- Samsung Electronics America, Inc. v. Uniloc 2017 LLCRehearing deniedPTAB · May 28, 2019 · IPR2018-01756 · APJ John F Horvath · IPR · Rehearing
The Board denied Samsung’s rehearing request, leaving in place the denial of institution because the petition relied on the same or substantially similar prior art and arguments previously presented.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). The burden of showing a decision should be modified on a request for rehearing lies with the party challenging the decision. Id. A panel rehearing a decision on petition “will review the decision for an abuse of discretion.” Id. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988).” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“is cumulative when it teaches no more than what a reasonable examiner would consider to be taught by the prior art already before the PTO.” Regeneron Pharm., Inc. v. Merus N.V., 864 F.3d 1343, 1350 (Fed. Cir. 2017). As we explained in our Decision, the disclosures in Tamura relied on by Petitioner teach what the disclosures in Pasolini relied on by Apple teach: “a pedometer having a multi-axis inertial sensor, determining the orientation of the pedometer by identifying the axis of the inertial sensor most closely aligned with gravity, and counting steps by detecting acceleration along that axis.” Dec. Inst. 27. Moreover, Petitioner’s explanation of how Tamura’s disclosures read on the limitations of claims 1, 2, 11, and 12 are substantially similar to Apple’s explanation of how Pasolini’s disclosures read on the same limitations. Id. Thus, Tamura’s disclosure is cumulative to Pasolini’s because “it teaches no more than what a reasonable examiner would consider to be taught by [Pasolini] already before the PTO.” Regeneron Pharm., 864 F.3d at 1350.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for patent owner
“Assuming Petitioner is correct that General Plastic factors two through five are irrelevant and do not apply because Petitioner had not previously challenged the claims of the ’508 patent,8 and that factors six and seven are entitled to little weight because they are always true, the only factors we needed to consider and weigh in deciding whether to deny the Petition were that (1) Petitioner had not previously challenged any claims of the ’508 patent, and (2) Apple, HTC, and LG had previously challenged the same claims of the ’508 patent relying on the same or substantially similar, prior art, arguments, and grounds. Our Decision does just that, providing an extensive explanation of why the prior art, argument, and grounds raised in the Petition were the same as or substantially similar to the prior art, argument, and grounds raised by Apple in the Apple I and Apple II IPRs, and by HTC in the HTC IPR. See Dec. Inst. 26–30. In particular, we found nearly half of the challenged claims (6–8, 15, 16, 19, and 20) were previously challenged in substantially the same manner in the Apple I and HTC IPRs—relying on the same prior art (Fabio), and substantially the same arguments and statutory ground (anticipation versus obviousness). Id. at 26–27. Petitioner does not dispute this. See Reh’g Req. 2–13. We also found the remaining half of the challenged claims (1–5 and 11–14) were previously challenged in substantially the same manner in the Apple I and Apple II IPRs—relying on 8 As discussed in n.7, supra, our Decision did not consider General Plastic factors 2 through 5 taking into consideration any relationship between Petitioner, Apple, HTC, or LG, and Petitioner does not contend that this was error. Thus, for purposes of addressing Petitioner’s Request for Rehearing arguments, we assume without deciding the correctness of Petitioner’s contention that these factors are not relevant in this proceeding. the same statutory ground (obviousness), and on arguments based on disclosures in Tamura that were substantially the same as the arguments relied on by Apple in the Apple I and Apple II IPRs based on disclosures in Pasolini. See Dec. Inst. 27–29.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“erred in exercising our discretion to deny the Petition under 35 U.S.C. § 314(a) because the Petition presented the same or substantially similar prior art and arguments already presented to the Board in the Apple I, Apple II, HTC, and LG IPRs. III. CONCLUSION For the reasons discussed above, Petitioner has failed to demonstrate that we misapprehended or overlooked any of the arguments presented in the Petition, that any of our conclusions of law in the Decision were erroneous, or that any of our findings of fact in the Decision were clearly erroneous. Petitioner, therefore, has failed to demonstrate we abused our discretion in denying institution of inter partes review. Accordingly, we deny Petitioner’s Request for Rehearing. IV. ORDER It is ORDERED that Petitioner’s Request for Rehearing is denied.” slip op. at 12
