- Nokia Of America Corporation / Ericsson Inc. v. Godo Kaisha IP Bridge 1Institution deniedPTAB · Nov 2, 2022 · IPR2022-00755 · APJ John D Hamann · IPR · Institution
The Board denied institution under § 314(a), finding the Fintiv factors favored denial and that the challenges to claims 14–19 were not compelling.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Accordingly, this factor weighs heavily in favor of exercising our discretion to deny the Petition.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In sum, we find that Petitioner’s arguments, and Dr. Fuja’s cited testimony, are not compelling. Accordingly, Petitioner’s showing as to independent claim 14 is less than a “compelling, meritorious challenge[].” In addition, claims 15–19 depend from claim 14, and Petitioner’s arguments for these dependent claims do not cure the above deficiencies for independent claim 14. Pet. 26– 31. Likewise, Petitioner’s arguments for dependent claims 15 and 18 for the remaining ground (Kotecha combined with R1-081126) do not cure the above deficiencies for independent claim 14. Pet. 31–34. Thus, Petitioner’s showing of unpatentability is not compelling for any of the challenged claims for any of the asserted grounds. VII. CONCLUSION For the foregoing reasons, we exercise our discretion to deny the Petition. VIII. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied and no trial is instituted.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot reached
“We find that Petitioner’s arguments are not compelling. First, we have doubts as to whether Kotecha (i) teaches a scheme “which utilizes a CQI trigger, a particular MCS value, and other fields present in the uplink grant” or (ii) “encourages [one of ordinary skill in the art] to use fields in addition to the MCS field.” Pet. 23–24. Rather, it appears that Kotecha teaches in its discussion regarding using a CQI trigger and a particular MCS value that “different fields, other than the MCS field, may be reused according to [Kotecha’s] disclosure to clearly signal whether an uplink grant is for only CQI or CQI and data.” See Ex. 1004, 4:23–43 (emphasis added). Hence, Kotecha teaches using other fields in lieu of—not in addition to—the MCS field. Id. Moreover, Kotecha’s teachings regarding using “one or more fields” to indicate only CQI or CQI and data identify the CQI request and MCS fields, as examples, without identifying additional fields, nor requiring the use of these fields. See id. at 7:19–22, 8:15–20, Fig. 6. Thus, these teachings also do not provide compelling support for Petitioner’s arguments that Kotecha encourages adding a third field to the CQI request and MCS fields combination. Id. Second, we find uncompelling Petitioner’s argument that one of ordinary skill in the art “would have been motivated to try using the . . . (RB) assignment field as a further indication of whether to multiplex CQI with data,” which “is one of only seven other possible fields for [one of ordinary skill in the art] to consider.” Pet. 25. This argument is premised on Kotecha encouraging using a third field—and only a third field—in addition to the CQI request and MCS fields, which, as we discuss above, Kotecha does not. Rather, choosing any three, for example, of the nine fields in the uplink grant would yield 84 possible combinations. See Ex. 1004, 1:25–34 (listing nine fields); Ex. 1003 ¶ 78 (testifying that “Kotecha identifies nine fields in the uplink grant”). Yet more combinations are possible if combinations having other numbers of fields are employed. “[T]he breadth of these choices and the numerous combinations indicate that these disclosures would not have rendered the claimed invention obvious to try.” Leo Pharm. Prod., Ltd. v. Rea, 726 F.3d 1346, 1356 (Fed. Cir. 2013) (citing Rolls–Royce PLC v. United Techs. Corp., 603 F.3d 1325, 1339 (Fed. Cir. 2010)). Nor does Petitioner cite to any guidance provided in Kotecha about which combinations of fields would likely be successful in arguing that the claimed three field combination would have been obvious to try. See In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009) (“[W]here a defendant merely throws metaphorical darts at a board filled with combinatorial prior art possibilities, courts should not succumb to hindsight claims of obviousness.”).” slip op. at 22
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Third, we do not find compelling Dr. Fuja’s cited testimony, which in our view, and taken as a whole, risks using impermissible hindsight to reconstruct the invention of claim 14. See Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017) (“[W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.”); In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“It is impermissible to use the claimed invention as an instruction manual or ‘template’ to piece together the teachings of the prior art so that the claimed invention is rendered obvious.” (citation omitted)). For example, the testimony appears to be predicated incorrectly on Kotecha teaching using a third field (i.e., the resource assignment field) in addition to the CQI request and MCS fields, and the testimony instead tracks the claimed three field combination of claim 14. Ex. 1003 ¶¶ 77–79. Moreover, Dr. Fuja opines that “it would have been obvious for [one of ordinary