- Digital Ally, Inc. v. Utility Associates, Inc.Institution deniedPTAB · Dec 9, 2015 · IPR2015-01389 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution on claim 8, finding the petition presented substantially the same art and arguments as a prior petition and exercising discretion under §§ 314(a) and 325(d).
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“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). The only difference between the prior art and arguments presented in this Petition and those presented in IPR2014-00725 is that this Petition adds “the knowledge of one of ordinary skill in the art” to Monroe ’320 and Rayner as the asserted ground of unpatentability for claim 8. Pet. 4–5. This same ground was presented for dependent claim 7 in IPR2014-00725. IPR2014-00725, Paper 2, 13. Therefore, the Petition presents substantially the same prior art and arguments as those presented previously in IPR2014-00725. Petitioner does not provide a reason why it could not have included “the knowledge of one of ordinary skill in the art” in the asserted ground of unpatentability for claim 8 in IPR2014-00725. Pet. 1–8. Further, we denied institution of an inter partes review of claim 8 in IPR2014-00725 on October 1, 2014. Digital Ally, Inc. v. Utility Associates, Inc., Case IPR2014- 00725, slip op. at 19–20 (Paper 7) (PTAB Oct. 1, 2014). Petitioner waited over eight months, until the proceeding in IPR2014-00725 was almost complete, before filing this Petition that requests another review based on substantially the same prior art and arguments. For the foregoing reasons, we exercise our discretion to deny the Petition under 35 U.S.C. §§ 314(a), 325(d).” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“requesting inter partes review of claim 8 of U.S. Patent No. 6,831,556 B1 (Ex. 1001, “the ’556 patent”). Utility Associates, Inc. (“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”) to the Petition. 35 U.S.C. § 314(a) provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, the Petition is denied, and no trial is instituted.” slip op. at 2
Discretionary denialPatents in suitUS 6,831,556 - Valeo North America, Inc. / Valeo S.A et al. v. Magna Electronics, Inc.Institution deniedPTAB · Dec 7, 2015 · IPR2015-01413 · APJ James A Tartal · IPR · Institution
The Board denied institution of review of claims 1–12 and 16–20 under § 325(d), finding the second petition presented substantially the same art and arguments as the earlier petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Rather than identify new arguments based on Millikan or Turnbull, Petitioner instead makes the identical argument presented in the 251-Petition, asserting once again that, “[b]ut for the fact that the Challenged Claims recite a few essentially trivial matters of design choice that were well known by January 2002, they would all be anticipated by Lemelson, which disclosed virtually the entirety of the claimed inventions years earlier.” Pet. 21. Thus, Petitioner’s explanation of the asserted grounds concedes that both Millikan and Turnbull are either superfluous or redundant to the previously asserted references, having been included in support of Petitioner’s argument that various features are “trivial matters of design choice.” Petitioner also makes several broad assertions purportedly to differentiate its new allegations from its prior petition, including that the Petition “presents for the first time new arguments, additional prior art references, and combinations that could not have been presented previously, and could not have been based on prior art searches previously performed and/or interpretations of those references then available to Petitioner.” Id. at 4. Petitioner, however, offers no evidence in support of its contention that the arguments raised in this proceeding “could not have been presented previously,” or “could not have been based on prior art searches.” On multiple occasions the Board has recognized that an allegation of obviousness in a second petition may be based upon “substantially the same” prior art and arguments previously presented to the Office in an earlier petition, within the meaning of 35 U.S.C. § 325(d), even if the second petition includes prior art not asserted in the prior petition. See Customplay, LLC, v. Clearplay, Inc., IPR2014-00783, slip op. at 11–13 (PTAB Nov. 7, 2014) (Paper 9) (exercising § 325(d) discretion to decline to institute trial when ground presented in second petition presents substantially same prior art and arguments as prior petition despite addition of prior art); Unilever, Inc. v. The Proctor & Gamble Co., IPR2014-00506 (PTAB July 7, 2014) (Paper 17) (same); Medtronic, Inc. v. Robert Bosh Healthcare Sys., Inc., IPR2014-00436, slip op. at 11–12 (PTAB June 19, 2014) (Paper 17) (same). As explained above, in this case Petitioner’s contentions amount to nothing more than an argument that the additional references support Petitioner’s contention in the 251-Petition that certain features of the challenged claims are a matter of design choice. Thus, despite Petitioner’s addition of Millikan and Turnbull to the obviousness grounds previously asserted in IPR2015-00251, Petitioner’s grounds present substantially the same art, and substantially the same arguments, as previously asserted by Petitioner in the 251-Petition.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Valeo Schalter und Sensoren GmbH, and Connaught Electronics Ltd., filed a corrected Petition requesting an inter partes review of claims 1–12 and 16–20 of U.S. Patent No. 8,676,491 B2 (“the ’491 patent”). Paper 6 (“Pet.”). Patent Owner, Magna Electronics, Inc., filed a Preliminary Response. Paper 10 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
