- Microsoft Corporation v. Almondnet, Inc.Institution deniedPTAB · Jan 30, 2023 · IPR2022-01319 · APJ Thomas L Giannetti · IPR · Institution
The Board denied institution for all challenged claims under § 325(d), finding Beyda had been presented to the Office and Microsoft had not shown material Examiner error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Here, Petitioner does not dispute Patent Owner’s evidence that Beyda was previously presented to the Office. Ex. 1004, 295. Thus, the first criterion of the Advanced Bionics framework (same art or arguments) is met. Advanced Bionics, Paper 6 at 7–8 (“Previously presented art includes art made of record by the Examiner and art provided to the Office by an applicant, such as on an Information Disclosure Statement (IDS),”). The second inquiry in the Advanced Bionics framework asks whether the Petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8–9. As Patent Owner points out, “although the Petition admits that the Examiner considered Beyda during prosecution, it fails to make any allegation whatsoever that the Examiner erred (let alone erred in a material way) in his consideration of Beyda.” Prelim. Resp. 18. As to Narin, Patent Owner argues that Petitioner “does not offer any explanation” why that reference is not “substantially the same” as art considered by the Examiner, “let alone how or why the Examiner materially erred in considering that art to not be invalidating.” Id. We agree that Petitioner has failed to demonstrate that the Office erred in its evaluation of the cited art. See Advanced Bionics, Paper 6 at 8–9 (“If a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review.”). Here, the Beyda prior art that was before the Examiner during the examination is identical to the art cited here.3 There is no argument or evidence before us that Beyda was concealed from the Examiner. The Examiner ultimately made a determination that the claims were patentable. Ex. 1004, 49, 92. As cautioned by Advanced Bionics, “[i]f reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability.” Advanced Bionics, Paper 6 at 9. Advanced Bionics goes on to explain the rationale for this rule: “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. Having considered the record presented by Patent Owner and the absence of any substantive showing from Petitioner, we are not persuaded of material Examiner error. Petitioner’s assertion that the prior art references in the Petition “were not substantively considered during the prosecution of the ’139 Patent, or in the prior CBM challenge,” without further explanation, is insufficient. In summary, applying the two-part framework of Advanced Bionics, we are persuaded to deny the Petition under 35 U.S.C § 325(d).” slip op. at 10
Discretionary denialPatents in suitUS 8,671,139 - Pharmacosmos A/S v. American Regent, Inc.Institution deniedPTAB · Aug 14, 2020 · PGR2020-00009 · APJ Jamie T Wisz · PGR · Institution
The Board denied institution of PGR challenging claims 1–22, finding substantially the same art and arguments 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
“In evaluating matters under § 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 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“instituted “unless . . . the information presented in the petition . . . if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” But even when a petitioner demonstrates a reasonable likelihood of prevailing with respect to one or more claims, institution of review remains discretionary. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with discretion on the question whether to institute review . . . .” (emphasis omitted)); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). In exercising that discretion, we are guided by the statutory requirement, in promulgating regulations for post-grant review, to consider the effect of any regulations on “the efficient administration of the Office [and] the ability of the Office to timely complete proceedings,” 35 U.S.C. § 326(b), as well as the requirement to construe our rules to “secure the just, speedy, and inexpensive resolution of every proceeding,” 37 C.F.R. § 42.1(b). Office guidance, issued June 5, 2018, also explains that the Board “will evaluate the challenges and determine whether § 325(d) is sufficiently” slip op. at 28
Discretionary denialPatents in suitUS 10,478,450 - Nitro Fluids, L.L.C. v. Cameron International CorporationRehearing deniedPTAB · Oct 15, 2019 · IPR2019-00804 · APJ Jon B Tornquist · IPR · Rehearing
The Board denied the rehearing request and maintained denial of institution for claims 1–15 under § 325(d) based on Kajaria and Guidry.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD FOR REHEARING Pursuant to 37 C.F.R. § 42.71(d): A party dissatisfied with a decision may file a single 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, an opposition, or a reply. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion exists where a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential in relevant part) and determined that the balance of these factors favored denial of the Petition under 35 U.S.C. § 325(d). Dec. 11–23. As part of this analysis, we determined that: Kajaria was previously presented to the office during prosecution and was the basis for a rejection by the Examiner; Petitioner and the Examiner relied on the same disclosures of Kajaria to support their arguments; Petitioner did not sufficiently point out how the Examiner erred in his evaluation of Kajaria; and the declaration testimony of Mr. Ely did not warrant reconsideration of the prior art previously analyzed by the Examiner. Id. at 12–22.” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Other
“fracturing tree, wherein the single outlet is coupled to the fracturing tree by a single fluid conduit that is the only fluid conduit connecting the skid apparatus in fluid communication with the well at which the one fracturing tree is positioned. Ex. 1001, 7:6–30.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successOther
“obviousness ground relies solely on modification of distribution modules 42. Req. Reh’g 14. According to Petitioner, the Petition specifically alleges that “it would have been obvious to modify any module, including specifically module 40, to use a single manifold, to support only a single valve group, for delivery of fluid to a single well, via a single fluid conduit.” Id. (citing Pet. 35–42, 49–52, 56–57; Ex. 1002 ¶¶ 92, 96, 99, 102, 103, 122, 124–126, 128, 138). We did not misunderstand or misapprehend this argument; indeed, we noted its logical appeal. Dec. 21 n.10. We instead declined to credit the inference underpinning this argument, i.e., that a single-manifold embodiment would use a single fluid conduit, because the only reference of record having a single distribution module coupled to a single manifold had two fluid conduits extending from the distribution module to the well. Id. Accordingly, we are not persuaded that we misunderstood or overlooked Petitioner’s obviousness arguments.” slip op. at 11
§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 9,903,190 - Juniper Networks, Inc. v. Finjan, Inc.Rehearing deniedPTAB · Jul 16, 2019 · IPR2019-00060 · APJ Miriam L Quinn · IPR · Rehearing
The Board granted rehearing only to address the overlooked construction dispute, but again denied institution because Jensen did not teach “mobile protection code.”