skill in the art] to use the resource assignment field in the uplink grant in addition to the CQI request bit and the MCS field because doing so provides additional flexibility and greater efficiency at no additional cost.” Ex. 1003 ¶ 79. We find this testimony to be conclusory as there is no factual support underlying Dr. Fuja’s opinion that one of ordinary skill in the art would have found such to be obvious. Id. ¶¶ 77–83. Also, claim 14 recites more than just reusing the resource assignment field to indicate whether data should be multiplexed with the CQI report. Ex. 1001, 24:7–14. Rather, claim 14 also recites evaluating whether the indicated number of resource blocks “is smaller than or equal to a determined number of resource blocks.” Id. Kotecha does not teach this, nor does Dr. Fuja address it in a compelling way. See Ex. 1003 ¶¶ 77–83.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,385,239 - Ericsson Inc. / Nokia Of America Corporation v. Godo Kaisha IP Bridge 1Institution deniedPTAB · Nov 2, 2022 · IPR2022-00725 · APJ David C Mckone · IPR · Institution
The Board denied institution for claims 1–6 and 11–16 under § 314(a), finding the Fintiv factors favored denial and the challenges were not compelling.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“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.”); 35 U.S.C. § 314(a). The Board has held that the advanced state of a parallel district court action is a factor that may weigh in favor of denying a petition under § 314(a). See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential); Patent Trial and Appeal Board, Consolidated Trial Practice Guide, 58 & n.2 (Nov. 2019) (“Trial Practice Guide”)2. We consider the following factors to assess “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”: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Because the ’000 patent claims a filing date before March 16, 2013, the effective date of the relevant amendment, the pre-AIA version of § 103 applies. 2 Available at https://www.uspto.gov/sites/default/files/documents/ tpgnov.pdf. 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. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“implemented by a base station. As Petitioner points out, Classon describes a multicarrier communications system that includes a “base site” and “receiving platforms” (also referred to as “transmission targets”), which we find are a base station and mobile stations. Pet. 19–20 (citing Ex. 1005, code (57), ¶¶ 23, 27, 28, 31, Fig. 4). The parties dispute whether Classon (in light of the background knowledge of a skilled artisan or, in light of TR 25.858) teaches transmitting control information indicating whether a mobile station is to transmit one channel quality indicator (CQI) for each subcarrier block within a communication frequency band or one CQI for all subcarrier blocks within the communication frequency band instead of multiple CQIs for multiple subcarrier blocks within the communication frequency band, as recited in claim 1 (and similarly recited in claim 11). For the reasons given below, the case Petitioner advances is less than compelling.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Patent Owner’s argument has merit. Paragraphs 37–40 of Classon describe the base station determining what mode to use for communication based on the information (including CQI information) sent by the mobile units. Paragraph 41 states that “such channel quality information will preferably already be available to the base site” but that, if it is not available, “the base site can transmit 73 a message to the relevant transmission target or targets and request a reply that includes the relevant channel quality information.” Also, paragraph 41 states that “[w]ays in which such information can be provided to the base site will be described below in more detail.” This appears to be a reference to Classon’s description of the mobile stations, not the base station, determining that they are of “type 1” or “type 2” and sending channel quality information to the base station based on that determination, after which the base station determines whether to use the first mode or second mode in communications. Ex. 1005 ¶¶ 45–51. Thus, rather than supporting Petitioner’s position, the context around paragraph 41 appears in friction with that position. Petitioner does not explain how the base station determines a transmission mode (and thus a requested amount of CQI information) without first having that information from the mobile stations. Instead, it is reasonable to read paragraph 41 as requesting of the mobile stations information that the mobile stations deem appropriate; in other words, that the mobile stations determine whether to send a CQI value for each subcarrier or information on average channel quality. Even if it is sufficient to go forward on a theory that Classon implicitly teaches the claimed control message, the evidence Petitioner advances for this position is not compelling.” slip op. at 23
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“III. DISCRETIONARY DENIAL UNDER 35 U.S.C. § 325(D) Petitioner argues that we should not deny the Petition under 35 U.S.C. § 325(d). Pet. 56. Patent Owner argues that we should. Prelim. Resp. 23– 28. Because we deny the Petition for other reasons, we do not reach whether we should exercise our discretion to deny the Petition under § 325(d).” slip op. at 29
