- Micron Technology, Inc. / Micron Semiconductor Products, Inc. et al. v. Netlist, Inc.Institution deniedPTAB · Jul 23, 2024 · IPR2024-00370 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution of review of claims 1–5 under § 314(a), finding that the General Plastic factors as a whole favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“We have authority under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons described below we do not institute an inter partes review of the challenged claims and we deny Petitioner’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“We disagree. In our earlier decision in the Micron IPR, institution was denied because petitioner did not demonstrate sufficient support that the asserted anticipatory reference disclosed that write and read leveling circuitry were included in the data paths, as the independent claim recited. Ex. 2002, 19–20. In the Samsung IPR, the petitioner there asserts an obviousness challenge rather than an anticipation challenge to the independent claim, and a secondary reference, Butt, was added to address the deficiencies of the petition of the previous Micron IPR petition. The challenge in the Samsung IPR was modified in a manner that was directed to the deficiencies of the Micron IPR, and therefore appears to be an attempt to use the information gained in the Micron IPR to improve the possible success of the later petition. In other words, the Samsung IPR appears to use our prior decision as a roadmap. See General Plastic, 17–18. By moving for joinder to the Samsung IPR, Petitioner is also therefore seeking to capitalize on the benefits of this road mapping. As Uniloc states, “the copied petition is Petitioner’s second challenge to the patent” and “[i]n effect, it would be as if [petitioner] brought the second challenge to the patent,” wherein “[t]his is the kind of serial attack that General Plastic was intended to address.” Uniloc, 4 (citing General Plastic at 17).” slip op. at 15
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“III. MOTION FOR JOINDER The Director may join a party to an ongoing inter partes review only if the filed petition warrants institution under § 314. See 35 U.S.C. § 315(c). Because we are exercising discretion to deny institution under § 314, we deny Petitioner’s Motion for Joinder. IV. ORDER Accordingly, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review is denied; and FURTHER ORDERED that, pursuant to 35 U.S.C. § 315(c), Petitioner’s motion for joinder is denied.” slip op. at 19
Discretionary denialPatents in suitUS 10,268,608 - Neogenomics Laboratories, Inc. v. Natera, Inc.Institution deniedPTAB · Jun 21, 2024 · IPR2024-00346 · APJ Zhenyu Yang · IPR · Institution
The Board denied institution for claims 1–28 under § 325(d), finding the same or substantially the same art had been presented to the Office and no material examination error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” Our § 325(d) analysis employs a two-prong framework: (1) whether the arguments presented in the petition are the same or substantially the same as those previously presented to the Office; and (2) if so, whether the petitioner has demonstrated a material error by the Office in its prior consideration of those arguments. Advanced Bionics, LLC v. Med-El Electromedizinishe Gerӓte GmbH, IPR2019-01469, Paper 6 (“Advanced Bionics”), 8 (PTAB Feb. 13, 2020) (precedential). “If a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review.” Id. at 8–9. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“III. CONCLUSION Because the same or substantially the same art previously were presented to the Office and Petitioner has not demonstrated that the examiner materially erred when considering the prior art, we exercise our discretion under § 325(d) and decline to institute inter partes review of the ’454 patent.10 IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“erred when considering the multiplex-amplification limitation. See Advanced Bionics, 9 (“If reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability.”). Under the asserted grounds, Petitioner relies on Forshew as the sole reference to teach this limitation, which is required in all challenged claims. Thus, we exercise our discretion under § 325(d) and decline to institute inter partes review of the ’454 patent.” slip op. at 13
§ 103 obviousnessDiscretionary denialPatents in suitUS 11,530,454 - Masimo Corporation v. Apple Inc.Institution deniedPTAB · Apr 25, 2024 · IPR2024-00071 · APJ Robert L Kinder · IPR · Institution
The Board denied institution under § 314(a), finding substantial road-mapping concerns from Masimo’s staggered petition challenging claims 6 and 7.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“has modified its prior positions to account for both arguments made in preliminary responses, as well as concerns identified by the panel in the 745 IPR decision to institute. See Prelim. Resp. 11. Claims 6 and 7 depend from claims 1 and 4. Masimo has bolstered its analysis of Markel and Mills with respect to certain elements of claim 1 and its reasons for combining the references in this second Petition. For example, Petitioner added new mappings of the Markel-Mills combination to address claim 1 in direct response to concerns identified by Patent Owner and by the panel in the 745 IPR. See id. at 11–13. Addressing limitation 1[b(i)], Petitioner added a new mapping of Markel based on pushbuttons having electrodes as shown in Figure 2 of Markel. See Pet. 51–52. Petitioner even identified this discussion of Figure 2 as “a second mapping of the claims.” Id. This second mapping of claim 1 based on Figure 2, and the corresponding analysis, appear nowhere in the analysis of claim 1 (or claim 4) in Masimo’s 745 IPR petition. The new embodiments relied on and modified arguments addressing claim 1 of the ’257 patent suggest that Petitioner is using the prior proceedings as a roadmap to address issues to its first petition in the 745 IPR. Accordingly, this factor weighs strongly in favor of invoking our discretion to deny institution.” slip op. at 20
