- R-Pac International Corporation v. Adasa IncInstitution deniedPTAB · Mar 25, 2025 · IPR2024-01416 · APJ Devon Zastrow Newman · IPR · Institution
The Board denied institution on claims 1–20 under §325(d), finding the challenges relied on previously presented or cumulative art and Petitioner failed to show material Examiner error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“(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. Id. at 8.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“III. CONCLUSION Taking a holistic view of the totality of the information presented, we determine that the challenges set forth in the Petition are based on the same or substantially the same prior art or arguments previously presented to the Examiner. Moreover, Petitioner does not direct us to information sufficient to establish a material Examiner error. Accordingly, we exercise our discretion under Section 325(d) and do not institute an inter partes review. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that Petitioner’s request for an inter partes review, pursuant to 35 U.S.C. § 314(a), of claims 1–20 of the ’967 patent is denied, and no trial is instituted.” slip op. at 28
Discretionary denialPatents in suitUS 9,798,967 - Keysight Technologies, Inc. v. Centripetal Networks, Inc.Institution deniedPTAB · Mar 22, 2023 · IPR2022-01421 · APJ Kevin F Turner · IPR · Institution
The Board denied institution on all challenged claims under § 325(d), finding the art and arguments substantially the same as those previously presented and no material Office error shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“[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 2 U.S. Patent Publication No. 2006/0048142 A1 (filed Sept. 2, 2004) (published Mar. 2, 2006) (Ex. 1005, “Roese”). 3 K. Golnabi et al., Analysis of Firewall Policy Rules Using Data Mining Techniques, 2006 IEEE/IFIP Network Operations and Management Symposium, NOMS 2006, 10th IEEE/IFIP, 305–315 (2006) (Ex. 1008, “Golnabi”). 4 U.S. Patent Publication No. 2004/0015905 A1 (filed Oct. 26, 2001) (published Jan. 22, 2004) (Ex. 1006, “Huima”). 5 U.S. Patent No. 7,320,022 B2 (filed July 25, 2002) (issued Jan. 15, 2008) (Ex. 1007, “Hayter”). 6 U.S. Patent No. 5,226,141 (filed Nov. 18, 1991) (issued July 6, 1993) (Ex. 1009, “Esbensen”). 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 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“We are not persuaded by Petitioner’s assertion that, because the first prong of the Advanced Bionics test is met, Petitioner was not required to address the second step of the test. Patent Owner disclosed the ’148 FWD to the Examiner in an IDS and the Examiner acknowledged it. Under these circumstances, it was incumbent on Petitioner to demonstrate that the Office erred in a manner material to patentability of the challenged claims. Instead, Petitioner cabined its arguments to the Examiner not having considered the art and arguments. As the Examiner acknowledged the IDS disclosing the ’148 FWD and Petitioner did not plead material error, it is appropriate for us to exercise our discretion under 35 U.S.C. § 325(d) to deny institution, without further reaching the merits.” slip op. at 10
- BurdenDecided for patent owner
“was provided via an Information Disclosure Statement (IDS). See Advanced Bionics, Paper 6 at 7–8. Patent Owner also asserts that Petitioner has the burden of affirmatively demonstrating that the Office committed material error in issuing the challenged patent, and the Petition makes no allegation of error by the Office. Prelim. Resp. 12 (citing Pet. 9). We are not persuaded by Petitioner’s assertion that, because the first prong of the Advanced Bionics test is met, Petitioner was not required to address the second step of the test. Patent Owner disclosed the ’148 FWD to the Examiner in an IDS and the Examiner acknowledged it. Under these circumstances, it was incumbent on Petitioner to demonstrate that the Office erred in a manner material to patentability of the challenged claims. Instead, Petitioner cabined its arguments to the Examiner not having considered the art and arguments. As the Examiner acknowledged the IDS disclosing the ’148 FWD and Petitioner did not plead material error, it is appropriate for us to exercise our discretion under 35 U.S.C. § 325(d) to deny institution, without further reaching the merits.” slip op. at 10
Discretionary denialPatents in suitUS 10,681,009 - Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Institution deniedPTAB · Mar 22, 2022 · IPR2021-01520 · APJ Steven M Amundson · IPR · Institution
The Board denied institution of inter partes review of claims 1, 2, 4, 9-11, 13, 18, and 19 under § 325(d), finding the same art had been evaluated and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“If “either condition of first part of the framework is satisfied,” we must then determine “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. “An example of a material error may include misapprehending or overlooking specific teachings of the relevant prior art where those teachings impact patentability of the challenged claims.” Id. at 8 n.9.” slip op. at 16
- Other 314aNot reached