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,137,000 - NXP USA, Inc. v. Impinj, Inc.Rehearing deniedPTAB · Aug 25, 2022 · PGR2022-00005 · APJ Ken B Barrett · PGR · Rehearing
The Board denied NXP’s rehearing request, leaving in place the denial of PGR institution on claims 1–20 based on its holistic Fintiv analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion may be indicated 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.” Huawei Device Co., Ltd., v. Optis Cellular Tech., LLC, IPR2018-00816, Paper 19, 3 (PTAB Jan. 8, 2019) (precedential) (citations omitted). Further, “[a]bsent a showing of ‘good cause’ . . . , new evidence will not be admitted” in connection with a request for rehearing. Patent Trial and Appeal Board Consolidated Trial Practice Guide 90 (Nov. 2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (citing Huawei Device Co., IPR2018-00816, Paper 19 at 4). Thus, a request for rehearing is not generally an opportunity to present new arguments or evidence.” slip op. at 3
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“with the Request. “Ideally, a party seeking to admit new evidence with a rehearing request would request a conference call with the Board prior to filing such a request so that it could argue ‘good cause’ exists for admitting the new evidence. Alternatively, a party may argue ‘good cause’ exists in the rehearing request itself.” Huawei Device Co., IPR2018-00816, Paper 19 at 4; see also Consolidated Trial Practice Guide at 90 (quoting the same). Petitioner did not request a conference call prior to filing the Request to argue that good cause exists and does not present arguments in the Request regarding good cause. Accordingly, we find that Petitioner has not met its burden of showing that good cause exists to justify consideration of those exhibits to evaluate whether we erred by overlooking or misapprehending anything in the Decision. B. We Did Not Misapprehend the Significance of the Facts Pertaining to” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“argument, we stated that, “[b]ecause the currently scheduled trial in the parallel proceeding is scheduled to begin over two months before our deadline to reach a final decision, this factor weighs somewhat in favor of discretionary denial.” Dec. 9. After discussing all of the Fintiv factors and after “consider[ing] ‘a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review,’” we exercised discretion to deny institution of a post-grant review. Id. at 12–13 (quoting Fintiv, Paper 11 at 6).” slip op. at 6
Discretionary denialPatents in suitUS 10,929,734 - Aviagames, Inc. v. Skillz Platform Inc.Institution deniedPTAB · Aug 9, 2022 · IPR2022-00530 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution for claims 1–3, 7–12, and 16–21 under § 314(a), finding denial best served efficiency after the district court held the claims invalid.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“First, we believe that the Fintiv analysis and factors are a poor fit to the circumstances of this proceeding.10 The Fintiv factors are “related to a parallel, co-pending proceeding” in a district court involving the same patent challenged before the Board. See Fintiv 5 (Heading B) (capitalization omitted). Here, the District Court found the challenged patent to be invalid on a basis that we cannot consider—subject matter eligibility under 35 U.S.C. § 101. See 35 U.S.C. § 311(b) (“A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.”). There is no parallel consideration by a district court of the invalidity of the challenged claims of the ’602 patent under 35 U.S.C. §§102 or 103. Second, even if we consider the Fintiv factors, we disagree with Petitioner and determine that, under the circumstances presented here, these factors support our denying institution. The Fintiv factors and a Fintiv analysis emphasizes, inter alia, concerns of efficiency. Fintiv 5, 6, 15, 16. As discussed below, we believe that efficiency as shown by analysis of the Fintiv factors strongly favors denial of institution. We consider each of the Fintiv factors. We then weigh the factors together and decide, in this case, to exercise our discretion to deny institution based on the particular circumstances presented in this case.” slip op. at 11
Discretionary denialPatents in suitUS 9,479,602 - Code200, Uab / Teso LT, Uab et al. v. Bright Data Ltd.Institution deniedPTAB · Jul 25, 2022 · IPR2022-00861 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution under General Plastic’s § 314(a) discretion and denied joinder because the petition did not warrant institution.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“issue of whether the petitioner had the benefit of the Board’s guidance on the use of stipulations that agree not to raise the grounds asserted in the IPR at trial. Intel, Paper 14 at 13–14; Prelim. Resp. 7–9. In Intel, the Board found that the decision denying the earlier petition occurred before the Board had expressed its approval of such stipulations in Sotera Wireless or Sand Revolution II. Id. However, as Patent Owner argues, the petition in the earlier 1266 petition was filed after Sand Revolution II had been designated informative. Prelim. Resp. 8. Unlike the petitioner in Intel, Petitioner here had the guidance provided by Sand Revolution II, and could have proffered such a stipulation, but did not do so. We determine that this failure to provide such a stipulation in the face of clear guidance from the Board weighs strongly in favor of exercising discretion to deny institution and outweighs the fact that the Board did not substantively address the merits of the prior petition.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied general plasticInstitution denied
