- Aviagames, Inc. v. Skillz Platform Inc.Institution deniedPTAB · Aug 9, 2022 · IPR2022-00530 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution for claims 1–3, 7–12, and 16–21 under § 314(a), finding denial best served efficiency after the district court held the claims invalid.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“First, we believe that the Fintiv analysis and factors are a poor fit to the circumstances of this proceeding.10 The Fintiv factors are “related to a parallel, co-pending proceeding” in a district court involving the same patent challenged before the Board. See Fintiv 5 (Heading B) (capitalization omitted). Here, the District Court found the challenged patent to be invalid on a basis that we cannot consider—subject matter eligibility under 35 U.S.C. § 101. See 35 U.S.C. § 311(b) (“A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.”). There is no parallel consideration by a district court of the invalidity of the challenged claims of the ’602 patent under 35 U.S.C. §§102 or 103. Second, even if we consider the Fintiv factors, we disagree with Petitioner and determine that, under the circumstances presented here, these factors support our denying institution. The Fintiv factors and a Fintiv analysis emphasizes, inter alia, concerns of efficiency. Fintiv 5, 6, 15, 16. As discussed below, we believe that efficiency as shown by analysis of the Fintiv factors strongly favors denial of institution. We consider each of the Fintiv factors. We then weigh the factors together and decide, in this case, to exercise our discretion to deny institution based on the particular circumstances presented in this case.” slip op. at 11
Discretionary denialPatents in suitUS 9,479,602 - 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 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Evolved Wireless LLCInstitution deniedPTAB · Nov 29, 2021 · IPR2021-00949 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution of inter partes review of claims 1–3 and 6–8, exercising § 314(a) discretion under Fintiv because most factors favored denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“The merits of this case thus present the “closer call” that favors exercising discretion to deny institution of an inter partes review under Fintiv. 7. Conclusion As noted in Fintiv, we consider the above factors as part of “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv at 6. In this instance, most of the factors we consider weigh in favor of exercising discretion to deny institution of an inter partes review, with Fintiv factor 4 weighing only somewhat against. We accordingly exercise that discretion and deny the Petition.” slip op. at 20
Discretionary denial - PTAB · Sep 30, 2021 · IPR2021-00659 · APJ Jon M Jurgovan · IPR · Institution
The Board denied institution of IPR on all challenged claims under § 314(a), finding the ITC investigation’s timing and substantial investment outweighed factors favoring institution.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“and the target date for completion of the ITC investigation is February 22, 2022. Ex. 2001, 4. Accordingly, it is likely that this proceeding will be concluded prior to trial in the District Court, but after the ITC investigation is completed. Because the ITC is scheduled to complete its investigation approximately seven-and-a-half months before the due date for the final written decision, this factor weighs in favor of exercising our discretion to deny institution.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“the Petition on the merits in its Preliminary Response and we do not have the benefit of Patent Owner’s views on the merits. However, we agree with Petitioner that the Petition appears to present a reasonable likelihood that Petitioner would prevail. Considering the evidence, we determine that this factor is neutral.” slip op. at 15
Discretionary denialPatents in suitUS 10,651,333 - PTAB · May 26, 2021 · IPR2021-00095 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution of IPR on all challenged claims under § 314(a), finding that Fintiv factors concerning the ITC investigation outweighed the factors favoring institution.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“be stayed. Although Petitioner provides examples of stayed proceedings, we are not persuaded that those examples impact this proceeding. On the other hand, the parties agree that the ITC will not stay its investigation. See Reply 2; Sur-reply 2–3. Accordingly, we weigh this factor in favor of exercising our discretion to deny institution.” slip op. at 9
Discretionary denialPatents in suitUS 10,522,707 - Edwards Lifesciences Corp. / Edwards Lifesciences LLC v. Evalve, Inc.Institution deniedPTAB · Mar 19, 2020 · IPR2019-01546 · APJ Susan L C Mitchell · IPR · Institution
The Board denied institution on all challenged claims under § 314(a), citing the advanced district court litigation, substantial overlap, and the trial scheduled well before a final Board decision.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“First, trial is set to conclude well before a final decision would be due in this proceeding. Here, the district court has scheduled a five-day jury trial to begin on May 6, 2020. Ex. 3001, November 21, 2019, minute order. The Court’s comments in the docket reflect an intent to preserve this trial date. Id. at docket entry 333 (considering Patent Owner’s motion to amend the complaint to be withdrawn because it would require a substantial of extension of the trial date). Also, it appears from the district court’s docket that extensive pre-trial briefing by the parties, including motions to exclude or strike expert testimony, is well underway. See Ex. 3001, docket entries 352–359. The parties are also seeking partial summary judgment on various issues in view of the upcoming trial. Id. at docket entries 340–351. Accordingly, we expect that the jury trial in the district court proceeding would conclude more than ten months before a final decision would be due. See Prelim. Resp. 9; 35 U.S.C. § 316(a)(11); 37 C.F.R. § 42.100; NHK, IPR2018-00752, Paper 8, 19–20 (exercising discretion to deny institution where trial was set to occur six months before the Board’s expected final decision). Second, there is substantial overlap between the arguments raised in the district court litigation and those raised in the Petition. Petitioner relies predominantly on the same prior art – Kuehn, Tremulis, Roth, and Skelton – in both proceedings to challenge patentability and articulates substantially the same arguments as to why the combination of the teachings of these references renders obvious claims 1, 4, 6, 10, 11, 14, 16, 1720, 22, 33, and 34 of the ’388 patent. Compare Pet. 30–79 (argument with respect to Grounds 1 and 2), with Ex. 2063, 193–238 and Ex. 2013 (redline comparison of arguments from the Petition and arguments in the invalidity contentions filed in the district court litigation). In addition, the claim constructions requested in this proceeding overlap with those addressed in the district court proceeding and would be decided under the same claim construction standard.9 Pet. 22–28; Ex. 2061, 2–3, 11–13; Ex. 2062, 2. Third, both the parties and the district court have already directed substantial time and energy toward resolving the district court litigation. 9 The claim construction standard to be employed in an inter partes review recently changed from broadest reasonable interpretation to “the same claim construction standard used by Article III federal courts . . . which follow According to Patent Owner, as of the filing of its Preliminary Response, the parties had “produced over 2 million pages of documents and . . . taken around 50 depositions.” Prelim. Resp. 8. Similarly, as already discussed, the district court has been asked to decide a motion of a temporary restraining order (Ex. 3001, docket entry 63), a motion for a preliminary injunction (id. at docket entries 164, 165, and 166),10 and claim construction (id. at docket entry 297). The District Court held lengthy hearings regarding the preliminary injunction motion and claim construction that involve many of the issues presented here. Id. at docket entry 122 (minute order giving the parties 3 hours each to present arguments regarding the preliminary injunction motion); id.at docket entry 219 (minute order allocating 3 hours to be split between the parties for a Markman hearing). The district court has also been asked to rule on numerous discovery disputes. Id. at docket entries 26, 66, 74, 75, 184, 265, and 305, and at March 22, 2019 minute order. Given how far advanced the litigation is, the continued indication that trial will proceed as scheduled, and the substantial work involving many of the same issues presented here already accomplished by the district court and the parties, institution of an inter partes review here cannot be considered to be an efficient or effective alternative to the litigation.” slip op. at 10
Discretionary denialcites PhillipsPatents in suitUS 7,736,388
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.