- Microsoft Corporation v. Almondnet, Inc.Institution deniedPTAB · Jan 30, 2023 · IPR2022-01319 · APJ Thomas L Giannetti · IPR · Institution
The Board denied institution for all challenged claims under § 325(d), finding Beyda had been presented to the Office and Microsoft had not shown material Examiner error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Here, Petitioner does not dispute Patent Owner’s evidence that Beyda was previously presented to the Office. Ex. 1004, 295. Thus, the first criterion of the Advanced Bionics framework (same art or arguments) is met. Advanced Bionics, Paper 6 at 7–8 (“Previously presented art includes art made of record by the Examiner and art provided to the Office by an applicant, such as on an Information Disclosure Statement (IDS),”). The second inquiry in the Advanced Bionics framework asks whether the Petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8–9. As Patent Owner points out, “although the Petition admits that the Examiner considered Beyda during prosecution, it fails to make any allegation whatsoever that the Examiner erred (let alone erred in a material way) in his consideration of Beyda.” Prelim. Resp. 18. As to Narin, Patent Owner argues that Petitioner “does not offer any explanation” why that reference is not “substantially the same” as art considered by the Examiner, “let alone how or why the Examiner materially erred in considering that art to not be invalidating.” Id. We agree that Petitioner has failed to demonstrate that the Office erred in its evaluation of the cited art. See Advanced Bionics, Paper 6 at 8–9 (“If a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review.”). Here, the Beyda prior art that was before the Examiner during the examination is identical to the art cited here.3 There is no argument or evidence before us that Beyda was concealed from the Examiner. The Examiner ultimately made a determination that the claims were patentable. Ex. 1004, 49, 92. As cautioned by Advanced Bionics, “[i]f reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability.” Advanced Bionics, Paper 6 at 9. Advanced Bionics goes on to explain the rationale for this rule: “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. Having considered the record presented by Patent Owner and the absence of any substantive showing from Petitioner, we are not persuaded of material Examiner error. Petitioner’s assertion that the prior art references in the Petition “were not substantively considered during the prosecution of the ’139 Patent, or in the prior CBM challenge,” without further explanation, is insufficient. In summary, applying the two-part framework of Advanced Bionics, we are persuaded to deny the Petition under 35 U.S.C § 325(d).” slip op. at 10
Discretionary denialPatents in suitUS 8,671,139 - Google LLC v. Ecofactor, Inc.Institution deniedPTAB · Aug 1, 2022 · IPR2022-00535 · APJ Brent M Dougal · IPR · Institution
The Board denied institution for claims 1–17 under § 325(d), finding no material error in the Examiner’s priority determination and Quam essential to every asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“2. Conclusion as to 35 U.S.C. § 325(d) As discussed in detail above, the Quam and Modi references only qualify as prior art that can be used against the ’890 patent if the ’890 patent is not entitled to priority. However, the Petition fails to establish that the Examiner erred in determining that the ’890 patent is entitled to its priority claim. We exercise our discretion to decline to reconsider the issue of priority which has already been addressed by the Office. Thus, the Petition cannot show that Quam and Modi are prior art that can be used against the ’890 patent. As Quam is essential to all grounds in the Petition, we exercise our discretion under 35 U.S.C. § 325(d) to decline to institute.” slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“Petitioner’s argument fails to identify any material errors by the Examiner. First, we determine that Petitioner makes no credible argument that one of skill in the art would not understand the ’554 application to teach that weather data is obtained from outside a building or that the Examiner erred in making such a determination. Petitioner acknowledges that the ’554 application teaches data comprising an outside weather condition. Id. at 12– 14. Data of an outside weather condition necessarily ultimately comes from a source outside of a building; otherwise it would not be an “outside” weather condition. Contrary to Petitioner’s argument, the claim does not require that the outside weather condition be transmitted from a source external to the building to the one or more processors through a network connected to the thermostat. See id. at 14. The claim states that the “outside weather condition [is] collected from a source external to the building,” but then only requires that the outside weather condition be received by the one or more processors from a network connected to the thermostat. Thus, how it is collected and how it is received is not linked or required by the claim language. Secondly, Figure 2 relied on by the Applicant shows that the entire system is set-up on a network. Thus, Figure 2 shows “a network connected to the thermostat” as required by the claim and sharing of data comes across the network, such as would occur when a server having a processor retrieves data, such as an outside weather condition, from a storage database on another server in the network. See e.g., Ex. 1005, 46; Ex. 1007, 399 at ¶¶ 81, 84, 406 at ¶ 110, 440–441.