- 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 - Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Institution deniedPTAB · Jan 24, 2022 · IPR2021-01270 · APJ Lynne E Pettigrew · IPR · Institution
The Board denied institution of review of claims 2–5, 11–14, 22, 23, and 26–28 under § 325(d) because substantially the same prior art was previously presented and material Office error was not shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“applicant, such as on an [IDS].” Advanced Bionics, Paper 6 at 7–8. Because it was submitted in an IDS during prosecution of the ’380 patent, Sourcefire qualifies as art that was “previously presented” to the Office.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“Bionics framework, and based on the particular circumstances here, we conclude that the same or substantially the same prior art as in the Petition was presented previously to the Office, and Petitioner has not demonstrated that the Office erred in a manner material to patentability of the challenged claims. Accordingly, we determine that discretionary denial of the Petition under 35 U.S.C. § 325(d) is appropriate. IV. CONCLUSION For the foregoing reasons, we exercise our discretion to deny institution under 35 U.S.C. § 325(d). V. ORDER Accordingly, it is ORDERED that the Petition is denied, and no inter partes review is instituted.” slip op. at 18
Discretionary denialPatents in suitUS 10,735,380 - Nikon Corporation v. Carl Zeiss AG And ASML Netherlands B.V.Rehearing deniedPTAB · Feb 1, 2019 · IPR2018-00686 · APJ Bryan F Moore · IPR · Rehearing
The Board denied Nikon’s rehearing request, leaving institution denied for claims 1–5, 7–10, 16, 24, and 30–33 based on § 325(d) and the priority-date analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“37 C.F.R. § 42.71(d) provides that: A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically 1 The Petition, in an apparent typographic error, omits claim 5 from its listing of challenged claims on page 1. identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply. (Emphasis added.) See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). 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.” 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. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“In the Institution Decision, we denied institution of Ground 1 based on our discretion under 35 U.S.C. § 325(d). Inst. Dec. 17. Specifically, we determined that the Kaifu reference relied on by Petitioner was considered during prosecution. Id. Petitioner asserts that we misapprehended or overlooked its arguments regarding why its contentions as to Kaifu were not considered by the Examiner.” slip op. at 3
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“written description. To satisfy the written description requirement of 35 U.S.C. § 112 ¶ 1, the specification must “clearly allow persons of ordinary skill in the art to recognize that the inventor invented what is claimed.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (internal brackets omitted) (en banc) (quoting Vas–Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991)). Thus, the specification must reasonably convey to those skilled in the art that the inventor possessed, at the time of filing, the subject matter that he or she has claimed. Id. “[T]he level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id. Whether a specification complies with the written description requirement is a question of fact. Id. at 1351, 1355. Entitlement to a filing date extends only to subject matter that is disclosed, not to that which is obvious. Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We determine that because the open ended term “comprising” was used in the original claim reciting “a” signal, the recitation of “a” signal and “one or more” signals would have the same scope. An indefinite article, such as “a,” in patent parlance encompasses “one or more” when used, as here, in open-ended claims containing the transitional phrase “comprising.” KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000). “Unless the claim is specific as to the number of elements, the article ‘a’ receives a singular interpretation only in rare circumstances when the patentee evinces a clear intent to so limit the article.” Id. Thus, the claim as amended, which removes the open ended preface “comprising” and changes the modifier of “select signals” from “a” to “one or more,” does not change the scope of the claim in that respect. It merely is a different phrasing. Thus, as we stated in the Institution Decision, any description of a system with one signal would necessarily support a claim to one or more signals. Inst. Dec. 28. Additionally, the claim, as amended, does not suggest there is choice between alternatives that would meet this claim. For example, the claim does not require a choice between a first type of signal and a second type of signal. The claim recites “one” signal, which can be optionally accompanied (“or”) by “more” signals.” slip op. at 8
Claim construction§ 112 disclosureDiscretionary denialPatents in suitUS 9,728,574 - Apple Inc. v. Immersion CorporationInstitution deniedPTAB · Aug 17, 2017 · IPR2017-00896 · APJ Minn Chung · IPR · Institution
The Board denied institution on claims 1–7 and 23–29, rejecting the Rosenberg grounds under §325(d) and declining institution under §314(a) due to the repeated, evolving challenges.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Section 325(d) provides, in pertinent part In determining whether to institute or order a proceeding under this chapter . . . 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) (emphases added). It is undisputed that Rosenberg ’373 and Rosenberg ’846 asserted by Petitioner in this case are the same prior art references previously presented by Petitioner in IPR2016-01372. As discussed above, Petitioner challenges the same claims on the same grounds which were previously considered and denied in IPR2016-01372. See 1372 Dec. on Inst. 41–45.” slip op. at 8
- Other 314aInstitution denied discretionary otherDenied