Discretionary denialPatents in suitUS 10,076,257 - Oxylabs, Uab v. Bright Data Ltd.Institution deniedPTAB · Mar 20, 2024 · IPR2023-01425 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution under § 314(a), finding the General Plastic factors, considered as a whole, favored denying review of claims 1, 8, 16, 17, 22, 29, and 30.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“As General Plastic states: “[t]he relevant issue under factor 2 is whether [the prior art references] could have been found with reasonable diligence . . . . [A] petitioner is free to explain why a reasonably diligent search could not have uncovered the newly applied prior art.” General Plastic, at 20. As discussed above, Petitioner provides no support explaining the nature and extent of the prior search done for the -936 IPR, short of alleging that prior-art search focused on printed publications (Pet. 50). Therefore, in view of the dearth of evidence provided, there is little to support and demonstrate that a reasonably diligent search had been previously done. Accordingly, Petitioner provides little evidence to demonstrate the diligence of its previous prior art search. This factor weighs strongly against institution.” slip op. at 11
Discretionary denialPatents in suitUS 11,206,317 - Fitesa Simpsonville, Inc. v. The Procter & Gamble CompanyInstitution deniedPTAB · Mar 20, 2024 · IPR2023-01450 · APJ Avelyn M Ross · IPR · Institution
The Board denied institution on all challenged claims under § 325(d), finding the cited art previously considered or cumulative and no material Office error shown.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2019). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” For the reasons set forth below, upon considering the Petition, the Preliminary Response, the Reply, the Sur-reply, and evidence of record, we exercise our discretion under 35 U.S.C. § 325(d) to deny institution of an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” The Board uses a two-part framework in determining whether to exercise its discretion under § 325(d), specifically: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential).” slip op. at 9
Discretionary denialcites PhillipsPatents in suitUS 10,513,801 - Fitesa Simpsonville, Inc. v. The Procter & Gamble CompanyInstitution deniedPTAB · Mar 20, 2024 · IPR2023-01451 · APJ Avelyn M Ross · IPR · Institution
The Board denied institution on all challenged claims under § 325(d), finding the prior art previously considered and no material error by the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“b) Advanced Bionics Framework Part (2) Having determined that the “same or substantially the same prior art” previously was presented to the Office, we now consider whether Petitioner sufficiently demonstrates that the Office materially erred. In assessing the second part of the Advanced Bionics Framework, we consider Becton, Dickinson factors (c), (e), and (f) to determine whether material error has been shown. Advanced Bionics, Paper 6 at 10. “An example of a material error may include misapprehending or overlooking specific teachings of the relevant prior art where those teachings impact patentability of the challenged claims.” Id. However, “[i]f reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability.” Id. at 9. Petitioner bears the burden of showing that the Examiner materially erred. Id. at 8.” slip op. at 19
Discretionary denialcites PhillipsPatents in suitUS 11,326,276 - Videndum Production Solutions, Inc. v. Rotolight LimitedInstitution deniedPTAB · Jan 25, 2024 · IPR2023-01218 · APJ Grace Karaffa Obermann · IPR · Institution
The Board denied institution of IPR challenging claims 1–19, finding that General Plastic factors 3–7 outweighed factors favoring institution.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“It is the “opportunity to morph positions along the way” that favors denying a second petition that is time-staggered relative to a first petition. General Plastic, Paper 19 at 9 n.13, 11 (Board’s emphasis). Petitioner had more than a mere opportunity to morph its positions. It is beyond dispute that Petitioner, in fact, accessed the trial record in IPR099 at least six months prior to filing the instant Petition. Ex. 1010 (Petitioner’s email dated January 14, 2023). Further, Petitioner leaves uncontested on this record Patent Owner’s assertion and evidence that Petitioner “bolstered arguments” in the Petition based on review of the trial record developed in IPR099. Prelim. Resp. 19–20 (identifying persuasive examples); see Reply 1–3 (declining to contest Patent Owner’s arguments or evidence on that point).” slip op. at 13
Discretionary denialPatents in suitUS 10,845,044 - Videndum Production Solutions, Inc. v. Rotolight LimitedInstitution deniedPTAB · Jan 24, 2024 · IPR2023-01219 · APJ Jeffrey W Abraham · IPR · Institution
