- Keysight Technologies, Inc. v. Centripetal Networks, Inc.Institution deniedPTAB · Mar 22, 2023 · IPR2022-01421 · APJ Kevin F Turner · IPR · Institution
The Board denied institution on all challenged claims under § 325(d), finding the art and arguments substantially the same as those previously presented and no material Office error shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“[a] two-part framework: (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 2 U.S. Patent Publication No. 2006/0048142 A1 (filed Sept. 2, 2004) (published Mar. 2, 2006) (Ex. 1005, “Roese”). 3 K. Golnabi et al., Analysis of Firewall Policy Rules Using Data Mining Techniques, 2006 IEEE/IFIP Network Operations and Management Symposium, NOMS 2006, 10th IEEE/IFIP, 305–315 (2006) (Ex. 1008, “Golnabi”). 4 U.S. Patent Publication No. 2004/0015905 A1 (filed Oct. 26, 2001) (published Jan. 22, 2004) (Ex. 1006, “Huima”). 5 U.S. Patent No. 7,320,022 B2 (filed July 25, 2002) (issued Jan. 15, 2008) (Ex. 1007, “Hayter”). 6 U.S. Patent No. 5,226,141 (filed Nov. 18, 1991) (issued July 6, 1993) (Ex. 1009, “Esbensen”). presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“We are not persuaded by Petitioner’s assertion that, because the first prong of the Advanced Bionics test is met, Petitioner was not required to address the second step of the test. Patent Owner disclosed the ’148 FWD to the Examiner in an IDS and the Examiner acknowledged it. Under these circumstances, it was incumbent on Petitioner to demonstrate that the Office erred in a manner material to patentability of the challenged claims. Instead, Petitioner cabined its arguments to the Examiner not having considered the art and arguments. As the Examiner acknowledged the IDS disclosing the ’148 FWD and Petitioner did not plead material error, it is appropriate for us to exercise our discretion under 35 U.S.C. § 325(d) to deny institution, without further reaching the merits.” slip op. at 10
- BurdenDecided for patent owner
“was provided via an Information Disclosure Statement (IDS). See Advanced Bionics, Paper 6 at 7–8. Patent Owner also asserts that Petitioner has the burden of affirmatively demonstrating that the Office committed material error in issuing the challenged patent, and the Petition makes no allegation of error by the Office. Prelim. Resp. 12 (citing Pet. 9). We are not persuaded by Petitioner’s assertion that, because the first prong of the Advanced Bionics test is met, Petitioner was not required to address the second step of the test. Patent Owner disclosed the ’148 FWD to the Examiner in an IDS and the Examiner acknowledged it. Under these circumstances, it was incumbent on Petitioner to demonstrate that the Office erred in a manner material to patentability of the challenged claims. Instead, Petitioner cabined its arguments to the Examiner not having considered the art and arguments. As the Examiner acknowledged the IDS disclosing the ’148 FWD and Petitioner did not plead material error, it is appropriate for us to exercise our discretion under 35 U.S.C. § 325(d) to deny institution, without further reaching the merits.” slip op. at 10
Discretionary denialPatents in suitUS 10,681,009 - Darfon Electronics Corp. v. Michael ShipmanInstitution deniedPTAB · Dec 2, 2022 · IPR2022-01008 · APJ Debra K Stephens · IPR · Institution
The Board denied institution under § 325(d), finding the asserted art cumulative of art previously presented to the Office and no material Office error shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“In evaluating arguments under § 325(d), we use [a] two-part framework: (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 first part of the framework is satisfied, whether the petitioner slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“(a) THRESHOLD.—The Director may not authorize an inter partes review to be instituted unless the Director determines that the 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)). Petitioner challenges claims 1–20 as unpatentable under 35 U.S.C. § 103 in twelve grounds of unpatentability (Pet. 7). Generally, Patent Owner contends that the Petition should be denied as to all challenged claims (see Prelim. Resp.). We do not reach whether Petitioner has shown a reasonable likelihood of prevailing on at least one claim. For reasons discussed below, we discretionarily deny the Petition under 35 U.S.C. § 325(d).” slip op. at 2
