- Universal Imaging Industries, LLC v. Lexmark International, Inc.Rehearing deniedPTAB · May 4, 2020 · IPR2019-01383 · APJ Justin T Arbes · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution for claims 1–22, finding no reasonable likelihood on four grounds and denying the Adkins ground under § 325(d).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“testimony because we mistakenly found it to rely on unsupported inherency theories. Req. Reh’g 9–10. According to Petitioner, “Dr. Direen’s Declaration does not rely on any inherency theories.” Id. As pointed out in the Decision, however, Dr. Direen, in multiple instances, clearly bases his testimony on alleged “inherent device operation,” rather than express disclosure in Adkins. See Dec. 20; Ex. 1002, App. 1002-C, 8–18, 23, 26–27, 32, 36. We did not misapprehend his testimony. We maintain our conclusions that Petitioner did not show Examiner error and that Dr. Direen’s testimony did not warrant reconsideration of the prior art or arguments presented during prosecution. See Dec. 19–20. Thus, we are not persuaded by Petitioner’s arguments regarding factors (e) and (f). Petitioner has not shown that we abused our discretion in weighing the Becton, Dickinson factors and denying institution as to the asserted ground based on Adkins under § 325(d). Our evaluation of the Becton, Dickinson factors in the Decision demonstrates that our denial of institution of this ground was warranted under the two-part framework of Advanced Bionics, which was recently designated precedential, because the same art (Adkins) previously was presented to the Office and Petitioner has not demonstrated that the Office erred in a manner material to the patentability of the challenged claims.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”).1 With respect to the first issue, previously “presented” art includes, among other things, “art provided to the Office by an applicant, such as on an Information Disclosure Statement (IDS), in the prosecution history of the challenged patent.” Id. at 7–8. With respect to the second issue, institution generally will be denied if a “petitioner fails to make a showing of material error,” and “[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.” Id. at 8–9. “[T]his framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“III. ANALYSIS Petitioner asserted five grounds of unpatentability in its Petition. See Paper 1 (“Pet.”), 3; Dec. 7. In the Decision, we determined that Petitioner had not established a reasonable likelihood of prevailing as to four of those grounds. Dec. 21–41. As to the fifth asserted ground—alleged obviousness of claims 1–22 of the ’079 patent over U.S. Patent Application Publication No. 2010/0306431 A1 (Ex. 1006, “Adkins”)—we found that the evidence weighed in favor of exercising our discretion and denying institution of review as to the ground under 35 U.S.C. § 325(d). Dec. 21, 41. Petitioner in its Request for Rehearing does not dispute our determination as to the four asserted grounds for which we found no reasonable likelihood of prevailing, and instead only disputes our conclusion as to the ground based on Adkins. Req. Reh’g 1 & n.1.” slip op. at 2
- Expert testimonyPetitioner expert discountedDecided for patent owner
“overlooked its argument in the Petition regarding claim 1 that the slave device “implements [the] address change functionality upon instruction from the master, no matter how many times the master sends the instruction. With each address change request, the slave will change its address.” Id. at 9 (quoting Pet. 43; citing Ex. 1002, App. 1002-C, 7 (similar testimony from Petitioner’s declarant, Harry Direen, Ph.D., P.E.)). Petitioner, however, does not explain why we should have understood that vague statement to be the detailed arguments it now makes in the Request for Rehearing. Even if the vague statement was sufficient for claim 1, Petitioner states that “[t]he same argument was presented in connection with each of the challenged claims,” but fails to explain how it would apply to claims that further specify the timing and nature of interaction with the master, such as the “substantially immediately following a predetermined event” and “continual series of a plurality of address change requests” limitations in independent claim 7 (which are recited similarly in independent claims 12 and 17). See id. Indeed, Petitioner in its Petition cited only a single paragraph of Adkins as identify in the Petition any “predetermined event” in Adkins. Dec. 19–20. As to Dr. Direen’s similar testimony, we found that it was “entitled to little weight because it consists primarily of quotations from Adkins, many of which are not cited in the Petition.” Id. at 20 (citing 37 C.F.R. §§ 42.6(a)(3), 42.65(a)). We see no reason to conclude otherwise now.” slip op. at 9
