- PTAB · Jan 26, 2022 · IPR2020-00870 · APJ Frederick C Laney · IPR · Rehearing
The Board denied rehearing of its decision denying institution, finding no overlooked or misapprehended facts that changed its Fintiv analysis.
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 law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. admitted” in connection with a request for rehearing. Patent Trial and Appeal Board Consolidated Trial Practice Guide 90 (Nov. 2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (“CTPG”) (citing Huawei Device Co. v. Optis Cellular Tech., LLC, IPR2018-00816, Paper 19 at 4 (PTAB Jan. 8, 2019) (precedential)). Thus, a request for rehearing is not an opportunity to present new arguments or evidence or merely to disagree with the panel’s assessment of the arguments or weighing of the evidence.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“the District Court held a hearing regarding venue related issues. Ex. 1044, 6:8–15. During the course of that hearing, the District Court set forth procedures that the parties should follow to address some outstanding venue related issues. Id. at 26:1–10. The District Court also stated that, after the parties followed those procedures and reported back, it would “determine whether [the Court] should leave the current schedule in place or whether [the Court] should enter some kind of a temporary stay to facilitate [additional venue-related discovery].” Id. at 26:11–16. Petitioner argues that this comment by the District Court should tip the Fintiv factor 1 in favor of institution. Reh. Req. 8–9. We disagree. Although the December 20th hearing may indicate the District Court’s willingness to consider whether “some kind of a temporary stay” should be entered to resolve the outstanding venue issues, it provides little, if any, actual evidence that the District Court would, in fact, enter a stay. Even if we were to guess that the District Court would enter a stay, we would still have to speculate further about the length of the “temporary” stay because, if it were for only a few days or weeks, it would still not avoid the concerns of inefficiency and duplicative efforts addressed by Fintiv factor 1. Regarding our alleged failure to apprehend or consider fully Petitioner’s proposed stipulation, we again do not agree. In the Decision, we specifically addressed Petitioner’s proposed stipulation and explained its shortcomings. Dec. 15–16. Although Petitioner clearly does not agree with our analysis, mere disagreement with our opinion is not a valid basis for reconsideration.” slip op. at 10
- Additional discoveryAdditional discovery, grantedAdditional discovery, deniedMixed
“Although Petitioner did bring the District Court’s Orders to our attention in a timely manner, we are not persuaded good cause has been shown to exist for us to consider these Orders. First, the Orders are all from cases that are separate and distinct from the parallel litigation involving the parties before us. Ex. 1040, 1; Ex. 1041, 1; Ex. 1042, 1; Ex. 1043, 1. Second, each Order is limited to cases that are “set for in-person jury trials during December of 2020 and January through February of 2021.” Id. That limitation further diminishes the value of the Orders in this proceeding because the jury trial in the parties’ parallel litigation was scheduled to begin on April 5, 2021 (Ex. 2003, 1). In fact, Petitioner acknowledges that the Orders have “not yet been applied in the underlying litigation.” See Reh. matter to be speculative at best. In the Rehearing Request, Petitioner argues that Exhibits 1040–1043 provide evidence that the parallel litigation may be stayed. Reh. Req. 7. However, in addition to the fact that the Orders in those exhibits do not relate to the parties’ or their parallel litigation, none of the Orders actually stays a case, which diminishes the relevance of the Orders to the first Fintiv factor even further. Petitioner argues additionally that these Orders along with other COVID-related facts demonstrate the uncertainty of the trial date in the parties’ parallel litigation. Nevertheless, Petitioner never argued prior to our Decision that the parallel litigation was uncertain because of COVIDrelated facts. See Pet. 70–71; Pet. Reply 1–5. In other words, Petitioner is not offering this new information to support an argument that was made before the Decision was entered. Petitioner instead offers Exhibits 1040– 1043 to support a new argument introduced for the first time in the Rehearing Request, which is improper and immaterial as to any alleged errors in the Decision. Therefore, we do not find Petitioner has carried its burden of showing good cause exists to justify consideration of those exhibits to evaluate whether we erred by “overlooking or misapprehending” anything in the Decision.” slip op. at 5