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“qualify as prior art that can be used against the ’890 patent if the ’890 patent is not entitled to priority. However, the Petition fails to establish that the Examiner erred in determining that the ’890 patent is entitled to its priority claim. We exercise our discretion to decline to reconsider the issue of priority which has already been addressed by the Office. Thus, the Petition cannot show that Quam and Modi are prior art that can be used against the ’890 patent. As Quam is essential to all grounds in the Petition, we exercise our discretion under 35 U.S.C. § 325(d) to decline to institute. III. CONCLUSION For the foregoing reasons, we do not institute trial. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), no inter partes review as to any claim of U.S. Patent 10,584,890 B2 is instituted.” slip op. at 14
§ 112 disclosureDiscretionary denialPatents in suitUS 10,584,890 - Splunk Inc. v. Sable Networks, Inc.Institution deniedPTAB · Apr 14, 2022 · IPR2022-00003 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution of review of claims 1–15, 23–28, 32, 43–51, and 97 under § 325(d) because substantially the same art or arguments were previously presented and Petitioner showed no material Office 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.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“We may institute an inter partes review if the information presented in the Petition and the Preliminary Response shows that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. See 35 U.S.C. § 314. However, the Board has discretion to deny a petition even if a petitioner meets that threshold. See, e.g., 35 U.S.C. § 325(d); Cuozzo Speed Techs., LLC v. Lee, 579 U.S. 261, 273 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”).” slip op. at 2
Discretionary denialPatents in suitUS 7,630,358 - Apple Inc. v. Qualcomm IncorporatedRehearing deniedPTAB · Mar 14, 2019 · IPR2018-01280 · APJ Scott B Howard · IPR · Rehearing
The Board denied Apple’s rehearing request, leaving in place the denial of institution because it had not overlooked or misapprehended material facts about Brown or the prosecution history.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“a panel will review the decision for an abuse of discretion.” The party requesting rehearing has the burden of showing that the decision from which rehearing is sought should be modified and “[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.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Dec. 8–9 (emphasis added). Similarly, when weighting the Becton factors, we explicitly found that although the Examiner originally rejected the claims based on Brown, “[f]ollowing an amendment to the claims adding the prompting step along with arguments by the applicant explaining why Brown did not teach that new limitation, the Examiner shifted to new references and no longer relied on Brown.” Id. at 14 (citing Ex. 1002, 142– 149, 156–168, 178–181). In other words, twice we explicitly acknowledged what Petitioner now argues we overlooked.” slip op. at 5
- Strike new argumentNew argument disregardedOther
“For the reasons explained above, we are not persuaded that we misapprehended or overlooked any material facts. Moreover, Petitioner never explicitly nor implicitly addressed the Becton factors in the Petition, and new arguments are not permitted in a request for rehearing absent exceptional circumstances, of which none have been identified here.” slip op. at 8
Discretionary denialPatents in suitUS 7,844,037 - Google LLC v. Uniloc Luxembourg S.A.Institution deniedPTAB · Jan 11, 2018 · IPR2017-01665 · APJ David C Mckone · IPR · Institution
The Board denied institution for claims 1–25 because both obviousness grounds presented substantially the same prior art or arguments previously presented to the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Multiple, staggered petitions challenging the same patent and same claims raise the potential for abuse. The absence of any restrictions on follow-on petitions would allow petitioners the opportunity to strategically stage their prior art and arguments in multiple petitions, using our decisions as a roadmap, until a ground is found that results in the grant of review. All other factors aside, this is unfair to patent owners and is an inefficient use of the inter partes review process and other post-grant review processes. Id. at 17–18 (footnote omitted). The reasoning in General Plastic is pertinent here. Petitioner waited until after Patent Owner filed its Preliminary Response in the ’948 proceeding to file its Petition challenging the ’960 patent based on the same prior art and substantially the same arguments. In the process, Petitioner took the opportunity to attempt to correct deficiencies alleged by Patent Owner in Amazon’s petition. This is precisely the type of roadmapping General Plastic counsels against. If we were to institute on this ground, Patent Owner would be forced to defend its patent in an iterative fashion against challenges based on the same prior art and substantially the same arguments, with the aforementioned roadmapping. As General Plastic explains, this has the potential to be unfair and inefficient.” slip op. at 22
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingDenied
“For the reasons given above, institution of a trial based on the Petition is inappropriate because Petitioner’s challenges are substantially the same as those raised by Amazon in the ’948 proceeding. The differences amount, at most, to attempts by Petitioner to respond to the arguments in Patent Owner’s preliminary response in the ’948 proceeding. If we were to join this proceeding to the ’948 proceeding under the terms to which Petitioner would agree, the impact would be that Patent Owner would be forced to respond to serial challenges to the same patent based on the same prior art with the second petitioner having the benefit of seeing Patent Owner’s arguments in advance. Joinder under Petitioner’s proposed terms is inappropriate for the same reasons given above for denying institution based on § 325(d). As neither party has filed a request to join this proceeding to the ’948 proceeding under the terms to which Patent Owner would agree and, indeed, Petitioner expressly opposes joinder on those terms, we decline to exercise our discretion to join this proceeding to the ’948 proceeding.” slip op. at 30
- RehearingNot reached
Discretionary denialPatents in suitUS 8,566,960 - T-Mobile US, Inc. / T-Mobile USA, Inc. et al. v. Tracbeam, LLCInstitution deniedPTAB · May 25, 2016 · IPR2016-00729 · APJ Barbara A Parvis · IPR · Institution
The Board denied institution on claims 1, 2, and 44 under § 325(d), and denied joinder with IPR2015-01712.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“some or all grounds for unpatentability for some or all of the challenged claims.” 37 C.F.R. § 42.108(b). Our discretionary determination of whether to institute review is guided by 35 U.S.C. § 325(d), which states, in relevant part, that “[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.”4 Petitioner’s second attempt to challenge claims 1, 2, and 44 of the ’327” slip op. at 8
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response, under section 313 or the expiration of time for filing such a response, determines warrants the institution of an inter partes review under section 314. 35 U.S.C. § 315(c) For the reasons above, based on the circumstances of this case, we exercise our discretion under 35 U.S.C. § 325(d), and deny the Petition requesting institution of inter partes review in IPR2016-00729. Accordingly, we deny Petitioner’s request to join IPR2016-00729 with IPR2015-01712.” slip op. at 11
Discretionary denialPatents in suitUS 7,298,327 - T-Mobile US, Inc. / T-Mobile USA, Inc. et al. v. Tracbeam, LLCInstitution deniedPTAB · May 25, 2016 · IPR2016-00728 · APJ David C Mckone · IPR · Institution
The Board denied institution for claim 25 under § 325(d), finding the petition repeated prior art and arguments from an earlier petition; it denied joinder as moot.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Previous panels of this Board have expressed concern with permitting a petitioner to file an inadequate first petition and subsequently allowing the petitioner to correct errors in the first petition through the filing of a second petition. For example, in ZTE Corp. v. ContentGuard Holdings Inc., Case IPR2013-00454 (PTAB Sept. 25, 2013) (Paper 12), slip op. at 5–6, a panel explained: The Board is concerned about encouraging, unnecessarily, the filing of petitions which are partially inadequate. A decision to institute review on some claims should not act as an entry ticket, and a how-to guide, for the same Petitioner who filed an unsuccessful joinder motion, and is outside of the one-year statutory period, for filing a second petition to challenge those claims which it unsuccessfully challenged in the first petition. Similarly, another panel denied a petition with grounds that served as “second bites at the apple” and used a prior decision “as a roadmap to remedy [the first petition’s] prior, deficient challenge,” explaining that “[a]llowing similar, serial challenges to the same patent, by the same petitioner, risks harassment of patent owners and frustration of Congress’s intent in enacting the Leahy-Smith America Invents Act.” Butamax Advanced Biofuels LLC, v. Gevo, Inc., Case IPR2014-00581, 2014 WL 5299385, at *6 (PTAB Oct. 14, 2014) (Paper 8). Patent Owner contends that we should follow this guidance and deny the Petition. Prelim. Resp. 10–19. We agree with Patent Owner that this is a factor that weighs against institution of the Petition.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“We have considered Petitioner’s proffered justifications as well as Patent Owner’s concerns regarding allowing Petitioner to correct its first petition through filing a second Petition advancing the same prior art. We exercise our discretion, under Section 325(d), to deny the Petition because “the same or substantially the same prior art or arguments previously were presented to the Office.” III. CONCLUSION We exercise our discretion to deny the Petition under 35 U.S.C. § 325(d). Because we deny the Petition, we deny 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 25 of U.S. Patent No. 7,525,484 B2; and” slip op. at 14
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“Joinder, however, is appropriate only when the underlying petition sought to be joined warrants institution. According to 35 U.S.C. § 315(c) (emphasis added): If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. As explained below, we have considered the Petition and the Preliminary Response and determine that the Petition does not warrant the institution of an inter partes review. Accordingly, we do not reach whether the Petition is time barred or whether joinder otherwise would be appropriate. Petitioner’s Motion for Joinder is denied as moot.” slip op. at 9
