- Siemens Mobility, Inc. / Ground Transportation Systems USA, Inc. et al. v. Metrom Rail, LLCInstitution deniedPTAB · Nov 19, 2024 · IPR2024-00947 · APJ Stacey G White · IPR · Institution
The Board denied institution of IPR for claims 1–18 under § 325(d), finding substantially the same art and arguments had been presented during prosecution and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“In determining whether to institute an inter partes review, “the Director may take into account whether, and reject the petition because, the same or substantially the same prior art or arguments previously were presented to the Office.”9 35 U.S.C. § 325(d). Our § 325(d) analysis employs a two-prong framework: (1) whether the prior art and arguments presented in the petition are the same or substantially the same as those previously presented to the Office; and (2) if so, whether the petitioner has demonstrated a material error by the Office in its prior consideration of those prior art and arguments. Advanced Bionics, Paper 6 at 8.” slip op. at 11
Discretionary denialcites Phillips · GrahamPatents in suitUS 9,731,738 - Autel Intelligent Technology Corp., Ltd. v. Orange Electronic Co., Ltd.Institution deniedPTAB · Apr 8, 2022 · IPR2021-01545 · APJ Neil T Powell · IPR · Institution
The Board denied institution for claims 16–19, 21, and 23–29 under § 325(d), finding substantially the same art and arguments had been considered and Petitioner had not shown Office error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“On the whole, we find the Petition cites substantially the same art previously presented to the Office in the Third Reexamination. Patent Owner identifies extensive similarities between the art from the Third Reexamination and the art cited by the Petition. Prelim. Resp. 1, 21–24. Four out of the five references cited by the Petition are identical to the references considered in the Third Reexamination. E.g., Pet. 9–10, 71–72; Ex. 1005, 18–19; Prelim. Resp. 21–22. Although Nihei was not considered during the Third Reexamination, Petitioner does not show any material difference between Nihei and the references cited in the Third Reexamination. To the contrary, we agree with Patent Owner that Petitioner’s unpersuasive arguments about the judging consistency limitation do not demonstrate that Nihei discloses this limitation any more so than Toyofuku. Prelim. Resp. 22–23. On the whole, we find Petitioner’s arguments about Nihei less persuasive than Patent Owner’s arguments that Nihei is cumulative to the art cited during the Third Reexamination. Prelim. Resp. 1, 8–18, 22–24. Thus, Becton, Dickinson factors (a) and (b) support Patent Owner’s position that substantially the same art was presented to the Office in the Third Reexamination. Additionally, we find significant overlap between arguments made during the Third Reexamination and the manner in which Petitioner relies on the prior art cited in the Petition. In the Third Reexamination, Petitioner’s counsel cited Toyofuku as allegedly disclosing the judging consistency limitation. Ex. 1005, 58–9. Here, Petitioner also argues that a person of ordinary skill in the art would have understood that Toyofuku discloses the judging consistency limitation. Pet. 44. Thus, Becton, Dickinson factor (d) also supports Patent Owner’s position that substantially the same art and arguments were presented to the Office in the Third Reexamination. Having determined that the Petition presents substantially the same art and arguments previously presented to the Office, we proceed to part two of the Advanced Bionics inquiry.” slip op. at 23
Discretionary denialPatents in suitUS 8,031,064 - PTAB · Sep 5, 2017 · IPR2017-00072 · APJ James A Tartal · IPR · Rehearing
The Board denied rehearing, leaving in place its discretionary denial of institution because the petition presented the same or substantially the same art or arguments previously presented to the Office.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When reconsidering a decision on institution, we review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Sabbaghian, disclosing an adjustable socket wrench, and Baker, disclosing a tube pointer, were not considered during prosecution. See Pet. 37, 41. Petitioner relies on Sabbaghian and Baker as disclosing dies arranged to form a variable-sized polygonal aperture, the only claimed feature Petitioner argues is missing from the alleged Applicant Admitted Prior Art. Pet. 3– 4, 37–43. According to Petitioner, “the polygonal-shaped die configuration is nothing new,” and “[f]or more than a century, skilled artisans have used such a configuration.” Id. at 4. Petitioner concedes that “[t]he die configuration disclosed in Sabbaghian and Baker is not unique. Such a die configuration is common in the prior art.” Id. at 93 (under the heading “The Claimed Die Configuration Was Ubiquitous In The Prior Art”). Although Sabbaghian and Baker were not considered, Petitioner notes that during examination Whitesell was applied as disclosing a crimper with a “substantially regular polygonal shape.” Pet. 22. Similarly, Tuberman was considered during prosecution as teaching a device with “an aperture of a substantially regular polygonal shape.” See Prelim. Resp. 19 (quoting Ex. 1002, 45). For the foregoing reasons we determine that the alleged Applicant Admitted Prior