- PTAB · Jan 26, 2022 · IPR2020-00871 · APJ Frederick C Laney · IPR · Rehearing
The Board denied rehearing and left in place its § 314(a) denial of institution for claims 1–68 based on the Fintiv factor 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).” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“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
Discretionary denialPatents in suitUS 9,749,829 - 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 - 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 - Verizon Business Network Services LLC v. Huawei Technologies Co. Ltd.Institution deniedPTAB · Jan 26, 2021 · IPR2020-01278 · APJ Charles J Boudreau · IPR · Institution
The Board denied institution of IPR challenging claims 1–14 under § 314(a), finding the Fintiv factors favor denial given the advanced parallel litigation and close-call merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied
“the Fintiv factors. Our analysis is fact-driven, and no single factor is determinative of whether we exercise our discretion to deny institution under § 314(a). Here, Factors 2, 3, 5, and 6 weigh to varying degrees in favor of discretionary denial, while Factors 1 and 4 weigh somewhat against discretionary denial. In short, the merits of Petitioner’s arguments are a close call. The district court will evaluate Petitioner’s assertions regarding the art cited in the Petition, and trial in the parallel litigation will conclude well before this matter would reach a final decision if we were to institute an inter partes review. The parties and the court have made significant investment in the parallel litigation, with fact discovery and claim construction already completed and expert discovery closing in approximately one month. Factor 1 weighs at most marginally against discretionary denial because the district court has not entirely ruled out the possibility of a stay. The court’s trial date, however, is set to begin eight months before our deadline to reach a final decision. See Fintiv, Paper 11 at 7 (explaining that a court’s willingness to reconsider a stay “has usually weighed against exercising authority to deny institution,” but “proximity of the court’s trial date and investment of time are relevant to how much weight to give to the court’s willingness to reconsider a stay”). Moreover, as noted above, discovery is well underway with the deadlines for completing discovery fast-approaching. See id. Factor 4 also weighs somewhat against discretionary denial because Patent Owner has elected to narrow the asserted claims in the parallel litigation and Petitioner’s stipulation reduces concerns regarding overlapping issues raised in the Petition and in the parallel litigation. Petitioner’s stipulation, however, does not sufficiently eliminate those concerns, and, as noted above, all four challenged independent claims, among others, continue to be at issue in the parallel litigation. Thus, evaluating the Fintiv factors with a holistic view of whether the efficiency and integrity of the system are best served by denying or instituting review, we determine that the specific facts of this case weigh in favor of exercising discretion to deny institution.” slip op. at 15
Discretionary denialPatents in suitUS 9,312,982 - Google LLC / Samsung Electronics Co., Ltd. et al. v. Agis Software Development, LLCInstitution deniedPTAB · Nov 25, 2020 · IPR2020-00873 · APJ Trevor M Jefferson · IPR · Institution
The Board denied institution on all challenged claims under § 314(a), finding that the Fintiv factors favored denial because trial was near, the petition was delayed, and issues substantially overlapped.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“relevant circumstances, Petitioner contends that this factor “favors institution because the grounds in the petition provide a strong showing of obviousness.” Pet. 73. Although we do not undertake here a full analysis of the merits, our initial inspection of the record and the parties’ arguments suggest that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. In a balanced assessment of the relevant evidence of record, and in view of the possible strength of Petitioner’s showing on the present record, this factor is neutral.” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“On the record before us at this time, the only persuasive facts that we have regarding the proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision is an Order by the District Court that sets trial for April 5, 2021, which will require “good cause” to be changed, and our projected statutory deadline, which would be toward the end of November 2021. While we appreciate that the trial date is susceptible to change if and when the District Court determines good cause exists to do so, we decline to speculate whether such a contingency will occur. Instead, we must base our evaluation on the existing facts supported by the evidence of record. This factor, therefore, significantly favors the exercise of discretionary denial.” slip op. at 9
Discretionary denialPatents in suitUS 9,820,123
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.