“III. DISCRETIONARY DENIAL Patent Owner argues that we should exercise our discretion under § 314(a) or § 325(d) to deny institution. See Prelim. Resp. 13–43; Prelim. Sur-reply 1–8; 35 U.S.C. §§ 314(a), 325(d). Petitioner argues that we should decline to exercise our discretion to deny institution. See Pet. 8–12; Prelim. Reply 1–10. For the reasons explained below, we exercise our discretion under § 325(d) to deny institution. Because we exercise our discretion under § 325(d) to deny institution, we do not reach discretionary denial under § 314(a).” slip op. at 15
Discretionary denialPatents in suitUS 9,686,193 - 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 - Robert Bosch Tool Corporation v. Sd3, LLCInstitution deniedPTAB · Mar 22, 2017 · IPR2016-01754 · APJ Scott A Daniels · IPR · Institution
The Board denied institution under § 325(d), finding the petition presented substantially the same prior art and arguments previously considered during prosecution.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“similarities between the prior art references presented here, in this Petition, as compared to the prior art substantively considered by the Examiner, we determine that the evidence weighs in favor of a determination that the prior art asserted in the Petition was previously considered by the Office. We are persuaded that the prior art of Nieberle, either in view of the knowledge of one of ordinary skill in the art or Bielinski, and Lokey, either in view of the knowledge of one of ordinary skill or Bielinski, as asserted in this proceeding in grounds 1–4 against claims 1–8 and 10–17 are “the same or substantially the same prior art” as that specifically relied on and considered substantively by the Examiner, and overcome by Applicant, during prosecution of the underlying patent application. See 35 U.S.C. § 325(d).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“machine safety would have known could achieve the claimed speed and distance. This testimony, following his desired acceleration calculation however, fails to state affirmatively that it was even possible by explosive devices and capacitors to achieve the claimed time and distance performance characteristics asserted in the calculation. More importantly, Mr. Main’s testimony fails to persuasively explain how any known explosives or capacitors available to one of skill in the art at the time of invention, would have achieved such an acceleration and a mechanical actuation of the “moveable component 1/32nd of an inch within approximately 3 milliseconds or less after the dangerous condition is detected” as called for in claims 1, 13, and 16 of the ’279 patent. By way of another example, Mr. Main’s declaration refers to a spring loaded actuator disclosed by Bielinski, the secondary reference combined with Nieberle in ground 2, and asserts that it “could have provided sufficient energy (depending on size, etc.), and it would have been obvious to use it.” Ex. 1003 ¶ 258. Even assuming that Mr. Main is forthrightly stating that the “sufficient energy” developed by Bielinski’s actuator could actuate a moveable member to move 1/32nd of an inch in 3 milliseconds or less, nowhere in his declaration can we find that Mr. Main provides any persuasive technical reasoning or analysis to support this allegation. Id. (citing Ex. 1003, V.B.9).” slip op. at 18
- PTAB / AIA Trials › §315(b) time barNot reached
“IV. CONCLUSION We conclude that the facts and evidence do not establish a sufficient or persuasive reason for the Board to again consider the same prior art, the same claims, and substantially the same arguments as substantively considered in the examination of the application leading to the ’279 patent. Further, because we are guided by our analysis above to exercise our discretion in this threshold matter under 35 U.S.C. § 325(d) and deny institution in this case, we need not reach a different threshold issue raised by Patent Owner in their Preliminary Response, that is whether Petitioner is time-barred by an ITC investigation, (Inv. No. 337-TA-965), under 35 U.S.C. § 315(b).” slip op. at 21
§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 8,011,279 - Medtronic, Inc. v. Mark A. BarryRehearing deniedPTAB · Sep 9, 2015 · IPR2014-01212 · APJ Brian J Mcnamara · IPR · Rehearing
The Board denied Medtronic’s rehearing request, exercising its § 325(d) discretion because a related proceeding had been instituted on overlapping references and issues.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“In view of our institution of inter partes review in Medtronic v. Barry VI and the overlapping references and issues between this proceeding and IPR2015-00783, we exercise our discretion under 35 U.S.C. § 325(d) and deny Petitioner’s Request for Rehearing in this proceeding. For the reasons discussed above, the Request for Rehearing is DENIED.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for patent owner
“In view of our institution of inter partes review in Medtronic v. Barry VI and the overlapping references and issues between this proceeding and IPR2015-00783, we exercise our discretion under 35 U.S.C. § 325(d) and deny Petitioner’s Request for Rehearing in this proceeding. For the reasons discussed above, the Request for Rehearing is DENIED.” slip op. at 2
Discretionary denialPatents in suitUS 7,776,072 - Medtronic, Inc. v. Mark A. BarryRehearing deniedPTAB · Sep 9, 2015 · IPR2014-01210 · APJ Brian J Mcnamara · IPR · Rehearing
The Board denied Medtronic’s rehearing request under § 325(d), citing its institution of review on the same claims in IPR2015-00780 and overlapping issues.
