- LG Electronics Inc. / LG Electronics USA, Inc. v. Image Processing Technologies, LLCInstitution deniedPTAB · May 11, 2023 · IPR2023-00104 · APJ Barbara A Benoit · IPR · Institution
The Board denied institution on claim 1, finding the petition presented the same or substantially the same art or arguments previously considered by the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“under 35 U.S.C. § 325(d) to deny institution of an inter partes review. See 37 C.F.R. § 42.4(a) (The Director delegated her authority to determine whether trial should be instituted to the Board.). Section 325(d) of Title 35 of the United States Code states, in relevant part: “In 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.” We use a two-part framework for evaluating arguments under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of 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 12
- Prior constructionPrior construction adoptedDecided for petitioner
“applied the construction of “the [at least two] calculation units being configured to form a histogram representative of the parameter” (the “common parameter” limitation) as meaning “the histogram calculation units being configured to each form a histogram representative of at least one common parameter.” Ex. 1005 (IPR 336 Final Written Decision), 12– 14; see Ex. 1006 (IPR 1189 Decision Denying Institution), 9; Ex. 1007 (Reexam 056 Decision finding claim 1 patentable), 8.” slip op. at 11
Claim constructionDiscretionary denialcites Phillips · GrahamPatents in suitUS 6,959,293 - Alarm.Com, Inc. v. Vivint, Inc.Institution deniedPTAB · Nov 1, 2022 · IPR2022-00728 · APJ Charles J Boudreau · IPR · Institution
The Board denied institution on all challenged claims under § 325(d), finding substantially the same art had been presented during prosecution and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”), the Board applied a two-part framework in considering whether to exercise discretion to deny institution under § 325(d): “(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of 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.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“After considering the Petition and associated evidence, we exercise” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on our review of the record at this stage, we find that Petitioner’s proposal is consistent with the level of skill reflected in the prior art references of record. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (listing the type of problems encountered in the art, prior art solutions to those problems, and the sophistication of the technology as factors that may be considered in determining the level of ordinary skill in the art). See also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”). Accordingly, for purposes of this decision and to the extent necessary, we adopt Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose constructions for any claim terms. See Pet. 6 (citing 37 C.F.R. § 42.100(b)). On this record, we determine that no terms or phrases in the claims require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 and only to the extent necessary to resolve the controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
Claim constructionDiscretionary denialPatents in suitUS 9,349,262 - 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 - ADT LLC v. Vivint, Inc.Institution deniedPTAB · Aug 22, 2022 · IPR2022-00612 · APJ Charles J Boudreau · IPR · Institution
The Board denied institution on all challenged claims under § 325(d), finding substantially the same art had been considered and no material examiner error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Because (1) Saylor ’265 was made of record by the examiner and contains essentially the same disclosure as Saylor, (2) we find that the disclosures of Gregory relied upon by Petitioner are duplicative of Kellen and Thomson evaluated and distinguished during examination, and (3) Petitioner extensively relies on Saylor and Gregory in each of the asserted grounds of unpatentability, we determine that the Petition presents the same or substantially the same prior art that was previously presented to” slip op. at 22
- Skill levelSkill level petitioner adoptedOther
“the time of the alleged invention would have had at least a bachelor’s degree in computer science, electrical engineering, or computer engineering (or equivalent experience), and at least two years of professional experience in remote monitoring and control systems, Internet of Things (‘IoT’), home security systems, building automation systems, machine-to-machine (‘M2M’) communications, or other similarly relevant industry experience.” Pet. 6 (citing Ex. 1009 ¶ 25). Patent Owner does not provide its own assessment regarding the level of skill in the art, or otherwise dispute Petitioner’s assertion. See Prelim. Resp. Based on our review of the record at this stage, we find that Petitioner’s proposal is consistent with the level of skill reflected in the prior art references of record. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (listing the type of problems encountered in the art, prior art solutions to those problems, and the sophistication of the technology as factors that may be considered in determining the level of ordinary skill in the art). See also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”). we adopt Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes specific claim constructions for any terms. Pet. 5; see Prelim. Resp. On this record, we determine that no terms or phrases in the claims require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
