- Skechers U.S.A., Inc. v. Nike, Inc.Institution deniedPTAB · Jun 10, 2025 · IPR2025-00141 · APJ Ken B Barrett · IPR · Institution
The Board denied institution on all challenged claims under §325(d), finding the petition relied on previously presented art and did not show material error by the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“The Board uses a two-part framework in determining whether to exercise its discretion under § 325(d), specifically: (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 challenged claims. Advanced Bionics, Paper 6 at 8.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“single §102 rejection based solely on Nishida.” Pet. § 325(d) Reply 3 (emphasis omitted). Specifically, Petitioner argues that: The examiner seemingly failed to consider how it would have been obvious to combine Nishida (or any other reference of record, such as Orei) with knowledge in the art, including the fact that it was “well known to use double needle-bar raschel machines . . . to knit textile elements simultaneously with surrounding textile structures” (Pet., 37–38), and that simultaneous knitting would be obvious because it would “increase yield and reduce manufacturing steps,” as explained in the Petition and supporting evidence. See Pet., 42–44. Id. (alterations in original); see also id. at 4 (Petitioner arguing that the Examiner clearly erred for “failing to seemingly even consider if it would 10 We quote here, to give context to “otherwise,” both aspects that a petitioner must demonstrate in order to meet its burden. In order to determine whether Petitioner has met its overall burden, we need not and do not reach the issue of whether “the previously presented art [Nishida] teaches the limitations of the challenged claims.” Ecto World, Paper 13 at 6. have been obvious to combine Nishida with other prior art, or to implement Nishida using well-known techniques for simultaneously knitting textile elements and surrounding structures having differing textures.”). We do not find this argument persuasive. The cited portion of the Petition is the contention that Orei—not Nishida—would render obvious claim 1. See Pet. 37–38, 42–44 (Ground 1A). Thus, Petitioner has not shown persuasively that the Examiner erred in not making an obviousness rejection based on Nishida because the disputed limitation was purportedly well-known. Additionally, Petitioner’s support for the assertion that this limitation is well-known is not persuasive. The Petition parenthetically quotes from a source stating that plural “articles . . . can be simultaneously knitted side-by-side,” not that an article (a textile element) and surrounding textile structure are known to be simultaneously knitted. See Pet. 38 (quoting Ex. 1050, 201) (emphasis added); see also Pet. § 325(d) Reply 3 (Petitioner quoting its own argument and characterizing it as a “fact” (“The examiner seemingly failed to consider . . . the fact that it was ‘well known . . . “)).” slip op. at 21
§ 103 obviousnessDiscretionary denialPatents in suitUS 8,266,749 - 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 - Google LLC v. Ecofactor, Inc.Institution deniedPTAB · Aug 1, 2022 · IPR2022-00535 · APJ Brent M Dougal · IPR · Institution
The Board denied institution for claims 1–17 under § 325(d), finding no material error in the Examiner’s priority determination and Quam essential to every asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“2. Conclusion as to 35 U.S.C. § 325(d) As discussed in detail above, the Quam and Modi references only qualify as prior art that can be used against the ’890 patent if the ’890 patent is not entitled to priority. However, the Petition fails to establish that the Examiner erred in determining that the ’890 patent is entitled to its priority claim. We exercise our discretion to decline to reconsider the issue of priority which has already been addressed by the Office. Thus, the Petition cannot show that Quam and Modi are prior art that can be used against the ’890 patent. As Quam is essential to all grounds in the Petition, we exercise our discretion under 35 U.S.C. § 325(d) to decline to institute.” slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“Petitioner’s argument fails to identify any material errors by the Examiner. First, we determine that Petitioner makes no credible argument that one of skill in the art would not understand the ’554 application to teach that weather data is obtained from outside a building or that the Examiner erred in making such a determination. Petitioner acknowledges that the ’554 application teaches data comprising an outside weather condition. Id. at 12– 14. Data of an outside weather condition necessarily ultimately comes from a source outside of a building; otherwise it would not be an “outside” weather condition. Contrary to Petitioner’s argument, the claim does not require that the outside weather condition be transmitted from a source external to the building to the one or more processors through a network connected to the thermostat. See id. at 14. The claim states that the “outside weather condition [is] collected from a source external to the building,” but then only requires that the outside weather condition be received by the one or more processors from a network connected to the thermostat. Thus, how it is collected and how it is received is not linked or required by the claim language. Secondly, Figure 2 relied on by the Applicant shows that the entire system is set-up on a network. Thus, Figure 2 shows “a network connected to the thermostat” as required by the claim and sharing of data comes across the network, such as would occur when a server having a processor retrieves data, such as an outside weather condition, from a storage database on another server in the network. See e.g., Ex. 1005, 46; Ex. 1007, 399 at ¶¶ 81, 84, 406 at ¶ 110, 440–441.