Discretionary denialPatents in suitUS 7,653,508 - Samsung Electronics America, Inc. v. Uniloc 2017 LLCInstitution deniedPTAB · Mar 11, 2019 · IPR2018-01757 · APJ Miriam L Quinn · IPR · Institution
The Board denied institution because the petition repeated substantially the same prior art and arguments in overlapping proceedings, duplicating issues and Board effort.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“There is no question that Fabio, Pasolini, and Richardson have been previously presented to the Office in the previous IPRs challenging the ’723 patent. In IPR2018-00389, which was filed by Apple Inc., the ongoing trial concerning the ’723 patent involves a single ground: obviousness of claims 13, 57, and 1018 over Fabio and Pasolini. Further in IPR2018- 01027, Apple Inc. challenged dependent claims 4 and 19 for obviousness over Fabio, Pasolini, and Richardson. Thus, Fabio, Pasolini, and Richardson have been previously presented to the Board to challenge all the claims at issue here. The question for us to answer is whether, based on this fact, we should exercise our discretion and deny the Petition. Applicability of § 325(d) is not limited to situations where the same petitioner has filed a follow-on petition. The statute allows for the exercise of discretion upon consideration only of whether the same or substantially the same prior art or arguments were presented previously to the Office. Further, the statutory authority to deny the petition based on the same previously presented prior art is not tied to the format of how that prior art is presented or whether every aspect of the asserted grounds is identical in both petitions. Therefore, we have statutory authority to deny this Petition because Fabio, Pasolini, and Richardson were previously presented to the Office in the previous IPRs, notwithstanding that Petitioner is not a party to the previous IPRs and that the asserted grounds here are not exactly the same as the previous IPRs.2” slip op. at 16
- Other 314aInstitution denied discretionary otherInstitution denied
“We further note that under the current circumstances, where the patent-at-issue is involved in an ongoing trial,3 we also have discretionary authority, under 37 C.F.R. § 42.122, to issue “any appropriate order regarding the additional matter [i.e., this proceeding,] including providing for the stay, transfer, consolidation, or termination of any such matter.” See 35 U.S.C. § 315(d). We recognize that in exercising our discretion we determine the proper course of conduct in a proceeding (37 C.F.R. § 42.5) in” slip op. at 17
Discretionary denialPatents in suitUS 8,712,723 - Exocad GmbH / Exocad America, Inc. v. 3shape A/SRehearing deniedPTAB · Dec 27, 2018 · IPR2018-00785 · APJ Irvin E Branch · IPR · Rehearing
The Board denied the rehearing request and maintained its denial of institution, finding no abuse of discretion in applying § 325(d) to the Malfliet-based challenges.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” A request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). Further, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“trial, under 35 U.S.C. § 325(d), the Decision (Paper 8) relies on the premise that the Examiner already considered Applicants’ argument.” Req. 1, 5–7. This is inaccurate. In our Decision, we determined that “the Office already considered Malfliet extensively during the prosecution of the challenged claims.” Dec. 12. Importantly, we determined that “Petitioner has not articulated sufficient reasoning for us to question the Examiner’s previous consideration of Malfliet.”1 Id. We accordingly “decline[d] to consider grounds based upon Malfliet again.” Id. Our Decision, therefore, was not premised solely on whether the Examiner had already considered Applicants’ arguments, as Petitioner argues, but rather was based on Petitioner’s failure to explain sufficiently on the preliminary record why we 1 International Publication Number WO 2008/128700 A1 to Malfliet et al., published October 30, 2008 (Ex. 1006, “Malfliet”) should institute an inter partes review when, as Petitioner did not dispute, the Examiner had considered Malfliet during prosecution. Id. at 9–10 (citing Ex. 1004, 834–835). Indeed, in the Petition, Petitioner acknowledged that, “[d]uring prosecution, the Examiner rejected all claims based on Malfliet.” Pet. 3 (citing Ex. 1004 at 825–834).” slip op. at 3
Discretionary denialPatents in suitUS 9,336,336 - 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 - PTAB · Jun 23, 2016 · IPR2016-00932 · APJ William M Fink · IPR · Institution
