- Charter Communications, Inc. / Plume Design, Inc. v. Adaptive Spectrum And Signal Alignment, Inc.Institution deniedPTAB · May 22, 2025 · IPR2025-00088 · APJ Kevin C Trock · IPR · Institution
The Board denied institution of IPR on all challenged claims under § 314(a), finding the Fintiv factors favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“7. Conclusion on Discretionary Review When considering the Fintiv factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv, Paper 11 at 6. Based on our review, we find that the factors weigh in favor of exercising discretion to deny institution of the Petition. The factors weighing in favor of exercising discretionary denial include the scheduling of the parallel proceeding’s trial date many months prior to the Board’s projected statutory deadline for a final written decision, the substantial investment by the parties and the District Court in the ASSIA Litigation, the recommended denial of the motion to transfer by the District Court, and the issues on the merits raised by the Patent Owner in its Preliminary Response and our preliminary consideration. In our view, these factors outweigh the other Fintiv factors, including the lack of a stay, Petitioner’s offer to limit overlap between the two proceedings via stipulation, and the presence of Plume Design as a Petitioner in this proceeding. We, therefore, are persuaded that the interests of the efficiency under 35 U.S.C. § 314(a) to deny institution of the Petition.” slip op. at 16
Discretionary denialPatents in suitUS 11,050,654 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. KP Innovations 2, LLCInstitution deniedPTAB · May 12, 2025 · IPR2025-00101 · APJ Jameson Lee · IPR · Institution
The Board denied institution of review of claims 18–21, finding no reasonable likelihood on three grounds and declining institution in view of the limited potential reach of the remaining ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Regarding the alleged anticipation by Okaya, Petitioner has not adequately shown that Okaya discloses that the audio and video outputs of carousel 10 connect to a communication network without the intervening use of a computer or video conferencing system to which the carousel is connected. Okaya specifically describes that “the multimedia carousel 10 includes several input and output terminals for integrating with a multimedia computer or video conferencing system.” Ex. 1006, 3:1–4. The specific scenario described in Okaya, in column 3, lines 43 to 61, also has carousel 10 connected to a notebook PC. Thus, Petitioner’s arguments based on carousel 10 itself as the device of limitation [18a] is inadequate. See also” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“For reasons discussed below, we find Petitioner’s reasoning to be insufficient for one of ordinary skill in the art to add two cameras to Nagasawa’s case body 1, one on each side of case body 1. Petitioner does not adequately address the issue of sufficient spacing on Nagasawa’s case body 1, which includes two back-to-back mounted displays 4 and 8 (Figure 1A), to include two additional cameras, one facing inward and the other facing outward, particularly as one side of case body 1 is used for gaming (Fig. 1B, Ex. 1007, 3:53–65). In Nagasawa’s fifth embodiment, which includes a camera for video conferencing, the camera is placed in the hinge connecting case bodies 1 and 2, and not within case body 1. That is an indication that there is not enough room in Nagasawa’s case body 1 to incorporate a camera, much less two cameras as Petitioner has proposed to meet limitations [18c] and [18d]. Nagasawa’s Figure 12B is reproduced below: Figure 12B is a front view of a fifth embodiment of Nagasawa’s foldable phone in the unfolded position. Ex. 1007, 3:24–26. Nagasawa describes: “Video conference display may be provided where the photo sticker 51 is to be affixed in order to provide folding portable apparatus equipped with a small-sized TV camera 53 at the hinge.” Id. at 7:36–39. Nagasawa’s design already dictates where a camera would be mounted, and omits discussion of any other locations of that camera, much less a placement of it on the phone case body. Id.” slip op. at 23
- Expert testimonyPatent owner expert creditedDecided for patent owner