RulingsRehearing decision- RehearingRehearing, deniedDenied
“(“Dec. on Inst.”). The panel concluded that Petitioner had not shown a reasonable likelihood of prevailing in the asserted obviousness grounds because, for a particular ground, Petitioner failed to demonstrate sufficiently that Jensen1 teaches “mobile protection code.” Dec. on Inst. 11−12.2 Petitioner has filed a Request for Rehearing. Paper 8 (“Req. Reh’g”). Petitioner argues that the scope for the claim term “mobile protection code” was in dispute, and that we “failed to resolve the key claim construction dispute between the parties.” Id. at 1. According to Petitioner, rehearing is warranted to resolve the claim construction dispute and “fix the plain error in the Institution Decision.” Id. We are persuaded that in failing to address Petitioner’s construction, we overlooked the matter raised in Petitioner’s Request for Rehearing. Nevertheless, for the reasons discussed infra, after giving due consideration to Petitioner’s argument, we are persuaded that our decision to deny institution was correct, and therefore we deny the request insofar as it calls upon us to institute trial.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“(“Dec. on Inst.”). The panel concluded that Petitioner had not shown a reasonable likelihood of prevailing in the asserted obviousness grounds because, for a particular ground, Petitioner failed to demonstrate sufficiently that Jensen1 teaches “mobile protection code.” Dec. on Inst. 11−12.2 Petitioner has filed a Request for Rehearing. Paper 8 (“Req. Reh’g”). Petitioner argues that the scope for the claim term “mobile protection code” was in dispute, and that we “failed to resolve the key claim construction dispute between the parties.” Id. at 1. According to Petitioner, rehearing is warranted to resolve the claim construction dispute and “fix the plain error in the Institution Decision.” Id. We are persuaded that in failing to address Petitioner’s construction, we overlooked the matter raised in Petitioner’s Request for Rehearing. Nevertheless, for the reasons discussed infra, after giving due consideration to Petitioner’s argument, we are persuaded that our decision to deny institution was correct, and therefore we deny the request insofar as it calls upon us to institute trial.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“1 Protection Wrappers: A Simple and Portable Sandbox for Untrusted Applications, Proceedings on the 8th ACM SIGOPS European Workshop on Support for Composing Distributed Applications, filed in the record as Exhibit 1006. 2 We also exercised our discretion under 35 U.S.C. §§ 314(a) and 325(d) and denied institution. Petitioner does not challenge the exercise of discretion in this request for rehearing.” slip op. at 2
- Other 314aInstitution denied discretionary otherInstitution denied
“1 Protection Wrappers: A Simple and Portable Sandbox for Untrusted Applications, Proceedings on the 8th ACM SIGOPS European Workshop on Support for Composing Distributed Applications, filed in the record as Exhibit 1006. 2 We also exercised our discretion under 35 U.S.C. §§ 314(a) and 325(d) and denied institution. Petitioner does not challenge the exercise of discretion in this request for rehearing.” slip op. at 2
Claim constructionDiscretionary denialPatents in suitUS 7,647,633 - Hamilton Beach Brands, Inc. v. F’Real Food, LLCRehearing deniedPTAB · Apr 25, 2018 · IPR2017-00765 · APJ Lora M Green · IPR · Rehearing
The Board denied Hamilton Beach’s rehearing request and maintained its denial of institution, citing follow-on petition concerns and its discretion under §§ 314(a) and 325(d).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW When reconsidering a decision on institution, the Board reviews the decision for an abuse of discretion. See 37 C.F.R § 42.71(c). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must, in relevant part, “specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Petitioner’s arguments with those principles in mind.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“The Board has discretion not to institute an inter partes review. 35 U.S.C. § 314(a); Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“the PTO is permitted, but never compelled, to institute an IPR proceeding”); see also 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board may authorize the review to proceed on all or some of the challenged claims and on all or some of the grounds of unpatentability asserted for each claim.”). When exercising that discretion, the Board may take into account whether “the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d); see Conopco, Inc. v. The Proctor & Gamble Co., Case IPR2014-00628, slip op. 5– 10 (PTAB October 20, 2014) (Paper 21) (declining to institute because substantially the same arguments previously were presented to the Board). The issue of whether substantially the same arguments were raised previously in IPR2016-01105 arises in the present case. In addition, when determining whether to exercise our discretion not to institute a trial proceeding under 35 U.S.C. § 314(a), we seek to balance the equities between the parties, i.e., Petitioner’s desire to be heard against Patent Owner’s interest in avoiding harassment through repeated challenges. 