Discretionary denialPatents in suitUS 10,942,581 - Sonos, Inc. v. Google, LLCInstitution deniedPTAB · Nov 9, 2021 · IPR2021-00963 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution of IPR for claims 1–11 and 13–20 under § 325(d), finding the art previously presented or substantially similar and no material Office error shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In evaluating arguments under § 325(d), we use [a] two-part framework: (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 first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential); see also Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III.C.5, first paragraph) (listing factors to consider in evaluating the applicability of § 325(d)). With regard to whether the same or substantially the same art previously was presented to the Office, the file history of the challenged ’375 patent evidences that Lim and Adar were previously presented to the Office and that Horn is substantially the same as art previously presented to the Office.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“III. CONCLUSION For the reasons set forth above, we exercise our discretion to deny institution under 35 U.S.C. § 325(d). IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that no inter partes review as to any claim of U.S. Patent No. 10,140,375 B2 is instituted, and the Petition is denied.” slip op. at 12
Discretionary denialPatents in suitUS 10,140,375 - PTAB · Jul 6, 2017 · CBM2016-00080 · APJ Kevin F Turner · CBM · Rehearing
The Board denied rehearing, maintaining its denial of institution under § 325(d) because the petition’s arguments and evidence were substantially the same as those previously presented.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“For the foregoing reasons, Petitioner has not shown that the Board abused its discretion in denying the instant Petition and not instituting a covered business method patent review of the ’792 Patent. III. CONCLUSION Insofar as we have addressed above the assertions set forth in Petitioner’s Request for Rehearing (Paper 13), the Request is granted. In all other respects, the Request is denied.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for patent owner
“Petitioner’s argument seems to rely on the supposition that any follow-on petition would need to correct any specific errors found in a prior petition to serve as a guide for the follow-on petition to fall within the discretion of 35 U.S.C. § 325(d). For example, if a petition urging unpatentability of claims over references A and B was found to be unworthy of institution because the petition did not provide a rationale to combine those references, Petitioner’s argument suggests that only a follow-on petition asserting references A and B and a proper rationale would fall within the discretion of 35 U.S.C. § 325(d). Presumably, a petition asserting references A and C could not be considered “the same or substantially the same prior art or arguments previously were presented to the Office.” However, as stated in the Decision, our jurisprudence covers more than such special circumstances, including rejecting a “second bite at the apple” over new references or arguments, when they are the same or substantially the same as those previously presented. Dec. 11. A prior failure can guide present actions, 7 even if those present actions do not cure every prior error, and they merely address alternative means of reaching the same conclusion. We remain persuaded that the proposed grounds proffered in the instant Petition involve evidence and arguments we previously considered in the ’167 proceeding and are substantially the same as those previously presented.” slip op. at 7
Discretionary denialcites NautilusPatents in suitUS 6,081,792 - T-Mobile US, Inc. / T-Mobile USA, Inc. et al. v. Tracbeam, LLCInstitution deniedPTAB · May 25, 2016 · IPR2016-00729 · APJ Barbara A Parvis · IPR · Institution
The Board denied institution on claims 1, 2, and 44 under § 325(d), and denied joinder with IPR2015-01712.
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.” 37 C.F.R. § 42.108(b). Our discretionary determination of whether to institute review is guided by 35 U.S.C. § 325(d), which states, in relevant part, that “[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.”4 Petitioner’s second attempt to challenge claims 1, 2, and 44 of the ’327” slip op. at 8
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“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 time for filing such a response, determines warrants the institution of an inter partes review under section 314. 35 U.S.C. § 315(c) For the reasons above, based on the circumstances of this case, we exercise our discretion under 35 U.S.C. § 325(d), and deny the Petition requesting institution of inter partes review in IPR2016-00729. Accordingly, we deny Petitioner’s request to join IPR2016-00729 with IPR2015-01712.” slip op. at 11
Discretionary denialPatents in suitUS 7,298,327 - 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
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.