- Aylo Freesites Ltd. v. DISH Technologies L.L.C.Institution deniedPTAB · Aug 13, 2024 · IPR2024-00519 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution of IPR challenging claims 1–21 under § 314(a), finding the General Plastic factors favored or were neutral toward discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“We agree with Patent Owner (Prelim. Resp. 7) that Petitioner fails to provide any evidence or testimony to substantiate the manner and timing of its search efforts. All we can glean from Petitioner’s attorney argument is that Petitioner discovered Leaning almost three months after it filed the petition in IPR2024-00048. See Pet. 63–64. Petitioner makes no attempt to 10 On this basis, Patent Owner also argues that we should exercise our discretion to deny institution under 35 U.S.C. § 325(d). Prelim. Resp. 14– 21. We need not reach this issue. petition or that it could not have found Leaning by exercising reasonable diligence at that time. Furthermore, Petitioner’s allusion to the allegedly fruitless search efforts of USPTO examiners and other litigants (see Pet. 64) does not justify Petitioner’s actions. Thus, we find that Petitioner has not sufficiently explained why it could not have found Leaning in earlier searches through the exercise of reasonable diligence before it filed the petition in IPR2024-00048. See General Plastic at 20.” slip op. at 12
Discretionary denialPatents in suitUS 8,868,772 - Aylo Freesites Ltd. v. DISH Technologies L.L.C.Institution deniedPTAB · Aug 13, 2024 · IPR2024-00518 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution of IPR on claims 1–16 under § 314(a), exercising discretion based on the General Plastic factors.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“We agree with Patent Owner (Prelim. Resp. 7) that Petitioner fails to provide any evidence or testimony to substantiate the manner and timing of its search efforts. All we can glean from Petitioner’s attorney argument is 9 On this basis, Patent Owner also argues that we should exercise our discretion to deny institution under 35 U.S.C. § 325(d). Prelim. Resp. 14– 21. We need not reach this issue. petition in IPR2024-00047. See Pet. 62. Petitioner makes no attempt to establish that it could not have known of Leaning at the time of the earlier petition or that it could not have found Leaning by exercising reasonable diligence at that time. Furthermore, Petitioner’s allusion to the allegedly fruitless search efforts of USPTO examiners and other litigants (see Pet. 62) does not justify Petitioner’s actions. Thus, we find that Petitioner has not sufficiently explained why it could not have found Leaning in earlier searches through the exercise of reasonable diligence before it filed the petition in IPR2024-00047. See General Plastic at 20.” slip op. at 12
Discretionary denialPatents in suitUS 9,407,564 - Aylo Freesites Ltd. v. DISH Technologies L.L.C.Institution deniedPTAB · Aug 13, 2024 · IPR2024-00513 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution of review of claims 1–18, finding the General Plastic factors favored or were neutral to discretionary denial under § 314(a).
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“claims, including all of the independent claims of the ’156 patent. Only one of the 18 claims challenged in the instant Petition is not included in the earlier petition, and Petitioner’s treatment of this claim comprises about one page of analysis. Given that the two petitions challenge nearly all of the same claims of the ’156 patent, we find that this factor weighs in favor of exercising discretion to deny institution.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“35 U.S.C. § 314(a) provides that the Director may not authorize an inter partes review to be instituted unless the Director determines that 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. Section 314(a) does not require the Director to institute a review. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). Rather, a decision whether to institute is within the” slip op. at 9
Discretionary denialPatents in suitUS 10,757,156 - Aylo Freesites Ltd v. DISH Technologies L.L.C.Institution deniedPTAB · Aug 13, 2024 · IPR2024-00512 · APJ John A Hudalla · IPR · Institution
The Board denied institution for all challenged claims under § 314(a), exercising discretion based on the General Plastic factors.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“In General Plastic, the Board set forth a non-exhaustive list of factors to consider in evaluating whether to exercise discretion, under § 314(a), to deny a petition challenging a patent previously challenged before the Board. Those factors include: 1. whether the same petitioner previously filed a petition directed to the same claims of the same patent; 2. whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it; 3. whether at the time of filing of the second petition the petitioner already received the patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review in the first petition; 4. the length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition; 5. whether the petitioner provides adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent; 6. the finite resources of the Board; and 7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not later than 1 year after the date on which the Director notices institution of review. General Plastic at 16 (citing NVIDIA Corp. v. Samsung Elecs. Co., IPR2016-00134, Paper 9 at 6–7 (PTAB May 4, 2016)). These factors are “a non-exhaustive list” and “additional factors may arise in other cases for consideration, where appropriate.” Id. at 16, 18.” slip op. at 9
