- Intel Corporation v. Acqis LLCInstitution deniedPTAB · Feb 2, 2022 · IPR2021-01095 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution of review of claims 10–16 and 22–27 under § 325(d), finding substantially the same 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
“the following two-part framework: (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.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). In determining whether to institute an inter partes review, we “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.” 35 U.S.C. § 325(d). After considering the parties’ arguments and evidence, we exercise our discretion under § 325(d) to deny the Petition.” slip op. at 2
Discretionary denialPatents in suitUS 8,756,359 - Intel Corporation v. Acqis LLCInstitution deniedPTAB · Feb 2, 2022 · IPR2021-01094 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution under § 325(d), finding substantially the same arguments had been presented to the Office and Intel had not shown material error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Section 325(d) provides that in determining whether to institute an inter partes review, we “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.” To determine whether to deny institution under § 325(d), we use the following two-part framework: (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.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“3. Summary We determine, on this record, that substantially the same arguments previously were presented to the Office. Further, we also disagree with Petitioner that the Office’s purported treatment of the arguments were unreasonable. As set forth under Advanced Bionics, if 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 the patentability of challenged claims. As a result, we exercise our discretion under § 325(d) to deny the Petition in this case. III. CONCLUSION For the foregoing reasons, we exercise our discretion under § 325(d) to deny the Petition. IV. ORDER It is hereby ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 20
§ 103 obviousnessDiscretionary denialPatents in suitUS 8,756,359 - Intel Corporation v. Acqis LLCInstitution deniedPTAB · Jan 14, 2022 · IPR2021-01102 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution of IPR on claims 14–36 under § 325(d), finding substantially the same arguments had been presented to the Office and no material error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“the following two-part framework: (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.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). In determining whether to institute an inter partes review, we “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.” 35 U.S.C. § 325(d). After considering the parties’ arguments and evidence, we exercise our discretion under § 325(d) to deny the Petition.” slip op. at 2
Discretionary denial - Intel Corporation v. Acqis LLCInstitution deniedPTAB · Jan 14, 2022 · IPR2021-01093 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution of IPR on claims 1–17 under § 325(d), finding substantially the same arguments were previously presented and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Section 325(d) provides that in determining whether to institute an inter partes review, we “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.” To determine whether to deny institution under § 325(d), we use the following two-part framework: (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, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (footnote omitted).” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). In determining whether to institute an inter partes review, we “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.” 35 U.S.C. § 325(d). After considering the parties’ arguments and evidence, we exercise our discretion under § 325(d) to deny the Petition.” slip op. at 2
Discretionary denialPatents in suitUS 8,626,977 - Intel Corporation v. Acqis LLCInstitution deniedPTAB · Dec 2, 2021 · IPR2021-01099 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution on claims 1–22 under § 325(d), finding substantially the same 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
“Under § 325(d), the Board uses the following two-part framework: (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. If the petitioner fails to show that the Office erred, the Director may exercise his or her discretion not to institute inter partes review. Id.; see also Becton, Dickinson, Paper 8, 24 (exercising discretion where “Petitioner has not pointed to error by the Examiner”). slip op. at 7
Discretionary denialPatents in suitUS 9,529,769 - 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
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.