- Microsoft Corporation v. Throughputer, Inc.Institution deniedPTAB · Nov 1, 2022 · IPR2022-00757 · APJ Matthew S Meyers · IPR · Institution
The Board denied institution on claims 1–24 under § 325(d), finding the asserted art substantially the same as art considered during prosecution and no material Office error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“considered by the Examiner during prosecution. As noted above, the Petition relies primarily on Nollet, in view of the knowledge of one of ordinary skill in the art, for teaching each limitation in the independent challenged claims. See Pet. 38–60, 67–72. Although the Petition cites additional teachings in Tuan, Miller, and Redaelli for certain limitations (see id.), Petitioner has not specifically identified any limitations for which the cited disclosure in Tuan, Miller, or Redaelli is not cumulative to that in Nollet. Rather, Petitioner asserts, for example, that “Nollet and Tuan are directed to similar systems that assign reconfigurable tiles of a hardware device to tasks of an application” (id. at 32), and that “Nollet and Miller are both directed to efficient resource sharing among applications, including with the use of reconfigurable devices, such as FPGAs” (id. at 33). Moreover, Petitioner reasons that combining the teachings of Tuan and Miller with those of Nollet “merely involves incorporating known features that are explicitly disclosed in Tuan and/or Miller and would have been understood by [one of ordinary skill in the art] as likely present but not explicitly disclosed by Nollet.” Id. at 34. Accordingly, we understand the Petition to be applying Tuan and Miller mainly as alternatives to Nollet, or as evidence of the knowledge of one of ordinary skill in the art. Although Petitioner highlights the Petition’s citation to Redaelli for claim element [1.10], quoted above in § I.E, and argues that the Office did not find this limitation to be present in the prior art (Pet. 5), Petitioner relies primarily on Nollet for element [1.10] (see id. at 58–59). Specifically, the Petition asserts that one of ordinary skill in the art “would have understood Nollet as minimizing reconfiguration of a processing unit assigned to a task that has a preference for that processing unit when the processing unit is already executing the task and has not yet completed it,” and only relies on Redaelli “[a]lternatively, with respect to [the obviousness ground based on Nollet, Tuan, Miller, and Redaelli].” Id. at 59. Further, Petitioner asserts that “[l]ike Nollet, Redaelli is directed to partially and dynamically reconfigurable FPGAs,” and reasons that adding the teachings of Redaelli to the combined teachings of Nollet, Tuan, and Miller “merely involves incorporating known features that are explicitly disclosed by Redaelli and would have been understood by [one of ordinary skill in the art] as likely present, but not explicitly disclosed by Nollet.” Id. at 37. Therefore, as with Tuan and Miller, Petitioner appears to apply Redaelli as an alternative to Nollet, or as evidence of the knowledge of one of ordinary skill in the art. In addition, Petitioner fails to distinguish the relied upon disclosure in Redaelli from Creamer or Young, both of which were cited and substantively discussed by the Examiner in the Notice of Allowance. See Ex. 1002, 87– 88.8 Based on the current record, we determine that Tuan, Miller, and Redaelli are essentially cumulative to Nollet or other prior art cited by the Examiner, and conclude that the first part of the Advanced Bionics framework is satisfied. See Advanced Bionics, Paper 6 at 7–8. b) Whether the Same or Substantially the Same Arguments Previously Were” slip op. at 18
Discretionary denialcites PhillipsPatents in suitUS 10,963,306 - Intel Corporation v. Acqis LLCInstitution deniedPTAB · Feb 2, 2022 · IPR2021-01095 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution of review of claims 10–16 and 22–27 under § 325(d), finding substantially the same arguments were previously presented and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“the following 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 [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 challenged claims.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . 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). In determining whether to institute an inter partes review, we “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). After considering the parties’ arguments and evidence, we exercise our discretion under § 325(d) to deny the Petition.” slip op. at 2
Discretionary denialPatents in suitUS 8,756,359 - Intel Corporation v. Acqis LLCInstitution deniedPTAB · Feb 2, 2022 · IPR2021-01094 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution under § 325(d), finding substantially the same arguments had been presented to the Office and Intel had not shown material error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Section 325(d) provides that in determining whether to institute an inter partes review, we “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.” To determine whether to deny institution under § 325(d), we use the following 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 [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 challenged claims.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“3. Summary We determine, on this record, that substantially the same arguments previously were presented to the Office. Further, we also disagree with Petitioner that the Office’s purported treatment of the arguments were unreasonable. As set forth under Advanced Bionics, if 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 the patentability of challenged claims. As a result, we exercise our discretion under § 325(d) to deny the Petition in this case. III. CONCLUSION For the foregoing reasons, we exercise our discretion under § 325(d) to deny the Petition. IV. ORDER It is hereby ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 20
§ 103 obviousnessDiscretionary denialPatents in suitUS 8,756,359 - Intel Corporation v. Acqis LLCInstitution deniedPTAB · Jan 14, 2022 · IPR2021-01102 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution of IPR on claims 14–36 under § 325(d), finding substantially the same 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 325dInstitution denied