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“qualify as prior art that can be used against the ’890 patent if the ’890 patent is not entitled to priority. However, the Petition fails to establish that the Examiner erred in determining that the ’890 patent is entitled to its priority claim. We exercise our discretion to decline to reconsider the issue of priority which has already been addressed by the Office. Thus, the Petition cannot show that Quam and Modi are prior art that can be used against the ’890 patent. As Quam is essential to all grounds in the Petition, we exercise our discretion under 35 U.S.C. § 325(d) to decline to institute. III. CONCLUSION For the foregoing reasons, we do not institute trial. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), no inter partes review as to any claim of U.S. Patent 10,584,890 B2 is instituted.” slip op. at 14
§ 112 disclosureDiscretionary denialPatents in suitUS 10,584,890 - Splunk Inc. v. Sable Networks, Inc.Institution deniedPTAB · Apr 14, 2022 · IPR2022-00003 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution of review of claims 1–15, 23–28, 32, 43–51, and 97 under § 325(d) because substantially the same art or arguments were previously presented and Petitioner showed no material Office error.
RulingsInstitution 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 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“We may institute an inter partes review if the information presented in the Petition and the Preliminary Response shows that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. See 35 U.S.C. § 314. However, the Board has discretion to deny a petition even if a petitioner meets that threshold. See, e.g., 35 U.S.C. § 325(d); Cuozzo Speed Techs., LLC v. Lee, 579 U.S. 261, 273 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”).” slip op. at 2
Discretionary denialPatents in suitUS 7,630,358 - Microsoft Corporation v. Ipa Technologies Inc.Rehearing deniedPTAB · Apr 3, 2020 · IPR2019-00840 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Microsoft’s rehearing request, leaving institution denied because it did not show error in the Board’s § 325(d) analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for patent owner
“Petitioner did not argue, in the Petition, that FIPA97 was released as individual parts. Petitioner’s Rehearing Request (page 8) cites to the Petition at page 20 and Exhibit 1054. Page 20 of the Petition, however, contains Petitioner’s argument that FIPA97 was made publicly available as a single document, as discussed above. It does not include any argument or suggestion that FIPA97 was released as individual parts. Additionally, Exhibit 1054 is not cited on page 20 of the Petition in the discussion of FIPA97 nor does it appear that Exhibit 1054 was cited anywhere in the Petition. Thus, because Petitioner did not argue, in the Petition, that FIPA97 was released as individual parts, we could not have overlooked that argument. Petitioner’s contention of error in our determination that FIPA97 was involved during examination of the ’128 patent application is premised upon finding that FIPA97 existed as individual parts. Because Petitioner fails to demonstrate that we overlooked an argument that was not made, we are not persuaded of error.” slip op. at 4
Discretionary denialPatents in suitUS 7,036,128 - Microsoft Corporation v. Ipa Technologies Inc.Rehearing deniedPTAB · Apr 3, 2020 · IPR2019-00838 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Microsoft’s rehearing request, leaving institution denied under § 325(d) because Microsoft did not show the Board overlooked arguments made in the petition.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS 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. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“and the prior art relied upon in Petitioner’s challenges to the ’128 patent, Petitioner did not address 35 U.S.C. § 325(d) in the Petition (Paper 1). Instead, Petitioner made two critical representations—(1) that the Examiner of the ’128 patent “did not have FIPA97 before him, or any other FIPA reference for that matter” (Pet. 1) and (2) that despite there being seven “Parts” to FIPA97, “FIPA97 was made publicly available as a single document” and was “developed and published as a single, integrated work.” Pet. 20 (citing Ex. 1055 (FIPA97 Table of Contents for Parts 1–7)); Ex. 1026, 5 (Foundation for Intelligent Physical Agents, “Resolution of Munich meeting”). In the Petition (Paper 1), Petitioner never contended that FIPA97 was published or available as separate and distinct parts, such that access to one part might not mean access to each other part. Rather, Petitioner’s sole statement regarding separate parts was that it filed FIPA97 as seven separate exhibits “due to its size and numbering schedule.” Id. at 20. Accordingly, on the record presented, we agreed with Petitioner’s representation and we found that FIPA97 (Exs. 1006–1012) constitutes a single document, which we then found was involved during examination of the ’128 patent application. Inst. Dec. 15.” slip op. at 3
