- 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 - General Motors LLC / Nissan North America, Inc. v. Neo Wireless LLCInstitution deniedPTAB · Dec 6, 2023 · IPR2023-00962 · APJ Kristen L Droesch · IPR · Institution
The Board denied institution on claims 7 and 11 under § 314(a), finding that the General Plastic factors favored denying this follow-on petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“previously filed a petition directed to the same claims of the same patent.” General Plastic, Paper 19 at 16. “[O]ur application of the General Plastic factors is not limited solely to instances when multiple petitions are filed by the same petitioner. Rather, when different petitioners challenge the same patent, we consider any relationship between those petitioners when weighing the General Plastic factors.” Valve, Paper 11 at 2, 8–9.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied general plasticInstitution denied
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2022). We may not institute an inter partes review “unless . . . there is 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).” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“seeking joinder to Ford Motor Co. v. Neo Wireless LLC, IPR2023-00763. See Mot. 1. Petitioner acknowledges “[s]hould the Ford IPR be . . . not 2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011), amended 35 U.S.C. §§ 102 and 103 effective March 16, 2013. Because the ’450 Patent claims the benefit of an earlier effective filing date prior to the effective date of the applicable AIA amendment, we refer to the pre-AIA versions of §§ 102 and 103. 3 US 2006/0039274 A1, published Feb. 23, 2006 (Ex. 1005). 4 IEEE Standard for Local and Metropolitan Area Networks, Part 16: Air Interface for Fixed Broadband Wireless Access Systems (Oct. 1, 2004) (Ex. 1006). instituted for any reason, Petitioners submit this motion for joinder would be moot, and requests the Board consider Petitioner’s IPR petition on its own merits.” Institution was denied in IPR2023-00763. Ford Motor Co. v. Neo Wireless LLC, IPR2023-00763, Paper 17 (PTAB Nov. 9, 2023). Accordingly, we deny Petitioner’s Motion for Joinder as moot.” slip op. at 10
Discretionary denialPatents in suitUS 10,447,450 - Ford Motor Company v. Neo Wireless LLCInstitution deniedPTAB · Nov 9, 2023 · IPR2023-00763 · APJ Kristen L Droesch · IPR · Institution
The Board denied institution of review of claims 7 and 11, exercising § 314(a) discretion because most General Plastic factors weighed against a follow-on petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“arguments that the relationship between Petitioner and Volkswagen falls within the purview of the type of “significant relationship” contemplated by Valve. See Valve, Paper 11 at 10. Although Petitioner and Volkswagen are not co-defendants in same the district court litigation where Patent Owner asserted the ’450 Patent against Volkswagen nor the same district court case where Patent Owner asserted the ’450 Patent against Petitioner, there is sufficient evidence indicating that Petitioner and Volkswagen have a significant relationship due to the filing of joint claim construction and invalidity contentions. See Exs. 2003–2005, 2019. Accordingly, due to the same claims being challenged in this Petition and Volkswagen’s Petition and the significant relationship between Petitioner and Volkswagen, the first General Plastic factor weighs against institution.” slip op. at 15
Discretionary denialPatents in suitUS 10,447,450 - American Honda Motor Co., Inc. v. Neo Wireless LLCInstitution deniedPTAB · Nov 9, 2023 · IPR2023-00797 · APJ Stephen E Belisle · IPR · Institution
The Board denied institution on claims 23, 24, 26, and 27, exercising § 314(a) discretion because the General Plastic factors favored denying the serial petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“Prelim. Resp. 7–8 (emphasis added). Petitioner argues it “has not previously petitioned for IPR of the ’302 patent.” Pet. 67. Although Petitioner is correct that it has not itself previously filed such a petition, this does not end our inquiry. The Petition in this case and the previous petition in the VW 1538 IPR both challenge claims 23, 24, 26, and 27 of the ’302 patent (indeed, the VW 1538 IPR challenged all claims of the ’302 patent). See, e.g., Pet. 1; IPR2022-01538, Paper 2, 1; Prelim. Resp. 9–10. Although Petitioner did not file the petition in the VW 1538 IPR, as discussed above, our application of the General Plastic factors is not limited solely to instances where multiple petitions are filed by the same petitioner. Rather, “where different petitioners challenge the same patent, we consider any relationship between those petitioners when weighing the General Plastic factors.” See Valve, Paper 11 at 9 (emphasis added).” slip op. at 12
Discretionary denialPatents in suitUS 10,771,302 - T-Mobile USA, Inc. v. Voip-Pal.Com, Inc.Institution deniedPTAB · Jul 28, 2023 · IPR2023-00641 · APJ Mitchell C Weatherly · IPR · Institution
The Board denied institution under General Plastic because the factors, considered holistically, favored discretionary denial of T-Mobile’s second set of petitions.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“II. DISCRETIONARY DENIAL OF INSTITUTION Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 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.” 35 U.S.C. § 314(a). Petitioner challenges the same claims on the same grounds based on the same arguments and evidence presented in the petitions in the Target IPRs. Compare IPR2022-” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). Under 35 U.S.C. § 315(c), the discretion of the Director to join a party to an ongoing IPR is premised on the Director’s determination that the petition warrants institution. That determination is not limited to determining whether the merits of the petition meet the reasonable likelihood threshold for at least one challenged claim. Under General Plastic, the Board may deny a petition based on the Director’s discretionary authority under § 314(a). General Plastic, Paper 19 at 15. Thus, before determining whether to join Petitioner as a party to the Target IPRs, even though the petitions are each a “me-too” petition, we first determine whether General Plastic should be applied and, if applied, whether application of the General Plastic factors warrants the exercise of discretion to deny the Petition under § 314(a).” