- Terremark North America LLC / Verizon Business Network Services Inc. et al. v. Joao Control & Monitoring Systems, LLCInstitution deniedPTAB · Dec 28, 2015 · IPR2015-01486 · APJ Jason J Chung · IPR · Institution
The Board denied institution on all challenged claims because the petition was filed outside § 315(b)’s one-year time bar.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent” (emphasis added). 35 U.S.C. § 315(b). Petitioner acknowledges that Terremark North America LLC, Verizon Business Network Services Inc., Verizon Services Corp., Time Warner Cable Inc., iControl Networks Inc., CoxCom, LLC, Verizon Communications Inc., Verizon Corporate Resources Group, LLC, and Verizon Data Services LLC are real-parties-in-interest. Pet. 1–2. Petitioner also acknowledges that Terremark North America LLC, Verizon Communications Inc., and Time Warner Cable Inc. were served with a complaint on June 23, 2014. Exs. 2003, 2005. Inter partes review is precluded for at least the reasons that Terremark North America LLC and Verizon Communications Inc. are real parties-in-interest and were served with a complaint on June 23, 2014. 35 U.S.C. § 315(b). slip op. at 14
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent” (emphasis added). 35 U.S.C. § 315(b). Petitioner acknowledges that Terremark North America LLC, Verizon Business Network Services Inc., Verizon Services Corp., Time Warner Cable Inc., iControl Networks Inc., CoxCom, LLC, Verizon Communications Inc., Verizon Corporate Resources Group, LLC, and Verizon Data Services LLC are real-parties-in-interest. Pet. 1–2. Petitioner also acknowledges that Terremark North America LLC, Verizon Communications Inc., and Time Warner Cable Inc. were served with a complaint on June 23, 2014. Exs. 2003, 2005. Inter partes review is precluded for at least the reasons that Terremark North America LLC and Verizon Communications Inc. are real parties-in-interest and were served with a complaint on June 23, 2014. 35 U.S.C. § 315(b). CoxCom, LLC, is precluded additionally from filing the Petition for other reasons. In PNC Bank, N.A. et al. v. Maxim Integrated Prods., Inc., Case CBM2014-00041 (PTAB June 3, 2014) (Paper No. 19), the Board addressed a Motion of Adverse Judgement against PNC. In PNC Bank, PNC, one of three petitioners, violated 35 U.S.C. § 325(a)(1) by filing the petition for covered business method review (“CBM”) after it had filed a district court suit challenging the validity of the patent challenged in the CBM. In an attempt to eliminate the statutory bar against PNC, PNC moved for entry of adverse judgment against it in the CBM proceeding and 14 contended that other petitioners could proceed with the petition without further involvement by PNC. The Board denied institution on the CBM petition and dismissed the motion because PNC already had exerted substantial control over the case, and granting PNC’s request for adverse judgment would not obviate the control that PNC already had exerted. Id., slip op. at 4. Similarly, Terremark North America LLC and the named Verizon entities in this case already have exerted substantial control over the case by participating in filing the Petition, appointing counsel, etc. The presence of CoxCom, LLC, therefore, does not remove the statutory bar. slip op. at 14
Discretionary denialPatents in suitUS 6,549,130 - Terremark North America LLC / Verizon Business Network Services Inc. et al. v. Joao Control & Monitoring Systems, LLCInstitution deniedPTAB · Dec 28, 2015 · IPR2015-01482 · APJ Jason J Chung · IPR · Institution
The Board denied institution on all challenged claims because the petition was filed outside the one-year time bar under 35 U.S.C. § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent” (emphasis added). 35 U.S.C. § 315(b). Petitioner acknowledges that Terremark North America LLC, Verizon Communications Inc., Verizon Services Corp., Verizon Communications Inc., Verizon Corporate Resources Group, LLC, and Verizon Data Services LLC are real-parties-in-interest. Pet. 1–2. Petitioner also acknowledges that Terremark North America LLC and Verizon Communications Inc. were 14 served with a complaint on June 23, 2014. Ex. 2003. Inter partes review is precluded for at least the reasons that Terremark North America LLC and Verizon Communications Inc. are real parties-in-interest and were served with a complaint on June 23, 2014. 35 U.S.C. § 315(b). slip op. at 14
- BurdenDecided for patent owner
