- Microsoft Corporation v. Almondnet, Inc.Institution deniedPTAB · Jan 30, 2023 · IPR2022-01319 · APJ Thomas L Giannetti · IPR · Institution
The Board denied institution for all challenged claims under § 325(d), finding Beyda had been presented to the Office and Microsoft had not shown material Examiner error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Here, Petitioner does not dispute Patent Owner’s evidence that Beyda was previously presented to the Office. Ex. 1004, 295. Thus, the first criterion of the Advanced Bionics framework (same art or arguments) is met. Advanced Bionics, Paper 6 at 7–8 (“Previously presented art includes art made of record by the Examiner and art provided to the Office by an applicant, such as on an Information Disclosure Statement (IDS),”). The second inquiry in the Advanced Bionics framework asks whether the Petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8–9. As Patent Owner points out, “although the Petition admits that the Examiner considered Beyda during prosecution, it fails to make any allegation whatsoever that the Examiner erred (let alone erred in a material way) in his consideration of Beyda.” Prelim. Resp. 18. As to Narin, Patent Owner argues that Petitioner “does not offer any explanation” why that reference is not “substantially the same” as art considered by the Examiner, “let alone how or why the Examiner materially erred in considering that art to not be invalidating.” Id. We agree that Petitioner has failed to demonstrate that the Office erred in its evaluation of the cited art. See Advanced Bionics, Paper 6 at 8–9 (“If a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review.”). Here, the Beyda prior art that was before the Examiner during the examination is identical to the art cited here.3 There is no argument or evidence before us that Beyda was concealed from the Examiner. The Examiner ultimately made a determination that the claims were patentable. Ex. 1004, 49, 92. As cautioned by Advanced Bionics, “[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.” Advanced Bionics, Paper 6 at 9. Advanced Bionics goes on to explain the rationale for this rule: “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. Having considered the record presented by Patent Owner and the absence of any substantive showing from Petitioner, we are not persuaded of material Examiner error. Petitioner’s assertion that the prior art references in the Petition “were not substantively considered during the prosecution of the ’139 Patent, or in the prior CBM challenge,” without further explanation, is insufficient. In summary, applying the two-part framework of Advanced Bionics, we are persuaded to deny the Petition under 35 U.S.C § 325(d).” slip op. at 10
Discretionary denialPatents in suitUS 8,671,139 - Juniper Networks, Inc. v. Finjan, Inc.Rehearing deniedPTAB · Jul 16, 2019 · IPR2019-00060 · APJ Miriam L Quinn · IPR · Rehearing
The Board granted rehearing only to address the overlooked construction dispute, but again denied institution because Jensen did not teach “mobile protection code.”
RulingsRehearing decision- RehearingRehearing, deniedDenied
“(“Dec. on Inst.”). The panel concluded that Petitioner had not shown a reasonable likelihood of prevailing in the asserted obviousness grounds because, for a particular ground, Petitioner failed to demonstrate sufficiently that Jensen1 teaches “mobile protection code.” Dec. on Inst. 11−12.2 Petitioner has filed a Request for Rehearing. Paper 8 (“Req. Reh’g”). Petitioner argues that the scope for the claim term “mobile protection code” was in dispute, and that we “failed to resolve the key claim construction dispute between the parties.” Id. at 1. According to Petitioner, rehearing is warranted to resolve the claim construction dispute and “fix the plain error in the Institution Decision.” Id. We are persuaded that in failing to address Petitioner’s construction, we overlooked the matter raised in Petitioner’s Request for Rehearing. Nevertheless, for the reasons discussed infra, after giving due consideration to Petitioner’s argument, we are persuaded that our decision to deny institution was correct, and therefore we deny the request insofar as it calls upon us to institute trial.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“(“Dec. on Inst.”). The panel concluded that Petitioner had not shown a reasonable likelihood of prevailing in the asserted obviousness grounds because, for a particular ground, Petitioner failed to demonstrate sufficiently that Jensen1 teaches “mobile protection code.” Dec. on Inst. 11−12.2 Petitioner has filed a Request for Rehearing. Paper 8 (“Req. Reh’g”). Petitioner argues that the scope for the claim term “mobile protection code” was in dispute, and that we “failed to resolve the key claim construction dispute between the parties.” Id. at 1. According to Petitioner, rehearing is warranted to resolve the claim construction dispute and “fix the plain error in the Institution Decision.” Id. We are persuaded that in failing to address Petitioner’s construction, we overlooked the matter raised in Petitioner’s Request for Rehearing. Nevertheless, for the reasons discussed infra, after giving due consideration to Petitioner’s argument, we are persuaded that our decision to deny institution was correct, and therefore we deny the request insofar as it calls upon us to institute trial.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“1 Protection Wrappers: A Simple and Portable Sandbox for Untrusted Applications, Proceedings on the 8th ACM SIGOPS European Workshop on Support for Composing Distributed Applications, filed in the record as Exhibit 1006. 2 We also exercised our discretion under 35 U.S.C. §§ 314(a) and 325(d) and denied institution. Petitioner does not challenge the exercise of discretion in this request for rehearing.” slip op. at 2