“Additionally, Dr. Theogarajan testifies: “A person using [Nagasawa’s] pocket game would cover any camera placed on the outer surface of the first case body. Any camera placed in such a position would be abused with dirt and oil from a game player’s hand.” Ex. 2001 ¶ 145. We credit the testimony. It further undermines Petitioner’s proposed addition of two cameras to Nagasawa’s case body 1. Also, Nagasawa’s fifth embodiment already includes a video conferencing camera facing the user, mounted in the hinge connecting case bodies 1 and 2. In light of that teaching, there is little reason to add a camera to the inward facing side of Nagasawa’s case body 1.” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner asserts: “[T]he Board need not construe any term because the prior art invalidates the claims under any plausible construction.” Pet. 12. Petitioner has not proposed an express construction for any claim term. Patent Owner asserts that “[t]he term ‘receive and transmit information’ [in claim 18] means real-time or near real-time audio and visual information.” Prelim. Resp. 15–16. Patent Owner further argues that “Petitioner accepts Patent Owner’s construction because the construction is a plausible construction, and Petitioner stated that they believe their art invalidates the claims under any plausible constructions.” Id. at 16. For purposes of this Decision, however, we need not decide whether to adopt Patent Owner’s proposed construction. C.” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,499,168 - TCL Electronics Holdings Ltd. / TCL Industries Holdings Co., Ltd. v. University Of Rochester (Intellectual Ventures I, LLC)Institution deniedPTAB · Feb 13, 2025 · IPR2024-01245 · APJ Thu A Dang · IPR · Institution
The Board denied institution on claims 1, 3, 4, 5, 8, 10, and 12 under § 314(a), finding the Fintiv factors favored denial and the petition did not show compelling merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv factors”). “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. In evaluating the Fintiv factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review,” recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor.” Id.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“whether to institute an inter partes review. Applying the standard set forth in 35 U.S.C. § 314(a), we may not institute an inter partes review (also “IPR”) 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.” However, institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons stated below, we exercise our discretion not to institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Thus, although Petitioner contends that Njølstad implements a dynamically changeable frequency for each domain wherein a local “rate requirement can dynamically be configured” such that “the locally generated clock rate is just high enough to perform the actual processing task” at that rate (Pet. 31 (citing Ex. 1009 § IV.D)), such teaching merely supports Petitioner’s contention that the frequency is dynamically changeable at the local level (id.). However, as Patent Owner points out, such showing is not a compelling disclosure of the frequency generation being independent of the frequencies of the other domains, as required by the challenged claims. Prelim. Resp. 28–34. For the foregoing reasons, we conclude that Petitioner has not presented compelling merits that Njølstad teaches “the frequency being dynamically changeable independently of the frequencies of the clock signals generated for others of the plurality of domains” as recited in claim 1 and similarly recited in claim 8.” slip op. at 25
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached
“However, Patent Owner argues that Iyer published after the invention to the ’443 patent was actually reduced to practice. Prelim. Resp. 27–28. In particular, Patent Owner provides evidentiary testimonies of Dr. Kaeli (Ex. 2001) and Mr. Albonesi (Ex. 2003) to support its contends the ’443 patent incorporates by reference a paper authored by the inventors and published in February 2002 (Ex. 2005), which demonstrates conception by providing a full written description of the claimed invention. Prelim. Resp. 6–16. According to Patent Owner, a simulation described in the paper embodied the invention in a tangible form, wherein the simulation described in the paper showed that the invention worked for its intended purpose. Id. at 16–19 (citing Exs. 2001, 2003, 2005). Similarly, Patent Owner contends that the application from which Soerensen issued was filed on August 29, 2002, which is after the invention date of the ’443 patent. Prelim. Resp. 35. According to Patent Owner, while Soerensen claims priority to the Soerensen Provisional Application (Ex. 1022), the passages from Soerensen relied on in the Petition are not entitled to the benefit of the filing date of the Soerensen Provisional Application because the subject matter was not disclosed in the manner provided by 35 U.S.C. § 112. Id. We recognize potential merits to Patent Owner’s position. That is, we do not find compelling Petitioner’s contention that the challenged claims would have been obvious Iyer or Soerensen.” slip op. at 31
