• Viptela, Inc. v. Fatpipe Networks Private LimitedInstitution denied
  PTAB · Oct 3, 2017 · IPR2017-01125 · APJ Christa P Zado · IPR · Institution

  The Board denied institution on claims 4–15, 19, and 22–24, exercising discretion under §§ 314(a) and 325(d) based on overlapping petitions, follow-on arguments, and inefficient use of resources.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “’684 IPR, which in turn was a “copy-cat” of the ’976 IPR petition. Prelim. Resp. 2, 5. However, in deciding whether we should exercise our discretion and decline to go forward with this Petition, our concern is not only whether “the same or substantially the same prior art or arguments previously were presented to the Office,” as expressed in § 325(d), but also whether other factors weigh in favor of denying institution in light of the discretion afforded to us pursuant to § 314(a).” slip op. at 9

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied

    “whether at the time of filing of the ’684 petition, Petitioner knew, or should have known, of Pearce, Zhang, and McCullough (“the Additional References”); the length of time that elapsed between learning of the Additional References, and the filing of the instant Petition; whether Petitioner has provided adequate explanation for the time lapse; whether at the time of filing of the instant Petition, Petitioner already had access to Patent Owner’s response in the ’976 IPR; and the finite resources of the Board. See Gen. Plastic Indus. at 16 (Paper 19) (informative). Petitioner provides no explanation of whether it knew or should have known of the Additional References when filing the ’684 petition; of when it first learned of these references; or of any time lapse between learning of these references and the filing of the instant Petition.” slip op. at 13

  • Other 314aInstitution denied discretionary otherInstitution denied

    “August 14, 2017, and a final decision is due by November 2, 2017. At this point, the decision in the ’976 IPR as to whether to see the matter through to final determination is squarely in our hands, regardless of whether any settlement is reached between the parties. See 37 C.F.R. § 42.74(a) (“The parties may agree to settle any issue in a proceeding, but the Board is not a party to the settlement and may independently determine any question of jurisdiction, patentability, or Office practice.”). Thus, if we deem it appropriate, we can reach a final decision on the grounds presented in the ’976 IPR with or without participation from the parties in that matter. These facts weigh in favor of us exercising our discretion not to move forward with the instant Petition, at least with respect to the ’976 instituted claims insofar as Petitioner’s arguments relate to Karol and are substantially identical to those in the ’976 IPR, because the issues raised are fully briefed and ripe for a final decision in the ’976 IPR, and Petitioner’s non-participation in that proceeding is at best neutral to our analysis. Petitioner is a party to the ’684 IPR, and in that proceeding the petition is directed to the same claims of the same patent as in this Petition. This fact weighs in favor of us not moving forward with the instant Petition. Also, at least with respect to the ’684 instituted claims, insofar as Petitioner’s arguments relate to Karol and are substantially identical to those in the ’684 IPR, Petitioner has the opportunity to address the same art and arguments in the ’684 proceeding. It would be an inefficient use of Office resources, and would run counter to securing the just, speedy, and inexpensive resolution of the challenges to the patentability of the ’235 patent, if we were to allow Petitioner to proceed on the same art and arguments in two separate proceedings.” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner submits a list of terms for which Patent Owner has proposed construction in a co-pending district court case. Pet. 7–8. Petitioner, however, asserts that for the purposes of this Decision no terms need to be construed. Id. Patent Owner does not address claim construction in its Preliminary Response. See generally Prelim. Resp. We reviewed the parties’ arguments, and, for the purposes of this Decision, we have determined that no terms require express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 7

  Claim constructionDiscretionary denial
  Patents in suitUS 6,775,235

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