- Apple, Inc. v. Koss CorporationInstitution deniedPTAB · Oct 12, 2021 · IPR2021-00686 · APJ Gregg I Anderson · IPR · Institution
The Board denied institution of IPR on all challenged claims because two petitions were unnecessary and the General Plastic factors did not justify the follow-on petition.
RulingsInstitution decision- Parallel petitionsDenied
“To that end, the CTPG states that “one petition should be sufficient to challenge the claims of a patent in most situations.” CTPG 59. Thus, “multiple petitions by a petitioner are not necessary in the vast majority of cases.” Id. “Two or more petitions filed against the same patent at or about the same time (e.g., before the first preliminary response by the patent owner) may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns.” Id. (citing 35 U.S.C. § 316(b)). “Nonetheless, the Board recognizes that there may be circumstances in which more than one petition may be necessary, including, for example, when the patent owner has asserted a large number of claims in litigation,” although even then, granting two petitions “should be rare.” See id.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“Nevertheless, Petitioner’s stated reason for filing two petitions is that it could not challenge the large volume of asserted claims in one petition, not that it became aware of the prior art after filing the ’381 IPR petition. The implication is that Petitioner was ready to challenge those claims (and aware of the basis to do so) but for limitations on briefing space. As further evidence of Petitioner’s early knowledge of the prior art, Patent Owner argues that Petitioner was aware of Seshadri-818 and other references by the same inventor at least as early as January 2021, when Petitioner served invalidity contentions with those references in the District Court case. Prelim. Resp. 25 (citing Ex. 2023). Patent Owner further argues that Petitioner was aware of Seshadri at least as early as February 22, 2021, when it filed IPR2021-00546 advancing Seshadri as a reference. Id. at 26. Logically, Petitioner would have been aware of those references even earlier, as it would have spent significant time preparing its invalidity contentions and the Petition. In light of the evidence that Petitioner likely was aware of Seshadri before the filing of the Petition in March 2021, along with Petitioner’s silence as to its knowledge, this factor weighs against institution.” slip op. at 16
Discretionary denialPatents in suitUS 10,491,982 - Snap Inc. v. Blackberry LimitedInstitution deniedPTAB · Jul 13, 2020 · IPR2020-00392 · APJ Robert L Kinder · IPR · Institution
The Board denied institution on § 314(a) discretionary grounds and denied joinder, citing the concluded district court case, prior petition, and delay in filing.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine that the information presented in the Petition shows “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). Having considered both the Petition and the Preliminary Response, we exercise our delegated discretion, under 35 U.S.C. § 314, to deny the Petition in this proceeding. Accordingly, we do not institute an inter partes review. Because we deny institution of the Petition, we also deny Petitioner’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“The precedential Fintiv Order identifies several factors to be considered in analyzing § 314(a) issues, with the goal of balancing efficiency, fairness, and patent quality. See Fintiv Order, Paper 11 at 5–6. These factors include: 1) whether a stay exists or is likely to be granted if a proceeding is instituted; 2) proximity of the court’s trial date to the Board’s projected statutory deadline; 3) investment in the parallel proceeding by the court and 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 and considerations that impact the Board’s exercise of discretion, including the merits. Id.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“As noted above, Petitioner filed IPR2019-00829 on March 25, 2019, which was already near the end of Petitioner’s statutory period. We denied institution on the merits on October 1, 2019. The Challenged Claims were part of this prior petition. Petitioner’s second petition, the current Petition, was filed on January 3, 2020. At that time, Petitioner had already received the Patent Owner’s Preliminary Response in IPR2019-00829 as well as our decision denying institution. Petitioner knew of the prior art asserted in the current Petition at least as of April 6, 2019 – the date Facebook filed its petition in IPR2019-00940. Prelim. Resp. 3; Ex. 2001. Thus, Petitioner waited at least nine months after learning of the asserted prior art to bring the second petition. These factors favor exercising our discretion to deny institution. General Plastic Factors 5–7 Petitioner’s explanation for the time elapsed between the filings of multiple petitions directed to nearly the same claims of the same patent consists of the following: Petitioner is also unaware of any basis under § 314(a) for the Board to decline to consider this Petition. As discussed in section I.B., Facebook previously filed an IPR petition challenging the ’929 patent on April 6, 2019. (Ex. 1022). Snap obtained Facebook’s petition, after it was filed and publicly available, from the Patent Office. Snap’s petition is a substantively identical copy of Facebook’s ’929 petition. (See Ex. 1022). Pet. 3. Petitioner does not address why we should institute a petition challenging claims that have already been disclaimed or found unpatentable by a district court. Petitioner also does not address the delay in bringing the current Petition even though Petitioner was aware of the prior art for at least nine months. The facts of this proceeding are unique, and Petitioner has not explained adequately why we should not exercise our discretion to deny this Petition.” slip op. at 13
