- Google LLC v. Ecofactor Inc.Rehearing deniedPTAB · Oct 14, 2021 · IPR2020-00946 · APJ Jeffrey W Abraham · IPR · Rehearing
The Board denied Google’s rehearing request, leaving institution denied under § 314(a) based on the Fintiv analysis of parallel proceedings.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). When rehearing a decision on a petition, the decision will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs where the decision is based on an erroneous interpretation of the law, on factual findings that are not supported by substantial evidence, or represents an unreasonable judgment in weighing relevant factors.” Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“Additionally, Petitioner disagrees with our assessment that Fintiv’s fourth factor weighs “slightly in favor of institution,” arguing that we “gave insufficient weight to [this] factor, which looks to the overlap between the issues.” Req. 3–4, 11–12; Dec. 12–14. Contrary to Petitioner’s assertion, we did consider sufficiently all of the evidence regarding whether the ITC proceeding would resolve all or substantially all of the patentability disputes between the parties. See Req. 11–12. Specifically, in our Decision we expressly stated that “[b]ecause the ITC proceeding involves only claims 1, 2, and 5 of the ’497 patent, whereas Petitioner’s challenges in this proceeding involve claims 1–12, resolution of the ITC proceeding will not directly resolve the parties’ dispute concerning patentability of claims 3, 4, and 6–12 of the ’497 patent.” Dec. 13. Moreover, consistent with Petitioner’s arguments, we determined “[t]his weighs in favor of institution.” Dec. 13.” slip op. at 5
Discretionary denialPatents in suitUS 8,131,497 - Google LLC v. Ecofactor Inc.Rehearing deniedPTAB · Oct 14, 2021 · IPR2020-00947 · APJ Jeffrey W Abraham · IPR · Rehearing
The Board denied Google’s rehearing request, leaving in place its denial of IPR because parallel proceedings, including the ITC investigation, supported discretionary denial under Fintiv.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). When rehearing a decision on a petition, the decision will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs where the decision is based on an erroneous interpretation of the law, on factual findings that are not supported by substantial evidence, or represents an unreasonable judgment in weighing relevant factors.” Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDecided for patent owner
“III. DISCUSSION In our Decision, in the exercise of the Director’s discretion under 35 U.S.C. § 314(a), we declined to institute an inter partes review in view of parallel proceedings, including an ITC proceeding involving the same parties and the ’497 patent. Dec. 5–16. Petitioner contends that we misapplied the factors set forth in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”), for determining when discretionary denial of institution is warranted. Req. 1. According to Petitioner, “[t]he Board erred in several ways that collectively amount to a misapprehension of the relevant law and facts leading to an abuse of discretion.” Req. 2–3. We disagree.” slip op. at 3
Discretionary denialPatents in suitUS 8,131,497 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Clear Imaging Research, LLCInstitution deniedPTAB · Mar 4, 2021 · IPR2020-01402 · APJ Minn Chung · IPR · Institution
The Board denied institution for claims 1–30 under § 314(a), finding the Fintiv factors favored discretionary denial in light of the parallel district court litigation.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“trial date is earlier than the projected statutory deadline, the Board generally has weighed this fact in favor of exercising authority to deny institution under NHK.” Fintiv, Paper 11 at 9 (emphasis added). Here, the parallel trial in the District Court is scheduled to begin on April 5, 2021, about eleven months before a Final Written Decision would be due in this IPR proceeding. Pet. 77; Prelim. Resp. 22; Ex. 1026. Although we acknowledge the possibility of a Covid-19 related delay, we generally take courts’ trial schedules at face value absent some strong evidence to the contrary. Fintiv DDI, Paper 15 at 12−13. Here, even accounting for the possibility of a Covid-19 related delay, given the close proximity of the trial date to this Decision and the amount of time between the trial date and our Final Written Decision (i.e., eleven months), we are unpersuaded that any such delay should materially alter our weighing of this factor. Notably, even if we were to assume that there may be a four-month delay, this factor would still weigh in favor of exercising our discretion to deny institution because the parallel trial in the District Court would begin about seven months before a Final Written Decision would be due in this proceeding. See NHK, Paper 8 at 20 (finding that “the advanced state of the district court proceeding . . . weighs in favor of denying the Petition under § 314(a)” because the district court trial was set to begin six months before the IPR proceeding concluded); see also Fintiv DDI, Paper 15 at 13 (finding that “[b]ecause the currently scheduled District Court trial is scheduled to begin two months before our deadline to reach a final decision, this factor weighs somewhat in favor of discretionary denial in this case”).” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“of title 35 of the United States Code provides that “[t]he Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition . . . and any response . . . 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.” The U.S. Supreme Court has explained that because § 314 includes no mandate to institute review, “the agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.” Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016); see also Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (explaining that under § 314(a), “the PTO is permitted, but never compelled, to institute an IPR proceeding”). The Director has delegated this authority under § 314(a) to the Board. 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”).” slip op. at 8
Discretionary denialPatents in suitUS 9,392,175 - Cisco Systems, Inc. v. Ramot At Tel Aviv University Ltd.Institution deniedPTAB · May 15, 2020 · IPR2020-00122 · APJ Jason M Repko · IPR · Institution
The Board denied institution of review of claims 1, 2, 4, and 5 under § 314(a), finding the Fintiv factors favored denial despite the petition’s merits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“To institute an inter partes review, we must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). But the Board has discretion to deny a petition even when a petitioner meets that threshold. Id.; see, e.g., Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”); Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential as to § II.B.4.i); NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential); Patent Trial and Appeal Board Consolidated Trial Practice Guide 64 (Nov. 20, 2019), http://www.uspto.gov/TrialPracticeGuideConsolidated (identifying considerations that may warrant exercise of this discretion).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Because the trial date is substantially earlier than the projected statutory deadline for the Board’s final decision, this factor weighs in favor of discretionary denial.” slip op. at 8
Discretionary denialPatents in suitUS 10,033,465 - Cisco Systems, Inc. v. Ramot At Tel Aviv University Ltd.Institution deniedPTAB · May 15, 2020 · IPR2020-00123 · APJ Jason M Repko · IPR · Institution
The Board denied institution of review of claims 1 and 2 under § 314(a), finding the Fintiv factors—especially overlapping issues and the earlier trial date—weighed against institution.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“6. Conclusion All Fintiv factors weigh in favor of exercising our discretion to deny institution under § 314(a) except for one, which is neutral. We have reviewed the Petition and determine that its merits do not outweigh the Fintiv factors—especially considering the number of overlapping issues in district court, which strongly favors denial under factor 4, and the trial date, which is substantially earlier than the projected statutory deadline for the Board’s final decision. On balance, instituting would be an inefficient use of Board, party, and judicial resources. See NHK, Paper 8 at 20. Thus, efficiency and integrity of the system are best served by denying review. See Consolidated TPG at 58 (quoting 35 U.S.C. § 316(b)).” slip op. at 11
Discretionary denialPatents in suitUS 10,270,535
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.