Discretionary denialPatents in suitUS 9,749,829 - Supercell OY v. Gree Inc.Institution deniedPTAB · Jul 7, 2021 · PGR2021-00034 · APJ Hyun J Jung · PGR · Institution
The Board denied institution of PGR on all challenged claims under § 324(a), finding the Fintiv factors collectively favored denial because of duplication and the risk of inconsistent results.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied
“The record clearly shows that, if post-grant review were instituted in this proceeding, a final written decision would be due more than eleven months after the trial date in the parallel district court proceeding. Ex. 2011, 1. Given the overlap in claims, prior art, and arguments as described below, institution would create a potential for the district court proceeding and the post-grant review to arrive at inconsistent results spaced months apart.” slip op. at 12
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Other
“III. PETITIONER’S MOTION TO SEAL Petitioner moves to seal Exhibit 1007. Paper 3. Because we did not rely on Exhibit 1007 for our decision, we dismiss as moot Petitioner’s Motion to Seal Exhibit 1007 and for Entry of Protective Order.” slip op. at 22
Discretionary denialPatents in suitUS 10,610,771 - 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 18, 2020 · PGR2020-00039 · APJ Lynne H Browne · PGR · Rehearing
The Board denied Supercell’s rehearing request, leaving in place denial of institution of PGR challenging claims 1–24 based on the Fintiv factors and parallel litigation.
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 2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). Additionally, 37 C.F.R. § 42.71(d) further provides that “[t]he burden of showing a decision should be modified lies with the party challenging the decision,” i.e., Petitioner, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.”” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“the parties jointly requested a trial delay in the prior proceeding, from December 7, 2020, to March 1, 2021, which the district court granted. Ex. 1024, 1. Even considering these post-Decision developments, this three month delay results in a trial date in the parallel proceeding set six months before our final written decision would be due. Similar to the potential delay discussed in our Decision, a jury trial set to begin six months before a final written decision also weighs in favor of denying institution. Dec. 12; see Prelim. Resp. 11 (identifying three prior PTAB proceedings in which institution was denied where trial was scheduled to occur six months before a final written decision, including the precedential NHK Spring decision). We decline to speculate, absent case-specific evidence, as to any future additional delay of the parallel proceeding’s trial date that may— or may not—be requested by the parties, and that may—or may not— be granted by the district court. See Ex. 1024, 1, 4 (indicating that the trial date “cannot be changed without showing good cause,” which “is not shown merely by indicating that the parties agree that the deadline should be changed”) (emphasis omitted). On the current record, a cognizable risk of inconsistent results exists, due to the scheduled date of trial and the statutory due date of a final written decision.3” slip op. at 6
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedOther
“contentions. In our Decision, we relied in part upon Dr. Claypool’s testimony from related litigation between the parties in determining that Petitioner failed to meet its burden of demonstrating that Mastermind was publicly accessible. Dec. 24–25. Specifically, we relied upon Dr. Claypool’s prior testimony that, 4 “Mastermind’s In-Game Builder Idea (with LOADS of pictures!)” (“Mastermind”), available at https://web.archive.org/web/20130915081112/http:/forum.supercell.net:80/s howthread.php/149687-Mastermind-s-In-Game-Builder-Idea-(with-LOADSof-pictures!) (in two parts) (Ex. 1015, “Olesiuk Decl.”). it is my opinion that a diligent, skilled researcher engaged in a reasonable search for prior art would not have found Mastermind as a prior art reference even with the benefit of [Patent Owner’s] infringement contentions before the filing of the Petition for Post-Grant Review. A diligent, skilled researcher would not spend time sifting through the suggestions provided on Internet message boards, as they would normally not include useful or sufficiently detailed suggestions. Ex. 2009 ¶ 164 (emphasis added); Dec. 25.” slip op. at 8
- 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. 5–8. The Decision also discusses the common policy justifications implicated when determining whether to institute either an IPR proceeding or a PGR proceeding. Dec. 6–7. The Decision then goes on to recognize and discuss certain differences between PGR proceedings and IPR proceedings. Id. at 7–8. Despite these differences, we determined that the Board’s binding precedent 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, 15–16, 18–20. Petitioner has not demonstrated that we abused our discretion in doing so.” slip op. at 11