“Petitioner was served with a complaint alleging infringement. 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b). Moreover, a petition is only accorded a filing date once (1) a petition has been filed; (2) payment has been made; and (3) the complete petition is served on the patent owner. 35 U.S.C. § 312(a); 37 C.F.R. § 42.106(a). The Board has discretion to waive non-statutory requirements per 37 C.F.R. § 42.5(b). In addition, our rules permit a party to file a motion to correct a “clerical or typographical mistake.” 37 C.F.R. § 42.104(c). The burden of proof rests with the moving party, which is, in this case, Petitioner. 37 C.F.R. § 42.20(c); Motion 2.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“Petitioner acknowledges that Terremark North America LLC, Verizon Communications Inc., Verizon Services Corp., Verizon Communications Inc., Verizon Corporate Resources Group, LLC, and Verizon Data Services LLC are real-parties-in-interest. Pet. 1–2. Petitioner also acknowledges that Terremark North America LLC and Verizon Communications Inc. were 14 served with a complaint on June 23, 2014. Ex. 2003. Inter partes review is precluded for at least the reasons that Terremark North America LLC and Verizon Communications Inc. are real parties-in-interest and were served with a complaint on June 23, 2014. 35 U.S.C. § 315(b). CoxCom, LLC, is precluded additionally from filing the Petition for other reasons. In PNC Bank, N.A. et al. v. Maxim Integrated Prods., Inc., Case CBM2014-00041 (PTAB June 3, 2014) (Paper No. 19), the Board addressed a Motion of Adverse Judgement against PNC. In PNC Bank, PNC, one of three petitioners, violated 35 U.S.C. § 325(a)(1) by filing the petition for covered business method review (“CBM”) after it had filed a district court suit challenging the validity of the patent challenged in the CBM. In an attempt to eliminate the statutory bar against PNC, PNC moved for entry of adverse judgment against it in the CBM proceeding and contended that other petitioners could proceed with the petition without further involvement by PNC. The Board denied institution on the CBM petition and dismissed the motion because PNC already had exerted substantial control over the case, and granting PNC’s request for adverse judgment would not obviate the control that PNC already had exerted. Id., slip op. at 4. Similarly, Terremark North America LLC and the named Verizon entities in this case already have exerted substantial control over the case by participating in filing the Petition, appointing counsel, etc. The presence of CoxCom, LLC, therefore, does not remove the statutory bar.” slip op. at 14
Discretionary denialPatents in suitUS 7,397,363 - Terremark North America LLC / Verizon Communications Inc. et al. v. Joao Control & Monitoring Systems, LLCInstitution deniedPTAB · Dec 28, 2015 · IPR2015-01485 · APJ Jason J Chung · IPR · Institution
The Board denied institution on all challenged claims because the petition was filed after the one-year time bar in § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“Petitioner was served with a complaint alleging infringement. 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b). Moreover, a petition is only accorded a filing date once (1) a petition has been filed; (2) payment has been made; and (3) the complete petition is served on the patent owner. 35 U.S.C. § 312(a); 37 C.F.R. § 42.106(a). The Board has discretion to waive non-statutory requirements per 37 C.F.R. § 42.5(b). In addition, our rules permit a party to file a motion to correct a “clerical or typographical mistake.” 37 C.F.R. § 42.104(c). The burden of proof rests with the moving party, which is, in this case, Petitioner. 37 C.F.R. § 42.20(c); Motion 2.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityInstitution denied time barDecided for patent owner
“the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent” (emphasis added). 35 U.S.C. § 315(b).” slip op. at 13
Discretionary denialPatents in suitUS 7,397,363 - Terremark North America LLC / Verizon Business Network Services Inc. et al. v. Joao Control & Monitoring Systems, LLCInstitution deniedPTAB · Dec 28, 2015 · IPR2015-01484 · APJ Jason J Chung · IPR · Institution