- Other 314aInstitution denied discretionary otherInstitution denied
“1 Protection Wrappers: A Simple and Portable Sandbox for Untrusted Applications, Proceedings on the 8th ACM SIGOPS European Workshop on Support for Composing Distributed Applications, filed in the record as Exhibit 1006. 2 We also exercised our discretion under 35 U.S.C. §§ 314(a) and 325(d) and denied institution. Petitioner does not challenge the exercise of discretion in this request for rehearing.” slip op. at 2
Claim constructionDiscretionary denialPatents in suitUS 7,647,633 - Samsung Electronics America, Inc. v. Uniloc 2017 LLCInstitution deniedPTAB · Mar 11, 2019 · IPR2018-01757 · APJ Miriam L Quinn · IPR · Institution
The Board denied institution because the petition repeated substantially the same prior art and arguments in overlapping proceedings, duplicating issues and Board effort.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“There is no question that Fabio, Pasolini, and Richardson have been previously presented to the Office in the previous IPRs challenging the ’723 patent. In IPR2018-00389, which was filed by Apple Inc., the ongoing trial concerning the ’723 patent involves a single ground: obviousness of claims 13, 57, and 1018 over Fabio and Pasolini. Further in IPR2018- 01027, Apple Inc. challenged dependent claims 4 and 19 for obviousness over Fabio, Pasolini, and Richardson. Thus, Fabio, Pasolini, and Richardson have been previously presented to the Board to challenge all the claims at issue here. The question for us to answer is whether, based on this fact, we should exercise our discretion and deny the Petition. Applicability of § 325(d) is not limited to situations where the same petitioner has filed a follow-on petition. The statute allows for the exercise of discretion upon consideration only of whether the same or substantially the same prior art or arguments were presented previously to the Office. Further, the statutory authority to deny the petition based on the same previously presented prior art is not tied to the format of how that prior art is presented or whether every aspect of the asserted grounds is identical in both petitions. Therefore, we have statutory authority to deny this Petition because Fabio, Pasolini, and Richardson were previously presented to the Office in the previous IPRs, notwithstanding that Petitioner is not a party to the previous IPRs and that the asserted grounds here are not exactly the same as the previous IPRs.2” slip op. at 16
- Other 314aInstitution denied discretionary otherInstitution denied
“We further note that under the current circumstances, where the patent-at-issue is involved in an ongoing trial,3 we also have discretionary authority, under 37 C.F.R. § 42.122, to issue “any appropriate order regarding the additional matter [i.e., this proceeding,] including providing for the stay, transfer, consolidation, or termination of any such matter.” See 35 U.S.C. § 315(d). We recognize that in exercising our discretion we determine the proper course of conduct in a proceeding (37 C.F.R. § 42.5) in” slip op. at 17
Discretionary denialPatents in suitUS 8,712,723 - Google LLC v. Uniloc Luxembourg S.A.Institution deniedPTAB · Mar 29, 2018 · IPR2017-02067 · APJ Miriam L Quinn · IPR · Institution
The Board denied institution: it declined review of claims 1–12, 14–17, 25, and 26 under §§ 315(d) and 325(d), and found no reasonable likelihood for claims 13, 18–24, and 27.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Here, our exercise of discretion to deny institution under §§ 315(d) and 325(d) is warranted for several reasons. To start with, the previous IPRs and the present Petition rely on Zydney as the primary reference against which the majority of the claim limitations are mapped. Petitioner has proffered no reasoning regarding how it has relied on Zydney in any way that differs materially from the previous IPRs. And Petitioner’s reliance on different secondary references does not remedy this shortcoming. Moreover, Petitioner, here, does not explain whether the secondary references in this case are used in a different manner or add anything materially different to the secondary references used in the previous IPRs. Further, Zydney is being considered on the merits in pending IPRs. In fact, two trials regarding the ’433 patent are ongoing, with Zydney as the hallmark, i.e., a distinctive feature, of those trials. See IPR2017-01427 and IPR2017-01428. Under these circumstances, we look to Petitioner to provide some reason that convinces us to institute yet another trial that features Zydney as prominently as the previously presented IPRs. Again, if there was a manner in which Petitioner here distinguishably relied on Zydney, Petitioner did not proffer that fact explicitly. Moreover, the time of filing of this Petition leads