- 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.