- Agamatrix, Inc. v. Dexcom, Inc.Institution deniedPTAB · Mar 13, 2019 · IPR2018-01717 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution of inter partes review of claims 14–69 under § 325(d), finding that the same prior art had previously been presented to the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Examiner found that the prior art, including Berner, failed to disclose applying a voltage to the electrochemical sensor, wherein applying the voltage comprises at least one process selected from the group consisting of switching, cycling, and pulsing a voltage applied to the electrochemical glucose sensor. Ex. 1002, 259. The Examiner explicitly found that Berner “teaches the switching of a voltage to the electrodes, but disclosed such a feature as part of an iontophoretic electrodes embodiment for collection purposes.” Id. AgaMatrix now relies on the same disclosure in Berner of application of a voltage to the iontophoretic electrodes as evidence of disclosure of the applying and the switching, cycling, and pulsing claim elements that the Examiner found missing in Berner.” slip op. at 14
Discretionary denialPatents in suitUS 9,750,460 - NVIDIA Corporation v. Samsung Electronics Company, Ltd.Institution deniedPTAB · May 4, 2016 · IPR2016-00134 · APJ Jameson Lee · IPR · Institution
The Board denied institution on all challenged claims, exercising discretion against the follow-on petition and alternatively rejecting it under § 325(d) because Hsu and Yamakawa were substantially the same.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“Given the undisputed facts as noted above, it would be unjust to Patent Owner to institute review in this proceeding. Petitioner has provided no rationale on why it waited until November 4, 2015, more than five months after filing of the first petition on June 1, 2015, in IPR2015-01318, to file the Petition in this proceeding, given that Petitioner was aware of Hsu at least by May 8, 2015. Notably, in IPR2015-01318, Patent Owner’s preliminary response was filed on September 10, 2015. On the other hand, not instituting review in this proceeding would not be unjust to Petitioner, because Petitioner was aware of Hsu when the first petition was filed on June 1, 2015, in IPR2015-01318, and subsequently waited too long to file the second petition relying on Hsu with no apparent justification. Under the circumstances of this case, as explained above, we hold Petitioner accountable for its own actions and inactions. Given the limited resources of the Board, we exercise our discretion not institute review in this proceeding, which is the second petition filed by Petitioner against claims 1– 8 and 10–15 of the ’675 patent. See 35 U.S.C. § 314(a); 37 C.F.R. § 42.108(a).” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“discussion of Hsu, we find that Yamakawa and Hsu are substantially the same insofar as claims 1–8 and 10–15 of the ’675 patent are concerned. In IPR2015-01318, Petitioner asserted that claims 1–8 and 10–15 of the ’675 patent are anticipated by Yamakawa. In this proceeding, Petitioner asserts that claims 1–8 and 10–15 of the ’675 patent are anticipated by Hsu. Neither assertion is based on any inherency argument, and both assertions rely on a direct reading of each claim limitation onto the prior art. Nothing in either Yamakawa or Hsu had to be specially construed and neither Yamakawa nor Hsu sets forth any special definition of terms. With respect to the challenged claims, we are not cognizant of any necessary disclosure that is provided by Hsu but not Yamakawa. The differences between Hsu and Yamakawa have not been shown to be significant with respect to the challenged claims. The types of steps said to be disclosed by Hsu are the types of steps said to be disclosed by Yamakawa, and vice versa. If Yamakawa anticipates the challenged claims, it would be expected that the same assertion would be made about Hsu, and the same is true the other way around.” slip op. at 13
Discretionary denialPatents in suitUS 8,252,675 - Toyota Motor Corporation v. Cellport Systems, Inc.Institution deniedPTAB · Oct 28, 2015 · IPR2015-01423 · APJ Jameson Lee · IPR · Institution
The Board denied institution on all challenged claims under § 325(d), finding substantially the same art and arguments had been presented in an earlier IPR.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“unpatentability in this proceeding are the same as those grounds of unpatentability in IPR2015-00634. The Petition in IPR2015-00634 was filed on February 5, 2015, prior to filing of the Petition in this proceeding on June 19, 2015. Despite the substitution of CAN for RS-485, the prior art and arguments presented in this proceeding are substantially the same as those previously presented in IPR2015-00634. Each of Boatwright, Mansell, Hotto, Guy, and Thompson is applied in the same manner in this case, i.e., based on the same teachings therein, against the same claims of the ’479 patent, as it was previously applied in IPR2015-00634. Although in this case Petitioner has replaced RS-485 with CAN, both RS-485 and CAN disclose a standard for a bus useable to connect multiple devices. CAN was published in 1992, whereas RS-485 was published in 1983. The teaching that is required from each to cure the deficiency of the other prior art references is the same.” slip op. at 7
Discretionary denialPatents in suitUS 5,479,479
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.