us to conclude that Petitioner gained the benefit of Patent Owner’s preliminary responses in the previous IPRs. Patent Owner filed those responses on September 9, 2017. Three days later Petitioner filed the instant petition. Petitioner, as the party with the knowledge of this fact, failed to allege that it did not gain the benefit of the preliminary responses in previous IPRs. We look to Petitioner to explain its delay in its filing. Petitioner provides no reason here. Finally, although not a dispositive fact, we note that in the previous IPRs, Patent Owner requested authorization to file a motion to amend challenged claims of the ’433 patent. This fact raises concerns regarding the complexity and potential for inconsistency inherent in allowing this proceeding to occur in tandem with ongoing trials that arise in large part from the considerable role Zydney plays each proceeding. Further, we are concerned not only with ensuring consistency across multiple trials focused on Zydney, but also with administrative efficiency because significant resources of the Board would be consumed reconciling arguments, issues, and evidence across multiple, independent trials,3 especially in light of the forthcoming motion to amend in the previous IPRs. Cf. Heckler v. Chaney, 470 U.S. 821, 831 (1985) (indicating an agency, when deciding whether to take action in a particular matter, must determine whether its resources are best spent on one matter or another).” slip op. at 9
- Other 314aInstitution denied discretionary otherDenied
“authority, under 37 C.F.R. § 42.122, to issue “any appropriate order regarding the additional matter[, i.e., this proceeding,] including providing for the stay, transfer, consolidation, or termination or any such matter.” See 35 U.S.C. § 315(d). We recognize that in exercising our discretion we determine the proper course of conduct in a proceeding (37 C.F.R. § 42.5) in a manner consistent with securing the just, speedy, and inexpensive resolution of the proceeding (37 C.F.R. § 42.1(b)). Here, our exercise of discretion to deny institution under §§ 315(d) and 325(d) is warranted for several reasons. To start with, the previous IPRs and the present Petition rely on Zydney as the primary reference against which the majority of the claim limitations are mapped. Petitioner has proffered no reasoning regarding how it has relied on Zydney in any way that differs materially from the previous IPRs. And Petitioner’s reliance on different secondary references does not remedy this shortcoming. Moreover, Petitioner, here, does not explain whether the secondary references in this case are used in a different manner or add anything materially different to the secondary references used in the previous IPRs. Further, Zydney is being considered on the merits in pending IPRs. In fact, two trials regarding the ’433 patent are ongoing, with Zydney as the hallmark, i.e., a distinctive feature, of those trials. See IPR2017-01427 and IPR2017-01428. Under these circumstances, we look to Petitioner to provide some reason that convinces us to institute yet another trial that features Zydney as prominently as the previously presented IPRs. Again, if there was a manner in which Petitioner here distinguishably relied on Zydney, Petitioner did not proffer that fact explicitly.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“likelihood of prevailing with regard to its contention that claim 13 is anticipated by Zydney. In particular, we find that Petitioner has failed to show that Zydney’s software agent “displays a selectable control for generating an instant voice message using an intercom mode.” This is an anticipation challenge, which requires that the art disclose each and every limitation of the claim, in the same arrangement as claimed. Net MoneyIn, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). The Board cannot fill in the gaps and consider what an ordinary artisan might supplement or envisage. Net MoneyIn, 545 F.3d at 1372; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor, 851 F.3d 1270, 1274–75 (Fed. Cir. 2017) (The Board is not permitted to “fill in missing limitations simply because a skilled artisan would immediately envision them.”). The Petition sets forth that Zydney teaches a “selectable control” because the software agent permits a number of distinct modes of communication and that the originator selects a delivery mode, i.e., intercom mode. Pet. 1718. But with regard to the display of the “selectable control,” Petitioner states that “Zydney plainly teaches that its software agent’s user interface displays a selectable control for generating an instant voice message using an intercom mode based on the connectivity status (e.g., status of the recipient) of an intended recipient.” Pet. 18 (citing Ex. 1003 ¶ 58). In support, the Min Declaration mentions “display” in reference to selecting the recipients, stating, “Once the originator has selected the recipients from the display, Zydney’s system allows the originator to select a delivery option depending on which ‘core state’ the intended recipient is in—online or offline.” Id. This is insufficient support for demonstrating that Zydney discloses the display limitation of claim 13. Claim 13 recites that the “instant voice messaging application displays a selectable control for generating an instant voice message using an intercom mode.” Neither the Petition nor the Min Declaration addresses the display of the “selectable control for generating an instant voice message.” At best, the Min Declaration adduces to the display of a list of recipients and their selection. But there is no explanation as to the display of the “selectable control” in Zydney or citation of evidence that Zydney displays any selection such that it can generate a voice message in intercom mode. Without evidence that Zydney discloses the recited “display,” we are unpersuaded by Petitioner’s arguments that Zydney anticipates the claim. Therefore, Petitioner’s contention of unpatentability regarding claim 13 does not meet the reasonable likelihood institution threshold.