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,089,443 - Microsoft Corporation v. D3d Technologies, Inc.Institution deniedPTAB · Dec 2, 2021 · IPR2021-00877 · APJ Barbara A Parvis · IPR · Institution
The Board denied institution on claims 1–4, 6–9, and 11–21 because the second parallel petition did not show material differences sufficient to justify another review.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“Having reviewed all Petitioner’s challenges, we are unable to discern any material difference between the parallel petitions that would be sufficient to outweigh the inefficiencies and costs to the Board and Patent Owner that would result from instituting on both parallel petitions. The mere fact that Petitioner may have had additional art to assert does not, on these facts, justify the additional burden of a second petition directed to the same claims. In view of the above, Petitioner has not adequately explained why the Petition in this proceeding contains sufficient material differences in its analysis to support instituting an additional inter partes review of the challenged claims. Accordingly, because we institute inter partes review of claims 1–9 and 11–21 of the ’691 patent on the grounds presented in the IPR2021-00878 petition, we exercise our discretion under § 314(a) to deny institution in this proceeding.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“Institution of an inter partes review is authorized by statute when “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). Section 314(a) does not require the Director to institute an inter partes review. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an” slip op. at 2
Discretionary denialPatents in suitUS 9,980,691 - Ericsson Inc. v. Uniloc 2017 LLCInstitution deniedPTAB · Jun 18, 2020 · IPR2020-00420 · APJ Jameson Lee · IPR · Institution
The Board denied institution on all challenged claims because the General Plastic factors and additional circumstances favored discretionary denial under § 314(a).
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“relationship” for purposes of analyzing follow-on petitions between different petitioners can be created by a subsequent petitioner who uses the former petitioner’s work as a menu or roadmap to arrive at the follow-on petition, citing Ericsson Inc. v. Uniloc 2017, LLC, IPR2019-01550, Paper 8 at 12 (PTAB Mar. 17, 2020). Prelim. Resp. 10. Based on the record before us, and as explained below, we find that Petitioner did use the Petition in IPR038 as a menu or roadmap in preparing the Petition here, but disagree that that fact creates a “significant relationship.”” slip op. at 8
- Other 314aInstitution denied discretionary otherInstitution denied
“for the third time, particularly on the same ground for which review was instituted for claim 17 in IPR038. Note that “if the PTAB institutes a trial, the PTAB will institute on all challenges raised in the petition.” See USPTO, Guidance on the Impact of SAS on AIA Trial Proceedings (April 26, 2018) (available at https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial) (“USPTO Guidance”). Petitioner has not demonstrated a need for an additional petition which challenges claim 17 for a third time, where both earlier petitions resulted in institution of trial and where the alleged ground of unpatentability for claim 17 here is the same as that raised in one of the two earlier petitions.11 The inclusion of claim 17 in the Petition undermines Petitioner’s argument that it should be entitled to challenge claims 2–5 and 7 which were not challenged in any previous petition. Indeed, the inclusion of claim 17 is unnecessary for any petition challenging claims 1–5 and 7.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“Having considered all of the factors discussed above, we deny institution under 35 U.S.C. § 314(a). III. CONCLUSION For the foregoing reasons, we exercise our delegated discretion not to institute review. IV. ORDER Accordingly, it is: ORDERED that the Petition is denied, and no inter partes review is instituted on any claim over any alleged ground of unpatentability.” slip op. at 16
Discretionary denialPatents in suitUS 6,868,079 - Microsoft Corporation v. Uniloc 2017 LLCInstitution deniedPTAB · Nov 27, 2019 · IPR2019-01125 · APJ Jameson Lee · IPR · Institution
The Board denied institution on claim 5 because its ambiguous scope prevented a reliable merits assessment and made trial resource intensive.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“Id. at 2:29–42. Thus, within the context of both the claim and the Specification, a radio system and a station are not the same. It is unclear what is referred to by the reference in claim 5 to “radio systems in accordance with the first radio interface standard.”” slip op. at 14