Art and Morales were previously presented to the Office. Additionally, the Petition further presents information from Sabbaghian and Baker, generally described by Petitioner as “ubiquitous” in the prior art, which we find to be the same or substantially the same as information considered during prosecution in the context of other references, including Whitesell and Tuberman. Id. at 10–11. According to Petitioner, “[t]he only distinction between the AAPA and the challenged claims is the shape and arrangement of the blades that form the claimed ‘polygonal aperture.’” Pet. 37 (citing Ex. 1011 ¶ 94). Petitioner argues that Whitesell can be distinguished from the asserted prior art in this proceeding because it does not teach “the straight-sided die/polygonal aperture limitation.” Req. Reh’g. 7. However, Petitioner does not dispute that Tuberman discloses this feature. See id. at 7–8. Thus, Petitioner has not shown a substantial difference between the art previously considered by the Office and the alleged prior art asserted in the Petition. Instead, Petitioner argues that the Examiner did not apply Tuberman in combination with the alleged Applicant Admitted Prior Art. According to Petitioner, “the Examiner applied Tuberman individually as an anticipatory reference,” and “[i]t is irrelevant to speculate why the Examiner did not make a combination that is so readily apparent.” Req. Reh’g. 8, 11.” slip op. at 4
Discretionary denialPatents in suitUS 6,915,560 - Adva Optical Networking, Inc. v. Rad Data Communications Ltd.Institution deniedPTAB · Mar 9, 2017 · IPR2016-01848 · APJ James A Worth · IPR · Institution
The Board denied institution on all challenged claims because the asserted prior art and arguments were the same or substantially similar to those considered during prosecution under § 325(d).
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“35 U.S.C. § 314(a) is guided, in part, by the further language of 35 U.S.C. § 325(d), which provides: “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.” 35 U.S.C. § 325(d); see generally Integrated Global Concepts, Inc. v. Advanced Messaging Tech., Inc., Case IPR2014- 01027, slip op. 7–8 (Paper 16) (PTAB Dec. 22, 2014) (declining to institute proceeding on claim where same prior art and substantially the same arguments were presented to the Office previously in reexamination). We agree with Patent Owner that the same prior art (i.e., AAPA and Rivaud) and substantially the same arguments were presented in the original prosecution of the ’689 patent. Petitioner’s asserted ground is identical to a rejection that was applied by the Examiner in the course of prosecution. The Examiner cited Admitted Prior Art as disclosing “a primary reference time clock that provides a reference time of day and a reference frequency,” and the Examiner relied upon Rivaud to “show a housing 1112 which houses the primary reference time clock and packet master clock.” Ex. 1007, 4. On this record, we find that the prior art submitted in the Petition is indeed the same as prior art submitted to the Office.” slip op. at 19
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“information presented in the petition filed under section 311 and any response filed under section 313 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.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108. For the reasons set forth below, we do not institute an inter partes review for the challenged claims.” slip op. at 2
Discretionary denialcites KSRPatents in suitUS 9,276,689 - Netapp Inc. v. Crossroads Systems, Inc.Institution deniedPTAB · Sep 3, 2015 · IPR2015-00777 · APJ Kevin W Cherry · IPR · Institution
The Board denied institution on claims 1–14 under § 325(d), finding the petition presented substantially the same prior art and arguments as an earlier proceeding.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“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 Petition in this proceeding presents the same prior art and substantially the same arguments previously presented in the ’1197 proceeding. As in the ’1197 proceeding, Petitioner relies on CRD-5500 User Manual, CRD-5500 Data Sheet, Smith, Kikuchi, Bergsten, and Hirai. Compare Pet. 3 with ’1197 proceeding Paper 1, 5 (“’1197 Pet.”). Petitioner also presents substantially the same arguments regarding the proposed combinations of (1) the CRD-5500 User Manual, CRD-5500 Data Sheet, and Smith; (2) Kikuchi and Bergsten; (3) Kikuchi, Bergsten, and Smith; and (4) Bergsten and Hirai. Compare Pet. 6–57 with ’1197 Pet. 11–56. To the extent that there are any substantive differences in the arguments or new arguments, we agree with Patent Owner that those different or new arguments could have been submitted in the ’1197 proceeding. See Prelim. Resp. 1. For the foregoing reasons, we determine that, in the present Petition, the “same or substantially the same prior art or arguments previously were presented to the Office” in the ’1197 proceeding.” slip op. at 6
Discretionary denialPatents in suitUS 6,425,035 - HTC Corporation / HTC America, Inc. v. NFC Technology, LLCRehearing deniedPTAB · Aug 20, 2015 · IPR2015-00384 · APJ James B Arpin · IPR · Rehearing