“3. Conclusion In light of the General Plastic factors, the guidance expressed in the Trial Practice Guide, and the arguments presented for and against the exercise of discretionary denial, we conclude that it is appropriate here to exercise our discretion under 35 U.S.C. § 314(a) to deny institution. IV. DENIAL OF MOTION FOR JOINDER As stated above, the Director may join a party to an ongoing IPR only if the filed petition warrants institution under § 314. 35 U.S.C. § 315(c). Because we exercise discretion to deny institution under § 314, we deny also Petitioner’s Motion for Joinder. V. ORDER Accordingly, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), the Petition is denied; and FURTHER ORDERED that the Motion for Joinder is denied.” slip op. at 16
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“IV. DENIAL OF MOTION FOR JOINDER As stated above, the Director may join a party to an ongoing IPR only if the filed petition warrants institution under § 314. 35 U.S.C. § 315(c). Because we exercise discretion to deny institution under § 314, we deny also Petitioner’s Motion for Joinder. V. ORDER Accordingly, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), the Petition is denied; and FURTHER ORDERED that the Motion for Joinder is denied.” slip op. at 17
Discretionary denialPatents in suitUS 10,257,319 - PTAB · Jul 15, 2022 · PGR2021-00030 · APJ Sheridan K Snedden · PGR · Rehearing
Patent Owner’s rehearing request was granted, and institution was denied for all challenged claims based on changed circumstances in the parallel district court proceeding under Fintiv.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Having considered the parties’ positions and evidence of record, summarized above, we agree with Patent Owner that a rehearing of our prior institution decision is appropriate due to the changed circumstances of: (1) the statutory disclaimer of claims 6–8 of the ’039 patent, (2) Patent Owner’s request for adverse judgment of related proceeding PGR2021-00042, and (3) the additional investment in the parallel proceeding by the district court and the parties, including the completion of a jury trial that resulted in a jury verdict not finding invalidity of the challenged claims. We further agree with Patent Owner that “[c]ontinuing with this proceeding would result in duplicative efforts and potentially conflicting results between the district court and the Board.” Reh’g Req. 9. It is the combination of these changed circumstances, rather than any one of them individually, that compels the result we reach.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“In considering the parties’ positions and the evidence of record, we note that we have been instructed not to exercise discretion to deny a petition when “the information presented at the institution stage presents a compelling unpatentability challenge.” Guidance Memo 4–5. We previously described “Petitioner’s argument that the claims lack enablement” as presenting “strong merits.” Paper 17, 3. Despite that determination, we believe the record as it stands currently does not “present[] a compelling unpatentability challenge” on the lack-of-enablement issue. Guidance Memo 4–5. The district court already has substantially completed its review of the enablement issue, and a jury has determined that the claims do not lack enablement. Given this new information, we cannot conclude that Petitioner’s enablement case is compelling.” slip op. at 6
- Adverse judgmentOther
Discretionary denialPatents in suitUS 10,808,039 - PTAB · May 19, 2022 · IPR2022-00239 · APJ John A Hudalla · IPR · Institution
The Board denied institution for claims 1–20 under § 314(a), finding the advanced parallel litigation posture favored discretionary denial under Fintiv.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“acted upon Patent Owner’s request to modify the schedule. As such, we consider this factor with the trial being set for November 7, 2022. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 13 (May 13, 2020) (informative) (“We generally take courts’ trial schedules at face value absent some strong evidence to the contrary.”). This is over six months before the expected date of our final written decision. Thus, we find that the second Fintiv factor favors exercising authority to deny institution.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“demonstrating that the challenged claims are invalid.” Pet. 79; see also Pet. Reply 3 (similar argument). Patent Owner argues that the Petition is deficient based on its arguments against the merits of the Petition. Prelim. Resp. 10. Based on the preliminary record, the merits of Petitioner’s asserted grounds seem to meet the “reasonable likelihood” standard for institution. Thus, we determine that the sixth Fintiv factor is neutral.” slip op. at 13