RulingsRehearing decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Upon consideration of the Second Petition, we instituted inter partes review of claims 1–5 of the ’358 Patent. Medtronic, Inc. v. Mark A. Barry, Case IPR2015-00780, slip op. (PTAB Sept. 9, 2015) (Paper 7, Decision to Institute)(”Medtronic v. Barry IV”). In view of our institution of inter partes review in Medtronics v. Barry IV and the overlapping issues between this proceeding and IPR2015- 00780, we exercise our discretion under 35 U.S.C. § 325(d) and deny Petitioner’s Request for Rehearing in this proceeding.” slip op. at 2
- RehearingRehearing, deniedDenied
“In view of our institution of inter partes review in Medtronics v. Barry IV and the overlapping issues between this proceeding and IPR2015- 00780, we exercise our discretion under 35 U.S.C. § 325(d) and deny Petitioner’s Request for Rehearing in this proceeding. For the reasons discussed above, the Request for Rehearing is DENIED.” slip op. at 2
Discretionary denialPatents in suitUS 7,670,358 - LG Electronics, Inc. v. Ati Technologies UlcInstitution deniedPTAB · Jul 10, 2015 · IPR2015-00327 · APJ Brian J Mcnamara · IPR · Institution
The Board denied institution on all challenged claims, exercising § 325(d) discretion because the Stuttard and Owens arguments were the same or substantially the same as arguments in the companion proceeding.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“35 U.S.C. § 314(a) (institution is discretionary, not mandatory); 37 C.F.R. § 42.108(a) (“[T]he Board may authorize the review to proceed on all or some of the challenged claims and on all or some of the grounds of unpatentability asserted for each claim.”; emphasis added). All of the challenges in this proceeding are based on Stuttard and Owens, alone or in combination with other references. We have reviewed the similarities between the disclosures in Stuttard and Owens and the disclosures in Rich and Lindholm in the Companion case, as well as the arguments advanced by Petitioner in each case. “In determining whether to institute or order a proceeding under . . . 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). We approach our discretion to decline review on a case-by-case basis. Conopco, Inc. v. Procter & Gamble Co., Case IPR2014-00628, slip op. at 10 (PTAB Oct. 20, 2014) (Paper 21). In consideration of the above, we find that at least the arguments advanced by Petitioner concerning Stuttard and Owens are the same or substantially the same as those advanced by Petitioner concerning Lindholm and Rich in IPR2015-00326. Therefore, we exercise our discretion and decline to institute a trial on Petitioner’s challenges in this proceeding.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“institute an inter partes review of claims 1–3, 5, 6, 8–11, 13, 15, 17, 18, and 20 (the “challenged claims”) of U.S. Patent No. 6,897,871 B1 (Ex. 1101, “the ’871 Patent”). 35 U.S.C. § 311. The Petition identifies LG Electronics U.S.A., Inc. and LG Electronics MobileComm U.S.A., Inc. as real parties-in-interest with Petitioner. ATI Technologies ULC (“Patent Owner”) filed a Preliminary Response (Paper 12, “Prelim. Resp.”), contending that the Petition should be denied as to all challenged claims. We have jurisdiction under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented in the petition “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.” For the reasons described below, we do not institute an inter partes review on the grounds advanced in the Petition.” slip op. at 2
Discretionary denialPatents in suitUS 6,897,871
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.