5 Exhibit 1002 in IPR2016-01105. 6 U.S. Patent Publication No. 2002/0189460 A1, filed April 11, 2002, published December 19, 2002, to Brown et al. (“Brown”). Exhibit 1003 in IPR2016-01105. See H.R. Rep. No. 112-98, pt.1, at 48 (2011) (post-grant proceedings conducted under the AIA “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.”). In circumstances such as the present case, the Board considers the potential inequity of a petitioner filing serial attacks against the same claims of a patent, while benefiting from patent owner’s arguments and/or the Board’s decision in prior cases. See, e.g., Nautilus Hyosung Inc. v. Diebold, Inc., Case IPR2017-00426 slip op. at 12–16 (PTAB June 22, 2017) (Paper 17) (citing Xactware Sols., Inc. v. Eagle View Techs., Inc., Case IPR2017-00034, slip op. at 6–11 (PTAB April 13, 2017) (Paper 9); Baker Hughes Inc. v. LiquidPower Specialty Prods., Inc., Case IPR2016-01896, slip op. at 9–11 (PTAB March 31, 2017) (Paper 10); Duk San Neolux Co., Ltd. v. Idemitsu Kosan Co., Ltd., Case IPR2017-00197, slip op. at 4–11 (PTAB March 31, 2017) (Paper 10); NVIDIA Corp. v. Samsung Elec. Co., Case IPR2016-00134, slip op. at 8 (PTAB May 4, 2016) (Paper 9); Toyota Motor Corp. v. Cellport Sys., Inc., Case IPR2015- 01423, slip op. at 8 (PTAB Oct. 28, 2015) (Paper 7)); see also Conopco, Case IPR2014-00628, slip op. at 11–12. Therefore, we must balance the parties’ competing interests when determining whether to exercise our discretion and decline to institute. Id.” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDecided for patent owner
“An important reason for denying institution in the instant proceeding was that Petitioner had the advantage of Patent Owner’s preliminary response in IPR2016-01105, as well as the claim construction and analysis set forth in the decision denying institution in that proceeding. That is, Petitioner had the benefit of that information in crafting the challenges set forth in the instant proceeding, and, thus, was able to address Patent Owner’s arguments made in its preliminary response in IPR2016-01105, as well as address the concerns of the Board set forth in the decision denying institution in IPR2016-01105. Consideration of these factors is consistent with the principles set forth in General Plastic Indus. Co. v. Canon Kabushiki Kaisha, Case IPR2016-01357, 15−19 (PTAB Sept. 6, 2017) (Paper 19) (“General Plastics”) (designated precedential Oct. 18, 2017) (setting forth a non-exhaustive list of factors to be considered in determining whether to institute a follow-on petition, including whether the same petitioner previously filed a petition directed to the same claims of the same patent, and whether, at the time of filing of the second petition, the petitioner already received the patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review in the first petition). We noted further that Sato “was published nearly 30 years ago,” and Karkos issued on December 26, 2000. Dec. 11. We determined that Petitioner had not established that those references were not available to Petitioner when it filed the petition in IPR2016-01105. Id. We declined to provide a second chance merely because Petitioner’s “highly experienced searchers” did not find those references before the filing of the petition in IPR2015-01105. Id. (citing Pet. 6). That determination was another factor that informed our decision to exercise our discretion and decline to institute inter partes review in the instant proceeding. See, e.g., General Plastics at 16 (noting that other factors to be considered in granting a follow-on petition are whether at the time of filing of the first petition petitioner knew of the prior art asserted in the second petition or should have known of it, and whether the petitioner provides adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent). Finally, we noted that we were “troubled by the implications of Petitioner’s overarching premise – that it is cost-effective and appropriate to wait for a claim construction and institution decision by the Board, and then launch a follow-on patent challenge in reliance on additional references that challenge the same patent claims already addressed by the Board.” Dec. 13 (citing Pet. 7‒8). As noted in the Decision denying institution, however, “[s]uch tactics increase the costs to Patent Owner and impose unnecessary demands on the finite resources of the Board.” Id.; see, e.g., General Plastics at 16 (noting another factor to be considered is the finite resources of the Board).” slip op. at 7
