- Avita Medical Limited v. Renovacare Sciences Corp.Institution deniedPTAB · Dec 18, 2017 · IPR2017-01243 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution on all grounds, finding the petition relied on the same or substantially the same prior art previously considered by the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Our discretion pursuant to § 325(d) involves a balance between several competing interests. “On the one hand, there are the interests in conserving the resources of the Office and granting patent owners repose on issues and prior art that have been considered previously.” Fox Factory, Inc. v. SRAM, LLC, Case IPR2016-01876, slip op. at 7 (PTAB Apr. 3, 2017) (Paper 8). “On the other hand, are the interests of giving petitioner the opportunity to be heard and correcting any errors by the Office in allowing a patent—in the case of an inter partes review—over prior art patents and printed publications.” Id.” slip op. at 5
Discretionary denialPatents in suitUS 9,610,430 - Facebook, Inc. / Instagram LLC v. Skky, LLCRehearing deniedPTAB · Oct 23, 2017 · IPR2017-00691 · APJ Justin T Arbes · IPR · Rehearing
The Board denied Petitioner’s rehearing requests, leaving in place the denial of institution under § 325(d) because the later petition presented substantially the same prior art and arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“may “deny some or all grounds for unpatentability for some or all of the challenged claims.” 37 C.F.R. § 42.108(b). When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs 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.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party requesting rehearing bears the burden of showing an abuse of discretion, and “[t]he request must specifically identify” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“We are not persuaded. As pointed out in the Decision, other than Petitioner’s analysis of the OFDM limitations of independent claims 1, 3, and 5, the petitions and supporting evidence appear to be identical. Dec. 5–6. Petitioner’s analysis of all other limitations of the independent claims and dependent claims 2, 4, and 6, as well as the corresponding portions of the declaration testimony of Tal Lavian, Ph.D., are the same. Id. As such, three of the four references (Rolf, Forta, and Gatherer) in the -89 Petition, roughly 25 out of 34 pages of substantive analysis of the claims in the -89 Petition, and roughly 55 out of 71 paragraphs of substantive analysis in Dr. Lavian’s declaration in the -89 Case are identical to what Petitioner presents in this proceeding. Again, the only difference is the analysis of one limitation of each independent claim. We are not persuaded that we abused our discretion in concluding that the instant Petition presents substantially the same prior art and arguments as what was presented previously in the -89 Case and that the Petition should be rejected under § 325(d).” slip op. at 4
Discretionary denialPatents in suitUS 8,892,465 - Facebook, Inc. / Instagram LLC v. Skky, LLCRehearing deniedPTAB · Oct 23, 2017 · IPR2017-00689 · APJ Justin T Arbes · IPR · Rehearing
The Board denied rehearing, finding no abuse of discretion in denying institution under § 325(d) because the later petition presented substantially the same art and arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“may “deny some or all grounds for unpatentability for some or all of the challenged claims.” 37 C.F.R. § 42.108(b). When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs 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.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party requesting rehearing bears the burden of showing an abuse of discretion, and “[t]he request must specifically identify” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“Petitioner’s analysis of the OFDM limitations of independent claims 1, 3, and 5, the petitions and supporting evidence appear to be identical. Dec. 5–6. Petitioner’s analysis of all other limitations of the independent claims and dependent claims 2, 4, and 6, as well as the corresponding portions of the declaration testimony of Tal Lavian, Ph.D., are the same. Id. As such, three of the four references (Rolf, Forta, and Gatherer) in the -89 Petition, roughly 25 out of 34 pages of substantive analysis of the claims in the -89 Petition, and roughly 55 out of 71 paragraphs of substantive analysis in Dr. Lavian’s declaration in the -89 Case are identical to what Petitioner presents in this proceeding. Again, the only difference is the analysis of one limitation of each independent claim. We are not persuaded that we abused our discretion in concluding that the instant Petition presents substantially the same prior art and arguments as what was presented previously in the -89 Case and that the Petition should be rejected under § 325(d).” slip op. at 4
Discretionary denialPatents in suitUS 9,124,718 - Facebook, Inc. / Instagram LLC v. Skky, LLCRehearing deniedPTAB · Oct 23, 2017 · IPR2017-00690 · APJ Justin T Arbes · IPR · Rehearing