Claim constructionDiscretionary denialPatents in suitUS 9,349,262 - Splunk Inc. v. Sable Networks, Inc.Institution deniedPTAB · Apr 14, 2022 · IPR2022-00003 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution of review of claims 1–15, 23–28, 32, 43–51, and 97 under § 325(d) because substantially the same art or arguments were previously presented and Petitioner showed no material Office error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“(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.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“We may institute an inter partes review if the information presented in the Petition and the Preliminary Response shows that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. See 35 U.S.C. § 314. However, the Board has discretion to deny a petition even if a petitioner meets that threshold. See, e.g., 35 U.S.C. § 325(d); Cuozzo Speed Techs., LLC v. Lee, 579 U.S. 261, 273 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”).” slip op. at 2
Discretionary denialPatents in suitUS 7,630,358 - Apple Inc. v. Immersion CorporationInstitution deniedPTAB · Aug 17, 2017 · IPR2017-00896 · APJ Minn Chung · IPR · Institution
The Board denied institution on claims 1–7 and 23–29, rejecting the Rosenberg grounds under §325(d) and declining institution under §314(a) due to the repeated, evolving challenges.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Section 325(d) provides, in pertinent part 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. 35 U.S.C. § 325(d) (emphases added). It is undisputed that Rosenberg ’373 and Rosenberg ’846 asserted by Petitioner in this case are the same prior art references previously presented by Petitioner in IPR2016-01372. As discussed above, Petitioner challenges the same claims on the same grounds which were previously considered and denied in IPR2016-01372. See 1372 Dec. on Inst. 41–45.” slip op. at 8
- Other 314aInstitution denied discretionary otherDenied
“(a) whether the same petitioner previously filed a petition directed to the same claims of the same patent; (b) whether the petitioner knew or should have known of the prior art asserted in the later petition when it filed its earlier petition; (c) whether at the time of filing of the later 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 earlier petition; (d) the length of time that elapsed between when the petitioner had the patent owner’s or Board’s analysis on the earlier petition and when petitioner filed the later petition; and (e) whether the petitioner provides adequate explanation why we should permit another attack on the same claims of the same patent.” slip op. at 12
Discretionary denialPatents in suitUS 8,659,571 - Alarm.Com Inc. v. Vivint, Inc.Institution deniedPTAB · Mar 30, 2016 · IPR2015-01967 · APJ James B Arpin · IPR · Institution
The Board denied institution on all asserted grounds, finding the grounds cumulative of a parallel petition and relying on § 325(d) because the prior art had been presented to the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“b. 35 U.S.C. § 325(d) Under 35 U.S.C. § 325(d), “[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.” Here, Suzuki and Godden were among a very small number of references that the Examiner uncovered in a pre-issuance search and considered before allowing the challenged claims. See Ex. 1103, 41. Petitioner produces no evidence of any kind to support its belief that the Examiner misapprehended Suzuki. In the absence of such evidence, we are unwilling to assume that, after having uncovered a very limited amount of relevant art, the Examiner failed to consider at least that art, either alone or in combination, with respect to the filed claims. See Pet. 21. Therefore, we determine that the same or substantially the same prior art or arguments previously were presented to the Office. For this additional reason, we decline to institute an inter partes review, based on either of claims 1–8, 14, 16, 19–26, 32, 34, 37–44, 50, and 52 of the ’713 patent under 35 U.S.C. § 102(b) as anticipated by Suzuki or of any of claims 1–54 of the ’713 patent under 35 U.S.C. § 103(a) as rendered obvious by Suzuki and Godden, alone or in combination with other references. See Funai Elec. Co. v. Gold Charm Ltd., Case IPR2015-01491, slip op. at 4–6 (PTAB Feb. 18, 2016) (Paper 18) (denying rehearing of denial of institution on grounds based on a reference considered during the original prosecution).” slip op. at 21
- Other 314aInstitution denied discretionary otherInstitution denied