The Board denied institution of review of claims 1–22, exercising § 314(a) discretion because all General Plastic factors weighed against institution.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“[F]actor 3 is directed to Petitioner’s potential benefit from receiving and having the opportunity to study Patent Owner’s Preliminary Response, as well as our institution decisions on the first-filed petitions, prior to its filing of follow-on petitions. . . . Multiple, staggered petitions challenging the same patent and same claims raise the potential for abuse. The absence of any restrictions on follow-on petitions would allow petitioners the opportunity to strategically stage their prior art and arguments in multiple petitions, using our decisions as a roadmap, until a ground is found that results in the grant of review. All other factors aside, this is unfair to patent owners and is an inefficient use of the inter partes review process and other post-grant review processes. General Plastic, Paper 19 at 17–18 (internal citation and footnote omitted).” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“D. Summary As discussed above, the evidence of record shows that all of the General Plastic factors weigh against institution. Although no single factor is dispositive, the evidence and circumstances as a whole weigh strongly in favor of denying institution in this case. As a result, we determine that it is appropriate to exercise our discretion under § 314(a) to deny institution.” slip op. at 16
Discretionary denialPatents in suitUS 10,197,258 - Videndum Production Solutions, Inc. v. Rolight LimitedInstitution deniedPTAB · Jan 24, 2024 · IPR2023-01220 · APJ Grace Karaffa Obermann · IPR · Institution
The Board denied institution of review of claims 1–21, exercising § 314(a) discretion because all General Plastic factors weighed against the serial petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“Here, Petitioner was able to use the Board’s decision denying institution in IPR261 to learn that the art and arguments asserted in the first petition were insufficient for institution, which led Petitioner to find a different ground that would “result[] in the grant of review.” Id. In that regard, contrary to Petitioner’s assertion, Petitioner did modify the second petition in light of the institution decision in the first petition. See Reply 1. Moreover, as Patent Owner correctly notes, Petitioner was able to monitor the developments in the related IPR496 and use that information in preparing the Petition in this proceeding. Prelim. Resp. 27–30. The evidence of record thus shows that Petitioner was in a position to use the Board’s previous decisions regarding challenges to the ’257 patent as a roadmap—to avoid certain grounds and find others—for its second petition.” slip op. at 16
Discretionary denialPatents in suitUS 10,197,257 - Advance Medical Designs, Inc. v. Corbin Clinical Resources, LLCInstitution deniedPTAB · Jan 23, 2024 · PGR2023-00041 · APJ Jamie T Wisz · PGR · Institution
The Board denied institution of PGR on claims 1, 4–6, 11–13, 16–18, 23, 24, 28, and 29 under § 325(d), finding substantially the same art was previously presented and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Section 325(d), the Board uses the following two-part framework: (1) determining whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8.” slip op. at 20
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“are defined by the claims themselves. For example, claim 1 recites “coupling the access needle to one of the plurality of needle receiving ports of the displacement member of the transperineal biopsy guide such that a position and angle of the access needle relative to the displacement member is retained.” Ex. 1001, 36:1–5 (emphasis added). Similarly, claim 13 recites “securing the access needle to the displacement member such that a position and angle of the access needle relative to the displacement member is maintained.” Id. at 36:59–61 (emphasis added).” slip op. at 13
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Further, although Petitioner contends that BK Medical’s needle guide “maintains and stabilizes” the needle position, they provide no explanation as to how it does so and do not appear to account for forces that would move the position of the needle during insertion. Petitioner cites to testimony from their declarant, Dr. Yun, to provide support for this argument; however, Dr. Yun’s testimony is essentially a verbatim repetition of Petitioner’s argument without a discussion of how BK Medical’s needle guide provides such stability. Compare Pet. 59–60 with Ex. 1003 ¶ 107. Thus, we accord little weight to Dr. Yun’s testimony on this topic. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Xerox Corp. et al., v. Bytemark, IPR2022-00624, Paper No. 9 at 15 (PTAB Aug. 24, 2022) (precedential) (“Conclusory expert testimony “is particularly problematic in cases where, like here, expert testimony is offered not simply to provide a motivation to combine prior-art teachings, but rather to supply a limitation missing from the prior art.”).” slip op. at 31
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“V. 35 U.S.C. § 324(a) Patent Owner also contends that the Board should discretionarily deny institution of the post-grant review under 35 U.S.C. § 314(a) in view of the co-pending Maryland District Court litigation, pursuant to Fintiv. Prelim. Resp. 21–32; see Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB 20 Although we do not specifically discuss the “securing” limitation of claims 13 and 24, the same analysis would apply. 21 We also do not find the testimony of Dr. Záťura or Ex. 1009 to be relevant to the question of whether the Examiner materially erred in finding that the prior art does not teach the “coupling” limitation. Mar. 20, 2020) (precedential). Because we deny the petition under 35 U.S.C. § 325(d), this argument is moot. Further, we note that Petitioner has filed a stipulation under Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 19 (PTAB Dec. 1, 2020) (precedential as to § II.A). Pet. 112. Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memorandum”).22 Pursuant to the Director’s Memorandum, we “will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Director’s Memorandum, 7.” slip op. at 38
Claim constructionDiscretionary denialPatents in suitUS 11,547,436
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.