- Motorola Mobility LLC v. Maxell, Ltd.Institution deniedPTAB · Feb 2, 2023 · IPR2022-01287 · APJ Kevin C Trock · IPR · Institution
The Board denied institution on claims 1–6 under § 325(d), finding substantially the same prior art had been presented and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“cumulative to at least Kijima and Tani, as well as Petitioner’s cumulative use of Sawanobori, Silver, and Teranishi, we find that part one of the Advanced Bionics framework is met. Other Board decisions have reached the same conclusion given circumstances similar to this case. See, e.g., Samsung Elecs. Co. v. Power2B, Inc., IPR2021-01190, Paper 11 at 15–17 (PTAB Jan. 6, 2022).” slip op. at 22
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “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 8,059,177 - 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 - Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Institution deniedPTAB · Jan 24, 2022 · IPR2021-01156 · APJ Lynne E Pettigrew · IPR · Institution
The Board denied institution of IPR challenging claims 1, 6–10, 15–21, 24, 25, 29, and 30, because the same prior art was previously presented and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“presented to the Office. Section 325(d) states, in relevant part, “[in] 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.” The Board uses the following two-part framework in determining whether to exercise discretion under § 325(d) to deny institution: (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 the 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 9
Discretionary denialPatents in suitUS 10,735,380 - Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Institution deniedPTAB · Jan 20, 2022 · IPR2021-01155 · APJ Jon M Jurgovan · IPR · Institution
The Board denied institution of IPR challenging claims 1–20 under § 325(d), finding the asserted art and arguments were previously presented and Petitioner failed to show material Office error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Examiner during prosecution of the ’343 patent and that Mantripragada is cumulative to Buck, which was considered during prosecution of the ’343 patent. We further find that Patent Owner’s argument during prosecution that the packet transformation function is configured “to prevent an exfiltration operation” resulted in allowance of the claims of the ’343 patent, which overlaps with the argument that Patent Owner makes in this case against Petitioner’s challenges. Prelim. Resp. 35–36. Petitioner has not shown that the two-stage filtering process was a basis for the Examiner’s allowance of the claims of the ’343 patent over the cited prior art. We, therefore, find that the same or substantially the same prior art, and the same or substantially the same arguments, previously were presented to the Office under the first part of the Advanced Bionics framework.” slip op. at 16
- Expert testimonyPetitioner expert discountedDecided for patent owner
“extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Petitioner’s declarant testifies regarding the prosecution history of the ’343 patent. Ex. 1003 ¶¶ 85–90. He concludes that “the ’343 Patent claims were apparently allowed because the Examiner concluded that the prior art of record failed to disclose a two-stage packet filtering process,” mirroring Petitioner’s argument. Id. ¶ 90. Petitioner’s declarant does not indicate how the facts support this conclusion. As mentioned, Patent Owner’s argument during prosecution leading to allowance was that the ’343 patent’s claims recite applying the packet transformation function configured to prevent an exfiltration operation. Ex. 1002, 1614–1615, 1639. Petitioner’s declarant does not explain sufficiently where in the prosecution history Patent Owner argued that a two-stage packet filtering process distinguished the ’343 patent’s claims over the prior art, or where the Examiner allowed the claims because of two-stage packet filtering. Accordingly, lacking evidentiary support, the declarant’s testimony is entitled to little or no weight on this point. 37 C.F.R. § 42.65(a). Thus, we see no additional evidence or facts in the Petition that warrant reconsideration of the prior art. Therefore, we find that Petitioner has not demonstrated that the Office erred in a manner material to the patentability of the challenged claims under the second part of the Advanced Bionics framework.” slip op. at 18
Discretionary denialPatents in suitUS 10,567,343 - 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 - PTAB · Jun 15, 2015 · CBM2015-00047 · APJ James B Arpin · CBM · Institution
The Board denied institution on all challenged claims under § 325(d), finding the petition relied on the same references and substantially the same arguments presented in an earlier petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“As noted above, according to 35 U.S.C. § 325(d), we may reject the present Petition because “the same or substantially the same prior art or arguments previously were presented to the Office” in the earlier Petition. (Emphasis added.) Here, Petitioner acknowledges that the same references are applied in the earlier and the present Petitions. Pet. 2 n.1; see Prelim. Resp. 3. On that basis alone, we may exercise our discretion and decline to institute covered business method patent review. Nevertheless, we also are persuaded that Petitioner asserts the same or substantially the same arguments in the present Petition that were asserted in the earlier Petition. First, although the Petitioner asserts that Peapod anticipates the challenged claims in the present Petition (Pet. 7), Petitioner asserted that each of Viescas, Filepp, and Peapod “individually may render the claims unpatentable” in the earlier Petition. CBM2014-00082, Paper 5, 18. Moreover, as we noted in the Decision on Institution in CBM2014- 00082, Petitioner argued in the earlier Petition that “each of the references— Viescas, Filepp, and Peapod—teaches or suggests all of the limitations of each of independent claims 1 ([CBM2014-00082, Paper 5,] 25–30) and 22 (id. at 42–51).” CBM2014-00082, Paper 10, 17–18. Second, with the exception of claims 16 and 42, Petitioner’s ground for challenging 1–3, 8– 12, 14, 15, 17, 18, 22, 24, 26–28, 30–32, 34, 41, and 44 in the present Petition is based on the same combination of references used to challenge those claims in the earlier Petition. Compare Pet. 42–78 with CBM2014- 00082, Paper 5, 20–75. In the present Petition, however, Petitioner allegedly “presents different legal arguments than those that were previously submitted and addresses the reasons relied on by the Board for not instituting CBM review [in CBM2014-00082].” Pet. 2 n.1. We are not persuaded by Petitioner’s unsupported contention, however, that the present Petition presents “different legal arguments.” Instead, for the reasons set forth above, in the present Petition, Petitioner simply recasts the facts in the context of the same legal arguments. See Prelim. Resp. 6–8.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached
“we interpret any claim terms of the challenged claims according to the Phillips standard. Nevertheless, only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the 3 We also note that Patent Owner has charged Petitioner with infringing one or more claims of the ’110 patent. Pet. 79. Petitioner certifies that it is not barred or estopped from challenging the claims on the grounds identified in its Petition. Id. at 2 (citing 37 C.F.R. § 42.302(b)). Patent Owner does not contest Petitioner’s certification. controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Here, because we reject the Petition without reaching the merits of Petitioner’s grounds for unpatentability regarding the challenged claims, it is not necessary for us to construe any term of the challenged claims.4” slip op. at 5
Claim constructionDiscretionary denialcites PhillipsPatents in suitUS 5,664,110
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.