- Ecto World, LLC / Sv3, LLC v. Rai Strategic Holdings, Inc.Institution deniedPTAB · Mar 6, 2025 · IPR2024-01280 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board denied institution of IPR challenging claims 1–30 because the asserted art was previously presented to the Office and Petitioner did not show material Office error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“inter partes review, “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 a two-part framework for evaluating arguments under § 325(d): (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 the challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). In applying this framework, we consider the Becton, Dickinson1 factors that address discretion to deny institution when a petition presents the same or substantially the same prior art or arguments previously presented to the Office, including:” slip op. at 8
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that a person of ordinary skill in the art (“POSA”) would have had “a bachelor’s degree in electrical engineering, mechanical engineering, chemistry, physics, or an equivalent field, as well as 3–4 years of industry experience, or a master’s degree in the above fields, and 1–2 “[s]uch a POSA would have been familiar with electrically powered smoking articles and/or the components and underlying technology used therein.” Id. (citing Ex. 1003 ¶ 63. Patent Owner states that, for purposes of the Preliminary Response, “Patent Owner maintains that Petitioners’ arguments fail even under Petitioners’ POSA definition.” Prelim. Resp. 13. On this record, we preliminarily adopt Petitioner’s undisputed proposed definition because it appears to be consistent with the cited prior art and the disclosure of the ’202 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). B. Claim Construction” slip op. at 6
Discretionary denialcites PhillipsPatents in suitUS 11,925,202 - Kingston Technology Company, Inc. v. Polaris Innovations Ltd.Rehearing deniedPTAB · Oct 26, 2017 · IPR2017-00974 · APJ Matthew R Clements · IPR · Rehearing
The Board denied Kingston’s rehearing request, leaving in place the discretionary denial of inter partes review of claim 4 under §§ 314(a) and 325(d).
RulingsRehearing decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“We are not persuaded by Petitioner’s argument because we disagree with its premise—i.e., that denying inter partes review of claim 4 may result in an inconsistent application of the law. As an initial matter, Petitioner’s argument depends upon speculation about whether the panel in the 1622 IPR will determine that the subject matter of proposed, substitute claim 9 is unpatentable. Even if that becomes true, however, it would not result in an inconsistent application of the law because our denial of institution of inter partes review of claim 4 is not an affirmative determination that the subject matter of claim 4 is patentable. The denial of institution in the 1622 IPR was based on a deficiency of the petition in that case. Kingston Technology Company, Inc. v. Polaris Innovations Ltd., Case IPR2016-01622, slip op. at 17, 18 (PTAB February 15, 2017) (Paper 7) (determining, with respect to claim 4, that Petitioner did not explain persuasively how and/or why a person of ordinary skill in the art would have made the proposed modifications to Simpson alone or in view of the teachings of the Intel Specification); see id., slip op. at 6 (PTAB April 6, 2017) (Paper 16) (denying request for rehearing). The denial of institution in this proceeding was because, inter alia, “we determine[d] that the prior art and arguments asserted in this Petition are ‘substantially the same’ as those in the first petition” (Dec. 13) and, therefore, declined to reach the merits of the Petition. In neither decision did the Board determine affirmatively that claim 4 is patentable over the prior art asserted in the respective petitions. As a result, even if the panel in the 1622 IPR later determines that proposed substitute claim 9 is unpatentable, that determination will not be inconsistent with our denial of institution of inter partes review of claim 4.” slip op. at 4
- RehearingRehearing, deniedDenied
“We are not persuaded by Petitioner’s argument because we disagree with its premise—i.e., that denying inter partes review of claim 4 may result in an inconsistent application of the law. As an initial matter, Petitioner’s argument depends upon speculation about whether the panel in the 1622 IPR will determine that the subject matter of proposed, substitute claim 9 is unpatentable. Even if that becomes true, however, it would not result in an inconsistent application of the law because our denial of institution of inter partes review of claim 4 is not an affirmative determination that the subject matter of claim 4 is patentable. The denial of institution in the 1622 IPR was based on a deficiency of the petition in that case. Kingston Technology Company, Inc. v. Polaris Innovations Ltd., Case IPR2016-01622, slip op. at 17, 18 (PTAB February 15, 2017) (Paper 7) (determining, with respect to claim 4, that Petitioner did not explain persuasively how and/or why a person of ordinary skill in the art would have made the proposed modifications to Simpson alone or in view of the teachings of the Intel Specification); see id., slip op. at 6 (PTAB April 6, 2017) (Paper 16) (denying request for rehearing). The denial of institution in this proceeding was because, inter alia, “we determine[d] that the prior art and arguments asserted in this Petition are ‘substantially the same’ as those in the first petition” (Dec. 13) and, therefore, declined to reach the merits of the Petition. In neither decision did the Board determine affirmatively that claim 4 is patentable over the prior art asserted in the respective petitions. As a result, even if the panel in the 1622 IPR later determines that proposed substitute claim 9 is unpatentable, that determination will not be inconsistent with our denial of institution of inter partes review of claim 4.” slip op. at 4
