- PTAB · Nov 12, 2024 · IPR2024-00886 · APJ Monica S Ullagaddi · IPR · Institution
The Board denied institution for claims 9–16 under § 314(a), finding the Fintiv factors favored denial and neither obviousness challenge presented compelling merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“When determining whether to exercise discretion to deny institution in view of a parallel proceeding, we consider the following factors: 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. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). “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 these factors, we “take[] a holistic view of whether efficiency and integrity” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“or Ingale in view of Jung. Pet. 18–51. For the reasons discussed below, we determine that Petitioner’s showing does not rise to the level of “compelling merits” according to the Office’s current guidance and Board precedents. CommScope at 3–4 (quoting Guidance Memo, 4) (“[W]hen determining whether there is a compelling unpatentability challenge, the Board evaluates whether the Petition presents challenges ‘in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.”); OpenSky Indus., LLC v. VLSI Tech. LLC, IPR2021-01064, Paper 102 at 49–50 (PTAB only ‘plainly lead to a conclusion that one or more claims are unpatentable’ . . . if it is highly likely that the petitioner would prevail with respect to at least one challenged claim”). 1. Petitioner’s Showing for Claim 9 Below we provide an element-by-element analysis of Petitioner’s obviousness showing for claim 9. After considering the evidence supporting Petitioner’s obviousness showing, and Patent Owner’s arguments and evidence as to why Petitioners’ obviousness showing is deficient, we consider whether the totality of the evidence rises to the level of compelling merits.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“For the reasons set forth above, and even if we consider Petitioner’s proposed rationale for combining Ingale and Jung to be supported by sufficient rational underpinnings (see e.g., Pet. 24–27), neither Jung nor Ingale, either individually or in the proposed combination set forth by Petitioner teach or suggest limitation 9.6 of claim 9 so as to rise to a compelling, meritorious showing for claim 9. 4. Remaining Claims Petitioner’s arguments and evidence for independent claim 13 (Pet. 58–59) and dependent claims 10–12 and 14–16 (id. at 51–57, 59–60) are substantially similar to Petitioner’s arguments and evidence for claim 9 and are unopposed at this stage by Patent Owner (except for the issues discussed above with respect to independent claim 9) (see e.g., Prelim. Resp. 15). Accordingly, Petitioner’s showing for claims 10–16 do not differ or deviate from the showing with respect to independent claim 9 so as to rise to the level of a compelling, meritorious showing, either for independent claim 9, or any of claims 10–16.” slip op. at 32
- Skill levelSkill level petitioner adoptedOther
“At this stage in the proceeding, Patent Owner does not contest Petitioner’s definition of the POSA. Prelim. Resp. 6–7 (“For purposes of this Preliminary Response only, Patent Owner utilizes Petitioner’s proposed level of skill in the art.”). Petitioner’s description of a POSITA appears consistent with the subject matter of the ’557 patent and with the prior art of record, we apply it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,019,557 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Evolved Wireless LLCInstitution deniedPTAB · Nov 29, 2021 · IPR2021-00950 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution of IPR challenging claims 14–16 and 18–20, exercising § 314(a) discretion under Fintiv because the ITC investigation was advanced and the preliminary merits were a closer call.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“In evaluating whether to do so, we consider the following factors in assessing “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; 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. Fintiv at 5–6. 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 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“B. Analysis Institution of an inter partes review is discretionary. See 35 U.S.C. § 314(a) (2018) (stating “[t]he Director may not authorize an inter partes review to be instituted unless the Director determines that 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”) (emphasis added); 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.”). The advanced state of either a parallel district court action or a parallel ITC investigation may warrant exercising discretion on behalf of the Director to deny a petition for inter partes review. See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential) (“NHK”); Apple Inc. v. Fintiv Inc., IPR2020-00019, Paper 11 at 5–6, 8 (PTAB March 20, 2020) (precedential) (“Fintiv”); Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 