Discretionary denialPatents in suitUS 7,525,484 - Valeo North America, Inc. / Valeo S.A et al. v. Magna Electronics, Inc.Institution deniedPTAB · Dec 7, 2015 · IPR2015-01413 · APJ James A Tartal · IPR · Institution
The Board denied institution of review of claims 1–12 and 16–20 under § 325(d), finding the second 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
“Rather than identify new arguments based on Millikan or Turnbull, Petitioner instead makes the identical argument presented in the 251-Petition, asserting once again that, “[b]ut for the fact that the Challenged Claims recite a few essentially trivial matters of design choice that were well known by January 2002, they would all be anticipated by Lemelson, which disclosed virtually the entirety of the claimed inventions years earlier.” Pet. 21. Thus, Petitioner’s explanation of the asserted grounds concedes that both Millikan and Turnbull are either superfluous or redundant to the previously asserted references, having been included in support of Petitioner’s argument that various features are “trivial matters of design choice.” Petitioner also makes several broad assertions purportedly to differentiate its new allegations from its prior petition, including that the Petition “presents for the first time new arguments, additional prior art references, and combinations that could not have been presented previously, and could not have been based on prior art searches previously performed and/or interpretations of those references then available to Petitioner.” Id. at 4. Petitioner, however, offers no evidence in support of its contention that the arguments raised in this proceeding “could not have been presented previously,” or “could not have been based on prior art searches.” On multiple occasions the Board has recognized that an allegation of obviousness in a second petition may be based upon “substantially the same” prior art and arguments previously presented to the Office in an earlier petition, within the meaning of 35 U.S.C. § 325(d), even if the second petition includes prior art not asserted in the prior petition. See Customplay, LLC, v. Clearplay, Inc., IPR2014-00783, slip op. at 11–13 (PTAB Nov. 7, 2014) (Paper 9) (exercising § 325(d) discretion to decline to institute trial when ground presented in second petition presents substantially same prior art and arguments as prior petition despite addition of prior art); Unilever, Inc. v. The Proctor & Gamble Co., IPR2014-00506 (PTAB July 7, 2014) (Paper 17) (same); Medtronic, Inc. v. Robert Bosh Healthcare Sys., Inc., IPR2014-00436, slip op. at 11–12 (PTAB June 19, 2014) (Paper 17) (same). As explained above, in this case Petitioner’s contentions amount to nothing more than an argument that the additional references support Petitioner’s contention in the 251-Petition that certain features of the challenged claims are a matter of design choice. Thus, despite Petitioner’s addition of Millikan and Turnbull to the obviousness grounds previously asserted in IPR2015-00251, Petitioner’s grounds present substantially the same art, and substantially the same arguments, as previously asserted by Petitioner in the 251-Petition.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Valeo Schalter und Sensoren GmbH, and Connaught Electronics Ltd., filed a corrected Petition requesting an inter partes review of claims 1–12 and 16–20 of U.S. Patent No. 8,676,491 B2 (“the ’491 patent”). Paper 6 (“Pet.”). Patent Owner, Magna Electronics, Inc., filed a Preliminary Response. Paper 10 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), 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.”” slip op. at 2
Discretionary denialPatents in suitUS 8,676,491 - Valeo North America, Inc. / Valeo S.A et al. v. Magna Electronics, Inc.Institution deniedPTAB · Dec 7, 2015 · IPR2015-01415 · APJ James A Tartal · IPR · Institution
The Board denied institution for claims 8, 11, 12, 16, 17, 19–21, 28, 31–38, 42, 50, 51, 53, 54, 62, 70, 71, 73, 74, 79, and 84 under § 325(d).
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“On multiple occasions the Board has recognized that an allegation of obviousness in a second petition may be based upon “substantially the same” prior art and arguments previously presented to the Office in an earlier petition, within the meaning of 35 U.S.C. § 325(d), even if the second petition includes prior art not asserted in the prior petition. See Customplay, LLC, v. Clearplay, Inc., IPR2014-00783, slip op. at 11–13 (PTAB Nov. 7, 2014) (Paper 9) (exercising § 325(d) discretion to decline to institute trial when ground presented in second petition presents substantially same prior art and arguments as prior petition despite addition of prior art); Unilever, Inc. v. The Proctor & Gamble Co., IPR2014-00506 (PTAB July 7, 2014) (Paper 17) (same); Medtronic, Inc. v. Robert Bosh Healthcare Sys., Inc., IPR2014-00436, slip op. at 11–12 (PTAB June 19, 2014) (Paper 17) (same). In this case, as explained above, Petitioner contends the additional references do no more than support Petitioner’s prior contention that certain features of the challenged claims are a matter of design choice or were already known as being desirably incorporated into automobiles. Thus, despite Petitioner’s addition of Okada, Millikan, DeVries, Breed, Turnbull, and Shimizu to the obviousness grounds previously asserted in IPR2015-00250, Petitioner’s grounds in this proceeding present substantially the same art, and substantially the same arguments, as previously asserted by Petitioner in IPR2015-00250.” slip op. at 10
Discretionary denialPatents in suitUS 8,543,330
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.