Discretionary denialPatents in suitUS 6,850,414 - Kingston Technology Company, Inc. v. Polaris Innovations Ltd.Institution deniedPTAB · Aug 14, 2017 · IPR2017-00974 · APJ Matthew R Clements · IPR · Institution
The Board denied institution of inter partes review of claim 4, exercising its discretion under § 325(d) because the 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
“With respect to the eighth factor, we determine that the prior art and arguments asserted in this Petition are “substantially the same” as those in the first petition. We agree with Patent Owner that this Petition uses different secondary references but that those references “serve the same purpose.” Prelim. Resp. 19. For example, whereas the first petition relied upon the Intel Specification for teaching a module having a height in the range recited by claim 4, this Petition relies upon Karabatsos for teaching a module with a height of between 1.125 and 1.250 inches. Pet. 35 (citing Ex. 1003 ¶ 27). As in its first Petition, Petitioner argues that a person of ordinary skill in the art would have recognized the design need for modules with the recited height and would have found it obvious to reduce the height of Simpson’s module. Pet. 35–38. This is substantially the same argument that we determined not to be persuasive in IPR2016-01622. Prelim. Resp. 40–41. In particular, this argument, like the argument in the first Petition, does not address[], for example, the dimensions of the components taught by Simpson, whether two rows of memory chips would fit on a printed circuit board that has a height of only 1 to 1.2 inches, or—if the memory chips taught by Simpson would not fit—what a person of ordinary skill in the art would have known about the dimensions of similar memory chips as of the critical date that would have made it obvious to fit two rows of them on a printed circuit board having a height of only 1 to 1.2 inches. Kingston Technology Company, Inc. v. Polaris Innovations Ltd., Case IPR2016-01622, slip op. at 6 (PTAB April 6, 2017) (Paper 16). Petitioner relies upon substantially the same argument in the ground based upon Bechtolsheim. Pet. 51–54. Bechtolsheim teaches three rows of chips. See, e.g., Ex. 1004, Figs. 1a, 2a. Petitioner suggests that a person of ordinary skill in the art could, “for example, simply eliminat[e] a row of the DRAM memory devices to reduce the profile height of the memory module” (Pet. 53), but Petitioner does not address the dimensions of the memory devices taught by Bechtolsheim, whether two rows of those devices would fit on a printed circuit board that has a height of only 1 to 1.2 inches, or—if the memory chips taught by Bechtolsheim would not fit—what a person of ordinary skill in the art would have known about the dimensions of similar memory chips as of the critical date that would have made it obvious to fit two rows of them on a printed circuit board having a height of only 1 to 1.2 inches.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“D. Summary On this record, we exercise our discretion not to institute inter partes review. 35 U.S.C. §§ 314(a), 325(d). III. ORDER Accordingly, it is ORDERED that the Petition is denied.” slip op. at 14
Discretionary denialPatents in suitUS 6,850,414 - Arista Networks, Inc. v. Cisco Systems, Inc.Institution deniedPTAB · Jun 11, 2016 · IPR2016-00301 · APJ Matthew R Clements · IPR · Institution
The Board denied institution of inter partes review of claims 1-5, 7-10, 12-22, and 25-31 under § 325(d), finding substantially the same art or arguments had been presented before.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“In determining whether to exercise our discretion to deny institution under § 325(d), we have reviewed the timeline of the Petition’s filings. Petitioner filed the instant Petition on December 9, 2015, approximately two months after the Board issued the decisions denying institution in the ’973 IPR. The reliance on Radia in the instant Petition appears, therefore, to be an attempt to bolster the unsuccessful challenge previously presented regarding Hendel’s alleged disclosure of the limitations of claim 1. See Prelim. Resp. 16–18 (arguing Petitioner used prior Institution Decisions as a roadmap); see also id. at 14–16 (arguing Petitioner fails to explain why Radia could not have been presented in an earlier petition). Under § 325(d), our determination here rests on whether the same or substantially the same prior art was presented previously. Finding that Hendel was presented previously in the ’973 IPR, and that the instant Petition relies on bolstering Hendel guided by our Decision in the ’973 IPR, we exercise our discretion under § 325(d) and deny institution of inter partes review. III. CONCLUSION For the foregoing reasons, we conclude that the instant Petition raises the same or substantially the same prior art or arguments as those previously presented to the Office. In light of the circumstances of the present case, we exercise our discretion not to institute inter partes review of the ’577 patent.” slip op. at 8
Discretionary denialPatents in suitUS 6,377,577 - Arista Networks, Inc. v. Cisco Systems, Inc.Institution deniedPTAB · Jun 6, 2016 · IPR2016-00304 · APJ Miriam L Quinn · IPR · Institution
