• Panduit Corp. v. Corning Optical Communications LLCInstitution denied
  PTAB · Apr 6, 2022 · IPR2021-01562 · APJ Terrence W Mcmillin · IPR · Institution

  The Board denied institution of IPR for claims 1–30 under § 325(d), finding substantially the same art and arguments had been considered and no material Office error was shown.

  RulingsInstitution decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “interest to this proceeding. Pet. 75; Paper 9, 2. Patent Owner argues the “Petition’s identification of the real parties-in-interest is fatally defective” because “the RPI identified in the Petition is different from the real parties in interest identified in the Power of Attorney.” Prelim. Resp. 41–42 (citing Pet. 75). In an Updated Mandatory Notice, Petitioner identifies Panduit Corp., The Siemon Company, FS.Com, Inc., and Reichle & De-Massari Holding AG as the real parties in interest. Paper 17, 2. To the extent that the identification of the real parties in interest in the Petition may have been defective because it differed from Petitioner’s Powers of Attorney (see Papers 1–4), that defect has been cured in Petitioner’s Updated Mandatory Notice.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “part of the Advanced Bionics framework, that the Petition “presents to the Office the same or substantially the same art previously presented to the Office.” See Advanced Bionics, IPR2019-01469, Paper 6 at 7.” slip op. at 16

  Discretionary denial
  Patents in suitUS 10,444,456
• Sonos, Inc. v. Google, LLCInstitution denied
  PTAB · Nov 9, 2021 · IPR2021-00963 · APJ Terrence W Mcmillin · IPR · Institution

  The Board denied institution of IPR for claims 1–11 and 13–20 under § 325(d), finding the art previously presented or substantially similar and no material Office error shown.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “In evaluating arguments under § 325(d), we use [a] 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 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); see also 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) (listing factors to consider in evaluating the applicability of § 325(d)). With regard to whether the same or substantially the same art previously was presented to the Office, the file history of the challenged ’375 patent evidences that Lim and Adar were previously presented to the Office and that Horn is substantially the same as art previously presented to the Office.” slip op. at 8

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied

    “III. CONCLUSION For the reasons set forth above, we exercise our discretion to deny institution under 35 U.S.C. § 325(d). IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that no inter partes review as to any claim of U.S. Patent No. 10,140,375 B2 is instituted, and the Petition is denied.” slip op. at 12

  Discretionary denial
  Patents in suitUS 10,140,375

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.