“the following 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 [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 challenged claims.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“presented in the petition . . . and any response . . . 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). In determining whether to institute an inter partes review, we “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). After considering the parties’ arguments and evidence, we exercise our discretion under § 325(d) to deny the Petition.” slip op. at 2
Discretionary denial - Intel Corporation v. Acqis LLCInstitution deniedPTAB · Jan 14, 2022 · IPR2021-01093 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution of IPR on claims 1–17 under § 325(d), finding substantially the same arguments were previously presented and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Section 325(d) provides that in determining whether to institute an inter partes review, we “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.” To determine whether to deny institution under § 325(d), we use the following 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 [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 challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (footnote omitted).” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . 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). In determining whether to institute an inter partes review, we “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). After considering the parties’ arguments and evidence, we exercise our discretion under § 325(d) to deny the Petition.” slip op. at 2
Discretionary denialPatents in suitUS 8,626,977 - Intel Corporation v. Acqis LLCInstitution deniedPTAB · Dec 2, 2021 · IPR2021-01099 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution on claims 1–22 under § 325(d), finding substantially the same arguments had been presented to the Office and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Under § 325(d), the Board uses the following 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 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 challenged claims.” Advanced Bionics, Paper 6 at 8. If the petitioner fails to show that the Office erred, the Director may exercise his or her discretion not to institute inter partes review. Id.; see also Becton, Dickinson, Paper 8, 24 (exercising discretion where “Petitioner has not pointed to error by the Examiner”). slip op. at 7
Discretionary denialPatents in suitUS 9,529,769 - ZTE (USA) Inc. v. Fractus, S.A.Rehearing deniedPTAB · Oct 4, 2019 · IPR2018-01457 · APJ Kevin C Trock · IPR · Rehearing
The Board denied ZTE’s rehearing request and left institution denied, finding no abuse of discretion under § 325(d) or § 314(a).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“DISCUSSION The applicable standard for granting a request for rehearing of a petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party seeking rehearing has the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for patent owner
“Petitioner appears to limit the inquiry to evaluation of the prior art by a particular examiner, namely the ’069 examiner. However, § 325(d) provides that “the Director 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) (emphasis added). Moreover, the Becton Dickinson factors are non-exclusive, and factor 4 considers, “the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection.” Becton Dickinson at 17 (emphasis added). Neither Section 325(d) nor Becton Dickinson appears to limit the inquiry to a particular examiner as Petitioner argues. Consideration of the asserted prior art by the Office during previous examination of the patent at issue or closely related patents is, therefore, a relevant consideration under Section 325(d).” slip op. at 5
- Other 314aDecided for patent owner
“The parties’ Joint Notice Regarding Scheduling Conference from the district court litigation appears to indicate that the case is going forward. We further note that district court has completed claim construction. See Ex. 2038. As such, our reasoning from the Decision regarding section 314(a) remains sound. See Dec. 16 (stating that we were “persuaded that granting institution would have the Board consider the same prior art and essentially identical evidence and arguments already under consideration in the Texas District Court Case. Given these circumstances, our discretion under 35 U.S.C. § 314(a) falls in favor of denying institution.”). In its Request for Rehearing, Petitioner has not presented any persuasive evidence or arguments to demonstrate that our exercise of discretion under 35 U.S.C. § 314(a) was based on an erroneous interpretation of the law or on factual findings that are not supported by substantial evidence, represents an unreasonable judgment in weighing relevant factors, or misapprehended or overlooked a significant fact.” slip op. at 9
Discretionary denialPatents in suitUS 8,976,069 - ZTE (USA) Inc. v. Fractus, S.A.Rehearing deniedPTAB · Oct 2, 2019 · IPR2018-01455 · APJ Kevin C Trock · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution under § 325(d) and § 314(a).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party seeking rehearing has the burden of showing the decision should be modified. 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
“similarities and differences between the asserted art and the prior art involved during examination; and (2) the cumulative nature of the asserted art and the prior art evaluated during examination. Becton, Dickinson at 17– 18. Here, Petitioner concedes that the art asserted in the Petition, namely Misra I, Misra II, and Grangeat, was involved in the prior PTO reexamination proceedings, but argues that the asserted art was considered in a substantially different way than presented in the Petition. Req. Reh’g 8. The manner in which a petitioner relies on the prior art, however, is considered as part of Becton Dickinson factor 4 (the extent of the overlap between the arguments made during examination and the manner in which a petitioner relies on the prior art or a patent owner distinguishes the prior art), not factors 1 and 2. We do not agree that the Board was unreasonable in determining that factors 1 and 2 weighed in favor of denying institution, given that the art asserted in the Petition was also presented and considered in the reexamination proceedings.” slip op. at 4