Discretionary denialPatents in suitUS 8,676,491 - Valeo North America, Inc. / Valeo S.A et al. v. Magna Electronics, Inc.Institution deniedPTAB · Dec 7, 2015 · IPR2015-01415 · APJ James A Tartal · IPR · Institution
The Board denied institution for claims 8, 11, 12, 16, 17, 19–21, 28, 31–38, 42, 50, 51, 53, 54, 62, 70, 71, 73, 74, 79, and 84 under § 325(d).
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“On multiple occasions the Board has recognized that an allegation of obviousness in a second petition may be based upon “substantially the same” prior art and arguments previously presented to the Office in an earlier petition, within the meaning of 35 U.S.C. § 325(d), even if the second petition includes prior art not asserted in the prior petition. See Customplay, LLC, v. Clearplay, Inc., IPR2014-00783, slip op. at 11–13 (PTAB Nov. 7, 2014) (Paper 9) (exercising § 325(d) discretion to decline to institute trial when ground presented in second petition presents substantially same prior art and arguments as prior petition despite addition of prior art); Unilever, Inc. v. The Proctor & Gamble Co., IPR2014-00506 (PTAB July 7, 2014) (Paper 17) (same); Medtronic, Inc. v. Robert Bosh Healthcare Sys., Inc., IPR2014-00436, slip op. at 11–12 (PTAB June 19, 2014) (Paper 17) (same). In this case, as explained above, Petitioner contends the additional references do no more than support Petitioner’s prior contention that certain features of the challenged claims are a matter of design choice or were already known as being desirably incorporated into automobiles. Thus, despite Petitioner’s addition of Okada, Millikan, DeVries, Breed, Turnbull, and Shimizu to the obviousness grounds previously asserted in IPR2015-00250, Petitioner’s grounds in this proceeding present substantially the same art, and substantially the same arguments, as previously asserted by Petitioner in IPR2015-00250.” slip op. at 10
Discretionary denialPatents in suitUS 8,543,330 - Google Inc. v. Smartflash LLCInstitution deniedPTAB · Nov 18, 2015 · CBM2015-00143 · APJ Gregg I Anderson · CBM · Institution
The Board denied institution of CBM review of claims 1, 3, 5, 10, 12, 18, 19, 21, and 24 under § 325(d) because the same § 101 ground was considered in the Apple CBM.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“We determine that the present petition raises the “same or substantially the same prior art or arguments” previously presented in the Apple CBM. We exercise our discretion under 35 U.S.C. § 325(d) and decline to institute a covered business method patent review of claims 1, 3, 5, 10, 12, 18, 19, 21, and 24 in this case under the same ground as asserted in the Apple CBM. In making our determination we are cognizant that Google supports its Petition with the Tygar Declaration, a different witness than relied on in the Apple CBM. That Google cites to different factual support is an insufficient difference to cause us to institute a new trial. We have reviewed the Tygar Declaration and find that, as relevant here, it is directed to the same grounds as presented in the Apple CBM, i.e., patent eligible subject matter under 35 U.S.C. § 101. Ex. 1002 ¶¶ 51–62. As such, the Tygar Declaration is cumulative of arguments already made in the Apple CBM. Specifically, the Tygar Declaration contends the claims of the ’516 patent “are directed to the abstract idea of controlling access to something based on one or more conditions (such as payment).” Id. at ¶ 53. The Tygar Declaration also analyzes whether or not the ’516 patent includes an inventive concept that is significantly more than an abstract idea. Id. at ¶¶ 56–61. In making the analysis, the Tygar Declaration includes testimony that “claims 1, 3, 5, 10, 12, 18, 19, 21, and 24 recite the use of a general purpose computer to perform routine, conventional, well-known computer functions.” Id. at ¶ 61. Dr. Tygar concludes claims 1, 3, 5, 10, 12, 18, 19, 21, and 24 are “not directed to patent eligible subject matter and are thus invalid.” Id. at ¶ 62. In our Apple CBM Decision on Institution, we considered these issues in our analysis of Alice Corp. Pty, Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014). See Apple CBM Decision on Institution, slip. op. at 10–20.” slip op. at 4
Discretionary denialcites AlicePatents in suitUS 8,794,516 - Roche Molecular Systems Inc. v. Illumina, Inc.Institution deniedPTAB · Oct 30, 2015 · IPR2015-01091 · APJ Lora M Green · IPR · Institution
The Board denied joinder and denied institution on claims 1–22, citing substantially the same arguments previously presented and the petition’s belated, duplicative filing.