The Board denied institution on claim 12 under § 325(d), finding the grounds relied on the same art and substantially the same arguments previously found insufficient; it dismissed joinder as moot.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“See 37 C.F.R. § 42.108(b). In particular, “[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.” 35 U.S.C. § 325(d). In making this determination, we may consider whether Petitioner uses our prior Decision to bolster challenges it advanced unsuccessfully. See, e.g., Unilever, Inc. v.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“Accordingly, for the foregoing reasons, we are persuaded that we should exercise our discretion to deny institution under § 325(d).” slip op. at 11
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingDenied
“§ 325(d). Because we deny the Petition, we dismiss Petitioner’s Motion for Joinder as moot.” slip op. at 11
Discretionary denialPatents in suitUS 6,714,966 - PTAB · Jun 23, 2016 · IPR2016-00931 · APJ Lynne E Pettigrew · IPR · Institution
The Board denied institution on claim 12 under § 325(d), finding the Shoubridge grounds reused substantially the same art and arguments previously found insufficient; it dismissed joinder as moot.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“at issue here challenging claim 12 as unpatentable over Shoubridge alone and Shoubridge in view of DirectPlay rely on the same prior art and substantially the same arguments that we found insufficient in the 1972 IPR. Although Shoubridge alone was not raised as a basis for challenging claim 12 in the 1972 IPR, it was raised as a basis for challenging claim 1, from which claim 12, among other claims, depends. 1972-Decision 11–12. Moreover, the claim mapping provided for claim 12 in the instant petition relies on nearly identical disclosures in Shoubridge as relied upon for claim 1 in the previous petition. Compare Pet. 27–28 (citing Ex. 1205, 2 ¶ 11–3 ¶ 1) (mapping Shoubridge’s disclosures of broadcasting a user packet on outgoing links to claim 12’s “broadcast channel for a game of interest”), with 1972-Pet. 30–31 (citing Ex. 1205, 2 ¶ 11–3 ¶ 1) (mapping Shoubridge’s disclosures of broadcasting a user packet on outgoing links to claim 1’s “send[ing] data to the other participants”). Petitioner presents no persuasive reason why it could not have challenged claim 12 based on Shoubridge alone in the 1972 IPR. Similarly, regarding the challenge to claim 12 based on Shoubridge in view of DirectPlay, Petitioner previously presented this prior art as DirectPlay in view of Shoubridge. See 1972-Pet. 27 (“DirectPlay is presented as the primary reference.”). As an initial matter, characterizing the instant grounds as Shoubridge in view of DirectPlay instead of the other way around is itself of “no significance.” See In re Bush, 296 F.2d 491, 496 (CCPA 1961). Significantly, Petitioner relies in large part upon the same disclosures in DirectPlay, e.g., pages 21–24, in contending that a person of ordinary skill in the art would have combined Shoubridge and DirectPlay. Pet. 33–34. We recognize that Petitioner now adds citation to additional disclosures at pages 47, 50, and 51 of DirectPlay. Id. at 31. Petitioner contends this additional evidence rebuts Patent Owner’s alleged mischaracterization of DirectPlay as limited to static networks. Id. at 8–9. However, Petitioner provides no persuasive reason that it could not have anticipated Patent Owner’s argument given Shoubridge’s teaching that “flooding results in very low network utilization, and therefore better routing strategies need to be sought.” See 1972-Decision 22 (quoting Ex. 1205, 4). Consequently, we find this to be a “second bite at the apple” (Prelim. Resp. 11–12) used to bolster previously unsuccessful arguments. See Unilever, slip op. at 7–8; Travelocity.com L.P. v. Cronos Techs., LLC, Case CBM2015-00047, slip op. at 12–13 (PTAB June 15, 2015) (Paper 7) (new indefiniteness argument); Samsung Elecs. Co., Ltd., v. Affinity Labs of Tex., LLC, Case No. IPR2015-00820, slip op. at 4 (PTAB May 15, 2015) (Paper 12) (new reference).” slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingNot reached
“§ 325(d). Because we deny the Petition, we dismiss Petitioner’s Motion for Joinder as moot. IV. ORDER Accordingly, it is: ORDERED that, pursuant to 35 U.S.C. § 325(d), an inter partes review is not instituted for claim 12 of U.S. Patent No. 6,701,344 B1; and FURTHER ORDERED that Petitioner’s Motion for Joinder is dismissed as moot.” slip op. at 12
Discretionary denialPatents in suitUS 6,701,344
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.