- 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 - 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
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.