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). The Board cannot fill in the gaps and consider what an ordinary artisan might supplement or envisage. Net MoneyIn, 545 F.3d at 1372; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor, 851 F.3d 1270, 1274–75 (Fed. Cir. 2017) (The Board is not permitted to “fill in missing limitations simply because a skilled artisan would immediately envision them.”). The Petition sets forth that Zydney teaches a “selectable control” because the software agent permits a number of distinct modes of communication and that the originator selects a delivery mode, i.e., intercom mode. Pet. 1718. But with regard to the display of the “selectable control,” Petitioner states that “Zydney plainly teaches that its software agent’s user interface displays a selectable control for generating an instant voice message using an intercom mode based on the connectivity status (e.g., status of the recipient) of an intended recipient.” Pet. 18 (citing Ex. 1003 ¶ 58). In support, the Min Declaration mentions “display” in reference to selecting the recipients, stating, “Once the originator has selected the recipients from the display, Zydney’s system allows the originator to select a delivery option depending on which ‘core state’ the intended recipient is in—online or offline.” Id. This is insufficient support for demonstrating that Zydney discloses the display limitation of claim 13. Claim 13 recites that the “instant voice messaging application displays a selectable control for generating an instant voice message using an intercom mode.” Neither the Petition nor the Min Declaration addresses the display of the “selectable control for generating an instant voice message.” At best, the Min Declaration adduces to the display of a list of recipients and their selection. But there is no explanation as to the display of the “selectable control” in Zydney or citation of evidence that Zydney displays any selection such that it can generate a voice message in intercom mode. Without evidence that Zydney discloses the recited “display,” we are unpersuaded by Petitioner’s arguments that Zydney anticipates the claim. Therefore, Petitioner’s contention of unpatentability regarding claim 13 does not meet the reasonable likelihood institution threshold.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 8,995,433 - Juniper Networks, Inc. / Brocade Communications Sys., Inc. et al. v. Mobile Telecommunications Technologies, LLCRehearing deniedPTAB · Mar 14, 2018 · IPR2017-00642 · APJ Miriam L Quinn · IPR · Rehearing
The Board denied the petitioner’s rehearing request, leaving institution denied because Jasinski had been substantively considered during examination and no explicit examiner error was shown.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A. REQUEST FOR REHEARING A party requesting rehearing has the burden to show a decision should be modified by specifically identifying all matters the party believes were misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“reading of § 325(d). Although a petition for inter partes review may assert grounds of unpatentability based on prior art patents or printed publications cited during examination, the Board is not compelled to institute on any ground relying on previously presented prior art or arguments.8 For instance, § 325(d) provides that we may take into account whether, and “reject the petition” because, the same or substantially the same prior art was previously presented to the Office. Therefore, applying the discretionary authority regarding institution appropriately may result in a denial of all grounds based in whole or in-part on prior art that was previously evaluated during examination. Petitioner does not direct us to any statutory language or other binding legal authority that curtails the Director’s authority to deny 8 Although we address here the applicability of § 325(d), not § 314(a), Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016), is instructive: “the PTO is permitted, but never compelled, to institute an IPR proceeding.” review only in the circumstances where an Examiner’s rejection and the petition’s ground of unpatentability are identical.9 Accordingly, it is within our statutory authority to exercise discretion and deny the Petition on all grounds based on Jasinski once we deem Jasinski to have been presented to the Office during examination.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“II. ANALYSIS A. REQUEST FOR REHEARING A party requesting rehearing has the burden to show a decision should be modified by specifically identifying all matters the party believes were misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 4 With regard to the ground based solely on Thro, we determined that the Petition failed to show that Thro discloses the “dynamically reassigning” limitation. Dec. 1315. That determination is not part of the request for rehearing, and, therefore, we do not discuss it further.” slip op. at 7