The Board denied institution on all challenged claims because the petition was filed, served, and paid one day after the § 315(b) one-year time bar.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“Petitioner was served with a complaint alleging infringement. 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b). Moreover, a petition is only accorded a filing date once: (1) a petition has been filed; (2) payment has been made; and (3) the complete petition is served on the patent owner. 35 U.S.C. § 312(a); 37 C.F.R. § 42.106(a). The Board has discretion to waive non-statutory requirements per 37 C.F.R. § 42.5(b). In addition, our rules permit a party to file a motion to correct a “clerical or typographical mistake.” 37 C.F.R. § 42.104(c). The burden of proof rests with the moving party, which is, in this case, Petitioner. 37 C.F.R. § 42.20(c); Motion 2. It is undisputed that at least two of the petitioning parties were served with a complaint alleging infringement of the ’010 patent on June 23, 2014. Ex. 2001 ¶¶ 1–4; Exs. 2002–2005. On June 23, 2015, Petitioner failed to comply with the statutory requirements of 35 U.S.C. § 312(a) by not paying the required fee and failing to meet the requirements of 37 C.F.R. § 42.106(a) by not filing and serving the Petition and its supporting evidence. Motion 2–6 (citing Ex. 1008 ¶¶ 1–13; Ex. 1009 ¶¶ 1–12). On June 24, 2015, one day after the one year statutory deadline, Petitioner completed filing of the Petitions at issue. Id. at 5–6 (citing Ex. 1008 ¶¶ 1– 13; Ex. 1009 ¶¶ 1–12).” slip op. at 5
Discretionary denialPatents in suitUS 7,277,010 - Zhejiang Yankon Group, Ltd. v. Cordelia Lighting, Inc.Institution deniedPTAB · Nov 25, 2015 · IPR2015-01420 · APJ Jacqueline T Harlow · IPR · Institution
The Board denied institution because Zhejiang Yankon Group failed to identify Yankon-US as a real party-in-interest, and a corrected petition would be time-barred.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiDenied
“Because Cordelia provides sufficient rebuttal evidence that reasonably brings into question the accuracy of Yankon-China’s identification of real” slip op. at 17
- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“E. Corrected Petition Would Be Time-Barred The Petition was accorded a filing date of June 16, 2015. Paper 3, 1. At this stage of the proceeding, correction of the Petition to include Yankon- US as a real party-in-interest would require assignment of a new filing date. See 37 C.F.R. § 42.106(b). Granting Yankon-US a new filing date would be futile in this instance because, even if corrected, the earliest filing date that could be accorded to the Petition would fall outside the one-year time bar for pursuing inter partes review set forth in 35 U.S.C. § 315(b). III. ORDER In consideration of the foregoing, it is ORDERED that the Petition is DENIED and no trial is instituted.” slip op. at 19
Discretionary denialPatents in suitUS 8,454,204 - Microsoft Corporation v. Biscotti Inc.Institution deniedPTAB · Oct 20, 2015 · IPR2015-01053 · APJ Neil T Powell · IPR · Institution
The Board denied joinder and denied institution of review of claims 1, 4, and 5 because the petition was time-barred under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“Petitioner has established sufficiently that joinder to the ’1458 IPR is warranted. Granting joinder would complicate the substantive issues in the ’1458 IPR significantly more than Petitioner suggests. We do not agree with Petitioner’s assertion that “granting joinder results in essentially one new substantive issue—whether the HDMI Specification (Ex. 1007) discloses the HDMI element.” Joinder Motion 9. Joinder would add to the ’1458 IPR obviousness challenges to claims 1, 4, and 5, thereby adding for each of these challenges the numerous issues that any obviousness analysis entails. Additionally, the challenge raised in the present Petition does not rely on the same references as the pending challenges in the ’1458 IPR. Unlike the challenge raised in the present Petition, no pending claim challenge in the ’1458 IPR relies on the HDMI Specification. See ’1458 Institution Decision 33–34. Indeed, joinder would add a significant dispute regarding the public accessibility of the HDMI Specification.” slip op. at 17