- Other 314aInstitution denied discretionary otherDenied
“Because the claim language is ambiguous as discussed above, we have an inadequate basis to assess the merits of Petitioner’s alleged grounds 5 We recognize that in limited circumstances, clear errors in claims can be corrected. See Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003). The deficiency in the claim language here clearly does not meet that standard. What the Applicant for patent intended by the language used is subject to much speculation and conjecture. of unpatentability. If the scope of the claims cannot be determined without undue speculation, as is the case here, the differences between the claimed invention and the prior art cannot be ascertained. See BlackBerry Corp. v. MobileMedia Ideas, LLC, IPR2013-00036, Paper 65 at 19–20 (PTAB Mar. 7, 2014) (citing In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) and reasoning that “the prior art grounds of unpatentability must fall, pro forma, because they are based on speculative assumption as to the meaning of the claims”). In other words, “[w]ithout ascertaining the proper claim scope, we cannot conduct a necessary factual inquiry for determining obviousness—ascertaining differences between the claimed subject matter and the prior art.” Id. at 20 (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)). Also, the difficulties and speculation we would encounter at trial if review is instituted, stemming from ambiguous claim language, substantially increase the resources and efforts required for reaching a resolution and thus weigh heavily against institution of review. In the circumstance here, reaching the merits of the alleged grounds of unpatentability, either before or after institution of review, involves substantial uncertainty and speculation. See In re Steele, 305 F.2d at 862– 63. Furthermore, given that any trial instituted here would address a single claim that we regard to be ambiguous, that issue would likely become the sole focus of that trial. That seems problematic given that Petitioner may not request to cancel any claim based on an assertion of indefiniteness. See 35 U.S.C. § 311(b). See 35 U.S.C. § 311(b).” slip op. at 16
Claim constructionDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,016,676 - Comcast Cable Communications, LLC v. Promptu Systems Corp.Institution deniedPTAB · Oct 10, 2018 · CBM2018-00033 · APJ Karl D Easthom · CBM · Institution
The Board denied institution of CBM review of claims 14–52, exercising discretion because Comcast advanced a conflicting claim construction in concurrent proceedings.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“Petitioner argues the Board should not exercise its discretion to deny this CBM Petition based on the ’344 and ’345 Petitions, because “the grounds for unpatentability identified in this petition are different than the grounds for unpatentability identified in the IPR petitions—indeed, the grounds for unpatentability raised here are not permitted in an IPR proceeding,” and Patent Owner had “not yet filed a preliminary response to the pending IPR petitions challenging the ’196 Patent.” Pet. 4, n.1 (citing General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-01357, slip op. at 16 (PTAB Sept. 6, 2017) (identifying relevant factors)). Nevertheless, as Patent Owner argues, General Plastic cites a non-exhaustive list of factors. See Prelim. Resp. 5–6. Petitioner fails to explain why it filed this CBM 2 “Congress enacted § 112, ¶ 6, in response to Halliburton,” 329 U.S. at 1. Warner–Jenkinson Co. Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 27 (1997). Petition (filed April 2, 2018) about three and a half months after it filed the ’344 and ’345 Petitions (both filed Dec. 19, 2017) with competing claim construction arguments that impact central aspects of both trials. Petitioner’s implied argument that Congress only authorized certain grounds for inter partes reviews and limited other grounds to CBM reviews (e.g., § 112, ¶ 2), fails to explain sufficiently why the Board should entertain Petitioner’s new claim construction that potentially would impact central and major aspects of the concurrent ’344 and ’345 IPRs instituted based on a prior contradictory claim construction advanced by Petitioner.” slip op. at 10
- Other 314aInstitution denied discretionary otherDenied