Discretionary denialPatents in suitUS 8,248,940 - PTAB · May 19, 2022 · IPR2022-00238 · APJ John A Hudalla · IPR · Institution
The Board denied institution for claims 1–17 under § 314(a), finding the advanced posture of the parallel litigation outweighed countervailing factors under Fintiv.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary 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.” For the reasons that follow, we exercise our discretion to deny institution of an inter partes review under 35 U.S.C. § 314(a).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“advanced . . . and instituting would lead to duplicative costs” with respect to invalidity/unpatentability. Fintiv, Paper 11 at 10. Accordingly, we find that the advanced state of expert discovery regarding invalidity favors exercising discretion to deny institution.” slip op. at 10
Discretionary denialPatents in suitUS 7,548,945 - The Hillman Group, Inc. v. Hy-Ko Products Co. LLCInstitution deniedPTAB · May 9, 2022 · IPR2022-00174 · APJ Eric C Jeschke · IPR · Institution
The Board denied institution of IPR on all challenged claims under § 314(a), finding the Fintiv factors and the advanced Texas litigation favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“requested in the Texas Litigation. See Apple Inc. v. Fintiv, Inc., IPR2020- 00019, Paper 15 at 12 (PTAB May 13, 2020) (informative) (“A judge determines whether to grant a stay based on the facts of each specific case as presented in the briefs by the parties. We decline to infer, based on actions taken in different cases with different facts, how the District Court would rule should a stay be requested by the parties in the parallel case here.”). We view this factor as neutral because neither of the parties in the Texas Litigation has requested a stay thus far. See id. at 12 (determining that Factor 1 is neutral when neither party has requested a stay and the issue has not been ruled on by the district court).” slip op. at 9
Discretionary denialPatents in suitUS 9,687,920 - Microchip Technology Inc. v. HD Silicon Solutions LLCInstitution deniedPTAB · May 9, 2022 · IPR2022-00105 · APJ Frances L Ippolito · IPR · Institution
The Board denied institution under § 314(a), finding the General Plastic factors favored denying Microchip’s second petition challenging claims 1–3, 5, 8–11, 13, 15, and 17.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied general plasticInstitution denied
“To institute an inter partes review, we must determine that the information presented in the Petition shows “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) (2018). The Board, however, has discretion to deny a petition even when a petitioner meets that threshold. Id.; see, e.g., Cuozzo Speed Techs., LLC v. Lee, 579 U.S. 261, 272 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”); General Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential as to § II.B.4.i) (recognizing the same) (“General Plastic”); see also Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019) (“CTPG”) 55–63, available at https://www.uspto.gov/TrialPracticeGuideConsolidated (identifying considerations that may warrant exercise of this discretion). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine it is appropriate to exercise our discretion and decline to institute inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“Further, Petitioner provides no persuasive explanation why it is again challenging claims 1–3, 5, 8–11, 13, 15, and 17 here or why Petitioner needs two instituted inter partes reviews on the common claims. See generally Pet. 78–82. Petitioner does not explain persuasively why the “Board should exercise its discretion to institute additional petitions,” short of saying that “[i]n contrast to the primary references cited in Petition 1, the primary reference [Lin] cited in Petition 2 more clearly describes and depicts a local interconnect.” Ranking 3. However, Petitioner also asserts that “the respective disclosures in Trivedi and Joo (both cited in Petition 1 [of IPR752]) are not inadequate in any manner as they both disclose local interconnects.” Id. In IPR752, for the purposes of institution and based on 11 Petitioner incorrectly refers to IPR2021-01420 as the earlier filed proceeding involving the ’033 patent. Petitioner’s citation is incorrect. That proceeding involves U.S. Patent No. 7,260,731. Pet. 2 (chart). in that proceeding. IPR 752 Dec. 26–32 (discussing limitations recited in claim 1). Thus, at best, in this proceeding, Lin is duplicative of what Petitioner relies upon in Trivedi to teach local interconnects. Additionally, we observe that Petitioner does not identify any circumstances identified in the Trial Practice Guide supporting a need for a second petition, such as a large number of claims in litigation or a potential dispute about priority date. CTPG 59. Accordingly, based on the record before us, we agree with Patent Owner that this General Plastic factor weighs in favor of denying institution of the proceeding. See Prelim. Resp. 8. 2. Whether at the Time of Filing of the First Petition the Petitioner Knew,” slip op. at 9
Discretionary denialPatents in suitUS 6,774,033
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.