Discretionary denialPatents in suitUS 8,850,079 - Universal Imaging Industries, LLC v. Lexmark International, Inc.Rehearing deniedPTAB · May 4, 2020 · IPR2019-01387 · APJ David C Mckone · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution for the Adkins-based ground under § 325(d), finding no abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“testimony because we mistakenly found it to rely on unsupported inherency theories. Req. 9. According to Petitioner, “Dr. Direen’s Declaration does not rely on any inherency theories.” Id. As pointed out in the Decision (at 18–19), Dr. Direen, in multiple instances, clearly bases his testimony on “inherent device operation,” rather than express disclosure in Adkins. Ex. 1002-C, at C5, C8, C11–C12, C17, C20, C23–C24, C29, C34–C35. We did not misapprehend his testimony. We maintain our conclusions (Dec. 18–19) that Petitioner did not show Examiner error and that Dr. Direen’s testimony did not warrant reconsideration of the prior art or arguments presented during prosecution. Thus, we did not abuse our discretion in finding that Becton, Dickinson factors (e) and (f) weighed in favor of denial. Petitioner has not shown that we abused our discretion in weighing the Becton, Dickinson factors and denying institution as to the asserted ground based on Adkins under § 325(d). Our evaluation of the Becton, Dickinson factors in the Decision demonstrates that our denial of institution of this ground was warranted under the two-part framework of Advanced Bionics, which was recently designated precedential, because the same art” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In the Decision we explained that Becton, Dickinson factors (a) and (b) weighed in favor of exercise of our discretion under § 325(d) because the identical art (the patent and underlying patent application pertaining to Adkins) was presented to the Examiner during prosecution. Dec. 15. This is consistent with Advanced Bionics, which has confirmed that “[p]reviously to the Office by an applicant, such as on an Information Disclosure Statement (IDS), in the prosecution history of the challenged patent.” Advanced Bionics, slip op. at 7–8. Thus, we did not abuse our discretion in finding that factors (a) and (b) weighed in favor of denial as to the asserted ground based on Adkins.” slip op. at 5
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Req. 8 (quoting Ex. 1002-C, at C4–C5 (emphasis in original)).2 Petitioner did not cite to this testimony with particularity in the Petition. See Pet. 47; see also 37 C.F.R. §§ 42.104(4), (5). Rather, Petitioner simply cited to the 2 This testimony would not have been helpful to Petitioner. Rather, it was presented as part of Dr. Direen’s opinion that the master’s behavior recited in claim 1 would have been inherent in Adkins. Ex. 1002-C, at C4–C5. Dr. Direen did not testify that claim 1 does not require a finding as to the master’s behavior, so long as Adkins’ slave device was capable of responding appropriately. We considered Dr. Direen’s inherency opinion and decided that it was unsupported and, thus, did not support a finding of Examiner error. Dec. 18–19. without providing any specificity. Id. Thus, we could not have overlooked the testimony on which Petitioner now seeks to rely. In any case, as a general matter, we found that “Dr. Direen’s testimony is entitled to little weight because it consists primarily of quotations from Adkins, many of which are not cited in the Petition.” Dec. 18–19 (citing 37 C.F.R. §§ 42.6(a)(3), 42.65(a)). Thus, we did consider Dr. Direen’s testimony, but found it of little value. Petitioner also argues that we improperly discounted Dr. Direen’s testimony because we mistakenly found it to rely on unsupported inherency theories. Req. 9. According to Petitioner, “Dr. Direen’s Declaration does not rely on any inherency theories.” Id. As pointed out in the Decision (at 18–19), Dr. Direen, in multiple instances, clearly bases his testimony on “inherent device operation,” rather than express disclosure in Adkins. Ex. 1002-C, at C5, C8, C11–C12, C17, C20, C23–C24, C29, C34–C35. We did not misapprehend his testimony. We maintain our conclusions (Dec. 18–19) that Petitioner did not show Examiner error and that Dr. Direen’s testimony did not warrant reconsideration of the prior art or arguments presented during prosecution. Thus, we did not abuse our discretion in finding that Becton, Dickinson factors (e) and (f) weighed in favor of denial.” slip op. at 10
Discretionary denialPatents in suitUS 9,176,921 - Universal Imaging Industries, LLC v. Lexmark International, Inc.Institution deniedPTAB · Feb 27, 2020 · IPR2019-01383 · APJ Justin T Arbes · IPR · Institution
The Board denied institution of IPR on claims 1–22, finding the Adkins ground warranted denial under § 325(d) and the other obviousness grounds lacked a reasonable likelihood of success.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“As we explain in detail below, Petitioner has not demonstrated a reasonable likelihood of prevailing on its other asserted grounds of unpatentability. Because each of Petitioner’s grounds should be denied, either for an inadequate showing on the merits or pursuant to our discretion under § 325(d), we exercise our discretion to deny the Petition under §§ 314(a) and 325(d).” slip op. at 21