The Board denied rehearing and upheld denial of institution because the later petition presented substantially the same prior art and arguments under § 325(d).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“may “deny some or all grounds for unpatentability for some or all of the challenged claims.” 37 C.F.R. § 42.108(b). When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs 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.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party requesting rehearing bears the burden of showing an abuse of discretion, and “[t]he request must specifically identify” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“We are not persuaded. As pointed out in the Decision, other than Petitioner’s analysis of the OFDM limitations of independent claims 1, 3, and 5, the petitions and supporting evidence appear to be identical. Dec. 5–6. Petitioner’s analysis of all other limitations of the independent claims and dependent claims 2, 4, and 6, as well as the corresponding portions of the declaration testimony of Tal Lavian, Ph.D., are the same. Id. As such, three of the four references (Rolf, Forta, and Gatherer) in the -89 Petition, roughly 25 out of 34 pages of substantive analysis of the claims in the -89 Petition, and roughly 55 out of 71 paragraphs of substantive analysis in Dr. Lavian’s declaration in the -89 Case are identical to what Petitioner presents in this proceeding. Again, the only difference is the analysis of one limitation of each independent claim. We are not persuaded that we abused our discretion in concluding that the instant Petition presents substantially the same prior art and arguments as what was presented previously in the -89 Case and that the Petition should be rejected under § 325(d).” slip op. at 4
Discretionary denialPatents in suitUS 9,118,693 - Facebook, Inc. / Instagram LLC v. Skky, LLCRehearing deniedPTAB · Oct 23, 2017 · IPR2017-00688 · APJ Justin T Arbes · IPR · Rehearing
The Board denied rehearing and upheld denial of institution under § 325(d), finding the later petition presented substantially the same prior art and arguments as an earlier petition.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“may “deny some or all grounds for unpatentability for some or all of the challenged claims.” 37 C.F.R. § 42.108(b). When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs 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.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party requesting rehearing bears the burden of showing an abuse of discretion, and “[t]he request must specifically identify” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“inter partes review, “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.” Petitioner argues that we abused our discretion by rejecting the Petition under 35 U.S.C. § 325(d) for two reasons.” slip op. at 3
Discretionary denialPatents in suitUS 9,124,717 - Neil Ziegmann / N.P.Z., Inc. v. Carlis G. StephensRehearing grantedPTAB · Sep 6, 2017 · IPR2015-01860 · APJ Michael W Kim · IPR · Rehearing
The Board granted rehearing in part, reaffirmed denial of IPR under § 325(d), and granted the request for an expanded panel.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“[dissatisfied] party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d). Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Moreover, as the moving party, the burden of persuasion falls on Petitioner. 37 C.F.R. § 42.20(c). 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 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“arguments” is self-evident, so we focus on the next part, “substantially the same prior art or arguments.” 35 U.S.C. § 325(d) (emphasis added). We conclude that a set of prior art or arguments may be considered “substantially the same” if they are “cumulative to or substantially overlap with issues previously considered by the Office with respect to the patent.” 157 CONG. REC. S1375 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl). In order for a party to bring this issue to the Office’s attention, the focus of the “substantially” analysis should be on the differences (or lack thereof) between the prior art and arguments presented in the petition, and those “previously . . . presented to the Office.” A party making assertions relevant to Section 325(d) should identify such differences (or lack thereof), whether substantive or procedural, and explain the relevance of those differences (or lack thereof).” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Taker Magazine (Ex. 1027) and the Declaration of Neil Ziegmann (Ex. 1024) that purportedly show that the Examiner’s determination was erroneous. We note that Mr. Ziegmann’s testimony is discounted, in that he is an interested party in this proceeding. Cf. Finnigan Corp. v. ITC, 180 F.3d 1354, 1369 (Fed. Cir. 1999) (“[T]he level of interest of the testifying witness is an important consideration when such testimony is offered to corroborate another witness’s testimony.”). Moreover, even when accorded some weight, we are unpersuaded that the Fur Taker advertisement and Mr. Ziegmann’s testimony come close to showing that the Examiner’s determination concerning nexus was erroneous. In particular, the vast majority of the evidence concerning secondary considerations in the prosecution history has not been challenged by Petitioner, and, thus, for the reasons set forth above, is treated as undisputed fact. To hold otherwise would allow Petitioner to make an end-run around Section 325(d) by merely submitting any piece of new evidence, no matter how minor or inconsequential.” slip op. at 27
Discretionary denialPatents in suitUS 8,881,447 - Facebook, Inc. / Instagram LLC v. Skky, LLCInstitution deniedPTAB · Jul 26, 2017 · IPR2017-00689 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution of inter partes review of claims 1–11 under § 325(d), finding substantially the same prior art and arguments had been presented in an earlier petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“inter partes review, “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.” In other words, 35 U.S.C. § 325(d) provides authority to deny a petition on the basis that the same or substantially the same prior art or arguments were presented previously to the Office, but does not require that result. Based on the parties’ arguments and the particular facts of this proceeding, we conclude that it is appropriate to exercise our discretion to deny the Petition under 35 U.S.C. § 325(d). Petitioner relies on substantially the same prior art in the present Petition and the -88 Petition. Prelim. Resp. 35–36. Four of the asserted prior art references, namely Rolf, Gatherer, Forta, and Hacker, are the same in both proceedings. Compare -88 Pet. 3, with Pet. 3–4. Petitioner also presents substantially the same arguments in the present Petition and the -88 Petition. Prelim. Resp. 35–36. Petitioner’s discussion of Rolf, Gatherer, Forta, and Hacker, the vast majority of Petitioner’s analysis of claims 1–11,” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“inter partes review, “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.” In other words, 35 U.S.C. § 325(d) provides authority to deny a petition on the basis that the same or substantially the same prior art or arguments were presented previously to the Office, but does not require that result. Based on the parties’ arguments and the particular facts of this proceeding, we conclude that it is appropriate to exercise our discretion to deny the Petition under 35 U.S.C. § 325(d).” slip op. at 5
Discretionary denialPatents in suitUS 9,124,718 - Robert Bosch Tool Corporation v. Sd3, LLCInstitution deniedPTAB · Mar 22, 2017 · IPR2016-01754 · APJ Scott A Daniels · IPR · Institution
The Board denied institution under § 325(d), finding the petition presented substantially the same prior art and arguments previously considered during prosecution.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“similarities between the prior art references presented here, in this Petition, as compared to the prior art substantively considered by the Examiner, we determine that the evidence weighs in favor of a determination that the prior art asserted in the Petition was previously considered by the Office. We are persuaded that the prior art of Nieberle, either in view of the knowledge of one of ordinary skill in the art or Bielinski, and Lokey, either in view of the knowledge of one of ordinary skill or Bielinski, as asserted in this proceeding in grounds 1–4 against claims 1–8 and 10–17 are “the same or substantially the same prior art” as that specifically relied on and considered substantively by the Examiner, and overcome by Applicant, during prosecution of the underlying patent application. See 35 U.S.C. § 325(d).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“machine safety would have known could achieve the claimed speed and distance. This testimony, following his desired acceleration calculation however, fails to state affirmatively that it was even possible by explosive devices and capacitors to achieve the claimed time and distance performance characteristics asserted in the calculation. More importantly, Mr. Main’s testimony fails to persuasively explain how any known explosives or capacitors available to one of skill in the art at the time of invention, would have achieved such an acceleration and a mechanical actuation of the “moveable component 1/32nd of an inch within approximately 3 milliseconds or less after the dangerous condition is detected” as called for in claims 1, 13, and 16 of the ’279 patent. By way of another example, Mr. Main’s declaration refers to a spring loaded actuator disclosed by Bielinski, the secondary reference combined with Nieberle in ground 2, and asserts that it “could have provided sufficient energy (depending on size, etc.), and it would have been obvious to use it.” Ex. 1003 ¶ 258. Even assuming that Mr. Main is forthrightly stating that the “sufficient energy” developed by Bielinski’s actuator could actuate a moveable member to move 1/32nd of an inch in 3 milliseconds or less, nowhere in his declaration can we find that Mr. Main provides any persuasive technical reasoning or analysis to support this allegation. Id. (citing Ex. 1003, V.B.9).” slip op. at 18