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“circumstances of each proceeding. See Unified Patents, Inc. v. Personalweb Techs., LLC and Level 3 Commc’ns, LLC, Case IPR2014-00702, slip. op. at 4 (PTAB Jan. 13, 2015) (Paper 12). In the instant proceeding, we agree with Patent Owner that joinder with IPR2014-01093 would not promote the efficient resolution of those proceedings. After carefully considering both Petitioner’s and Patent Owner’s evidence and argument, we deny Petitioner’s Motion for Joinder. As noted by Patent Owner, Roche announced the acquisition of Ariosa at least as early as December 2, 2014. Ex. 2017. And as also noted by Patent Owner, at that time, Roche was aware that “Ariosa . . . [was] embroiled in a number of patent infringement lawsuits, including with . . . Illumina[ ] and Illumina’s Verinata Health business, and Roche will continue to defend the company in court, Zambrowski said, adding that Roche ‘went into this agreement with our eyes wide open.’” Id. Given that Petitioner had announced the acquisition of Ariosa as early as December 2, 2014, noting that it went into the agreement to acquire Ariosa with its eyes wide open, Petitioner has not provided a persuasive reason as to why it waited until April 24, 2015, to file the instant Petition.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“We approach our discretion to deny a petition on a case-by-case basis. As explained above, one factor that favors denial of the instant Petition is that it raises “substantially the same” arguments as the Petition in IPR2014- 01093. 35 U.S.C. § 325(d). We have compared the prior art and arguments raised in the instant Petition to those raised in the Petition filed in IPR2014- 01093. Based on the information presented, we are persuaded that the instant Petition raises, at minimum, “substantially the same . . . arguments” that “previously were presented to the Office” in the Petition filed in IPR2014-01093. 35 U.S.C. § 325(d). That is one factor, contributing to the totality of circumstances in this case, that informs our decision to exercise our discretion to deny the Petition.” slip op. at 14
- Other 314aInstitution denied discretionary otherInstitution denied
“Another factor that tips the balance in favor of denying institution of inter partes review is the timing of the filing of the instant Petition. As noted by Patent Owner, Petitioner had the advantage of the Patent Owner’s response in IPR2014-01093 (Prelim. Resp. 20), as well the depositions of Patent Owner’s expert in that proceeding, which were conducted by counsel for Roche (id. at 8). Essentially, the only reason that Petitioner has provided for waiting until April of 2015 to file the instant Petition is that it did not complete its acquisition of Ariosa until January 12, 2015. However, as discussed above, Petitioner was aware of the possibility of acquiring Ariosa as early as June of 2014, and announced its acquisition as early as December of 2014. Petitioner has not provided any persuasive reason as to why it could not have filed the Petition earlier, much less why the Petition could not have been filed within one month of institution of IPR2014-01093. On this record, we are persuaded that our resources are better spent addressing matters other than Petitioner’s belated, and essentially, second attempt to raise a plurality of duplicative grounds against the same patent claims. See Heckler v. Chaney, 470 U.S. 821, 831 (1985) (when deciding whether to take action in a particular matter, an agency must determine whether its resources are best spent on one matter or another). Petitioner provides no persuasive reason why we should institute inter partes review in light of the above facts. Based on the totality of circumstances before us, we exercise our discretion and deny institution of inter partes review. 