Discretionary denialPatents in suitUS 11,470,138 - Aylo Freesites Ltd v. DISH Technologies L.L.C.Institution deniedPTAB · Aug 7, 2024 · IPR2024-00516 · APJ Thu A Dang · IPR · Institution
The Board denied institution on all challenged claims under § 314(a), finding that the General Plastic factors, particularly factors 1–3, 5, and 6, favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“evidence or testimony to substantiate the manner and timing of its search efforts. See Prelim. Resp. 6–9. Here, Petitioner merely provides an attorney argument that Petitioner discovered Leaning on January 5, 2024 (see Pet. 58), which is almost three months after Petitioner filed the petition in IPR2024-00046. Petitioner makes no attempt to establish that it could not have known of Leaning at the time of the IPR2024-00046 petition or that it could not have found Leaning by exercising reasonable diligence at that time. Furthermore, although Petitioner contends that Leaning was not discovered or relied upon by USPTO examiners, ITC respondents, or other litigants (see Pet. 58), allegedly fruitless search efforts of others do not justify Petitioner’s actions. On this record, we find that Petitioner has not sufficiently explained why it could not have found Leaning in earlier searches through the exercise of reasonable diligence before it filed the petition in IPR2024-00046. See General Plastic at 20.” slip op. at 15
Discretionary denialPatents in suitUS 10,951,680 - Aylo Freesites Ltd v. DISH Technologies L.L.C.Institution deniedPTAB · Aug 7, 2024 · IPR2024-00517 · APJ Thu A Dang · IPR · Institution
The Board denied institution on all challenged claims, exercising § 314(a) discretion based on its balanced assessment of the General Plastic factors.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“evidence or testimony to substantiate the manner and timing of its search efforts. See Prelim. Resp. 6–9. Here, Petitioner merely provides an attorney argument that Petitioner discovered Leaning on January 5, 2024 (see Pet. 61), which is almost three months after Petitioner filed the petition in IPR2024-00043. Petitioner makes no attempt to establish that it could not have known of Leaning at the time of the IPR2024-00043 petition or that it could not have found Leaning by exercising reasonable diligence at that time. Furthermore, although Petitioner contends that Leaning was not discovered or relied upon by USPTO examiners, ITC respondents, or other litigants (see Pet. 61), allegedly fruitless search efforts of others do not justify Petitioner’s actions. On this record, we find that Petitioner has not sufficiently explained why it could not have found Leaning in earlier searches through the exercise of reasonable diligence before it filed the petition in IPR2024-00043. See General Plastic at 20.” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“our discretion to deny institution, factor 2 strongly favors exercising the discretion, and factors 4 and 7 are neutral. Therefore, based on a balanced assessment of these factors, we exercise our discretion to deny institution of an inter partes review. III. CONCLUSION For the reasons above, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review. IV. ORDER Accordingly, it is ORDERED that the Petition is denied as to all challenged claims, and no inter partes review is instituted.” slip op. at 24
Discretionary denialPatents in suitUS 11,677,798 - Aylo Freesites Ltd v. DISH Technologies L.L.C.Institution deniedPTAB · Aug 7, 2024 · IPR2024-00514 · APJ Elizabeth M Roesel · IPR · Institution
The Board denied institution under § 314(a), finding that most General Plastic factors favored denying this follow-on petition challenging claims 1–5, 7–14, and 16–30.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“Petitioner filed two staggered petitions challenging twenty-five common claims, including all of the independent claims of the ’554 patent. Only three of the twenty-eight claims challenged in the instant Petition are not included in the earlier petition, and Petitioner’s treatment of these three claims comprises less than one page of analysis. Pet. 39–40, 49, 53. Given that the two petitions challenge nearly all of the same claims of the ’554 patent, we find that this factor weighs in favor of exercising discretion to deny institution.” slip op. at 10
Discretionary denialPatents in suitUS 10,469,554 - Bytedance Ltd. / Tiktok Inc. v. Triller, Inc.Institution deniedPTAB · Oct 12, 2021 · IPR2021-00774 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution of IPR for claims 11–19 under § 314(a), exercising discretion based on the General Plastic factors and the burdens of a second petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“On this record, we have some “road mapping” concerns. Although Patent Owner identifies no relevant differences between the instant Petition and the ’099 Petition, Petitioner fails to provide any explanation for why the instant Petition was filed nearly two months after receiving Patent Owner’s preliminary response in the ’099 IPR. This fact pattern is troubling because there are significant overlaps in the subject matter recited in the challenged claims and because Hozumi is a primary reference in both proceedings. But Petitioner did not have the benefit of the ’099 Institution Decision (and the concerns articulated therein) at the time it filed the instant Petition.” slip op. at 12
Discretionary denialPatents in suitUS 9,691,429
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.