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“not obligate us to institute in this proceeding without first considering whether to exercise discretion. 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. Two clauses within 35 U.S.C. § 315(c) are the source of discretion to deny joinder. The first states “the Director, in his or her discretion, may join as a party.” Thus, joinder is not required, but remains discretionary. Second, the statute requires an additional step. Acting under delegated authority from the Director, we first determine whether the petition warrants the institution of an inter partes review under § 314. Id. (“the Director, after receiving a preliminary response under section 313 . . . determines warrants the institution of an inter partes review under section 314”). The statute allows for a patent owner preliminary response, and we read 35 U.S.C. § 315(c) as requiring us to consider all of patent owner’s arguments, including those related to discretionary denial under section 314(a).” slip op. at 11
Discretionary denialPatents in suitUS 8,676,929 - Snap Inc. v. Blackberry LimitedInstitution deniedPTAB · Jul 13, 2020 · IPR2020-00391 · APJ Robert L Kinder · IPR · Institution
The Board denied institution of IPR on claims 1, 2, 9, 14, 15, and 21 under § 314(a), and denied Snap’s motion for joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“Weighing the totality of the record before us, we determine that exercising our discretion, under 35 U.S.C. § 314, to deny the Petition in this proceeding is the proper outcome. As noted above, several factors weigh in favor of institution. We are most persuaded, however, by all the factors favoring exercising our discretion, including the advanced phase of the litigation. Despite knowing of the prior art for some time, Petitioner delayed filing the Petition until after all of the Challenged Claims had either been disclaimed or found to be unpatentable subject matter in a final district court decision.” slip op. at 16
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“The Fintiv factors provide support for exercising discretion not to institute this Petition. See Fintiv Order, Paper 11 at 5–6. The district court case cannot be stayed because it has concluded. We would endeavor to meet our statutory deadline in December 2020, one year after the district court issued final judgment. The parties’ and district court’s investment in the district court case was sufficient to already reach a final adjudication. Now, the parties are involved in a Federal Circuit appeal that may or may not affirm the district court’s determinations. Petitioner and the defendant in the district court case are also the same party. These factors favor exercising discretion. The issues do not necessarily overlap between the petition and the parallel proceeding because the district court reached final judgment based on 35 U.S.C. § 101, which is not before us. We also weigh the potential burdens, and joining Patent Owner to an already existing proceeding would not increase the burden for Patent Owner or for the Board. These factors favor not exercising discretion and instituting review.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“Patent Owner has shown that Petitioner knew of at least the Noble, Hassett, and Johnson prior art references as of October 29, 2018. Prelim. Resp. 3; Ex. 2001. As shown above, Noble serves as the primary reference in each of Petitioner’s four grounds, while Hassett and Johnson are in two grounds each. Pet. 2–3. Thus, Petitioner waited at least fourteen months after learning of the asserted prior art to bring the second petition. These factors favor exercising our discretion to deny institution. General Plastic Factors 5–7” slip op. at 15
- 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. Two clauses within 35 U.S.C. § 315(c) are the source of discretion to deny joinder. The first states “the Director, in his or her discretion, may join as a party.” Thus, joinder is not required, but remains discretionary. Second, the statute requires an additional step. Acting under delegated authority from the Director, we first determine whether the petition warrants the institution of an inter partes review under § 314. Id. (“the Director, after receiving a preliminary response under section 313 . . . determines warrants the institution of an inter partes review under section 314”). The statute allows for a patent owner preliminary response, and we read 35 U.S.C. § 315(c) as requiring us to consider all of patent owner’s arguments, including those related to discretionary denial under section 314(a).” slip op. at 12
Discretionary denialPatents in suitUS 8,296,351
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.