Discretionary denialPatents in suitUS 7,036,128 - Microsoft Corporation v. Ipa Technologies Inc.Rehearing deniedPTAB · Apr 3, 2020 · IPR2019-00839 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Microsoft's rehearing request, leaving institution denied under § 325(d) because it did not show the Board overlooked arguments about FIPA97 or misweighed the Becton factors.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS 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. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“and the prior art relied upon in Petitioner’s challenges to the ’128 patent, Petitioner did not address 35 U.S.C. § 325(d) in the Petition (Paper 1). Instead, Petitioner made two critical representations—(1) that the Examiner of the ’128 patent “did not have FIPA97 before him, or any other FIPA reference for that matter” (Pet. 1) and (2) that despite there being seven “Parts” to FIPA97, “FIPA97 was made publicly available as a single document” and was “developed and published as a single, integrated work.” Pet. 20 (citing Ex. 1055 (FIPA97 Table of Contents for Parts 1–7)); Ex. 1026, 5 (Foundation for Intelligent Physical Agents, “Resolution of Munich meeting”). In the Petition (Paper 1), Petitioner never contended that FIPA97 was published or available as separate and distinct parts, such that access to one part might not mean access to each other part. Rather, Petitioner’s sole statement regarding separate parts was that it filed FIPA97 as seven separate exhibits “due to its size and numbering schedule.” Id. at 20. Accordingly, on the record presented, we agreed with Petitioner’s representation and we found that FIPA97 (Exs. 1006–1012) constitutes a single document, which we then found was involved during examination of the ’128 patent application. Inst. Dec. 15.” slip op. at 3
Discretionary denialPatents in suitUS 7,036,128 - Microsoft Corporation v. Ipa Technologies Inc.Institution deniedPTAB · Nov 7, 2019 · IPR2019-00838 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution of IPR on claims 1, 13–18, 22, and 33–38 under § 325(d) because the same or substantially the same prior art had been presented to the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“In evaluating whether to deny institution on the basis of § 325(d) because the same or substantially the same prior art or arguments previously were presented to the Office, the Board considers the following non-exclusive factors: (1) the similarities and material differences between the asserted art and the prior art involved during examination; (2) the cumulative nature of the asserted art and the prior art evaluated during examination; (3) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (4) 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; (5) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (6) the extent to which additional evidence and facts presented in the” slip op. at 13
Discretionary denialPatents in suitUS 7,036,128 - 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 - Apple Inc. v. California Institute Of TechnologyInstitution deniedPTAB · Sep 12, 2017 · IPR2017-00703 · APJ Ken B Barrett · IPR · Institution
The Board denied institution on claims 1–14, exercising § 325(d) discretion and finding no reasonable likelihood that the ’710 patent and MacKinnon rendered them obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“In determining whether to institute an inter partes review, we, acting on behalf of the Director, may take into account whether, and reject a petition to institute on a particular ground because, the same or substantially the same prior art or arguments previously were presented to the Office. 35 U.S.C. § 325(d).” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner bears the ultimate burden of proving unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this stage, we assess, based on the information presented in the Petition and Patent Owner’s Preliminary Response, whether Petitioner has demonstrated a reasonable likelihood of eventually satisfying that burden. 35 U.S.C. § 314(a). To be entitled to the benefit of the filing date of an earlier application, the claims at issue must have written description support in that earlier application. See 35 U.S.C. § 120. “[T]he test for sufficiency [of the written description] is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citations omitted).” slip op. at 10
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for patent owner
“To be entitled to the benefit of the filing date of an earlier application, the claims at issue must have written description support in that earlier application. See 35 U.S.C. § 120. “[T]he test for sufficiency [of the written description] is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citations omitted).” slip op. at 10
§ 112 disclosureDiscretionary denialPatents in suitUS 8,284,833
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.