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“review when the petition is filed more than one year after the petitioner (or petitioner’s real party in interest or privy) is served with a complaint alleging infringement of the patent. 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b). That one-year time bar, however, does not apply to a request for joinder. 35 U.S.C. § 315(b) (final sentence); 37 C.F.R. § 42.122(b). This is an important consideration here because Petitioner was served with a complaint asserting infringement of the ’182 patent more than one year before filing the Petition in this proceeding. See Joinder Motion 2–4. As noted above, the ’182 patent is involved in a district court proceeding in the U.S. District Court of the Eastern District of Texas captioned Biscotti Inc. v. Microsoft Corp., Case No. 2:13-cv-01015-JRG (E.D. Tex.) (“District Court Proceeding”). Joinder Motion 2; Pet. 3–4. Petitioner represents that the complaint in the District Court Proceeding was served on Petitioner on November 27, 2013. Joinder Motion 2. As noted above, the present Petition was filed on April 17, 2015. Thus, absent joinder of this proceeding to the ’1458 IPR, institution based on the current Petition is barred under 35 U.S.C. § 315(b).” slip op. at 9
Discretionary denialPatents in suitUS 8,144,182 - Microsoft Corporation v. Biscotti Inc.Institution deniedPTAB · Oct 19, 2015 · IPR2015-01052 · APJ Neil T Powell · IPR · Institution
The Board denied joinder and denied institution of review of claims 13–16, 33, 34, 46, and 82–86 because the petition was time-barred under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“warranted. Granting the joinder sought by Petitioner would complicate the substantive issues in the ’1457 IPR significantly more than Petitioner suggests. Contrary to Petitioner’s suggestion, joinder would do more than simply add evidence that the HDMI Specification is prior art. See Joinder Motion 8. Joinder would add to the ’1457 IPR an obviousness challenge to claims 13–16, 33, 34, 46, and 82–86, thereby adding the numerous issues that any obviousness analysis entails. Additionally, contrary to Petitioner’s suggestion, the challenge raised in the present Petition does not rely on the same references as the pending challenges in the ’1457 IPR. See Joinder Motion 8 (“The -01052 proceeding involves . . . the same prior art . . . as the -01457 proceeding.”). Unlike the challenge raised in the present Petition, no pending claim challenge in the ’1457 IPR relies on the HDMI Specification. See ’1457 Institution Decision 31. Indeed, joinder would add a significant dispute regarding the public accessibility of the HDMI Specification. Additionally, granting joinder would add significant procedural complications and delay resolution of the ’1457 IPR. In the ’1457 IPR, Patent Owner has filed its Response, and the date for the oral hearing is only weeks away. Granting joinder would require adjusting the schedule to allow Patent Owner discovery on the issues presented by the challenge in the present Petition. Petitioner does not offer a practical way to accommodate the additional discovery and briefing without rushing significantly all involved or delaying the final written decision beyond its current due date of March 19, 2016.” slip op. at 15
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“III. DECISION ON THE PETITION Institution of inter partes review is barred when the petition is filed more than one year after the petitioner is served with a complaint alleging infringement of the patent. 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b). The present Petition was filed more than one year after Petitioner was served with a complaint alleging infringement of the ’182 patent. See Joinder Motion 2, 4. Accordingly, in view of our decision to deny Petitioner’s Joinder Motion, we deny the present Petition because it was not filed within the time limits imposed under 35 U.S.C. § 315(b).” slip op. at 16
Discretionary denialPatents in suitUS 8,144,182 - Oracle Corporation v. Crossroads Systems, Inc.Institution deniedPTAB · Sep 9, 2015 · IPR2015-01063 · APJ Kevin W Cherry · IPR · Institution
The Board denied institution for claims 1–14 because the petition was time-barred under § 315(b); the joinder motion was moot.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“Section 315(b) normally bars institution of inter partes review when the petition is filed more than one year after the petitioner is served with a complaint alleging infringement of the patent. 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b). The one-year time bar, however, does not apply to a request for joinder. 35 U.S.C. § 315(b) (final sentence); 37 C.F.R. § 42.122(b). In a “Statement of Material Facts,” Petitioner states that it “was served with a complaint asserting infringement of U.S. Patent No. 6,425,035 more than one year before filing the petition.” Mot. 1. Without joinder of Petitioner in this proceeding as a party to the ’777 proceeding, the Petition would be barred under 35 U.S.C. § 315(b). Because the Joinder Motion is moot, the present Petition is time barred, and, therefore, we deny the Petition because it was not filed within the time limits imposed under 35 U.S.C. § 315(b). III.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“DISCUSSION The Joinder Motion states that “Petitioner Oracle Corporation respectfully requests joinder pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b) of the above-captioned inter partes review with NetApp, Inc. v. Crossroads Systems, Inc., IPR2015-00777.” Mot. 1. Because we declined to institute inter partes review in the ’777 proceeding, the Joinder Motion is moot.” slip op. at 3