- BurdenDecided for patent owner
“As we stated above with regard to the Previous Evaluation (Third) factor, Office procedures require that Office Actions focus on reasons for rejection, rather than reasons for why a reference does not anticipate or render obvious the pending claims. Consistent with the Office’s need to provide streamlined examination and to utilize Office resources effectively, a petitioner must articulate error in the Examiner’s evaluation of the previously considered prior art. A showing of error in examination allows us to focus our resources on those matters that warrant reconsideration. Showing an Examiner was silent regarding application of the prior art to a claim in an Office Action, where the same reference was applied to other claims in the same Office Action, is not a showing of error. First, as stated above, an Examiner is charged with applying the best prior art to all of the claims. In that vein, absent evidence to the contrary, it is reasonable to conclude that an Examiner who follows Office procedure, and with evident knowledge of Jasinski, would have applied it to claim 1, if it had been proper to do so.11 We decline to assume the contrary, as Petitioner urges we do, that non-action by the Examiner is error merely because Petitioner presents the non-rejected claim mapped, in whole or in part, to the previously considered art. Instead of assuming that the Examiner failed to consider Jasinski, we have concluded that the omission of a Jasinski rejection as to claim 1, when Jasinski was applied to other claims, is an” slip op. at 20
§ 103 obviousnessDiscretionary denialPatents in suitUS 5,590,403 - Juniper Networks, Inc. / Brocade Communications Sys., Inc. et al. v. Mobile Telecommunications Technologies, LLCInstitution deniedPTAB · Jul 27, 2017 · IPR2017-00642 · APJ Miriam L Quinn · IPR · Institution
The Board denied institution: it declined the Jasinski-based grounds under § 325(d) and found no reasonable likelihood that claim 10 was obvious over Thro.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“When evaluating whether the same or substantially the same prior art or arguments previously were presented to the Office under section 325(d), we have considered some of the following non-exclusive factors: 1) The similarity of the asserted art and the prior art involved during examination; 2) The extent to which the asserted art was considered during examination, including whether the prior art was the basis for rejection; 3) The cumulative nature of the asserted art and the prior art considered during examination; 4) Whether Petitioner has pointed out sufficiently how the Examiner erred in its consideration of the asserted prior art; 5) The extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or the applicant’s arguments during examination; and 6) The extent to which additional evidence and facts presented in the” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“58−86. We do not agree with Petitioner at least with regard to the “dynamically reassigning” limitation. The claim requires that the recited reassignment is made “as a function of the messages to be communicated in an area.” Ex. 1001, 34:52−53. Petitioner points to Thro’s disclosure of “where-are-you” messages as teaching the limitation. Pet. 84. According to Petitioner, a dynamic reassignment is triggered in Thro “via ‘where-are-you’ messages sent to exemplary remote stations A and B to [e]nsure remote station location information does not become stale.” Id. This contention is not supported sufficiently by the record.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“58−86. We do not agree with Petitioner at least with regard to the “dynamically reassigning” limitation. The claim requires that the recited reassignment is made “as a function of the messages to be communicated in an area.” Ex. 1001, 34:52−53. Petitioner points to Thro’s disclosure of “where-are-you” messages as teaching the limitation. Pet. 84. According to Petitioner, a dynamic reassignment is triggered in Thro “via ‘where-are-you’ messages sent to exemplary remote stations A and B to [e]nsure remote station location information does not become stale.” Id. This contention is not supported sufficiently by the record.” slip op. at 13
§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 5,590,403 - PTAB · Jul 6, 2017 · CBM2016-00080 · APJ Kevin F Turner · CBM · Rehearing
The Board denied rehearing, maintaining its denial of institution under § 325(d) because the petition’s arguments and evidence were substantially the same as those previously presented.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“For the foregoing reasons, Petitioner has not shown that the Board abused its discretion in denying the instant Petition and not instituting a covered business method patent review of the ’792 Patent. III. CONCLUSION Insofar as we have addressed above the assertions set forth in Petitioner’s Request for Rehearing (Paper 13), the Request is granted. In all other respects, the Request is denied.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for patent owner
