- LG Electronics Inc. / LG Electronics USA, Inc. v. Image Processing Technologies, LLCInstitution deniedPTAB · May 11, 2023 · IPR2023-00104 · APJ Barbara A Benoit · IPR · Institution
The Board denied institution on claim 1, finding the petition presented the same or substantially the same art or arguments previously considered by the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“under 35 U.S.C. § 325(d) to deny institution of an inter partes review. See 37 C.F.R. § 42.4(a) (The Director delegated her authority to determine whether trial should be instituted to the Board.). Section 325(d) of Title 35 of the United States Code states, in relevant part: “In determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, 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.” We use a two-part framework for evaluating arguments under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 12
- Prior constructionPrior construction adoptedDecided for petitioner
“applied the construction of “the [at least two] calculation units being configured to form a histogram representative of the parameter” (the “common parameter” limitation) as meaning “the histogram calculation units being configured to each form a histogram representative of at least one common parameter.” Ex. 1005 (IPR 336 Final Written Decision), 12– 14; see Ex. 1006 (IPR 1189 Decision Denying Institution), 9; Ex. 1007 (Reexam 056 Decision finding claim 1 patentable), 8.” slip op. at 11
Claim constructionDiscretionary denialcites Phillips · GrahamPatents in suitUS 6,959,293 - Google LLC v. Valtrus Innovations LimitedInstitution deniedPTAB · Jan 3, 2023 · IPR2022-01197 · APJ Sheldon M Mcgee · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on the Ogawa grounds and § 325(d) barred the Vea grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“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) (2018). The findings and conclusions set forth in this Decision are provided for the exclusive purpose of explaining our determination that Petitioner has not met that standard on this record. slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“framework set forth under Advanced Bionics, LLC v. Med-El Electromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 7 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). Under that framework, we must first determine whether the same or substantially the same art or arguments previously were presented to the Office. If so, we must then determine whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. Id. at 8.” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“On this record, we determine that the level of ordinary skill is reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specific findings on the ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985))). A more specific definition is not necessary for purposes of deciding whether to institute review. To the extent a more specific definition is required, however, we adopt Petitioner’s proposed definition because, on this record, it is consistent with the disclosures of the asserted prior art references.” slip op. at 10
- Expert testimonyPetitioner expert discountedDecided for patent owner
“12 Dr. Madisetti’s testimony here is entitled to little to no weight as it merely parrots the Petition. 37 C.F.R. § 42.65(a).” slip op. at 19
§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 6,816,809 - PNC Bank, N.A. v. Secure Axcess, LLCInstitution deniedPTAB · Jul 10, 2015 · CBM2015-00039 · APJ Barbara A Benoit · CBM · Institution
The Board denied institution of CBM review for claims 1–32, exercising discretion under §§ 324(a) and 325(d) because PNC’s petition repeated substantially similar arguments and prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“Under 35 U.S.C. § 325(d), the AIA grants broad discretion to determine the course that best balances the parties’ competing interests in these proceedings. We recognize the need to balance permitting Petitioner to present new evidence and arguments in multiple petitions against protecting Patent Owner from harassment in the form of repetitive, serial petitions challenging the same patent. See H.R. Rep. No. 112-98, pt.1, at 48 (2011) (AIA proceedings “are not to be used as tools for harassment or a means to prevent market entry through repeated litigation and administrative attacks on the validity of a patent. Doing so would frustrate the purpose of the section as providing quick and cost effective alternatives to litigation.”). We also are mindful of the need for efficiency. It is more efficient for the parties and the Board to address a matter once rather than multiple times.” slip op. at 19
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Petitioner fails to provide, however, evidence or analysis as to why a diligent search would not have discovered the prior art relied upon in this Petition. Petitioner’s unsupported, conclusory statements are not persuasive in view of the relationship between the prior art asserted in the two Petitions. In CBM2014-00100, the SHTTP reference asserted in CBM2014-00100 is the SHTTP standard by the Internet Engineering Task Force. CBM2014- 00100 Pet. viii, 20. In the present Petition, the Petitioner indicates that “cited prior art relates to Secure HyperText Transfer Protocol (SHTTP) and browsers implementing SHTTP.” Pet. 17. Although not the same references, Petitioner challenges the same claims using the same or substantially the same prior art or arguments. Under 35 U.S.C. § 325(d), the AIA grants broad discretion to determine the course that best balances the parties’ competing interests in these proceedings. We recognize the need to balance permitting Petitioner to present new evidence and arguments in multiple petitions against protecting Patent Owner from harassment in the form of repetitive, serial petitions challenging the same patent. See H.R. Rep. No. 112-98, pt.1, at 48 (2011) (AIA proceedings “are not to be used as tools for harassment or a means to prevent market entry through repeated litigation and administrative attacks on the validity of a patent. Doing so would frustrate the purpose of the section as providing quick and cost effective alternatives to litigation.”). We also are mindful of the need for efficiency. It is more efficient for the parties and the Board to address a matter once rather than multiple times.” slip op. at 19
- Other 314aInstitution denied discretionary otherInstitution denied
“Under 35 U.S.C. § 325(d), the AIA grants broad discretion to determine the course that best balances the parties’ competing interests in these proceedings. We recognize the need to balance permitting Petitioner to present new evidence and arguments in multiple petitions against protecting Patent Owner from harassment in the form of repetitive, serial petitions challenging the same patent. See H.R. Rep. No. 112-98, pt.1, at 48 (2011) (AIA proceedings “are not to be used as tools for harassment or a means to prevent market entry through repeated litigation and administrative attacks on the validity of a patent. Doing so would frustrate the purpose of the section as providing quick and cost effective alternatives to litigation.”). We also are mindful of the need for efficiency. It is more efficient for the parties and the Board to address a matter once rather than multiple times.” slip op. at 19
Discretionary denialPatents in suitUS 7,631,191
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.