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Weighing each of the factors, we conclude that the circumstances of this case, on the record presented, warrant exercise of our discretion to deny institution based on § 325(d). Patent Owner identified the Adkins application as “related” to the ’079 patent, made statements in the Specification attempting to distinguish the ’079 patent’s invention from Adkins, and cited the ’021 patent in an IDS. Further, the Examiner already was familiar with Adkins given that the same Examiner examined both the ’021 patent and the ’079 patent. We infer from these circumstances that the Examiner considered the substance of Adkins and Patent Owner’s statements regarding the disclosure of Adkins and problems with its approach, despite the lack of an express rejection over Adkins. Petitioner has not presented a convincing case that the Examiner erred in allowing the claims of the ’079 patent and Dr. Direen’s testimony does not provide persuasive support for Petitioner’s arguments.” slip op. at 20
- BurdenNot shown unpatentable
“limitation that the plurality of address change requests occurs “substantially immediately following a predetermined event.”6 Prelim. Resp. 42. We agree. In its analysis of claim 7, Petitioner does not identify any “event” at all or explain how such an event would be “predetermined” or why the alleged address change requests in Mayer or I2C Spec would occur “substantially immediately following” such an event. See Pet. 21–24. Indeed, the “substantially immediately following a predetermined event” claim language does not even appear in Petitioner’s arguments. See id. 6 Patent Owner makes a number of other arguments regarding the asserted combinations with I2C Spec in its Preliminary Response, including that Petitioner has not shown sufficiently that I2C Spec is a prior art printed publication under 35 U.S.C. § 102(b). See Prelim. Resp. 26–30, 36–37, 43–48. We need not reach these issues, however, because Petitioner has not shown a reasonable likelihood of prevailing on the asserted grounds for the reasons explained herein. Although Petitioner does not identify a “predetermined event” in its Petition, Dr. Direen appears to opine that a “power-on reset process” would trigger the plurality of address change requests. Ex. 1002, App. 1002-A, 14. Dr. Direen states that “[i]t is well understood in the electronic industry and by [persons of ordinary skill in the art] that complex devices such as a microprocessor or I2C slave device will go through a power-on reset process to ensure internal states are at known states. This is inherent device operation.” Id. Dr. Direen, however, cites no support for this opinion and does not explain in any detail what a power-on reset process would entail or why a plurality of address change requests in either Mayer or I2C Spec would occur “substantially immediately following” a power-on reset process. See id. Moreover, to the extent Dr. Direen bases his opinion on inherency, Petitioner does not assert that theory in its Petition.7 See Pet. 21–24. Petitioner has not shown sufficiently that Mayer and I2C Spec teach a “dynamic address generator” wherein “substantially immediately following a predetermined event and in a continual series of a plurality of address change requests received by the interface and corresponding acknowledgements sent thereby in reply, for each address change request received the dynamic address generator generates a new component address,” as recited in claim 7.” slip op. at 24
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Relevant to factor (f), Petitioner offers the testimony of Dr. Direen, which was not available to the Examiner. However, Dr. Direen’s testimony is entitled to little weight because it consists primarily of quotations from Adkins, many of which are not cited in the Petition, and an unsupported inherency theory that is not argued in the Petition. See, e.g., Ex. 1002, App. 1002-C, 11–16 (testimony for claim 7). See 37 C.F.R. §§ 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”), 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Thus, Dr. Direen’s testimony does not provide persuasive evidentiary support for Petitioner’s arguments regarding Adkins. This factor is, at most, neutral.” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,850,079 - Universal Imaging Industries, LLC v. Lexmark International, Inc.Institution deniedPTAB · Feb 3, 2020 · IPR2019-01369 · APJ Justin T Arbes · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim, and § 325(d) also supported denying the claim 10 grounds based solely on Schön and Robb or …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. An obviousness determination requires finding “both ‘that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367–68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418 (for an obviousness analysis, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does”). “Although the KSR test is flexible, the Board ‘must still be careful not to allow hindsight reconstruction of references . . . without any explanation as to how or why the references would be combined to produce the claimed invention.’” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016) (citation omitted). Further, an assertion of obviousness “cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal 3 Additionally, secondary considerations, such as “commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.” Graham, 383 U.S. at 17–18. Neither party, however, has presented any such evidence for us to consider. conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); accord In re NuVasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016) (stating that “‘conclusory statements’” amount to an “insufficient articulation[] of motivation to combine”; “instead, the finding must be supported by a ‘reasoned explanation’” (citation omitted)); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (“To satisfy its burden of proving obviousness, a petitioner cannot employ mere conclusory statements. The petitioner must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.”).” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“institute an 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 evaluating whether to exercise our discretion when the same or substantially the same prior art or arguments previously were presented to the Office under section 325(d), we have weighed some common non-exclusive factors, such as: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) 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; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III.C.5, first paragraph) (“Becton, Dickinson”).” slip op. at 37
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the ’657 patent would have had “a bachelor’s degree in electrical and/or computer engineering with training and one or more years of experience in embedded systems including both hardware and embedded software design,” as well as “a working understanding of communication on an electronics bus.” Pet. 8 (citing Ex. 1002 ¶¶ 25–28). Patent Owner argues that an ordinarily skilled artisan would have had “a bachelor’s degree in electrical and/or computer engineering with one or more years of work experience in printer design, including hardware and/or embedded software design for printer applications.” Prelim. Resp. 7–8 (citing Ex. 2001 ¶¶ 29–33). The parties’ proposed definitions differ in that Petitioner’s definition requires experience with “embedded systems” and “communication on an electronics bus,” whereas Patent Owner’s definition more specifically requires experience with “printer design.” The Specification of the ’657 patent states that the disclosure relates to “master and slave devices communicating on a shared bus,” and specifically, “addressing schemes to provide security to the system.” Ex. 1001, col. 1, ll. 15–19. The claims of the ’657 patent similarly each recite “slave circuitry” for communicating as a “slave device” and an “address generator” generating plural addresses. Based on the record presented, including our review of the ’657 patent and the types of problems and solutions described in the ’657 patent and cited prior art, we agree with and apply Petitioner’s proposed definition of the level of ordinary skill in the art for purposes of this Decision.” slip op. at 10
- Expert testimonyPatent owner expert creditedOther
“combine Schön with I2C Spec. Prelim. Resp. 50–54. In particular, Patent Owner argues that Schön already discloses an address format, and neither Schön, I2C Spec, nor the Petition identifies any disadvantages with Schön’s address format that would have been improved by I2C Spec’s address format. Id. at 52. Patent Owner argues that Petitioner does not explain why an ordinarily skilled artisan would have replaced Schön’s exemplary 8-bit address format, which allows for up to 256 addresses, with I2C Spec’s 7-bit address format with a limited number of variable bits, allowing fewer addresses to be generated in response to an address generation command. Id. at 52–53. Dr. Folkins’s testimony supports Patent Owner’s arguments. See Ex. 2001 ¶¶ 101, 105‒113. In particular, Dr. Folkins testifies that replacing Schön’s addressing scheme with I2C Spec’s addressing would limit the flexibility of Schön’s addressing. Id. ¶¶ 105‒107. Dr. Folkins further testifies that I2C Spec’s addressing scheme would have caused inefficiencies in Schön’s system because a smaller pool of addresses would lead to more duplicate addresses, causing additional cycles of address generation. Id. ¶¶ 108‒111. We credit Dr. Folkins’s uncontroverted testimony. We recognize that, according to our rules, we “will take into account a patent owner preliminary response where such a response is filed, including any testimonial evidence, but a genuine issue of material fact created by such testimonial evidence will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review.” 37 C.F.R. § 42.108(c). However, in this case, Dr. Folkins’s testimony does not implicate a genuine issue of material fact. Petitioner does not provide any argument or cite to any testimony regarding the advantages or disadvantages of using I2C Spec’s addressing scheme in place of Schön’s. See Pet. 15‒21. Petitioner merely asserts, without further explanation, that Schön teaches “generating slave addresses,” I2C Spec teaches one “addressing format[],” and a person of ordinary skill in the art would have been motivated to use the latter. Id. at 16. Dr. Direen’s testimony regarding combining the teachings of Schön and I2C Spec also makes no mention of advantages or disadvantages of replacing Schön’s addressing scheme with I2C Spec’s addressing scheme. See Ex. 1002, App. 1002-A, 7 (concluding that “[i]t would be natural for a [person of ordinary skill in the art] to combine the teaching of the I2C standard with [Schön’s] teachings as they both relate to similar computer bus systems,” without addressing advantages or disadvantages of the addressing schemes).” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,386,657 - Google LLC v. Uniloc Luxembourg S.A.Institution deniedPTAB · Jan 11, 2018 · IPR2017-01665 · APJ David C Mckone · IPR · Institution