- Other 314aInstitution denied discretionary otherDecided for patent owner
“The Board has discretion not to institute an inter partes review. 35 U.S.C. § 314(a); Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“the PTO is permitted, but never compelled, to institute an IPR proceeding”); see also 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board may authorize the review to proceed on all or some of the challenged claims and on all or some of the grounds of unpatentability asserted for each claim.”). When exercising that discretion, the Board may take into account whether “the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d); see Conopco, Inc. v. The Proctor & Gamble Co., Case IPR2014-00628, slip op. 5– 10 (PTAB October 20, 2014) (Paper 21) (declining to institute because substantially the same arguments previously were presented to the Board). The issue of whether substantially the same arguments were raised previously in IPR2016-01105 arises in the present case. In addition, when determining whether to exercise our discretion not to institute a trial proceeding under 35 U.S.C. § 314(a), we seek to balance the equities between the parties, i.e., Petitioner’s desire to be heard against Patent Owner’s interest in avoiding harassment through repeated challenges. 5 Exhibit 1002 in IPR2016-01105. 6 U.S. Patent Publication No. 2002/0189460 A1, filed April 11, 2002, published December 19, 2002, to Brown et al. (“Brown”). Exhibit 1003 in IPR2016-01105. See H.R. Rep. No. 112-98, pt.1, at 48 (2011) (post-grant proceedings conducted under the AIA “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.”). In circumstances such as the present case, the Board considers the potential inequity of a petitioner filing serial attacks against the same claims of a patent, while benefiting from patent owner’s arguments and/or the Board’s decision in prior cases. See, e.g., Nautilus Hyosung Inc. v. Diebold, Inc., Case IPR2017-00426 slip op. at 12–16 (PTAB June 22, 2017) (Paper 17) (citing Xactware Sols., Inc. v. Eagle View Techs., Inc., Case IPR2017-00034, slip op. at 6–11 (PTAB April 13, 2017) (Paper 9); Baker Hughes Inc. v. LiquidPower Specialty Prods., Inc., Case IPR2016-01896, slip op. at 9–11 (PTAB March 31, 2017) (Paper 10); Duk San Neolux Co., Ltd. v. Idemitsu Kosan Co., Ltd., Case IPR2017-00197, slip op. at 4–11 (PTAB March 31, 2017) (Paper 10); NVIDIA Corp. v. Samsung Elec. Co., Case IPR2016-00134, slip op. at 8 (PTAB May 4, 2016) (Paper 9); Toyota Motor Corp. v. Cellport Sys., Inc., Case IPR2015- 01423, slip op. at 8 (PTAB Oct. 28, 2015) (Paper 7)); see also Conopco, Case IPR2014-00628, slip op. at 11–12. Therefore, we must balance the parties’ competing interests when determining whether to exercise our discretion and decline to institute. Id.” slip op. at 5
Discretionary denialPatents in suitUS 7,520,658 - Palo Alto Networks, Inc. v. Finjan, Inc.Institution deniedPTAB · Mar 29, 2016 · IPR2015-01999 · APJ Miriam L Quinn · IPR · Institution
The Board denied institution under § 325(d), finding the petition presented the same or substantially the same prior art or arguments previously considered by the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“We deny the Petition for three reasons. First, the patent-at-issue has undergone a full reexamination and an appeal of that proceeding. The same subject matter and arguments were presented in both the reexamination proceeding and on appeal. Petitioner, essentially, asks the Board to undertake a second post-grant assessment on issues that have been decided by the Office previously and in a matter inconsistent with the previous findings and conclusions of the Board. Second, although the references themselves are not identical to the prior art already considered, the same subject matter was considered thoroughly in the reexamination proceeding. We are not persuaded that the addition of a witness declaration, by itself, is sufficient to persuade us that the thorough evaluation the claims underwent in reexamination in light of a more detailed disclosure of the same technology as that alleged in the Petition should be set aside. Finally, although we acknowledge that Petitioner has a direct interest in pursuing the instant Petition, we also acknowledge the burden and expense to Patent Owner in having to defend another challenge of the patent-at-issue based on substantially the same prior art or arguments already considered. See Prelim. Resp. 13. Further, in view of the fact that the Board has already thoroughly considered these issues in deciding the appeal, we determine that the resources of the Board should not be expended revisiting them again here.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“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 ’822 patent. IV. ORDER It is ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 11
Discretionary denialPatents in suitUS 7,058,822
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.