- 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 - Siemens Mobility, Inc. / Ground Transportation Systems USA, Inc. et al. v. Metrom Rail, LLCInstitution deniedPTAB · Nov 19, 2024 · IPR2024-00947 · APJ Stacey G White · IPR · Institution
The Board denied institution of IPR for claims 1–18 under § 325(d), finding substantially the same art and arguments had been presented during prosecution and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“In determining whether to institute an inter partes review, “the Director may take into account whether, and reject the petition because, the same or substantially the same prior art or arguments previously were presented to the Office.”9 35 U.S.C. § 325(d). Our § 325(d) analysis employs a two-prong framework: (1) whether the prior art and arguments presented in the petition are the same or substantially the same as those previously presented to the Office; and (2) if so, whether the petitioner has demonstrated a material error by the Office in its prior consideration of those prior art and arguments. Advanced Bionics, Paper 6 at 8.” slip op. at 11
Discretionary denialcites Phillips · GrahamPatents in suitUS 9,731,738 - Gator Bio, Inc. v. Sartorius Bioanalytical Instruments, Inc.Institution deniedPTAB · Jun 20, 2023 · IPR2023-00215 · APJ Grace Karaffa Obermann · IPR · Institution
The Board denied institution of review of claims 1–19 under § 325(d), finding substantially the same art or arguments had been considered and no material Examiner error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Becton, Dickinson factors (a), (b), and (d) relate to whether the art or arguments presented in the Petition are the same or substantially the same as those previously presented to the Office. Advanced Bionics, Paper 6 at 10. Factors (c), (e), and (f) “relate to whether the petitioner has demonstrated a material error by the Office” in its prior consideration of the prior art or arguments. Id. In general, only if the same or substantially the same art or arguments previously were presented to the Office, do we turn to whether Petitioner has established a material error. Id. “At bottom, this 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 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“We have authority to institute an inter partes review only where the information presented establishes “a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a). The Board also has discretion to deny review if “the same or substantially the same prior art or arguments previously were presented to the Office,” for example, during patent prosecution. 35 U.S.C. § 325(d). We exercise our discretion under § 325(d) and decline to institute an inter partes review of the ’585 patent without addressing whether Petitioner satisfies the evidentiary threshold for review under § 314(a).” slip op. at 2
Discretionary denialPatents in suitUS 8,305,585 - 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 - Viptela, Inc. v. Fatpipe Networks Private LimitedInstitution deniedPTAB · Oct 3, 2017 · IPR2017-01125 · APJ Christa P Zado · IPR · Institution
The Board denied institution on claims 4–15, 19, and 22–24, exercising discretion under §§ 314(a) and 325(d) based on overlapping petitions, follow-on arguments, and inefficient use of resources.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“’684 IPR, which in turn was a “copy-cat” of the ’976 IPR petition. Prelim. Resp. 2, 5. However, in deciding whether we should exercise our discretion and decline to go forward with this Petition, our concern is not only whether “the same or substantially the same prior art or arguments previously were presented to the Office,” as expressed in § 325(d), but also whether other factors weigh in favor of denying institution in light of the discretion afforded to us pursuant to § 314(a).” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“whether at the time of filing of the ’684 petition, Petitioner knew, or should have known, of Pearce, Zhang, and McCullough (“the Additional References”); the length of time that elapsed between learning of the Additional References, and the filing of the instant Petition; whether Petitioner has provided adequate explanation for the time lapse; whether at the time of filing of the instant Petition, Petitioner already had access to Patent Owner’s response in the ’976 IPR; and the finite resources of the Board. See Gen. Plastic Indus. at 16 (Paper 19) (informative). Petitioner provides no explanation of whether it knew or should have known of the Additional References when filing the ’684 petition; of when it first learned of these references; or of any time lapse between learning of these references and the filing of the instant Petition.” slip op. at 13
- Other 314aInstitution denied discretionary otherInstitution denied
“August 14, 2017, and a final decision is due by November 2, 2017. At this point, the decision in the ’976 IPR as to whether to see the matter through to final determination is squarely in our hands, regardless of whether any settlement is reached between the parties. See 37 C.F.R. § 42.74(a) (“The parties may agree to settle any issue in a proceeding, but the Board is not a party to the settlement and may independently determine any question of jurisdiction, patentability, or Office practice.”). Thus, if we deem it appropriate, we can reach a final decision on the grounds presented in the ’976 IPR with or without participation from the parties in that matter. These facts weigh in favor of us exercising our discretion not to move forward with the instant Petition, at least with respect to the ’976 instituted claims insofar as Petitioner’s arguments relate to Karol and are substantially identical to those in the ’976 IPR, because the issues raised are fully briefed and ripe for a final decision in the ’976 IPR, and Petitioner’s non-participation in that proceeding is at best neutral to our analysis. Petitioner is a party to the ’684 IPR, and in that proceeding the petition is directed to the same claims of the same patent as in this Petition. This fact weighs in favor of us not moving forward with the instant Petition. Also, at least with respect to the ’684 instituted claims, insofar as Petitioner’s arguments relate to Karol and are substantially identical to those in the ’684 IPR, Petitioner has the opportunity to address the same art and arguments in the ’684 proceeding. It would be an inefficient use of Office resources, and would run counter to securing the just, speedy, and inexpensive resolution of the challenges to the patentability of the ’235 patent, if we were to allow Petitioner to proceed on the same art and arguments in two separate proceedings.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner submits a list of terms for which Patent Owner has proposed construction in a co-pending district court case. Pet. 7–8. Petitioner, however, asserts that for the purposes of this Decision no terms need to be construed. Id. Patent Owner does not address claim construction in its Preliminary Response. See generally Prelim. Resp. We reviewed the parties’ arguments, and, for the purposes of this Decision, we have determined that no terms require express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 7
Claim constructionDiscretionary denialPatents in suitUS 6,775,235 - Xactware Solutions, Inc. v. Eagle View Technologies, Inc.Institution deniedPTAB · Apr 18, 2017 · IPR2016-01775 · APJ Bryan F Moore · IPR · Institution
The Board denied institution on the Hsieh and Applicad obviousness ground for all challenged claims under § 325(d), finding the petition repeated substantially the same art or arguments as the first petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Petitioner argues that because we did not reach the merits of the First Petition, Petitioner should be allowed to present more specific evidence regarding public accessibility in the Second Petition to allow the Board to reach the merits of Petitioner’s challenge. Second Pet. 5–6. Absent a good reason, a subsequently filed petition that only corrects defects identified by a Board decision in a prior petition typically is not granted. See, e.g., Butamax Advanced Biofuels LLC v. Gevo, Inc., Case IPR2014-00581, slip op. at 12–13 (PTAB Oct. 14, 2014) (Paper 8); NetApp Inc. v. Crossroads Sys., Inc., IPR2015-00776, slip op. at 8 (PTAB Sept. 8, 2015) (Paper 13).” slip op. at 6
Discretionary denialPatents in suitUS 8,078,436 - 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.