The Board denied institution for claims 1–25 because both obviousness grounds presented substantially the same prior art or arguments previously presented to the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Multiple, staggered petitions challenging the same patent and same claims raise the potential for abuse. The absence of any restrictions on follow-on petitions would allow petitioners the opportunity to strategically stage their prior art and arguments in multiple petitions, using our decisions as a roadmap, until a ground is found that results in the grant of review. All other factors aside, this is unfair to patent owners and is an inefficient use of the inter partes review process and other post-grant review processes. Id. at 17–18 (footnote omitted). The reasoning in General Plastic is pertinent here. Petitioner waited until after Patent Owner filed its Preliminary Response in the ’948 proceeding to file its Petition challenging the ’960 patent based on the same prior art and substantially the same arguments. In the process, Petitioner took the opportunity to attempt to correct deficiencies alleged by Patent Owner in Amazon’s petition. This is precisely the type of roadmapping General Plastic counsels against. If we were to institute on this ground, Patent Owner would be forced to defend its patent in an iterative fashion against challenges based on the same prior art and substantially the same arguments, with the aforementioned roadmapping. As General Plastic explains, this has the potential to be unfair and inefficient.” slip op. at 22
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingDenied
“For the reasons given above, institution of a trial based on the Petition is inappropriate because Petitioner’s challenges are substantially the same as those raised by Amazon in the ’948 proceeding. The differences amount, at most, to attempts by Petitioner to respond to the arguments in Patent Owner’s preliminary response in the ’948 proceeding. If we were to join this proceeding to the ’948 proceeding under the terms to which Petitioner would agree, the impact would be that Patent Owner would be forced to respond to serial challenges to the same patent based on the same prior art with the second petitioner having the benefit of seeing Patent Owner’s arguments in advance. Joinder under Petitioner’s proposed terms is inappropriate for the same reasons given above for denying institution based on § 325(d). As neither party has filed a request to join this proceeding to the ’948 proceeding under the terms to which Patent Owner would agree and, indeed, Petitioner expressly opposes joinder on those terms, we decline to exercise our discretion to join this proceeding to the ’948 proceeding.” slip op. at 30
- RehearingNot reached
Discretionary denialPatents in suitUS 8,566,960 - Kingston Technology Company, Inc. v. Polaris Innovations Ltd.Rehearing deniedPTAB · Oct 26, 2017 · IPR2017-00974 · APJ Matthew R Clements · IPR · Rehearing
The Board denied Kingston’s rehearing request, leaving in place the discretionary denial of inter partes review of claim 4 under §§ 314(a) and 325(d).
RulingsRehearing decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“We are not persuaded by Petitioner’s argument because we disagree with its premise—i.e., that denying inter partes review of claim 4 may result in an inconsistent application of the law. As an initial matter, Petitioner’s argument depends upon speculation about whether the panel in the 1622 IPR will determine that the subject matter of proposed, substitute claim 9 is unpatentable. Even if that becomes true, however, it would not result in an inconsistent application of the law because our denial of institution of inter partes review of claim 4 is not an affirmative determination that the subject matter of claim 4 is patentable. The denial of institution in the 1622 IPR was based on a deficiency of the petition in that case. Kingston Technology Company, Inc. v. Polaris Innovations Ltd., Case IPR2016-01622, slip op. at 17, 18 (PTAB February 15, 2017) (Paper 7) (determining, with respect to claim 4, that Petitioner did not explain persuasively how and/or why a person of ordinary skill in the art would have made the proposed modifications to Simpson alone or in view of the teachings of the Intel Specification); see id., slip op. at 6 (PTAB April 6, 2017) (Paper 16) (denying request for rehearing). The denial of institution in this proceeding was because, inter alia, “we determine[d] that the prior art and arguments asserted in this Petition are ‘substantially the same’ as those in the first petition” (Dec. 13) and, therefore, declined to reach the merits of the Petition. In neither decision did the Board determine affirmatively that claim 4 is patentable over the prior art asserted in the respective petitions. As a result, even if the panel in the 1622 IPR later determines that proposed substitute claim 9 is unpatentable, that determination will not be inconsistent with our denial of institution of inter partes review of claim 4.” slip op. at 4
