- PTAB · Oct 16, 2014 · IPR2014-00779 · APJ Scott E Kamholz · IPR · Rehearing
The Board denied Histologics’s rehearing request, leaving the institution denial based on the § 315(b) time bar in place.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A Request for Rehearing is not an opportunity to re-argue old arguments or to present new evidence or arguments. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Yet Histologics does all of these, by repeating its Petition arguments, amplifying them, and filing eleven new evidentiary exhibits, nos. 1028-1038, without showing good cause why the evidence should be considered. See id. As to the old arguments, we addressed them fully in the Decision. As to the new, we cannot have misapprehended or overlooked arguments and evidence not presented in the Petition. We gave Histologics’s Petition full consideration and explained the reasoning underlying our determinations. A request for rehearing is not a second chance for a party to present its case. We are not persuaded of an abuse of discretion. IV.” slip op. at 4
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“We gave Histologics’s arguments and evidence complete consideration and addressed them fully in the Decision. As we explained, the issue in this case was whether service of SMR’s complaint was nullified by the Court’s dismissal of the ’612 action. Dec. 5. We explained that service was not nullified, because Histologics remained answerable to the Court for the allegations made in the original ’612 action complaint, and that the parties were not left in the same legal position as if the ’612 action had never been filed. Id. Histologics does not address this determination or explain how it was in error, other than by advancing alternative legal theories.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“A Request for Rehearing is not an opportunity to re-argue old arguments or to present new evidence or arguments. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Yet Histologics does all of these, by repeating its Petition arguments, amplifying them, and filing eleven new evidentiary exhibits, nos. 1028-1038, without showing good cause why the evidence should be considered. See id. As to the old arguments, we addressed them fully in the Decision. As to the new, we cannot have misapprehended or overlooked arguments and evidence not presented in the Petition.” slip op. at 4
Discretionary denialPatents in suitUS 6,258,044 - Target Corporation v. Destination Maternity CorporationInstitution deniedPTAB · Sep 25, 2014 · IPR2014-00509 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution because the petition was filed more than one year after Target was served with an infringement complaint, barring review under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“The instant Petition, accorded a filing date of March 14, 2014, was filed more than one year after Petitioner was served with the complaint alleging infringement of the ’531 patent. See Paper 5. We may not institute an inter partes review when “the petition . . . is filed more than 1 year after the date on which the petitioner, . . . is served with a complaint alleging infringement of the patent.” 35 U.S.C. § 315(b). Section 315(b) further states this “time limitation . . . shall not apply to a request for joinder under subsection (c).” Id. Thus, it does not apply to a person’s request to “join as a party to that [i.e., a previously instituted] inter partes review.” 35 U.S.C. § 315(c).2 However, the time limitation does apply to that person’s petition.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“filed more than one year after Petitioner was served with the complaint alleging infringement of the ’531 patent. See Paper 5. We may not institute an inter partes review when “the petition . . . is filed more than 1 year after the date on which the petitioner, . . . is served with a complaint alleging infringement of the patent.” 35 U.S.C. § 315(b). Section 315(b) further states this “time limitation . . . shall not apply to a request for joinder under subsection (c).” Id. Thus, it does not apply to a person’s request to “join as a party to that [i.e., a previously instituted] inter partes review.” 35 U.S.C. § 315(c).2 However, the time limitation does apply to that person’s petition.” slip op. at 3
Discretionary denial - Samsung Electronics Co. Ltd. v. Fractus, S.A.Rehearing deniedPTAB · Feb 26, 2014 · IPR2014-00008 · APJ Glenn J Perry · IPR · Rehearing
The Board denied Samsung’s rehearing request and maintained denial of institution because the petitions were filed more than one year after service of infringement complaints.
RulingsRehearing decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“(b) PATENT OWNER’S ACTION.—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. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c). (Emphasis added). The USPTO rule implementing section 315(b) is set forth in 37 C.F.R.” slip op. at 3
- RehearingRehearing, deniedDenied
“discretion. The requirements are set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. 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. Each of the four patents is involved in patent litigation captioned Fractus,” slip op. at 2
Discretionary denialPatents in suitUS 7,123,208 - Samsung Electronics Co. Ltd. v. Fractus, S.A.Rehearing deniedPTAB · Feb 26, 2014 · IPR2014-00012 · APJ Glenn J Perry · IPR · Rehearing
The Board denied Samsung’s rehearing request, leaving institution denied for the challenged claims because the petitions were time-barred under § 315(b).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“discretion. The requirements are set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. 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. Each of the four patents is involved in patent litigation captioned Fractus,” slip op. at 2
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“(b) PATENT OWNER’S ACTION.—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. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c). (Emphasis added). The USPTO rule implementing section 315(b) is set forth in 37 C.F.R.” slip op. at 3
Discretionary denialPatents in suitUS 7,394,432 - Samsung Electronics Co. Ltd. v. Fractus, S.A.Rehearing deniedPTAB · Feb 26, 2014 · IPR2014-00013 · APJ Glenn J Perry · IPR · Rehearing
The Board denied Samsung’s rehearing request, leaving in place the denial of institution because the petitions were time-barred under § 315(b).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“III. DECISION ON REHEARING Having fully considered Petitioner’s arguments regarding construction of § 315(b), Petitioner’s sought-after relief is denied.” slip op. at 6
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“(b) PATENT OWNER’S ACTION.—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. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c). (Emphasis added). The USPTO rule implementing section 315(b) is set forth in 37 C.F.R.” slip op. at 3
Discretionary denialPatents in suitUS 7,015,868 - Samsung Electronics Co. Ltd. v. Fractus, S.A.Rehearing deniedPTAB · Feb 26, 2014 · IPR2014-00011 · APJ Glenn J Perry · IPR · Rehearing
The Board denied Samsung’s rehearing request and left institution denied for the challenged claims because the petitions were time-barred under § 315(b).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“discretion. The requirements are set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. 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. Each of the four patents is involved in patent litigation captioned Fractus,” slip op. at 2
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“apply different temporal meanings to “is served” and “is filed” appearing in the same section. We are, however, not presented with the ambiguity that confronted the Carr Court. Petitioner’s argument that “is filed” and “is served” must both be evaluated relative to the enactment date of the America Invents Act is flawed because the two verb phrases are not given parallel grammatical treatment in the statute. Consistent with Carr, “is filed” should be construed relative to the enactment date because it defines the condition for barring institution. But “is served” is part of a prepositional phrase that defines “the date,” and should therefore be construed relative to the date of service, not relative to the statute’s enactment date. Thus, contrary to Petitioner’s assertion (Req. 3), there is no inconsistency with the Dictionary Act because both the present and future of “is served” are evaluated relative to the act of service, not to enactment of the statute. We note that the Carr dissent expressed a preference for use of the present tense in drafting statutes.” slip op. at 5
Discretionary denialPatents in suitUS 7,397,431
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.