The Board denied HTC’s rehearing request and left in place its discretionary denial of institution on claims 13–15 and 19 based on § 325(d) and follow-on petition concerns.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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 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.) When rehearing a Decision on Institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for patent owner
“that, contrary to Petitioner’s argument, the two petitions challenge overlapping sets of claims.1 In particular, Petitioner expressly challenges claim 13 in both IPR2014- 01199 (see 1199 Dec. on Inst. 3) and IPR2015-00384 (Pet. 60 (“This Petition demonstrates that there is a reasonable likelihood that Petitioners will prevail in their challenge of patentability for Claims 13, 14, 15 and 19.” (emphasis added)). Further, to the extent that Petitioner argues that it only challenges the dependent claims, challenges to independent claim 13 are made expressly as part of the challenges to each of dependent claims 14, 15, and 19. Pet. 12–26 (claim 13 as unpatentable over Akiho); 31–39 (claim 13 as unpatentable over Amtmann); 44–46 (claim 13 as unpatentable over Amtmann and ECMA-340); 49–57 (claim 13 as unpatentable Charrat and Kuhl).2 With respect to claim 13, the asserted grounds in the Petition in IPR2015-00384 rely on the same references and make substantially the same arguments against claim 13 as those asserted in the Petition in IPR2014- 01199. As we indicated in the Decision on Institution, “we may exercise our discretion and decline to institute inter partes review under 35 U.S.C. § 325(d)” based on the assertion of the same references against claim 13. 384 Dec. on Inst. 9–10. Moreover, although at the time Petitioner filed its second Petition, Petitioner did not know on which, if any, of its asserted grounds we might institute review, Petitioner’s request that we consider identical challenges to claim 13 in each” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for patent owner
“Petition is unquestionably an attempt to obtain a “second bite at the apple,” at least with respect to claim 13.3 384 Dec. on Inst. 11; see Reh’g Req. 1. Moreover, to the extent that Petitioner also relies upon Arisawa to challenge claims 14, 15, or 19 on another ground(s), Petitioner’s asserted grounds and arguments make clear that Akiho or Charrat and Kuhl, or both, allegedly teach the additional limitations recited in claims 14, 15, or 19. See, e.g., Pet. 26–30 (applying the teachings of Akiho to claims 14, 15, and 19), 39–43 (applying the teachings of Amtmann and Arisawa to claims 14, 15, and 19). Petitioner presents no evidence or argument that Arisawa was not known or available to Petitioner at the time the Petition was filed in IPR2014-01199. We also note that Arisawa is listed among the “References Cited” on page 2 in Kuhl. See Conopo, Inc. v. The Proctor & Gamble Co., Case IPR2014-00506, slip op. at 6 (PTAB July 7, 2014) (Paper 17) (informative) (“The instant Petition relies on thirteen pieces of prior art: six that were raised in the 505 Petition . . .; and seven that are new to this proceeding . . . . Unilever, however, presents no argument or evidence that the seven newly cited references were not known or available to it at the time of filing of the 505 Petition.”); see also Samsung Elecs. Co. v. Rembrandt Wireless Techs., LP, Case IPR2015-00555, slip op. at 7 (PTAB June 19, 2015) (Paper 20) (“Petitioner simply presents arguments now that it could have made in [its earlier Petition], had it merely chosen to do so.”). Therefore, we deny Petitioner’s Request for Rehearing on this basis. 3 As noted below, however, Petitioner waited until after Patent Owner had filed a Preliminary Response in IPR2014-01199 before filing the follow-on Petition in IPR2015-00384.” slip op. at 5
- Strike new argumentNew argument disregardedDecided for patent owner
“presents evidence (e.g., Arisawa) and arguments that Petitioner had no reason to raise in the Petition in IPR2014-01199. Reh’g Req. 8–10. In particular, Petitioner argues that Patent Owner had not asserted that Petitioner infringed dependent claims 14, 15, and 19 until after the Petition in IPR2014-01199 was filed. Id. Petitioner presents a timeline in its Request for Rehearing, in which Petitioner suggests that Patent Owner filed an amended complaint in the related litigation alleging for the first time that Petitioner infringed dependent claims 14, 15, and 19. Id. at 2. Petitioner argues in the Request for Rehearing that, on August 19, 2014, Patent Owner served a second set of infringement contentions in the lawsuit, asserting dependent claims 14, 15, and 19 for the very first time. Because it was too late to address those claims in the first petition, Petitioner[] prepared and filed this second petition for inter partes review on December 6, 2014. Id. at 3 (emphasis added). Petitioner does not identify, however, where it raised this argument in its Petition in IPR2015-00384, as required by 37 C.F.R. § 42.71(d). See id. We determine that neither the timeline nor the fact that Patent Owner filed an amended complaint was raised or argued in the Petition in IPR2015-00384, as justification for filing a second petition. We could not have “misapprehended or overlooked” evidence or argument not previously presented. Therefore, we also deny Petitioner’s Request for Rehearing on this basis.” slip op. at 6
Discretionary denialPatents in suitUS 7,665,664
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.