“A potential consequence of instituting the instant CBM based on Petitioner’s arguments related to the scope issue raised by Patent Owner involves at least raising the related issue of whether to terminate the ’344 and ’345 IPRs. See BlackBerry Corp. v. MobileMedia Ideas, LLC, Case IPR2013- 00036, slip op. at 19–20 (PTAB Mar. 7, 2014) (Paper 65) (citing In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) and reasoning that “the prior art grounds of unpatentability must fall, pro forma, because they are based on speculative assumption as to the meaning of the claims”). Petitioner does not propose terminating the ’344 and ’345 IPRs in the event that we decide to institute the instant CBM proceeding. Without terminating the ’344 IPR and ’345 IPR, instituting the instant CBM proceeding based on Petitioner’s means plus function arguments would result in different Board panels proceeding under two contradictory claim constructions on a central issue––i.e., for the same claim term of the same patent, involving all of the challenged claims in the CBM and a slight majority of the collectively challenged claims in the ’344 and ’345 IPRs. The Board’s reviewing court disfavors conflicting “reasoning on a point . . . central to [the Board’s] analysis” absent an adequate explanation for the conflict. See Emerson Electric Co. v. Sipco, LLC, No. 2017-1866, 2018 WL 4145081, slip op. at *3 (Aug. 29, 2018 Fed. Cir.) (“Because the Board did not adequately explain its reasoning on a point that was central to its analysis and its conclusion on that point was contrary to another Board opinion on nearly identical facts, we vacate the Board’s determination as to the appealed claims and remand for further proceedings.”) (nonprecedential); Vicor Corp. v. SynQor, Inc., 869 F.3d 1309, 1322 (Fed. Cir. 2017) (“[W]here a panel simultaneously issues opinions on the same technical issue between the same parties on the same record, and reaches opposite results without explanation, we think the best course is to vacate and remand these findings for further consideration.”). As noted above, Petitioner does not present an adequate explanation for the contradictory claim constructions. Whether a recitation constitutes a means-plus-function element does not depend on whether the claim is construed in an inter partes review or a covered business method patent review.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Accordingly, based on the particular circumstances involved as discussed above, we decline to decide whether to adopt Petitioner’s means plus function claim construction position asserted here. On one hand, if we decided to adopt it and institute a CBM review on that basis, concurrent trials would proceed on diametrically opposed claim construction positions––unless the panel in the ’344 and ’345 IPRs decided to terminate those trials based on our adoption of the diametrically opposed claim construction asserted here. At the least, even without a termination the ’344 and ’345 IPRs, the diametrically opposed positions would infiltrate the three proceedings and raise collateral issues, undermining the Board’s resources and effort “to secure the just, speedy, and inexpensive resolution of every proceeding.” See 37 C.F.R. § 42.1(b). On the other hand, if we decide Petitioner’s showing here lacks sufficient support on the merits for purposes of a CBM review, a decision denying institution may serve to advise the parties on this limited record that Petitioner’s means plus function claim construction position in the ’344 and ’345 IPRs appears to be correct even though no final decision has been reached there yet.” slip op. at 11
- BurdenNot reached
“As presented, Petitioner advances the second and third theories of unpatentability as contingent upon not adopting its central argument that “program steps” represents a means plus function term. Because we do not decide the issue of whether “program steps” constitutes a means plus function term, we decline Petitioner’s invitation to investigate further its second and third contingent theories. In addition, given the prominence of the means plus function claim construction issue raised by the parties, in the event we were to decide to institute the instant CBM proceeding, the means plus function issue likely would dominate the CBM trial and may impact the ’344 IPR and ’345 IPR, as discussed above.” slip op. at 10
Discretionary denialPatents in suitUS 7,047,196 - General Plastic Industrial Co., Ltd. v. Canon Kabushiki KaishaRehearing deniedPTAB · Sep 6, 2017 · IPR2016-01361 · APJ Sheila F Mcshane · IPR · Rehearing
The Board granted the expanded-panel request but denied rehearing, leaving in place the discretionary denial of institution in all five follow-on petitions.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“B. Requests for Rehearing A party requesting rehearing has the burden to show a decision should be modified by specifically identifying all matters the party believes were misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise 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. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 5