- RehearingRehearing, deniedDenied
“We are not persuaded by Petitioner’s argument because we disagree with its premise—i.e., that denying inter partes review of claim 4 may result in an inconsistent application of the law. As an initial matter, Petitioner’s argument depends upon speculation about whether the panel in the 1622 IPR will determine that the subject matter of proposed, substitute claim 9 is unpatentable. Even if that becomes true, however, it would not result in an inconsistent application of the law because our denial of institution of inter partes review of claim 4 is not an affirmative determination that the subject matter of claim 4 is patentable. The denial of institution in the 1622 IPR was based on a deficiency of the petition in that case. Kingston Technology Company, Inc. v. Polaris Innovations Ltd., Case IPR2016-01622, slip op. at 17, 18 (PTAB February 15, 2017) (Paper 7) (determining, with respect to claim 4, that Petitioner did not explain persuasively how and/or why a person of ordinary skill in the art would have made the proposed modifications to Simpson alone or in view of the teachings of the Intel Specification); see id., slip op. at 6 (PTAB April 6, 2017) (Paper 16) (denying request for rehearing). The denial of institution in this proceeding was because, inter alia, “we determine[d] that the prior art and arguments asserted in this Petition are ‘substantially the same’ as those in the first petition” (Dec. 13) and, therefore, declined to reach the merits of the Petition. In neither decision did the Board determine affirmatively that claim 4 is patentable over the prior art asserted in the respective petitions. As a result, even if the panel in the 1622 IPR later determines that proposed substitute claim 9 is unpatentable, that determination will not be inconsistent with our denial of institution of inter partes review of claim 4.” slip op. at 4
Discretionary denialPatents in suitUS 6,850,414 - Kingston Technology Company, Inc. v. Polaris Innovations Ltd.Institution deniedPTAB · Aug 14, 2017 · IPR2017-00974 · APJ Matthew R Clements · IPR · Institution
The Board denied institution of inter partes review of claim 4, exercising its discretion under § 325(d) because the petition presented substantially the same art and arguments as the earlier petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“With respect to the eighth factor, we determine that the prior art and arguments asserted in this Petition are “substantially the same” as those in the first petition. We agree with Patent Owner that this Petition uses different secondary references but that those references “serve the same purpose.” Prelim. Resp. 19. For example, whereas the first petition relied upon the Intel Specification for teaching a module having a height in the range recited by claim 4, this Petition relies upon Karabatsos for teaching a module with a height of between 1.125 and 1.250 inches. Pet. 35 (citing Ex. 1003 ¶ 27). As in its first Petition, Petitioner argues that a person of ordinary skill in the art would have recognized the design need for modules with the recited height and would have found it obvious to reduce the height of Simpson’s module. Pet. 35–38. This is substantially the same argument that we determined not to be persuasive in IPR2016-01622. Prelim. Resp. 40–41. In particular, this argument, like the argument in the first Petition, does not address[], for example, the dimensions of the components taught by Simpson, whether two rows of memory chips would fit on a printed circuit board that has a height of only 1 to 1.2 inches, or—if the memory chips taught by Simpson would not fit—what a person of ordinary skill in the art would have known about the dimensions of similar memory chips as of the critical date that would have made it obvious to fit two rows of them on a printed circuit board having a height of only 1 to 1.2 inches. Kingston Technology Company, Inc. v. Polaris Innovations Ltd., Case IPR2016-01622, slip op. at 6 (PTAB April 6, 2017) (Paper 16). Petitioner relies upon substantially the same argument in the ground based upon Bechtolsheim. Pet. 51–54. Bechtolsheim teaches three rows of chips. See, e.g., Ex. 1004, Figs. 1a, 2a. Petitioner suggests that a person of ordinary skill in the art could, “for example, simply eliminat[e] a row of the DRAM memory devices to reduce the profile height of the memory module” (Pet. 53), but Petitioner does not address the dimensions of the memory devices taught by Bechtolsheim, whether two rows of those devices would fit on a printed circuit board that has a height of only 1 to 1.2 inches, or—if the memory chips taught by Bechtolsheim would not fit—what a person of ordinary skill in the art would have known about the dimensions of similar memory chips as of the critical date that would have made it obvious to fit two rows of them on a printed circuit board having a height of only 1 to 1.2 inches.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“D. Summary On this record, we exercise our discretion not to institute inter partes review. 35 U.S.C. §§ 314(a), 325(d). III. ORDER Accordingly, it is ORDERED that the Petition is denied.” slip op. at 14
