- PTAB · Oct 10, 2019 · IPR2018-00991 · APJ Patrick R Scanlon · IPR · Rehearing
The Board denied rehearing and left in place its discretionary denial of institution under § 314(a), concluding that the General Plastic factors supported denial.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a single request for rehearing, without prior authorization from the Board. 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. We review our Decision under an abuse of discretion standard. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment 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 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDecided for patent owner
“between Petitioner and the Prior Petitioners. Unlike the Valve case, however, the majority opinion did not find that the first factor favors denying institution. Rather, the majority opinion determined that the first factor weighs against exercising discretion to deny institution, but only moderately because of the complete overlap in the challenged claims between the Petition and the petition in the 136 IPR, as well as the overlap of many issues and arguments raised by the Petition and the 136 IPR petition. Dec. 12–13. Petitioner’s arguments do not establish that we overlooked or misapprehended anything, or used unreasonable judgment, in determining that the first factor weighs only moderately against exercising discretion to deny institution. Furthermore, even if we were to determine that the first factor heavily weighs against exercising discretion to deny institution, as advocated by Petitioner, this determination would not alter our overall weighing of the General Plastic factors.” slip op. at 8
Discretionary denialPatents in suitUS 9,144,700 - Guest-Tek Interactive Entertainment Ltd. v. Nomadix, Inc.Institution deniedPTAB · Apr 16, 2019 · IPR2018-01660 · APJ Monica S Ullagaddi · IPR · Institution
The Board denied institution of IPR on claims 1 and 10, exercising § 314(a) discretion because the General Plastic factors favored denying the follow-on petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“challenged claims 1 and 10 of the ’899 patent in the ’392IPR. Prelim. Resp. 10. With respect to factor 2, Patent Owner asserts that Petitioner knew of the two references asserted in its sole ground for challenge in the present proceeding (see Pet. 4–5, 17) at the time of filing the ’392IPR in December of 2017. Prelim. Resp. 11. Patent Owner argues that, at the time of filing the earlier ’392IPR and ’376IPR, “not only was Petitioner aware of both Slemmer and Cohen, it had already developed the obviousness argument based on those references that it relies on in this petition.” Id. According to Patent Owner, in the ’392IPR, Petitioner challenged the ’899 patent based on a combination of Slemmer and Vu (U.S. Patent No. 5,623,601) as evidenced by “many other prior art references that also teach [the handshake limitations missing from Slemmer],” including “U.S. Patent No. 6,389,462 to Cohen.” Prelim. Resp. 11–12 (alteration in original) (citing Ex. 2001, 5, 16, 23). Having reviewed Patent Owner’s arguments and the cited evidence, we agree that Petitioner knew about the prior art now asserted when it first challenged claims 1 and 10, and we are persuaded that factors 1 and 2 weigh in favor of exercising discretion to deny institution of the present proceeding.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary 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.” For the reasons that follow, we do not institute an inter partes review of any of the challenged claims of the ’899 patent.” slip op. at 2
Discretionary denialPatents in suitUS 8,725,899 - Guest-Tek Interactive Entertainment Ltd. v. Nomadix, Inc.Institution deniedPTAB · Apr 16, 2019 · IPR2018-01668 · APJ Monica S Ullagaddi · IPR · Institution
The Board denied institution on claims 1 and 24, finding the General Plastic factors favored discretionary denial of the follow-on petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“Patent Owner, in the ’376IPR, Petitioner challenged the ’266 patent based on a combination of Slemmer and Vu (U.S. Patent No. 5,623,601) as evidenced by “many other prior art references that also teach [the handshake limitations missing from Slemmer],” including “U.S. Patent No. 6,389,462 to Cohen.” Id. at 11–12 (citing Ex. 2001, 5, 20, 28). Having reviewed Patent Owner’s arguments and the cited evidence, we agree that Petitioner knew about the prior art now asserted when it first challenged claims 1 and 24, and we are persuaded that factors 1 and 2 weigh in favor of exercising our discretion to deny institution of the present proceeding on the basis of 35 U.S.C. § 314(a).” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary 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.” For the reasons that follow, we do not institute an inter partes review of any of the challenged claims of the ’266 patent.” slip op. at 2
Discretionary denialPatents in suitUS 8,266,266
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.