments.” slip op. at 37
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“III. CONCLUSION After considering the evidence and arguments presented in the Petition and Preliminary Response, we determine that, for each of Petitioner’s challenges, it is appropriate to exercise our discretion under 35 U.S.C. § 325(d) to deny the Petition with respect to those grounds. We accordingly exercise that discretion for the Petition as a whole and deny institution of an inter partes review.4 IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 36
Discretionary denialPatents in suitUS 9,887,795 - Nokia Of America Corporation v. Alexander Soto And Walter SotoInstitution deniedPTAB · Nov 3, 2023 · IPR2023-00680 · APJ Thu A Dang · IPR · Institution
The Board denied institution for all challenged claims under § 325(d), finding substantially the same art and arguments had been presented to the Office and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“5. 35 U.S.C. § 325(d) Conclusion We conclude that (1) substantially the same art was previously presented to the Office, and (2) Petitioner has not demonstrated that the Office erred. We therefore conclude that it is appropriate to exercise discretion under 35 U.S.C. § 325(d) to deny the Petition.” slip op. at 28
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“III. CONCLUSION After considering the evidence and arguments presented in the Petition and Preliminary Response, we determine that, for each of Petitioner’s challenges, it is appropriate to exercise our discretion under 35 U.S.C. § 325(d) to deny the Petition with respect to those grounds. We accordingly exercise that discretion for the Petition as a whole and deny institution of an inter partes review.3 IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 29
Discretionary denialPatents in suitUS 9,887,795 - Nokia Of America Corporation v. Alexander Soto And Walter SotoInstitution deniedPTAB · Nov 3, 2023 · IPR2023-00681 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution under § 325(d), finding substantially the same art had been presented to the Office and Petitioner had not shown material Office error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“In light of these similarities, we find that the Petition relies on art and arguments that are substantially the same as previously evaluated by the Office.” slip op. at 23
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“III. CONCLUSION For the foregoing reasons, we exercise discretion under 35 U.S.C. § 325(d) to deny institution of an inter partes review.5 IV. ORDER In consideration of the foregoing, it is ORDERED that the Petition is denied, and no trial is instituted. 5 Because we deny the Petition under 35 U.S.C. § 325(d), we do not reach Patent Owner’s request that we deny the Petition under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 13–14 (PTAB Mar. 20, 2020) (precedential). See Prelim. Resp. 53–60. Nor do we reach the parties’ merits arguments.” slip op. at 26
Discretionary denialPatents in suitUS 10,263,723 - Nokia Of America Corporation v. Alexander Soto And Walter SotoInstitution deniedPTAB · Nov 3, 2023 · IPR2023-00682 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution under § 325(d), finding substantially the same art had been presented to the Office and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”), the Board applied a two-part framework in considering whether to exercise discretion to deny institution 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.” Advanced Bionics at 8.” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“D. Conclusion We conclude that (1) substantially the same art was previously presented to the Office, and (2) Petitioner has not demonstrated that the Office erred. We therefore conclude that it is appropriate to exercise discretion under 35 U.S.C. § 325(d) to deny the Petition. III. CONCLUSION For the foregoing reasons, we exercise discretion under 35 U.S.C. § 325(d) to deny institution of an inter partes review.5 IV. ORDER In consideration of the foregoing, it is ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 25
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“5 Because we deny the Petition under 35 U.S.C. § 325(d), we do not reach Patent Owner’s request that we deny the Petition under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 13–14 (PTAB Mar. 20, 2020) (precedential). See Prelim. Resp. 53–60. Nor do we reach the parties’ merits arguments.” slip op. at 26
Discretionary denialPatents in suitUS 10,771,181 - Vovomart (HK) Enterprises Co., Ltd. / HK Sanodesk Co., Ltd. et al. v. Office Kick, Inc.Institution deniedPTAB · Jan 12, 2023 · PGR2022-00048 · APJ James A Tartal · PGR · Institution
The Board denied institution under § 325(d), finding the same or substantially the same art had been presented to the Office and Petitioner showed no material Office error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“previously presented to the Office under our framework for evaluating discretionary denial under Section 325(d), we next consider whether Petitioner “has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics, Paper 6 at 8; see also id. at 8–9 (further explaining that if “petitioner fails to make a showing of material error,” generally discretion will be exercised to deny institution of review). In the second part of our framework, we consider (i) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (ii) whether Petitioner has pointed out sufficiently how the Examiner erred in evaluating the asserted prior art; and (iii) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art. See id. at 9 n.10, 10– 11 (citing factors (c), (e), and (f) of Becton, Dickinson). For the reasons that follow, we find that Petitioner does not demonstrate an error material to patentability.” slip op. at 13
Discretionary denialPatents in suitUS 11,160,367 - Ii-Vi, Inc. v. Nextgen Innovations, LLCInstitution deniedPTAB · Feb 15, 2022 · IPR2021-01358 · APJ Kara L Szpondowski · IPR · Institution
The Board denied institution of review of claims 1–21 under § 325(d), finding the grounds presented substantially the same art and arguments previously considered and no material Office error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In evaluating the exercise of discretion to deny institution under Section 325(d), the Board uses the following two-part framework: (1) determining 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, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8.” slip op. at 18
Discretionary denialPatents in suitUS 9,887,795 - Ii-Vi, Inc. v. Alexander Soto And Walter SotoInstitution deniedPTAB · Feb 15, 2022 · IPR2021-01361 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution on all challenged claims under § 325(d), finding substantially the same art and arguments had been presented to the Office and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“to the first part of the Advanced Bionics framework support the finding that substantially the same art and substantially the same arguments were previously presented to the Office. With respect to the second part of the Advanced Bionics framework, we find that Petitioner has not demonstrated that the Office erred in a manner material to the patentability of challenged claims. As discussed below, Petitioner does not meaningfully assess the record of examination or explain sufficiently how or why Becton, Dickinson factors (c), (e), or (f) support its positions.” slip op. at 26
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“III. CONCLUSION We conclude that, for each of Petitioner’s challenges, it is appropriate to exercise our discretion under 35 U.S.C. § 325(d) to deny the Petition with respect to those grounds. We accordingly exercise that discretion for the Petition as a whole and deny institution of an inter partes review. IV. ORDER In consideration of the foregoing, it is ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 34
Discretionary denialPatents in suitUS 10,771,181 - Ii-Vi, Inc. v. Alexander Soto And Walter SotoInstitution deniedPTAB · Feb 15, 2022 · IPR2021-01359 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution of IPR on claims 1–11 and 13–23 under § 325(d), finding substantially the same art and arguments were previously presented and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”), the Board applied a two-part framework in considering whether to exercise discretion to deny institution 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.” Advanced Bionics at 8.” slip op. at 20
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“III. CONCLUSION We conclude that, for each of Petitioner’s challenges, it is appropriate to exercise our discretion under 35 U.S.C. § 325(d) to deny the Petition with respect to those grounds. We accordingly exercise that discretion for the Petition as a whole and deny institution of an inter partes review. IV. ORDER In consideration of the foregoing, it is ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 33
Discretionary denialPatents in suitUS 10,263,723
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.