The Board denied institution of inter partes review of claim 63 because the petition relied on substantially the same prior art and arguments previously presented.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Hendel, however, was asserted as disclosing all the limitations of claim 63 in a previous inter partes review petition. In particular, Petitioner asserted Hendel, alone, in challenging the unpatentability of claim 63 in IPR2015-00976 (“the ’976 IPR”). The Board denied institution of inter partes review in the ’976 IPR on October 19, 2015, stating that “[n]either Petitioner, nor Petitioner’s Declarant, has tied the matching in Hendel to a decision whether or not to forward a packet.” Arista v. Cisco, ’976 IPR, Paper 9, slip op at 15 (PTAB Oct. 19, 2015). The instant Petition does not explain how Petitioner’s contentions are different from those presented previously in the ’976 IPR. Nor does Petitioner provide any cogent rationale for why the Board should undertake a second Petition asserting substantially similar prior art Petitioner previously presented.” slip op. at 6
Discretionary denialPatents in suitUS 7,023,853 - T-Mobile US, Inc. / T-Mobile USA, Inc. et al. v. Tracbeam, LLCInstitution deniedPTAB · May 25, 2016 · IPR2016-00745 · APJ Kevin F Turner · IPR · Institution
The Board denied institution for claim 17 under § 325(d) because the same prior art had been presented in an earlier petition, and denied joinder as moot.
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. Denial of a ground is a Board decision not to institute inter partes review on that ground.” 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). This is an instance in which Petitioner presents the same prior art in a second petition along with arguments to correct errors in a first petition.” slip op. at 10
- 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
- PTAB / AIA Trials › §315(b) time barNot reached
“1687 proceeding. Mot. for Joinder. Petitioner argues that the Petition is timely by virtue of its Motion for Joinder. Pet. 12–13; see also 35 U.S.C. § 315(b) (“The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c).”). 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.” slip op. at 9
Discretionary denialPatents in suitUS 7,764,231 - Arista Networks, Inc. v. Cisco Systems, Inc.Rehearing deniedPTAB · Mar 29, 2016 · IPR2015-01710 · APJ Bryan F Moore · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution under § 325(d), finding the request did not show that it overlooked or misapprehended any matter.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS When considering a request for rehearing, we review the Decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the Decision should be modified, and “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“35 U.S.C. § 325(d). Petitioner does not address the Decision’s discussion of the anticipation ground presented in the ’974 Petition. The Decision found that the anticipation ground presented the same arguments regarding Habraken as were presented regarding Habraken in the ’974 Petition. Dec. 9–10.” slip op. at 3
Discretionary denialPatents in suitUS 7,224,668 - Arista Networks, Inc. v. Cisco Systems, Inc.Institution deniedPTAB · Feb 16, 2016 · IPR2015-01710 · APJ Bryan F Moore · IPR · Institution
The Board denied institution on all challenged claims under § 325(d), finding the petition presented substantially the same art and arguments as the earlier IPR.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Habraken, which was not stated with specificity. “The [’974 IPR] Petition, therefore, fails to identify with sufficient specificity the differences between the claimed invention and the prior art.” ’974 Dec. 17. While the current Petition apparently attempts to provide such specificity (See Pet. 28–31), Patent Owner, nonetheless, has been forced to address a similar ground with similar arguments in two separate Petitions. Prelim Resp. 9, 10; ’974 Prelim. Resp. 22–25, 49–52; see Biodelivery Sciences International, Inc. v. RB Pharmaceuticals Limited, Case IPR2014-00998, slip op. at 7–8 (PTAB December 19, 2014) (Paper 12) (determining, in exercising § 325(d) discretion with respect to a ground in the second-filed petition that was based on a reference not formally included in the ground from the first-filed petition and which the prior DI merely acknowledged as a citation in a claim chart, that the ground in the second-filed petition presented was “the same arguments and relies substantially on the same prior art that the same Petitioner relied upon in its earlier Petition regarding the same claims of the same patent”). Allowing 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. See H.R. Rep. No. 112-98, pt.1, at 48 (2011) (“While this amendment is intended to remove current disincentives to current administrative processes, the changes made by it are not to be used as tools for harassment or a means to prevent market entry through repeated litigation and administrative attacks on the validity of a patent. Doing so would frustrate the purpose of the section as providing quick and cost effective alternatives to litigation.”). For these reasons, we conclude that the instant Petition advances “the same or substantially the same prior art or arguments [that] previously were presented to the Office” in the ’974 IPR, and, therefore, we have discretion under § 325(d) to deny institution of the obviousness ground based on Frazier and Habraken.” slip op. at 10
Discretionary denialPatents in suitUS 7,224,668
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.