• Samsung Electronics Co., Ltd. v. California Institute Of TechnologyInstitution denied
  PTAB · May 4, 2023 · IPR2023-00133 · APJ Ken B Barrett · IPR · Institution

  The Board denied institution under Fintiv because the advanced parallel litigation outweighed the stipulation, and the petition did not present compelling merits for any challenged claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “The district court has already denied a motion for a stay, and the reasoning in its decision on the motion indicates that the court is unlikely to grant a renewed motion. See Ex. 2002, 5–6 (finding that the advanced stage of the underlying litigation disfavors a stay and that a stay is unlikely to simplify the issues in the underlying litigation). Thus, we find that this factor weighs in favor of exercising authority to deny institution. See Fintiv, Paper 11 at 6–7.” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “We agree that Kobayashi provides scant details on the operation of its outer encoder, which Petitioner attempts to fill in with expert testimony on Hamming coders and matrix multiplication generally. See Ex. 1002 ¶¶ 28– 35, 65. Patent Owner, on the other hand, provides argument based on Kobayashi’s disclosure and Petitioner’s own characterization of that disclosure that appears, on this record, to contradict Petitioner’s arguments. Even if, hypothetically, we were to deem Petitioner’s showing on the record before us to be adequate under the lesser reasonable likelihood standard (again, a finding we do not make), we apply a higher compelling merits standard for our analysis of the sixth Fintiv factor, and find Petitioner has not met that higher standard. In short, on the record before us, for the reasons noted above, we do not view Petitioner’s evidence as plainly leading to a conclusion that one or more claims are unpatentable by a preponderance of the evidence. See Interim Procedure 4. We, therefore, find Petitioner’s showing as to the independent claims is not compelling.” slip op. at 31

  § 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,421,032
• Samsung Electronics Co., Ltd. v. California Institute Of TechnologyInstitution denied
  PTAB · May 4, 2023 · IPR2023-00130 · APJ Amber L Hagy · IPR · Institution

  The Board denied institution on all challenged claims under § 314(a), finding the advanced parallel litigation outweighed the stipulation and the merits were not compelling.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “The district court has already denied a motion for a stay, and the reasoning in its decision on the motion indicates that the court is unlikely to grant a renewed motion. See Ex. 2002, 5–6 (finding that the advanced stage of the underlying litigation disfavors a stay and that a stay is unlikely to simplify the issues in the underlying litigation). Thus, we find that this factor weighs in favor of exercising authority to deny institution. See Fintiv, Paper 11 at 6–7.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “In short, on the record before us, for the reasons noted above, we do not view Petitioner’s evidence as plainly leading to a conclusion that one or more claims are unpatentable by a preponderance of the evidence. See Interim Procedure 4. We, therefore, find Petitioner’s showing as to the independent claims is not compelling. Petitioner’s arguments for the dependent claims and the other grounds (including the ground based on the combination with McEliece) (Pet. 19–56) do not cure the above deficiencies. Thus, Petitioner’s showing of unpatentability is not compelling for any of the challenged claims under any of the asserted grounds.” slip op. at 29

  § 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,116,710

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