Discretionary denialPatents in suitUS 6,850,414 - Arista Networks, Inc. v. Cisco Systems, Inc.Institution deniedPTAB · Jun 11, 2016 · IPR2016-00301 · APJ Matthew R Clements · IPR · Institution
The Board denied institution of inter partes review of claims 1-5, 7-10, 12-22, and 25-31 under § 325(d), finding substantially the same art or arguments had been presented before.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“In determining whether to exercise our discretion to deny institution under § 325(d), we have reviewed the timeline of the Petition’s filings. Petitioner filed the instant Petition on December 9, 2015, approximately two months after the Board issued the decisions denying institution in the ’973 IPR. The reliance on Radia in the instant Petition appears, therefore, to be an attempt to bolster the unsuccessful challenge previously presented regarding Hendel’s alleged disclosure of the limitations of claim 1. See Prelim. Resp. 16–18 (arguing Petitioner used prior Institution Decisions as a roadmap); see also id. at 14–16 (arguing Petitioner fails to explain why Radia could not have been presented in an earlier petition). Under § 325(d), our determination here rests on whether the same or substantially the same prior art was presented previously. Finding that Hendel was presented previously in the ’973 IPR, and that the instant Petition relies on bolstering Hendel guided by our Decision in the ’973 IPR, we exercise our discretion under § 325(d) and deny institution of inter partes review. III. CONCLUSION For the foregoing reasons, we conclude that the instant Petition raises the same or substantially the same prior art or arguments as those previously presented to the Office. In light of the circumstances of the present case, we exercise our discretion not to institute inter partes review of the ’577 patent.” slip op. at 8
Discretionary denialPatents in suitUS 6,377,577 - Arista Networks, Inc. v. Cisco Systems, Inc.Institution deniedPTAB · Jun 6, 2016 · IPR2016-00304 · APJ Miriam L Quinn · IPR · Institution
The Board denied institution of inter partes review of claim 63 because the petition relied on substantially the same prior art and arguments previously presented.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Hendel, however, was asserted as disclosing all the limitations of claim 63 in a previous inter partes review petition. In particular, Petitioner asserted Hendel, alone, in challenging the unpatentability of claim 63 in IPR2015-00976 (“the ’976 IPR”). The Board denied institution of inter partes review in the ’976 IPR on October 19, 2015, stating that “[n]either Petitioner, nor Petitioner’s Declarant, has tied the matching in Hendel to a decision whether or not to forward a packet.” Arista v. Cisco, ’976 IPR, Paper 9, slip op at 15 (PTAB Oct. 19, 2015). The instant Petition does not explain how Petitioner’s contentions are different from those presented previously in the ’976 IPR. Nor does Petitioner provide any cogent rationale for why the Board should undertake a second Petition asserting substantially similar prior art Petitioner previously presented.” slip op. at 6
Discretionary denialPatents in suitUS 7,023,853 - T-Mobile US, Inc. / T-Mobile USA, Inc. et al. v. Tracbeam, LLCInstitution deniedPTAB · May 25, 2016 · IPR2016-00729 · APJ Barbara A Parvis · IPR · Institution
The Board denied institution on claims 1, 2, and 44 under § 325(d), and denied joinder with IPR2015-01712.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“some or all grounds for unpatentability for some or all of the challenged claims.” 37 C.F.R. § 42.108(b). Our discretionary determination of whether to institute review is guided by 35 U.S.C. § 325(d), which states, in relevant part, that “[i]n 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.”4 Petitioner’s second attempt to challenge claims 1, 2, and 44 of the ’327” slip op. at 8
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response, under section 313 or the expiration of time for filing such a response, determines warrants the institution of an inter partes review under section 314. 35 U.S.C. § 315(c) For the reasons above, based on the circumstances of this case, we exercise our discretion under 35 U.S.C. § 325(d), and deny the Petition requesting institution of inter partes review in IPR2016-00729. Accordingly, we deny Petitioner’s request to join IPR2016-00729 with IPR2015-01712.” slip op. at 11
Discretionary denialPatents in suitUS 7,298,327
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.