“(a) whether the same petitioner previously filed a petition directed to the same claims of the same patent; (b) whether the petitioner knew or should have known of the prior art asserted in the later petition when it filed its earlier petition; (c) whether at the time of filing of the later petition, the petitioner already received the patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review in the earlier petition; (d) the length of time that elapsed between when the petitioner had the patent owner’s or Board’s analysis on the earlier petition and when petitioner filed the later petition; and (e) whether the petitioner provides adequate explanation why we should permit another attack on the same claims of the same patent.” slip op. at 12
Discretionary denialPatents in suitUS 8,659,571 - Arista Networks, Inc. v. Cisco Systems, Inc.Rehearing deniedPTAB · Mar 29, 2016 · IPR2015-01710 · APJ Bryan F Moore · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution under § 325(d), finding the request did not show that it overlooked or misapprehended any matter.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS When considering a request for rehearing, we review the Decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the Decision should be modified, and “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“35 U.S.C. § 325(d). Petitioner does not address the Decision’s discussion of the anticipation ground presented in the ’974 Petition. The Decision found that the anticipation ground presented the same arguments regarding Habraken as were presented regarding Habraken in the ’974 Petition. Dec. 9–10.” slip op. at 3
Discretionary denialPatents in suitUS 7,224,668 - PTAB · Feb 18, 2016 · IPR2015-01491 · APJ Charles J Boudreau · IPR · Rehearing
The Board denied rehearing and upheld its § 325(d) denial of institution on claims 1–3 and 5–8 over Sasuga because the same art and arguments had been presented during prosecution.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s 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). “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). 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. It is not an abuse of discretion to have performed an analysis or reached a conclusion with which Petitioner disagrees, and mere disagreement with our analysis or conclusion is not a proper basis for rehearing.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“Examiner included in the Notice of Allowance entered on December 24, 2003, the following statement of reasons for allowance: 3. The prior arts [sic] of record do not anticipate or render obvious to one skilled in the art a liquid crystal display comprising various elements as claimed, more specifically one of the upper and lower frame including a stepped protrusion (draw) for fixing one of the liquid crystal display and the intermediate frame. 4. The closest reference 5,680,183 (Sasuga) teaches an LCD including a shield case with conventional means, i.e., fixing pawls. Further, [other cited references] are related a [sic] liquid crystal display device that includes intermediate frame. However, all of the above references alone or in combination fail to teach or suggest the claimed stepped protrusion (draw) (shown in Figs. 4 and 5 of the instant application) for fixing (supporting) one of the liquid crystal display or the intermediate frame to one of the upper frame and the lower frame. Ex. 1006, 6 (“Allowable Subject Matter”). Notably absent from the Examiner’s statement is any reference to the Applicant’s argument at page 9 of the Amendment dated November 12, 2003, that the stepped protrusion or draw “may have a shape (not hooked shaped)” (Ex. 1005, 35). Accordingly, we disagree with Petitioner’s premise that “[t]he Examiner accepted Applicant’s argument regarding construction of the terms ‘stepped protrusion’ and ‘stepped draw,’ which limited the terms to ‘non-hook shaped’ parts,” and “[b]ased on that construction, the Examiner withdrew the rejection based on Sasuga.” Req. Reh’g 1. Therefore, we are not persuaded by Petitioner’s arguments that the prior assertion of Sasuga was withdrawn based on a completely contrary claim construction and that we erred in concluding the grounds presented were the same as those considered during prosecution. Id. at 6–7. Indeed, even if the Examiner had explicitly adopted the Applicant’s construction, that would not necessarily compel a different result here. Section 325(d) provides, in relevant part, only that, “[i]n 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.” Accordingly, our discretion under section 325(d) is not limited to cases in which we concur with or adopt a claim construction previously applied by the Office. Because we do not disagree with any explicit claim construction by the Examiner in this case, we need not decide here whether, or to what extent, consideration of prior claim construction should be considered in deciding whether or not a petition or request should be rejected under section 325(d).” slip op. at 5
- PTAB / AIA Trials › Discretionary denialDecided for patent owner
“Lastly, we are also not persuaded by Petitioner’s argument titled “The Board’s Decision Is Arbitrary And Capricious Because The Discretionary Standard Applied By Each Panel Is Not Consistent.” Req. Reh’g 8 (boldface omitted); see also id. at 8–10. That other panels of this Board have on occasion, in non-precedential decisions premised on different facts than are presented here, chosen not to reject a petition or request where the same or substantially the prior art or arguments previously presented to the Office does not render our decision arbitrary and capricious. As explained in Microsoft Corp. v. Parallel Networks Licensing, LLC, Case IPR2015- 00483 (PTAB July 15, 2015) (Paper 10) and quoted by Petitioner (id. at 9), section 325(d) “does not require any particular outcome.” Microsoft Corp., slip op. at 14–15.” slip op. at 6
Discretionary denialPatents in suitUS 6,734,927
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.