- PTAB / AIA Trials › §315(b) time barNot reached
“IV. CONCLUSION We conclude that the facts and evidence do not establish a sufficient or persuasive reason for the Board to again consider the same prior art, the same claims, and substantially the same arguments as substantively considered in the examination of the application leading to the ’279 patent. Further, because we are guided by our analysis above to exercise our discretion in this threshold matter under 35 U.S.C. § 325(d) and deny institution in this case, we need not reach a different threshold issue raised by Patent Owner in their Preliminary Response, that is whether Petitioner is time-barred by an ITC investigation, (Inv. No. 337-TA-965), under 35 U.S.C. § 315(b).” slip op. at 21
§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 8,011,279 - Front Row Technologies, LLC v. MLB Advanced Media, L.P.Institution deniedPTAB · Mar 25, 2016 · IPR2015-01932 · APJ Scott A Daniels · IPR · Institution
The Board denied institution on all challenged claims, finding substantially the same art and arguments had been considered under § 325(d) and the remaining obviousness grounds lacked a sufficient combination analysis.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“It is uncontroverted that the same prior art references, Brett and Silberschatz, were presented to and considered by the Office. See Ex. 3007; see also Pet. 18 (“The August 2, 2013 Final Rejection maintained the Examiner’s rejection of claims 1, 3–4, 6–10, 12–15, 17–18, and 20–22 as being unpatentable over Silberschatz in view of Brett.”). The question resolves, therefore, on whether the Examiner overlooked certain disclosures in Brett that, in combination with Silberschatz, are relevant to and render obvious the definition for a best unassigned seat being “set by the ticket seller,” as recited in the independent claims.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“. . . with particularity . . . the grounds on which the challenge to each claim is based.” 35 U.S.C. § 312(a)(3). Petitioner has the burden of proof to establish that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). The Petition must include a full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence. 37 C.F.R. § 42.22(a). The Petition must include a statement of the relevance of the evidence to the challenge raised. 37 C.F.R. § 104(b)(5). “The Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge.” Id. “Thus, we will address only the basis, rationale, and reasoning put forth by the Petitioner in the petition, and resolve all vagueness and ambiguity in Petitioner’s arguments against the Petitioner.” Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., Case CBM2012-00003, slip op. at 10 (PTAB Oct. 25, 2012) (Paper 8). It is Petitioner’s responsibility “to explain specific evidence that support its arguments, not the Board’s responsibility to search the record and piece together what may support Petitioner’s arguments.” Dominion Dealer Solutions, LLC v. Autoalert, Inc., Case IPR2013-00225, slip op. at 4 (PTAB Oct. 10, 2013) (Paper 15).” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Brett and Silberschatz. Pet. 26–27, 43–45. Petitioner does not identify in the Petition, however, any differences between the prior art including Austin, and the claims at issue, or provide a substantive analysis of why or how a person of ordinary skill in the art would have modified the prior art to render the claims obvious. See Unigene Labs., 655 F.3d at 1360. As a basis for the combination with Austin, Petitioner asserts that “it would have been obvious . . . to utilize a ticket selling device in place of a ticket seller.” Pet. 26. This is not persuasive reasoning or even a motivation to combine Austin because Brett already utilizes various ticket selling devices such as internet servers and internet sites that communicate with a user via personal computers, telephones, televisions, and satellite communications. Ex. 1005 ¶ 0078, Fig. 1. With respect to Petitioner’s assertion that “ticket brokers” are “ticket sellers” who can determine a “best available seating arrangement” (Ex. 1007, 1:13), Brett already teaches that a seller is capable of ranking priority rights to seats and then selling the seats based on such ranking. See id. ¶ 0009. Petitioner’s nomenclature comparison is not persuasive of a substantive difference between the prior art references nor a sufficient articulated reason based on evidentiary underpinnings to combine the