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“institute these Proceedings without first considering whether to exercise discretion under § 314(a). 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. Section 315(c) requires “two different decisions,” both of which are discretionary, first “whether the joinder applicant’s petition for IPR ‘warrants’ institution under § 314,” and second whether to “whether to ‘join as a party’ the joinder applicant”). Facebook, Inc. v. Windy City Innov., LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). Under 35 U.S.C. § 315(c), the discretion of the Director to join a party to an ongoing IPR is premised on the Director’s determination that the petition warrants institution. That determination is not limited to determining whether the merits of the petition meet the reasonable likelihood threshold for at least one challenged claim. Under General Plastic, the Board may deny a petition based on the Director’s discretionary authority under § 314(a). General Plastic, Paper 19 at 15. Thus, before determining whether to join Petitioner as a party to the Target IPRs, even though the petitions are each a “me-too” petition, we first determine whether General Plastic should be applied and, if applied, whether application of the General Plastic factors warrants the exercise of discretion to deny the Petition under § 314(a).” slip op. at 4
Discretionary denialPatents in suitUS 10,880,721 - T-Mobile USA, Inc. v. Voip-Pal.Com, Inc.Institution deniedPTAB · Jul 28, 2023 · IPR2023-00640 · APJ Mitchell C Weatherly · IPR · Institution
The Board denied institution of the challenged proceedings under General Plastic and denied T-Mobile’s motions for joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied general plasticInstitution denied
“II. DISCRETIONARY DENIAL OF INSTITUTION Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 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.” 35 U.S.C. § 314(a). Petitioner challenges the same claims on the same grounds based on the same arguments and evidence presented in the petitions in the Target IPRs. Compare IPR2022- 2 Petitioner identifies T-Mobile USA, Inc. and T-Mobile US, Inc. as the real parties-in-interest. Pet. 1. 3 We refer to papers and exhibits in IPR2023-00638. Substantially similar documents were filed in IPR2023-00639, IPR2023-00640, and IPR2023- 00641. This Order applies equally to all captioned proceedings. 01231, Paper 3 (Petition), 5–6, 8–73, with Pet. 5, 8–73. In each of the Target IPRs, we determined that “Petitioner . . . demonstrated a reasonable likelihood of establishing that at least [one] claim is unpatentable” and “institute[d] an inter partes review of all challenged claims of the [challenged patents] on all grounds alleged by Petitioner.” IPR2022-01231, Paper 10 (Decision Granting Institution of Inter Partes Review), 3; see also SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). Having already considered the merits of the challenges and evidence presented in these “me too” petitions vis-à-vis the threshold of institution for inter partes review in the Target IPRs, we determine that the Petitions in these proceedings also present a reasonable likelihood of prevailing on the challenge of at least one claim of the challenged patents.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“Petitions are “me too” petitions and the merits of the challenges in the Target IPRs were formulated and fixed in the record on June 30, 2022, Petitioner did not receive any guidance from Patent Owner or the Board on its first set of petitions in October and December of 2022. Accordingly, any guidance provided by Patent Owner or the Board could not have influenced the content of the Petitions at issue in this proceeding. For this reason, we determine that the third General Plastic factor weighs against discretionarily denying institution.” slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“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. Section 315(c) requires “two different decisions,” both of which are discretionary, first “whether the joinder applicant’s petition for IPR ‘warrants’ institution under § 314,” and second whether to “whether to ‘join as a party’ the joinder applicant”). Facebook, Inc. v. Windy City Innov., LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). Under 35 U.S.C. § 315(c), the discretion of the Director to join a party to an ongoing IPR is premised on the Director’s determination that the petition warrants institution. That determination is not limited to determining whether the merits of the petition meet the reasonable likelihood threshold for at least one challenged claim. Under General Plastic, the Board may deny a petition based on the Director’s discretionary authority under § 314(a). General Plastic, Paper 19 at 15. Thus, before determining whether to join Petitioner as a party to the Target IPRs, even though the petitions are each a “me-too” petition, we first determine whether General Plastic should be applied and, if applied, whether application of the General Plastic factors warrants the exercise of discretion to deny the Petition under § 314(a).” slip op. at 4
Discretionary denialPatents in suitUS 10,880,721 - T-Mobile USA, Inc. v. Voip-Pal.Com, Inc.Institution deniedPTAB · Jul 28, 2023 · IPR2023-00639 · APJ Mitchell C Weatherly · IPR · Institution