“Petitioner’s argument seems to rely on the supposition that any follow-on petition would need to correct any specific errors found in a prior petition to serve as a guide for the follow-on petition to fall within the discretion of 35 U.S.C. § 325(d). For example, if a petition urging unpatentability of claims over references A and B was found to be unworthy of institution because the petition did not provide a rationale to combine those references, Petitioner’s argument suggests that only a follow-on petition asserting references A and B and a proper rationale would fall within the discretion of 35 U.S.C. § 325(d). Presumably, a petition asserting references A and C could not be considered “the same or substantially the same prior art or arguments previously were presented to the Office.” However, as stated in the Decision, our jurisprudence covers more than such special circumstances, including rejecting a “second bite at the apple” over new references or arguments, when they are the same or substantially the same as those previously presented. Dec. 11. A prior failure can guide present actions, 7 even if those present actions do not cure every prior error, and they merely address alternative means of reaching the same conclusion. We remain persuaded that the proposed grounds proffered in the instant Petition involve evidence and arguments we previously considered in the ’167 proceeding and are substantially the same as those previously presented.” slip op. at 7
Discretionary denialcites NautilusPatents in suitUS 6,081,792 - Arista Networks, Inc. v. Cisco Systems, Inc.Institution deniedPTAB · Jun 6, 2016 · IPR2016-00304 · APJ Miriam L Quinn · IPR · Institution
The Board denied institution of inter partes review of claim 63 because the petition relied on substantially the same prior art and arguments previously presented.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Hendel, however, was asserted as disclosing all the limitations of claim 63 in a previous inter partes review petition. In particular, Petitioner asserted Hendel, alone, in challenging the unpatentability of claim 63 in IPR2015-00976 (“the ’976 IPR”). The Board denied institution of inter partes review in the ’976 IPR on October 19, 2015, stating that “[n]either Petitioner, nor Petitioner’s Declarant, has tied the matching in Hendel to a decision whether or not to forward a packet.” Arista v. Cisco, ’976 IPR, Paper 9, slip op at 15 (PTAB Oct. 19, 2015). The instant Petition does not explain how Petitioner’s contentions are different from those presented previously in the ’976 IPR. Nor does Petitioner provide any cogent rationale for why the Board should undertake a second Petition asserting substantially similar prior art Petitioner previously presented.” slip op. at 6
Discretionary denialPatents in suitUS 7,023,853 - Palo Alto Networks, Inc. v. Finjan, Inc.Institution deniedPTAB · Mar 29, 2016 · IPR2015-01999 · APJ Miriam L Quinn · IPR · Institution
The Board denied institution under § 325(d), finding the petition presented the same or substantially the same prior art or arguments previously considered by the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“We deny the Petition for three reasons. First, the patent-at-issue has undergone a full reexamination and an appeal of that proceeding. The same subject matter and arguments were presented in both the reexamination proceeding and on appeal. Petitioner, essentially, asks the Board to undertake a second post-grant assessment on issues that have been decided by the Office previously and in a matter inconsistent with the previous findings and conclusions of the Board. Second, although the references themselves are not identical to the prior art already considered, the same subject matter was considered thoroughly in the reexamination proceeding. We are not persuaded that the addition of a witness declaration, by itself, is sufficient to persuade us that the thorough evaluation the claims underwent in reexamination in light of a more detailed disclosure of the same technology as that alleged in the Petition should be set aside. Finally, although we acknowledge that Petitioner has a direct interest in pursuing the instant Petition, we also acknowledge the burden and expense to Patent Owner in having to defend another challenge of the patent-at-issue based on substantially the same prior art or arguments already considered. See Prelim. Resp. 13. Further, in view of the fact that the Board has already thoroughly considered these issues in deciding the appeal, we determine that the resources of the Board should not be expended revisiting them again here.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“III. CONCLUSION For the foregoing reasons, we conclude that the instant Petition raises the same or substantially the same prior art or arguments as those previously presented to the Office. In light of the circumstances of the present case, we exercise our discretion not to institute inter partes review of the ’822 patent. IV. ORDER It is ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 11
Discretionary denialPatents in suitUS 7,058,822
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.