references. Moreover, Petitioner’s contentions are directed to what Austin purportedly discloses and do not compensate for the lack of meaningful analysis of the differences between the prior art and the claims at issue. See Pet. 26–27. We are not apprised by a brief summary of Austin of any persuasive evidence that a person of ordinary skill at the time of the invention would have modified, selected and/or combined prior art elements in the normal course of research and development to yield the claimed invention. The Petition provides simply that “it would have been obvious to a person of ordinary skill in the art at the time of the invention to combine the seat selection algorithm and user constraints described in Silberschatz as modified by Brett with Austin’s ticket selling device used to define the best available seats.” Pet. 27. Even if Petitioner has pointed to persuasive evidence in Austin with respect to determining a “best unassigned seat” according to a definition “set by a ticket seller”—and we are not persuaded that it has—this is not sufficient for a proper obviousness analysis. “[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. . . . This is so because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.” KSR, 550 U.S. at 418–19. This is not a sufficient fact-based analysis to persuade us that it would have been obvious to a person of ordinary skill to combine Silberschatz, Brett, and Austin.” slip op. at 17
- Obviousness (§103) › Analogous artOther
“purported teachings, alleges that Brett, Silberschatz, Austin, Nakfoor, Gathman, and Nestor are analogous art and in the same field of endeavor. Pet. 43–45. The fact that the cited references are “analogous art” (Pet. 43) and “are all in the same field of endeavor as the claimed invention” (id.) does not, by itself, however, establish that it would have been obvious to combine their features. Petitioner must show some reason why a person of ordinary skill in the art would have thought to combine particular available elements of knowledge, as evidenced by the prior art, to reach the claimed invention. KSR, 550 U.S. at 418. These conclusory labels and brief summaries of the prior art reference teachings do not substitute for a fact-based analysis in the Petition establishing what is being modified and why, based on the differences between the prior art and the claimed invention, it would have been obvious to a person of ordinary skill to make the modification.” slip op. at 20
§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,121,872 - Neil Ziegman / N.P.Z., Inc. v. Carlis G. StephensInstitution deniedPTAB · Feb 24, 2016 · IPR2015-01860 · APJ Michael W Kim · IPR · Institution
The Board denied institution on claims 12–15 under § 325(d), finding the petition presented substantially the same prior art and arguments previously considered by the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Petitioner’s favor and against denying the instant Petition under § 325(d). Foremost among them include that the ’447 patent has not previously been before the Board, and Petitioner has not challenged previously the ’447 patent in a proceeding before the Office. Nevertheless, we determine that these factors are outweighed by the following countervailing factors. The same primary reference asserted by the Petitioner was previously presented to, and considered by, the Office in the same substantive manner as advocated for by Petitioner. Petitioner identifies the same difference between the primary reference and claims 12–15 as identified expressly and unambiguously by the Office, and, thus, asks the Board to, essentially, second-guess the Office’s previous decision on substantially the same issue. And in requesting that second-guess, Petitioner asks the Board to reconsider evidence of secondary considerations that, again, the Office expressly determined was sufficient to overcome the expressly and unambiguously identified difference between the primary reference and claims 12–15. Indeed, given the relative clarity of the already-considered difference in scope between the primary reference and claims 12–15, we need not resort to undue speculation to conclude that the proceeding will devolve into a resource-consuming dispute concerning evidence with regards to secondary considerations, again, on an issue already and unambiguously presented previously to and considered by the Office. Under these facts, we are unpersuaded that adjudicating such a dispute on an already-considered issue is an efficient use of Board resources.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and Preliminary Response, we conclude that the Petition presents substantially the same art or arguments as those previously presented to the Office, and, thus, exercise our discretion under 35 U.S.C. § 325(d) to deny institution of an inter partes review as to claims 12–15.” slip op. at 2
Discretionary denialPatents in suitUS 8,881,447
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.