“Under our Rules, we have broad discretion to institute an inter partes review as to some asserted grounds and not others. 37 C.F.R. § 42.108. Indeed, the United States Court of Appeals for the Federal Circuit recognized our discretion in this regard when it stated that “under [37 C.F.R. § 42.108(a)], it is clear that the Board may choose to institute some grounds and not institute others as part of its comprehensive institution decision.” Harmonic Inc. v. Avid Tech., Inc., No. 2015-1072, 2016 WL 798192, at *9 (Fed. Cir. Mar. 1, 2016). This discretion applies to grounds asserted in a single petition, as well as to those asserted in parallel petitions challenging the same claims of the same patent, as presented here. 37 C.F.R. § 42.108(b); see Asustek Comput. Inc. v. Exotablet, Ltd., Case IPR2015- 00043, slip op. at 9–10 (PTAB Apr. 23, 2015) (Paper 6). Thus, for example, we determine not to institute on grounds in the instant Petition that have not been shown to be necessary to address all of the challenged claims or to be superior to other grounds, upon which we instituted review in the parallel proceeding, i.e., Case IPR2015-01965. Consequently, in view of our decision to institute review on all of the challenged claims on grounds asserted in the parallel petition, and on this record, we decline to institute inter partes review on any asserted grounds in the instant Petition.” slip op. at 20
Discretionary denialPatents in suitUS 7,884,713 - PTAB · Feb 18, 2016 · IPR2015-01491 · APJ Charles J Boudreau · IPR · Rehearing
The Board denied rehearing and upheld its § 325(d) denial of institution on claims 1–3 and 5–8 over Sasuga because the same art and arguments had been presented during prosecution.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when 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). “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). A request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. It is not an abuse of discretion to have performed an analysis or reached a conclusion with which Petitioner disagrees, and mere disagreement with our analysis or conclusion is not a proper basis for rehearing.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“Examiner included in the Notice of Allowance entered on December 24, 2003, the following statement of reasons for allowance: 3. The prior arts [sic] of record do not anticipate or render obvious to one skilled in the art a liquid crystal display comprising various elements as claimed, more specifically one of the upper and lower frame including a stepped protrusion (draw) for fixing one of the liquid crystal display and the intermediate frame. 4. The closest reference 5,680,183 (Sasuga) teaches an LCD including a shield case with conventional means, i.e., fixing pawls. Further, [other cited references] are related a [sic] liquid crystal display device that includes intermediate frame. However, all of the above references alone or in combination fail to teach or suggest the claimed stepped protrusion (draw) (shown in Figs. 4 and 5 of the instant application) for fixing (supporting) one of the liquid crystal display or the intermediate frame to one of the upper frame and the lower frame. Ex. 1006, 6 (“Allowable Subject Matter”). Notably absent from the Examiner’s statement is any reference to the Applicant’s argument at page 9 of the Amendment dated November 12, 2003, that the stepped protrusion or draw “may have a shape (not hooked shaped)” (Ex. 1005, 35). Accordingly, we disagree with Petitioner’s premise that “[t]he Examiner accepted Applicant’s argument regarding construction of the terms ‘stepped protrusion’ and ‘stepped draw,’ which limited the terms to ‘non-hook shaped’ parts,” and “[b]ased on that construction, the Examiner withdrew the rejection based on Sasuga.” Req. Reh’g 1. Therefore, we are not persuaded by Petitioner’s arguments that the prior assertion of Sasuga was withdrawn based on a completely contrary claim construction and that we erred in concluding the grounds presented were the same as those considered during prosecution. Id. at 6–7. Indeed, even if the Examiner had explicitly adopted the Applicant’s construction, that would not necessarily compel a different result here. Section 325(d) provides, in relevant part, only that, “[i]n determining whether to institute or order a proceeding under . . . 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.” Accordingly, our discretion under section 325(d) is not limited to cases in which we concur with or adopt a claim construction previously applied by the Office. Because we do not disagree with any explicit claim construction by the Examiner in this case, we need not decide here whether, or to what extent, consideration of prior claim construction should be considered in deciding whether or not a petition or request should be rejected under section 325(d).” slip op. at 5
- PTAB / AIA Trials › Discretionary denialDecided for patent owner
“Lastly, we are also not persuaded by Petitioner’s argument titled “The Board’s Decision Is Arbitrary And Capricious Because The Discretionary Standard Applied By Each Panel Is Not Consistent.” Req. Reh’g 8 (boldface omitted); see also id. at 8–10. That other panels of this Board have on occasion, in non-precedential decisions premised on different facts than are presented here, chosen not to reject a petition or request where the same or substantially the prior art or arguments previously presented to the Office does not render our decision arbitrary and capricious. As explained in Microsoft Corp. v. Parallel Networks Licensing, LLC, Case IPR2015- 00483 (PTAB July 15, 2015) (Paper 10) and quoted by Petitioner (id. at 9), section 325(d) “does not require any particular outcome.” Microsoft Corp., slip op. at 14–15.” slip op. at 6
Discretionary denialPatents in suitUS 6,734,927
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.