- Other 314aInstitution denied discretionary otherInstitution denied
“Our intent in formulating the factors was to take undue inequities and prejudices to Patent Owner into account. Thus, factor 3 is directed to Petitioner’s potential benefit from receiving and having the opportunity to study Patent Owner’s Preliminary Response, as well as our institution decisions on the first-filed petitions, prior to its filing of follow-on petitions. As discussed in our Decisions Denying Institution, we are concerned here by the shifts in the prior art asserted and the related arguments in follow-on petitions. See Dec. 11. Multiple, staggered petitions challenging the same patent and same claims raise the potential for abuse. The absence of any restrictions on follow-on petitions would allow petitioners the opportunity to strategically stage their prior art and arguments in multiple petitions, using our decisions as a roadmap, until a ground is found that results in the grant of review.14 All other factors aside, this is unfair to patent 14 The Board has addressed efficiency and potential prejudice induced by multiple petitions in multiple cases. See LG Electronics, slip op. at 12 (“The Board’s resources would be more fairly expended on first petitions rather than on a followon petition like the Petition in this case.”); Butamax Advanced Biofuels LLC v. Gevo, Case IPR2014-00581, slip op. at 12–13 (PTAB Oct. 14, 2014) (Paper 8) (“[T]he four obviousness grounds are ‘second bites at the apple,’ which use our prior decision as a roadmap to remedy Butamax’s prior, deficient challenge. owners and is an inefficient use of the inter partes review process and other post-grant review processes. Considering other factors (i.e., factors 2, 4, and 5) allows us to assess and weigh whether a petitioner should have or could have raised the new challenges earlier. We recognize that there may be circumstances where multiple petitions by the same petitioner against the same claims of a patent should be permitted, and that such a determination is dependent on the facts at issue in the case. The factors set forth above, in our view, represent a formulation of relevant considerations that permit the Board to assess the potential impacts on both the efficiency of the inter partes review process and the fundamental fairness of the process for all parties. We recognize, also, that additional factors may arise in other cases for consideration, where appropriate. However, the factors set forth above, at the very least, serve to act as a baseline of factors to be considered in our future evaluation of follow-on petitions.” slip op. at 17
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“panels to authorize, an expanded panel. See generally 35 U.S.C. § 6; 37 C.F.R. §§ 41.1–42.412; see also AOL Inc. v. Coho Licensing LLC, Case IPR2014-00771, slip op. at 2 (PTAB Mar. 24, 2015) (Paper 12) (“[P]arties are not permitted to request, and panels do not authorize, panel expansion.”). Our standard operating procedures, however, provide the Chief Judge with discretion to expand a panel to include more than three judges. PTAB SOP 1, 1–3 (§§ II, III) (Rev. 14); see id. at 1 (introductory language explaining that the Director has delegated to the Chief Judge the authority to designate panels under 35 U.S.C. § 6); see also In re Alappat, 33 F.3d 1526, 1532 (Fed. Cir. 1994) (providing that Congress “expressly granted the Commissioner the authority to designate expanded Board panels made up of more than three Board members.”). The Chief Judge may consider panel expansions upon a “suggestion” from a judge, panel, or party in a post-grant review. Id. at 3–4; see also Apple Inc. v. Rensselaer Polytechnic Inst., Case IPR2014-00319, slip op. at 2 n.1 (PTAB Dec. 12, 2014) (Paper 20) (expanded panel) (per curiam). The standard operating procedure exemplifies some of the reasons for which the Chief Judge may expand a panel. PTAB SOP 1, 3 (§ III.A). For example, an expanded panel may be appropriate when “[t]he proceeding or AIA Review involves an issue of exceptional importance.” Id. (§ III.A.1). In these cases, the Chief Judge has considered whether expansion is warranted, and has decided to expand the panel due to the exceptional nature of the issues presented.4 As we discuss further below, follow-on petitions have been at issue in multiple cases before the Board. The Chief Judge has determined that an expanded panel is warranted to provide a discussion of factors that are considered in the exercise of the Board’s discretion under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a).” slip op. at 4
Discretionary denialPatents in suitUS 8,909,094
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.