58 & n.2, available at” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner contends that Nokia discloses, “in the context of the disclosed handover operations, performing a contention free . . . RACH procedure (step 5 [of Nokia’s Figure 1]), wherein the identifier information necessary for the UE to communicate with the target base station during the RACH procedure was previously transmitted in a message from the source base station to the UE (e.g., Handover Command, Step 4).” Pet. 31 (citing Ex. 1037 ¶ 92). Petitioner motivates its reasoning for effecting a combination of Nokia with Hu by contending that a person of skill in the art “would recognize that the specific implementation of such a conventional, contention free RACH procedure as referenced in Nokia could be implemented using” a variety of known methods. Id. at 33. Such a person “would also have recognized,” Petitioner further contends, “that using conventional RACH procedures wherein each UE is assigned and uses its own different preamble would make the handover process quicker and more efficient by reducing contention between the mobile station and the other mobile stations on the RACH.” Id. Petitioner relies on such features to argue that “Hu discloses the full implementation level details of how such a conventional, contention free RACH procedure using allocated resources in the form of a dedicated code resource (i.e., a dedicated preamble) is performed.” Id. Patent Owner disputes Petitioner’s reading of Nokia, particularly that it discloses a contention-free RACH procedure. See Prelim. Resp. 36–43. Patent Owner correctly observes that the timing alignment in step 5 of Nokia’s Figure 1 “involves one of two different procedures: a ‘one or two step RACH procedure’ OR a ‘Non contention based access burst.’” Id. at 37. Patent Owner elaborates that, although Nokia teaches that the “UE receives allocation(s)” that can be used in an access burst in the second of these procedures, Nokia “does not even teach what an ‘access burst’ is or how it would be used in a non-contention-based manner—and certainly does not teach or suggest that the non-contention-based manner would involve a RACH procedure.” Id. at 38. Patent Owner further supports its position with “[o]ther contemporaneous submissions by Nokia [that] confirm this and explain what Nokia meant by a contention-free access burst procedure,” as well as LTE standards documents. Id. at 38–43 (citing Ex. 2009, 1–2; Ex. 2010 § 10.1; Ex. 2011 § 10.1.2.1; Ex. 2012 § 10.1.2.1). We have reviewed this evidence, and find on this record that it provides some support for Patent Owner’s position. The merits of this case thus present the “closer call” that favors exercising discretion to deny institution of an inter partes review under Fintiv.” slip op. at 18
§ 103 obviousnessDiscretionary denial - Tco As v. NCS Multistage Inc.Institution deniedPTAB · Feb 18, 2021 · PGR2020-00078 · APJ Lynne H Browne · PGR · Institution
The Board denied institution of PGR on claims 1–21 and 28–49 under § 324(a), finding likely duplication with parallel litigation and weak merits on most challenges.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“g. Holistic Analysis of Fintiv Factors We undertake a holistic analysis of these factors, considering “whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv, Paper 11 at 6. In this case, all of the factors weigh in Patent Owner’s favor except for the first factor, which is neutral, and the fifth factor, which weighs against denial. Specifically, the overlap of the parallel proceedings, including the stipulation by Patent Owner, and the weakness of the merits of Petitioner’s petition outweigh the factors in favor of exercising discretion to institute inter partes review. A balancing of the facts and circumstances as discussed above leads us to conclude, on this record, that the inefficient duplication of efforts here is likely. Accordingly, we determine that the circumstances presented weigh in favor of denying institution under 35 U.S.C. § 324(a).” slip op. at 27
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“g. Holistic Analysis of Fintiv Factors We undertake a holistic analysis of these factors, considering “whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv, Paper 11 at 6. In this case, all of the factors weigh in Patent Owner’s favor except for the first factor, which is neutral, and the fifth factor, which weighs against denial. Specifically, the overlap of the parallel proceedings, including the stipulation by Patent Owner, and the weakness of the merits of Petitioner’s petition outweigh the factors in favor of exercising discretion to institute inter partes review. A balancing of the facts and circumstances as discussed above leads us to conclude, on this record, that the inefficient duplication of efforts here is likely. Accordingly, we determine that the circumstances presented weigh in favor of denying institution under 35 U.S.C. § 324(a).” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundOther
“unpatentable over Rogers and Entchev. Pet. 105–112. Patent Owner also alleges that claims 4 and 32 are unpatentable over Rogers, Entchev, and Lembcke and that claims 19–21 and 47–49 are unpatentable over Rogers, Entchev, and Fishbeck. Id. at 113–114. Patent Owner asserts that Petitioner “does not show a motivation to combine Entchev and Rogers.” Prelim. Resp. 40. Specifically, Patent Owner asserts that Petitioner “has not shown or even argued that a POSA would have sought to incorporate the bridge plug of Entchev into a process that does not include a settlement location for the pieces of the bridge plug, like Rogers.” Id. at 42. Patent Owner asserts further that Petitioner has not “shown that a POSA would have combined the debris catching features in Entchev with Rogers.” Id. We find Patent Owner’s assertions credible. Upon our initial review of this ground, we find that Petitioner’s reasoning in support of the proposed combination is weak, which suggest that the merits of the challenges relying on the combination of Rogers and Entchev are weak, which weighs in favor of denying institution.” slip op. at 26
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,465,445 - Supercell OY v. Gree, Inc.Rehearing deniedPTAB · Nov 2, 2020 · PGR2020-00034 · APJ Amanda F Wieker · PGR · Rehearing
The Board denied Supercell’s rehearing request, leaving in place the denial of institution based on the Fintiv factors and the parallel district court proceeding.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“this factor. At the time of our Decision, trial was scheduled in the parallel proceeding for December 7, 2020, approximately nine months before our final written decision would have been due, if we were to institute trial. Dec. 10–11. As such, this gap in timing created a cognizable risk of inconsistent results and duplication of efforts, which weighed toward denying institution. Id. at 6, 11–12. Additionally, the Decision notes that some uncertainty exists regarding trial dates, as Petitioner again argues in its Request. Id. at 11; Req. Reh’g 3–4. However, the Decision goes on to determine that even if trial in the parallel proceeding was delayed by two months, consistent with Petitioner’s prior requested delay, the proximity of the trial date to our final written decision would still favor denying institution. Dec. 12 (citing Ex. 2002, 2). As such, Petitioner has not shown that the Board misapprehended the trial date.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Thus, unlike the Request, the Petition did not contend that a skilled artisan would have found it obvious that “[Cho’s communication] may comprise one player specifying, to the server, information identifying another player to be involved in the game.” Compare id. at 46–47, with Req. Reh’g 6–7 (emphasis added). To the contrary, the Petition simply stated that a skilled artisan would understand that Cho taught transmissions through a server, but did not state that it would have been obvious, in light of Cho’s teachings, for this transmission to include first information. As discussed in our Decision, the Petition’s reliance on GSB to supply the transmission of “first information” fails because Petitioner has not explained persuasively why it would have been obvious to transmit GSB’s first information when Cho already establishes a communication between players and because Petitioner fails to explain “how the additional transmission of identifying information would simplify communications or allow easier connection, over the communication that Cho already establishes.” Dec. 24.” slip op. at 9
- Other 314aDecided for patent owner
“different posture of PGR proceedings as compared to IPR proceedings, when exercising discretion to deny institution. As summarized above, the Decision discusses that common statutory language exists in § 314(a)— directed toward IPR proceedings—and in § 324(a)—directed to post-grant review proceedings. See supra § I.A; Dec. 5–7. The Decision also discusses the common policy justifications implicated when determining whether to institute either an IPR proceeding or a PGR proceeding. Id. at 7. The Decision then goes on to recognize and discuss certain differences between PGR proceedings and IPR proceedings. Id. Despite these differences, we determined that the Board’s binding precedential case law set forth in NHK Spring and Fintiv applies to this PGR proceeding. Id. In doing so, we additionally evaluated certain differences between PGR proceedings and IPR proceedings, when considering the Fintiv Order factors. See, e.g., id. at 12, 15–17, 20–21. Petitioner has not demonstrated that we abused our discretion in doing so.” slip op. at 11
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,300,385
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.