Discretionary denialPatents in suitUS 6,425,035 - Tristar Products, Inc. v. Choon’S Design, LLCInstitution deniedPTAB · Aug 26, 2015 · IPR2015-00840 · APJ Jeremy M Plenzler · IPR · Institution
The Board denied institution in IPR2015-00840 because the petition was filed more than one year after service, triggering the § 315(b) time bar.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“The plain language of 35 U.S.C. § 315(b) requires “the petitioner, real party in interest, or privy of the petitioner [to be] served with a complaint alleging infringement of the patent” to start the one year period for filing a petition for inter partes review. The statute does not include any requirement regarding filing proof of that service with a court. Based on the information before us, there is no reason to conclude that the February 28, 2014 service on Petitioner was defective, or otherwise ineffective to trigger the one-year bar of § 315(b). For example, although Petitioner argues that service might have been ineffective, if the entity served was no longer the registered agent for service of process, it has not come forward with any allegation suggesting this to be the case. See 315(b) Br. 5–6. Nor has Petitioner come forward with any argument that a procedural defect renders the February 28, 2014 service ineffective to trigger the bar. Petitioner’s arguments regarding “not ha[ving] an opportunity to challenge the alleged February 2[8], 2014 service” and “allowing a patent owner to improperly serve a party at an early date, and then effect proper service at a later date” (315(b) Br. 5) are unpersuasive. Based on the particular facts before us, Petitioner had the opportunity to argue that the February 28, 2014 service was defective in the supplemental briefing authorized by the panel (the 315(b) Brief), but as noted above, did not allege any procedural defect in that service.” slip op. at 5
Discretionary denialPatents in suitUS 8,622,441 - Tristar Products, Inc. v. Choon’S Design, LLCInstitution deniedPTAB · Aug 26, 2015 · IPR2015-00838 · APJ Jeremy M Plenzler · IPR · Institution
The Board denied institution in IPR2015-00838 and IPR2015-00840 because the petitions were filed more than one year after service, triggering the § 315(b) time bar.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“The plain language of 35 U.S.C. § 315(b) requires “the petitioner, real party in interest, or privy of the petitioner [to be] served with a complaint alleging infringement of the patent” to start the one year period for filing a petition for inter partes review. The statute does not include any requirement regarding filing proof of that service with a court. Based on the information before us, there is no reason to conclude that the February 28, 2014 service on Petitioner was defective, or otherwise ineffective to trigger the one-year bar of § 315(b). For example, although Petitioner argues that service might have been ineffective, if the entity served was no longer the registered agent for service of process, it has not come forward with any allegation suggesting this to be the case. See 315(b) Br. 5–6. Nor has Petitioner come forward with any argument that a procedural defect renders the February 28, 2014 service ineffective to trigger the bar. Petitioner’s arguments regarding “not ha[ving] an opportunity to challenge the alleged February 2[8], 2014 service” and “allowing a patent owner to improperly serve a party at an early date, and then effect proper service at a later date” (315(b) Br. 5) are unpersuasive. Based on the particular facts before us, Petitioner had the opportunity to argue that the February 28, 2014 service was defective in the supplemental briefing authorized by the panel (the 315(b) Brief), but as noted above, did not allege any procedural defect in that service.” slip op. at 5
Discretionary denialPatents in suitUS 8,485,565
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.