35 U.S.C. §§ 314(a), 316(b), 325(d); 37 C.F.R. § 42.108(b).” slip op. at 15
Discretionary denialPatents in suitUS 7,955,794 - Toyota Motor Corporation v. Cellport Systems, Inc.Institution deniedPTAB · Oct 28, 2015 · IPR2015-01423 · APJ Jameson Lee · IPR · Institution
The Board denied institution on all challenged claims under § 325(d), finding substantially the same art and arguments had been presented in an earlier IPR.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“unpatentability in this proceeding are the same as those grounds of unpatentability in IPR2015-00634. The Petition in IPR2015-00634 was filed on February 5, 2015, prior to filing of the Petition in this proceeding on June 19, 2015. Despite the substitution of CAN for RS-485, the prior art and arguments presented in this proceeding are substantially the same as those previously presented in IPR2015-00634. Each of Boatwright, Mansell, Hotto, Guy, and Thompson is applied in the same manner in this case, i.e., based on the same teachings therein, against the same claims of the ’479 patent, as it was previously applied in IPR2015-00634. Although in this case Petitioner has replaced RS-485 with CAN, both RS-485 and CAN disclose a standard for a bus useable to connect multiple devices. CAN was published in 1992, whereas RS-485 was published in 1983. The teaching that is required from each to cure the deficiency of the other prior art references is the same.” slip op. at 7
Discretionary denialPatents in suitUS 5,479,479 - Medtronic, Inc. v. Mark A. BarryRehearing deniedPTAB · Sep 9, 2015 · IPR2014-01212 · APJ Brian J Mcnamara · IPR · Rehearing
The Board denied Medtronic’s rehearing request, exercising its § 325(d) discretion because a related proceeding had been instituted on overlapping references and issues.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“In view of our institution of inter partes review in Medtronic v. Barry VI and the overlapping references and issues between this proceeding and IPR2015-00783, we exercise our discretion under 35 U.S.C. § 325(d) and deny Petitioner’s Request for Rehearing in this proceeding. For the reasons discussed above, the Request for Rehearing is DENIED.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for patent owner
“In view of our institution of inter partes review in Medtronic v. Barry VI and the overlapping references and issues between this proceeding and IPR2015-00783, we exercise our discretion under 35 U.S.C. § 325(d) and deny Petitioner’s Request for Rehearing in this proceeding. For the reasons discussed above, the Request for Rehearing is DENIED.” slip op. at 2
Discretionary denialPatents in suitUS 7,776,072 - Medtronic, Inc. v. Mark A. BarryRehearing deniedPTAB · Sep 9, 2015 · IPR2014-01210 · APJ Brian J Mcnamara · IPR · Rehearing
The Board denied Medtronic’s rehearing request under § 325(d), citing its institution of review on the same claims in IPR2015-00780 and overlapping issues.
