- Vovomart (HK) Enterprises Co., Ltd. / HK Sanodesk Co., Ltd. et al. v. Office Kick, Inc.Institution deniedPTAB · Jan 12, 2023 · PGR2022-00048 · APJ James A Tartal · PGR · Institution
The Board denied institution under § 325(d), finding the same or substantially the same art had been presented to the Office and Petitioner showed no material Office error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“previously presented to the Office under our framework for evaluating discretionary denial under Section 325(d), we next consider whether Petitioner “has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics, Paper 6 at 8; see also id. at 8–9 (further explaining that if “petitioner fails to make a showing of material error,” generally discretion will be exercised to deny institution of review). In the second part of our framework, we consider (i) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (ii) whether Petitioner has pointed out sufficiently how the Examiner erred in evaluating the asserted prior art; and (iii) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art. See id. at 9 n.10, 10– 11 (citing factors (c), (e), and (f) of Becton, Dickinson). For the reasons that follow, we find that Petitioner does not demonstrate an error material to patentability.” slip op. at 13
Discretionary denialPatents in suitUS 11,160,367 - Atrium Medical Corporation v. Bard Peripheral Vascular, Inc.Institution deniedPTAB · Jan 20, 2022 · IPR2021-01200 · APJ James A Tartal · IPR · Institution
The Board denied institution on all challenged claims and grounds under § 325(d), finding substantially the same art had been presented to the Office and no material error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Section 325(d), the Board uses the following two-part framework: (1) determining 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, determining 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.” slip op. at 20
- Expert testimonyPetitioner expert discountedOther
“Pet. vi. Although both citations above refer to “Herts” as an author, it is apparent that the citations to the two articles provide different article titles, different publications, and different publication dates. Accordingly, Petitioner’s assertion that “Bardport specifically identifies Herts as ‘on the subject’ of, and ‘of help’ regarding, the use of power injectors with Bard’s venous access port assembly,” is incorrect, because the article Petitioner relies on as Herts is not the article cited in Bardport authored by “Herts.” See Pet. 22 (citing Ex. 1012, 27–28; Ex. 1038, 1–2). Mr. Leschinsky’s testimony regarding Bardport on this point is likewise incorrect. See Ex. 1003 ¶ 94. Mr. Leschinsky states that “[i]t is my opinion that a [person of ordinary skill in the art] would have been motivated to combine the 9 The identical question and answer appears on multiple pages of Exhibit 1012. See Ex. 1012, 21–22, 27–28, 33–34. teachings of Herts . . . because Bardport itself acknowledges Herts’ findings,” and “in response to a ‘frequently asked question’ titled ‘[c]an catheters be used in the Radiology Department with the Power Injector?’ Bardport cites to Herts.” Id. (citing Ex. 1012, 21–22). As explained above, Bardport does not cite to Herts, the reference relied upon by Petitioner, but instead refers to a different article identifying “Herts” as the author.” slip op. at 14
Discretionary denialPatents in suitUS 7,947,022 - Atrium Medical Corporation v. Bard Peripheral Vascular, Inc.Institution deniedPTAB · Jan 20, 2022 · IPR2021-01199 · APJ James A Tartal · IPR · Institution
The Board denied institution on all challenged claims and grounds under § 325(d), finding the art previously presented to the Office and no material Office error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Section 325(d), the Board uses the following two-part framework: (1) determining 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, determining 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.” slip op. at 20
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2019). 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.” 35 U.S.C. § 314(a). The Board has discretion to deny a request for institution when the information presented shows that the petitioner raises “the same or substantially the same prior art or arguments previously presented to the Office,” for example, during patent examination or” slip op. at 2
- Expert testimonyPetitioner expert discountedOther
“See Pet. 54 (citing Ex. 1012, 27–28; Ex. 1038, 2). Mr. Leschinsky’s testimony regarding Bardport on this point is likewise incorrect. See Ex. 1003 ¶ 100. Mr. Leschinsky states that “[i]t is my opinion that a [person of ordinary skill in the art] would have been motivated to combine the teachings of Herts . . . because Bardport itself acknowledges Herts’ findings,” and “in response to a ‘frequently asked question’ titled ‘[c]an catheters be used in the Radiology Department with the Power Injector?’ Bardport cites to Herts.” Id. (citing Ex. 1012, 21–22). As explained above, Bardport does not cite to Herts, the reference relied upon by Petitioner, but instead refers to a different article identifying “Herts” as the author.” slip op. at 15
Discretionary denialPatents in suitUS 7,785,302 - Atrium Medical Corporation v. Bard Peripheral Vasulcar, Inc.Institution deniedPTAB · Jan 10, 2022 · IPR2021-01197 · APJ Ryan H Flax · IPR · Institution
The Board denied institution of IPR challenging claims 8, 9, and 11 under § 325(d), finding the same art had been presented before and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In evaluating the exercise of discretion to deny institution under Section 325(d), the Board uses the following two-part framework: (1) determining 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, determining 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.” slip op. at 18
- Expert testimonyOther
“5 It is specifically this portion of Melsky that Petitioner cites as teaching a power-injectable access port, as claimed. See Pet. 27, 31, 36; see also Ex. 1003 ¶¶ 66, 70, 74 (analyzing Melsky and concluding it teaches a power injectable port, as claimed). We note that Melsky never expressly mentions a power injectable port. See generally Ex. 1008. Petitioner’s witness relies on Melsky’s disclosure that its port can withstand pressures of 200 psi or more as inherently disclosing a power injectable port; however, the witness merely concludes this without citation to supporting evidence. This is meager evidence of an alleged inherent disclosure intended to be a foundation of Petitioner’s challenges in this proceeding. “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a); see TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1358–59 (Fed. Cir. 2019) (“conclusory expert testimony is inadequate to support an obviousness determination on substantial evidence review.”).” slip op. at 16