- Other 314aInstitution denied discretionary otherDecided for patent owner
“litigation is stayed. Opp. 1. Patent Owner advises, “on March 15, 2019, the court issued a claim construction order reaffirming the earlier construction of the terms relevant to the present proceeding. Id. (citing Ex. 2028, passim). Patent Owner argues, “the claim construction order evidences the new court’s clear intent to proceed with the case.” Id. Patent Owner also advises that “[o]n April 12, 2019, the parties submitted a Joint Notice Regarding Scheduling Conference (1) requesting a trial date predating any conclusion to an instituted IPR, (2) confirming that fact discovery has completed, and (3) requesting a close to expert discovery on May 31, 2019.” Id. (citing Ex. 2029, 1–3). The parties’ Joint Notice Regarding Scheduling Conference from the district court litigation appears to indicate that the case is going forward. See Ex. 2029. We further note that district court has completed claim construction. See Ex. 2028. As such, our reasoning from the Decision regarding section 314(a) remains sound. See Dec. 20 (stating that we were “persuaded that granting institution would have the Board consider the same prior art and essentially identical evidence and arguments already under consideration in the Texas District Court Case. Given these circumstances, our discretion under 35 U.S.C. § 314(a) falls in favor of denying institution.”).” slip op. at 8
Discretionary denialPatents in suitUS 7,394,432 - ZTE (USA) Inc. v. Fractus, S.A.Rehearing deniedPTAB · Oct 1, 2019 · IPR2018-01451 · APJ Kevin C Trock · IPR · Rehearing
The Board denied ZTE’s rehearing request and maintained denial of institution under § 325(d) and § 314(a), finding no abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“DISCUSSION The applicable standard for granting a request for rehearing of a petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party seeking rehearing has the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for patent owner
“similarities and differences between the asserted art and the prior art involved during examination; and (2) the cumulative nature of the asserted art and the prior art evaluated during examination. Becton, Dickinson at 17– 18. Here, Petitioner concedes that the art asserted in the Petition, namely Misra I, Misra II, and Grangeat, was involved in the prior PTO reexamination proceedings, but argues that the asserted art was considered in a substantially different way than presented in the Petition. Req. Reh’g 8–9. The manner in which a petitioner relies on the prior art, however, is considered as part of Becton Dickinson factor 4 (the extent of the overlap between the arguments made during examination and the manner in which a petitioner relies on the prior art or a patent owner distinguishes the prior art), not factors 1 and 2. We do not agree that the Board was unreasonable in determining that factors 1 and 2 weighed in favor of denying institution, given that the art asserted in the Petition was also presented and considered in the reexamination proceedings.” slip op. at 4
- Other 314aDecided for patent owner
“The parties’ Joint Notice Regarding Scheduling Conference from the district court litigation appears to indicate that the case is going forward. See Ex. 2030. We further note that district court has completed claim construction. See Ex. 2029. As such, our reasoning from the Decision regarding section 314(a) remains sound. See Dec. 20 (stating that we were “persuaded that granting institution would have the Board consider the same prior art and essentially identical evidence and arguments already under consideration in the Texas District Court Case. Given these circumstances, our discretion under 35 U.S.C. § 314(a) falls in favor of denying institution.”). In its Request for Rehearing, Petitioner has not presented any persuasive evidence or arguments to demonstrate that our exercise of discretion under 35 U.S.C. § 314(a) was based on an erroneous interpretation of the law or on factual findings that are not supported by substantial evidence, represents an unreasonable judgment in weighing relevant factors, or misapprehended or overlooked a significant fact.” slip op. at 9
Discretionary denialPatents in suitUS 7,397,431 - Facebook, Inc. / Instagram LLC v. Skky, LLCRehearing deniedPTAB · Oct 23, 2017 · IPR2017-00691 · APJ Justin T Arbes · IPR · Rehearing
The Board denied Petitioner’s rehearing requests, leaving in place the denial of institution under § 325(d) because the later petition presented substantially the same prior art and arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“may “deny some or all grounds for unpatentability for some or all of the challenged claims.” 37 C.F.R. § 42.108(b). When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party requesting rehearing bears the burden of showing an abuse of discretion, and “[t]he request must specifically identify” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“We are not persuaded. As pointed out in the Decision, other than Petitioner’s analysis of the OFDM limitations of independent claims 1, 3, and 5, the petitions and supporting evidence appear to be identical. Dec. 5–6. Petitioner’s analysis of all other limitations of the independent claims and dependent claims 2, 4, and 6, as well as the corresponding portions of the declaration testimony of Tal Lavian, Ph.D., are the same. Id. As such, three of the four references (Rolf, Forta, and Gatherer) in the -89 Petition, roughly 25 out of 34 pages of substantive analysis of the claims in the -89 Petition, and roughly 55 out of 71 paragraphs of substantive analysis in Dr. Lavian’s declaration in the -89 Case are identical to what Petitioner presents in this proceeding. Again, the only difference is the analysis of one limitation of each independent claim. We are not persuaded that we abused our discretion in concluding that the instant Petition presents substantially the same prior art and arguments as what was presented previously in the -89 Case and that the Petition should be rejected under § 325(d).” slip op. at 4
Discretionary denialPatents in suitUS 8,892,465
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.