The Board denied institution on all challenged claims under General Plastic and denied T-Mobile’s motions for joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“II. DISCRETIONARY DENIAL OF INSTITUTION Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 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.” 35 U.S.C. § 314(a). Petitioner challenges the same claims on the same grounds based on the same arguments and evidence presented in the petitions in the Target IPRs. Compare IPR2022-” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“second set of challenges to the patents, and upon the Target IPRs settling, Petitioner would stand in to continue proceedings that would otherwise be terminated. In effect, it would be as if Petitioner had brought the second set of challenges in the first instance. This effect is especially apparent in these particular circumstances because the original petitioner in the Target IPRs, Meta, has already been dismissed from those proceedings, and the remaining parties have jointly moved to terminate them because they have settled their dispute. The current circumstances, in which a second petition has been filed after the first was denied on the merits, are the particular circumstances that General Plastic was intended to address. General Plastic, Paper 19 at 17 (“Multiple, staggered petitions challenging the same patent and same claims raise the potential for abuse.”).” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“institute these Proceedings without first considering whether to exercise discretion under § 314(a). 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. Section 315(c) requires “two different decisions,” both of which are discretionary, first “whether the joinder applicant’s petition for IPR ‘warrants’ institution under § 314,” and second whether to “whether to ‘join as a party’ the joinder applicant”). Facebook, Inc. v. Windy City Innov., LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). Under 35 U.S.C. § 315(c), the discretion of the Director to join a party to an ongoing IPR is premised on the Director’s determination that the petition warrants institution. That determination is not limited to determining whether the merits of the petition meet the reasonable likelihood threshold for at least one challenged claim. Under General Plastic, the Board may deny a petition based on the Director’s discretionary authority under § 314(a). General Plastic, Paper 19 at 15. Thus, before determining whether to join Petitioner as a party to the Target IPRs, even though the petitions are each a “me-too” petition, we first determine whether General Plastic should be applied and, if applied, whether application of the General Plastic factors warrants the exercise of discretion to deny the Petition under § 314(a).” slip op. at 4
Discretionary denialPatents in suitUS 8,630,234 - T-Mobile USA, Inc. v. Voip-Pal.Com, Inc.Institution deniedPTAB · Jul 28, 2023 · IPR2023-00638 · APJ Mitchell C Weatherly · IPR · Institution
The Board denied institution in IPR2023-00638 through IPR2023-00641 under General Plastic and denied the motions for joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied general plasticInstitution denied
“01231, Paper 3 (Petition), 5–6, 8–73, with Pet. 5, 8–73. In each of the Target IPRs, we determined that “Petitioner . . . demonstrated a reasonable likelihood of establishing that at least [one] claim is unpatentable” and “institute[d] an inter partes review of all challenged claims of the [challenged patents] on all grounds alleged by Petitioner.” IPR2022-01231, Paper 10 (Decision Granting Institution of Inter Partes Review), 3; see also SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). Having already considered the merits of the challenges and evidence presented in these “me too” petitions vis-à-vis the threshold of institution for inter partes review in the Target IPRs, we determine that the Petitions in these proceedings also present a reasonable likelihood of prevailing on the challenge of at least one claim of the challenged patents. Notwithstanding the merits, however, Patent Owner argues that we” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). Under 35 U.S.C. § 315(c), the discretion of the Director to join a party to an ongoing IPR is premised on the Director’s determination that the petition warrants institution. That determination is not limited to determining whether the merits of the petition meet the reasonable likelihood threshold for at least one challenged claim. Under General Plastic, the Board may deny a petition based on the Director’s discretionary authority under § 314(a). General Plastic, Paper 19 at 15. Thus, before determining whether to join Petitioner as a party to the Target IPRs, even though the petitions are each a “me-too” petition, we first determine whether General Plastic should be applied and, if applied, whether application of the General Plastic factors warrants the exercise of discretion to deny the Petition under § 314(a).” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“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. Section 315(c) requires “two different decisions,” both of which are discretionary, first “whether the joinder applicant’s petition for IPR ‘warrants’ institution under § 314,” and second whether to “whether to ‘join as a party’ the joinder applicant”). Facebook, Inc. v. Windy City Innov., LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). Under 35 U.S.C. § 315(c), the discretion of the Director to join a party to an ongoing IPR is premised on the Director’s determination that the petition warrants institution. That determination is not limited to determining whether the merits of the petition meet the reasonable likelihood threshold for at least one challenged claim. Under General Plastic, the Board may deny a petition based on the Director’s discretionary authority under § 314(a). General Plastic, Paper 19 at 15. Thus, before determining whether to join Petitioner as a party to the Target IPRs, even though the petitions are each a “me-too” petition, we first determine whether General Plastic should be applied and, if applied, whether application of the General Plastic factors warrants the exercise of discretion to deny the Petition under § 314(a).” slip op. at 4
Discretionary denialPatents in suitUS 8,630,234
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.