RulingsRehearing decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Upon consideration of the Second Petition, we instituted inter partes review of claims 1–5 of the ’358 Patent. Medtronic, Inc. v. Mark A. Barry, Case IPR2015-00780, slip op. (PTAB Sept. 9, 2015) (Paper 7, Decision to Institute)(”Medtronic v. Barry IV”). In view of our institution of inter partes review in Medtronics v. Barry IV and the overlapping issues between this proceeding and IPR2015- 00780, we exercise our discretion under 35 U.S.C. § 325(d) and deny Petitioner’s Request for Rehearing in this proceeding.” slip op. at 2
- RehearingRehearing, deniedDenied
“In view of our institution of inter partes review in Medtronics v. Barry IV and the overlapping issues between this proceeding and IPR2015- 00780, we exercise our discretion under 35 U.S.C. § 325(d) and deny Petitioner’s Request for Rehearing in this proceeding. For the reasons discussed above, the Request for Rehearing is DENIED.” slip op. at 2
Discretionary denialPatents in suitUS 7,670,358 - Netapp Inc. v. Crossroads Systems, Inc.Institution deniedPTAB · Sep 3, 2015 · IPR2015-00777 · APJ Kevin W Cherry · IPR · Institution
The Board denied institution on claims 1–14 under § 325(d), finding the petition presented substantially the same prior art and arguments as an earlier proceeding.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“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. The Petition in this proceeding presents the same prior art and substantially the same arguments previously presented in the ’1197 proceeding. As in the ’1197 proceeding, Petitioner relies on CRD-5500 User Manual, CRD-5500 Data Sheet, Smith, Kikuchi, Bergsten, and Hirai. Compare Pet. 3 with ’1197 proceeding Paper 1, 5 (“’1197 Pet.”). Petitioner also presents substantially the same arguments regarding the proposed combinations of (1) the CRD-5500 User Manual, CRD-5500 Data Sheet, and Smith; (2) Kikuchi and Bergsten; (3) Kikuchi, Bergsten, and Smith; and (4) Bergsten and Hirai. Compare Pet. 6–57 with ’1197 Pet. 11–56. To the extent that there are any substantive differences in the arguments or new arguments, we agree with Patent Owner that those different or new arguments could have been submitted in the ’1197 proceeding. See Prelim. Resp. 1. For the foregoing reasons, we determine that, in the present Petition, the “same or substantially the same prior art or arguments previously were presented to the Office” in the ’1197 proceeding.” slip op. at 6
Discretionary denialPatents in suitUS 6,425,035 - BLD Services, LLC v. LMK Technologies, LLCInstitution deniedPTAB · Aug 24, 2015 · IPR2015-00721 · APJ Sheridan K Snedden · IPR · Institution
The Board denied institution for all challenged claims under § 325(d), finding the petition presented substantially the same prior art or arguments as an earlier petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“We are persuaded that arguments raised in the Petition are “substantially the same” as those previously presented to the Office in the 768 proceeding. Id. In the 768 proceeding, Petitioner asserted that claims 1–8, 11, 12, and 16–26 of the ’726 patent were unpatentable over the combination of Kiest ’118, Kiest ’663, De Neef Instructions, and Kempenaers. IPR2014-00768, Paper 1, 7. Our treatment of claim 1 is illustrative. We did not institute an inter partes review of claim 1 based on this ground in the 768 proceeding because: BLD does not explain adequately why a person of ordinary skill in the art would have fashioned the donut shaped gasket of Kiest ’663 into a gasket having the flange portions recited in claim 1. IPR2014-00768, Paper 12, 17. Accordingly, we denied institution with respect to claim 1 because Petitioner did not provide a sufficient reason to combine the teachings of Kiest ’118, Kiest ’663, De Neef Instructions, and Kempenaers. Id. Petitioner now repeats the same arguments as to Kiest ’118, Kiest ’663, De Neef Instructions, Kempenaers and further raises three pieces of new prior art (Blackmore, Tweedie, and Kiest’079) for a disclosure of flange elements. Pet. 744. In both petitions, Petitioner advances “substantially the same” argument—namely, that claim 1 would have been obvious over Kiest ’118 in view of other prior art disclosing a gasket having a donut shaped ring as disclosed in Kiest ’663. Id. at 12. Petitioner further attempts to bolster Kiest ’663 with the teachings of Blackmore, Tweedie, and Kiest’079. Id. at 4044. We do not reach the merits of Petitioner’s additional reasoning, crafted with the benefit of our institution decision in the 768 proceeding. See ZTE Corp. v. ContentGuard Holdings Inc., Case IPR2013-00454, slip op. at 6 (PTAB Sept. 25, 2013) (Paper 12) (informative) (“[a] decision to institute review on some claims should not act as an entry ticket, and a howto guide, for the same Petitioner”). Instead, we exercise our discretion under 35 U.S.C. § 325(d) to deny institution of inter partes review because it presents “the same or substantially the same prior art or arguments” presented to us in the 768 proceeding.” slip op. at 10
Discretionary denialPatents in suitUS 7,975,726
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.