- 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 - Ecofasten Solar, LLC / Wencon Development, Inc. D/B/A Quickmount PV Corporation et al. v. Unirac, Inc.Institution deniedPTAB · Feb 8, 2022 · IPR2021-01379 · APJ Barry L Grossman · IPR · Institution
The Board denied institution of IPR for claims 3–7, 9, 10, 13, and 15–23 under § 325(d), finding the same or substantially the same art or arguments had previously been presented to the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“and Nobuyuki[] are the same or substantially the same as art previously considered by the Office, in either original prosecution or during reexamination.” Prelim. Resp. 30. Patent Owner asserts that the first part of the Advanced Bionics two-part framework for determining if denial of institution under § 325(d) is proper is satisfied. We agree, based on our analysis above. Specifically, we determine that under Becton, Dickinson factors (a), (b), and (d), the same or substantially the same art or arguments previously were presented to the Office. Turning to the second part of the Advanced Bionics framework, Petitioner also argues that the “Examiner erred in a manner material to patentability by adopting a narrow construction of ‘one or more clamps variably positionable on the dual track rail and footing grid’ that is inconsistent with the term’s plain and ordinary meaning.” Pet. 19. We disagree. We discussed the Board’s appeal decision in the previous section of this Decision. The Board affirmed the entirety of the RAN decision by the Reexamination Examiner, including construction of the phrase Petitioner argues was construed in error. We are not persuaded that Petitioner has met its burden to show error. Thus, under Becton, Dickinson factors (c), (e), and (f), Petitioner has not demonstrated a material error by the Office.” slip op. at 41
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“Accordingly, based on our analysis of the Becton, Dickinson factors and the guidelines in Advanced Bionics, we exercise our discretion and deny institution under 35 U.S.C. § 325(d) because the same or substantially the same prior art or arguments previously were presented to the Office. III. CONCLUSION Taking into consideration the arguments in the Petition, the Preliminary Response, and the evidence of record, we exercise our discretion and deny institution of an inter partes review under 35 U.S.C. § 325(d).” slip op. at 42
- BurdenDecided for patent owner
“Petitioner also argues that the “Examiner erred in a manner material to patentability by adopting a narrow construction of ‘one or more clamps variably positionable on the dual track rail and footing grid’ that is inconsistent with the term’s plain and ordinary meaning.” Pet. 19. We disagree. We discussed the Board’s appeal decision in the previous section of this Decision. The Board affirmed the entirety of the RAN decision by the Reexamination Examiner, including construction of the phrase Petitioner argues was construed in error. We are not persuaded that Petitioner has met its burden to show error. Thus, under Becton, Dickinson factors (c), (e), and (f), Petitioner has not demonstrated a material error by the Office.” slip op. at 41
Discretionary denialPatents in suitUS 7,434,362 - Kranos Corporation D/B/A Schutt Sports v. Riddell, Inc.Institution deniedPTAB · Dec 13, 2017 · IPR2017-01530 · APJ Barry L Grossman · IPR · Institution
The Board denied institution on all challenged claims and grounds under §325(d), finding substantially the same 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
“on behalf of the Director, may take into account whether, and reject a petition because, the same or substantially the same prior art or arguments previously were presented to the Office. 35 U.S.C. § 325(d). Because the 1530 Petition now before us presents substantially the same prior art, and substantially the same arguments, as asserted in the petition in IPR2016-01650 (see Ex. 3002) (the “1650 Petition”), we exercise our discretion under 35 U.S.C. § 325(d) and deny institution of a trial.” slip op. at 9
Discretionary denialPatents in suitUS 8,938,818 - Whole Space Industries Ltd. v. Zipshade Industrial (B.V.I.) Corp.Institution deniedPTAB · Jan 29, 2016 · IPR2015-01632 · APJ Barry L Grossman · IPR · Institution
The Board denied institution on claims 1–24 under § 325(d), finding the second petition relied on substantially the same prior art and arguments as the earlier petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“As set forth in 35 U.S.C. § 325(d), the Director, and by extension the Board, has broad discretion to deny a petition that raises substantially the same prior art or arguments previously presented to the Office. That statutory provision provides as follows: 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. 35 U.S.C. § 325(d) (emphasis added). As discussed above, the prior art and arguments in the Petition before us are the same or substantially the same as previously were presented to the Office in the ’488 Petition. The Petition before us challenges each claim that was denied inter partes review in the ’488 Petition. While there may be nuanced differences in stating how the same references from the First Petition are applied in the Second Petition, we determine such differences are insubstantial. The statute expressly establishes our discretion to consider whether the prior art and arguments are “substantially the same” in a first and second petition, and confers authority to reject a second petition on that basis. We considered all of the papers filed in both proceedings in exercising that discretion. We found that the prior art and arguments in the First and Second Petitions are “substantially the same” within the meaning of 35 U.S.C. § 325(d).” slip op. at 8
Discretionary denialPatents in suitUS 8,245,756
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.