§ 102 anticipationDiscretionary denialPatents in suitUS 10,307,676 - Snap Inc. v. Blackberry LimitedInstitution deniedPTAB · Jul 13, 2020 · IPR2020-00392 · APJ Robert L Kinder · IPR · Institution
The Board denied institution on § 314(a) discretionary grounds and denied joinder, citing the concluded district court case, prior petition, and delay in filing.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine that the information presented in the Petition shows “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). Having considered both the Petition and the Preliminary Response, we exercise our delegated discretion, under 35 U.S.C. § 314, to deny the Petition in this proceeding. Accordingly, we do not institute an inter partes review. Because we deny institution of the Petition, we also deny Petitioner’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“The precedential Fintiv Order identifies several factors to be considered in analyzing § 314(a) issues, with the goal of balancing efficiency, fairness, and patent quality. See Fintiv Order, Paper 11 at 5–6. These factors include: 1) whether a stay exists or is likely to be granted if a proceeding is instituted; 2) proximity of the court’s trial date to the Board’s projected statutory deadline; 3) investment in the parallel proceeding by the court and 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 and considerations that impact the Board’s exercise of discretion, including the merits. Id.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“As noted above, Petitioner filed IPR2019-00829 on March 25, 2019, which was already near the end of Petitioner’s statutory period. We denied institution on the merits on October 1, 2019. The Challenged Claims were part of this prior petition. Petitioner’s second petition, the current Petition, was filed on January 3, 2020. At that time, Petitioner had already received the Patent Owner’s Preliminary Response in IPR2019-00829 as well as our decision denying institution. Petitioner knew of the prior art asserted in the current Petition at least as of April 6, 2019 – the date Facebook filed its petition in IPR2019-00940. Prelim. Resp. 3; Ex. 2001. Thus, Petitioner waited at least nine months after learning of the asserted prior art to bring the second petition. These factors favor exercising our discretion to deny institution. General Plastic Factors 5–7 Petitioner’s explanation for the time elapsed between the filings of multiple petitions directed to nearly the same claims of the same patent consists of the following: Petitioner is also unaware of any basis under § 314(a) for the Board to decline to consider this Petition. As discussed in section I.B., Facebook previously filed an IPR petition challenging the ’929 patent on April 6, 2019. (Ex. 1022). Snap obtained Facebook’s petition, after it was filed and publicly available, from the Patent Office. Snap’s petition is a substantively identical copy of Facebook’s ’929 petition. (See Ex. 1022). Pet. 3. Petitioner does not address why we should institute a petition challenging claims that have already been disclaimed or found unpatentable by a district court. Petitioner also does not address the delay in bringing the current Petition even though Petitioner was aware of the prior art for at least nine months. The facts of this proceeding are unique, and Petitioner has not explained adequately why we should not exercise our discretion to deny this Petition.” slip op. at 13
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“not obligate us to institute in this proceeding without first considering whether to exercise discretion. The statutory provision governing joinder in inter partes review proceedings is 35 U.S.C. § 315(c), which reads: If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. Two clauses within 35 U.S.C. § 315(c) are the source of discretion to deny joinder. The first states “the Director, in his or her discretion, may join as a party.” Thus, joinder is not required, but remains discretionary. Second, the statute requires an additional step. Acting under delegated authority from the Director, we first determine whether the petition warrants the institution of an inter partes review under § 314. Id. (“the Director, after receiving a preliminary response under section 313 . . . determines warrants the institution of an inter partes review under section 314”). The statute allows for a patent owner preliminary response, and we read 35 U.S.C. § 315(c) as requiring us to consider all of patent owner’s arguments, including those related to discretionary denial under section 314(a).” slip op. at 11
Discretionary denialPatents in suitUS 8,676,929
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.