Discretionary denialPatents in suitUS 7,959,615 - Baker Hughes Oilfield Operations, Inc. v. Smith International, Inc.Institution deniedPTAB · Dec 22, 2016 · IPR2016-01451 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution: it exercised discretion as to claims 43–46, 49, 50, 62–69, and 72, and found no reasonable likelihood of obviousness for claims 55–58.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“determining whether to institute or order a proceeding under this chapter . . . 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.” In light of § 325(d), we consider whether the reexamination contains the same or substantially the same art or arguments as presented in the Petition. Patent Owner argues that we should decline to institute inter partes review under 35 U.S.C. § 325(d) because the Petition raises the same or substantially the same prior art or arguments that were presented previously to the Office. Prelim. Resp. 19–26. In particular, Patent Owner contends that each of the claims in the reexamination was rejected based on Eddison, under either 35 U.S.C. § 102(b) and/or in combination with Jewkes under § 103(a), and that Petitioner relies upon Jewkes again under § 102(b) in its Petition. Id. at 23–26. Petitioner makes no attempt to explain why the references that form the bases for Petitioner’s challenge here are not the same or substantially similar prior art to that presented during the reexamination or why the arguments are not the same or substantially similar to those presented previously to the Office. Eddison and Jewkes were relied upon in the reexamination. See id. at 141–60 (Office Action (mailed Aug. 25, 2014)). Additionally, Tandberg was presented to the Office in conjunction with the original prosecution of the ’817 patent. See Ex. 2003; Prelim. Resp. 28.” slip op. at 9
- Other 314aInstitution denied discretionary otherInstitution denied
“Patent Owner makes a valid point. Section 1.530(k) of Title 37 of the Code of Federal Regulations provides: “Amendments not effective until certificate. Although the Office actions will treat proposed amendments as though they have been entered, the proposed amendments will not be effective until the reexamination certificate is issued and published.” This places us in a difficult position. If Patent Owner ultimately succeeds in the appeal of the reexamination, a certificate will issue and the amendments to claim 43 and its dependents will be “effective.” See id.; see Ex. 1007, 166 (showing the amendments to claim 43). Yet Petitioner provides no analysis of the amended limitations of claim 43. See, e.g., Pet. 16. Alternatively, if Patent Owner is unsuccessful in its appeal to the Federal Circuit, claim 43 and its dependents, as challenged in the reexamination, will be declared unpatentable. In either circumstance, any review we undertake of the unamended version of claim 43, and the claims depending therefrom, will be for naught. Accordingly, in light of the above circumstances, reviewing these claims on the record presented would waste judicial resources as well as the resources of the parties.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner that Petitioner has not articulated a clear reason as to why one of ordinary skill in the art would have modified Jewkes’s drilling assembly to include the additional structures taught by Tandberg and Eddison. We recognize that Petitioner points to Tandberg’s teaching that employing the same fundamental structure as an underreamer and as a stabilizer has an advantage, but Petitioner never explains what that advantage is or why it would have prompted one of ordinary skill in the art to modify Jewkes.5 Accordingly, on the record before us, Petitioner has not established a reasonable likelihood that it would prevail in showing that the combination of Jewkes, Tandberg, and Eddison would have rendered the subject matter of claims 55–58 obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“We agree with Patent Owner that Petitioner has not articulated a clear reason as to why one of ordinary skill in the art would have modified Jewkes’s drilling assembly to include the additional structures taught by Tandberg and Eddison. We recognize that Petitioner points to Tandberg’s teaching that employing the same fundamental structure as an underreamer and as a stabilizer has an advantage, but Petitioner never explains what that advantage is or why it would have prompted one of ordinary skill in the art to modify Jewkes.5 Accordingly, on the record before us, Petitioner has not established a reasonable likelihood that it would prevail in showing that the combination of Jewkes, Tandberg, and Eddison would have rendered the subject matter of claims 55–58 obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 12
§ 103 obviousnessDiscretionary denialPatents in suitUS 6,732,817 - Baker Hughes Oilfield Operations, Inc. v. Smith International, Inc.Institution deniedPTAB · Dec 22, 2016 · IPR2016-01450 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution on all challenged claims under § 325(d), citing overlapping prior art and arguments, the pending reexamination appeal, and resource conservation.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“D. 35 U.S.C. § 325(d) Section 325(d) of Title 35 of the United States Code provides: “In determining whether to institute or order a proceeding under this chapter . . . 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.” In light of § 325(d), we consider whether the reexamination contains the same or substantially the same art or arguments as presented in the Petition.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“II. CLAIM CONSTRUCTION Although Petitioner and Patent Owner present proposed constructions for several claim terms, no terms require express construction for purposes of this Decision. Pet. 15–21; Prelim. Resp. 10–23.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerGranted
“On August 29, 2016, Petitioner requested, via electronic mail, to file a motion to correct its identification of the real party in interest in this proceeding. In particular, Petitioner requested the addition of Baker Hughes Incorporated as a real party in interest. Petitioner indicated that Patent Owner would not oppose its request. In a responsive email on September 29, 2016, we authorized Petitioner to file a motion to correct the identified real party in interest. On October 4, 2016, Petitioner filed an Updated Mandatory Notice in which Petitioner stated that it “moves the Board to allow correction of Petitioner’s Real Part in Interest (‘RPI’) disclosure.” Paper 8, 1. Although Petitioner did not file a motion to correct as it had requested, we treat its updated mandatory notice as such and hereby grant Petitioner’s request. Accordingly, Baker Hughes Incorporated is a real party in interest in this proceeding as well.” slip op. at 3
Claim constructionDiscretionary denialPatents in suitUS 6,732,817 - 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 - 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.