- HTC Corporation / HTC America, Inc. v. NFC Technology, LLCRehearing deniedPTAB · Aug 20, 2015 · IPR2015-00384 · APJ James B Arpin · IPR · Rehearing
The Board denied HTC’s rehearing request and left in place its discretionary denial of institution on claims 13–15 and 19 based on § 325(d) and follow-on petition concerns.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a 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, opposition, or a reply. (Emphasis added.) When rehearing a Decision on Institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for patent owner
“that, contrary to Petitioner’s argument, the two petitions challenge overlapping sets of claims.1 In particular, Petitioner expressly challenges claim 13 in both IPR2014- 01199 (see 1199 Dec. on Inst. 3) and IPR2015-00384 (Pet. 60 (“This Petition demonstrates that there is a reasonable likelihood that Petitioners will prevail in their challenge of patentability for Claims 13, 14, 15 and 19.” (emphasis added)). Further, to the extent that Petitioner argues that it only challenges the dependent claims, challenges to independent claim 13 are made expressly as part of the challenges to each of dependent claims 14, 15, and 19. Pet. 12–26 (claim 13 as unpatentable over Akiho); 31–39 (claim 13 as unpatentable over Amtmann); 44–46 (claim 13 as unpatentable over Amtmann and ECMA-340); 49–57 (claim 13 as unpatentable Charrat and Kuhl).2 With respect to claim 13, the asserted grounds in the Petition in IPR2015-00384 rely on the same references and make substantially the same arguments against claim 13 as those asserted in the Petition in IPR2014- 01199. As we indicated in the Decision on Institution, “we may exercise our discretion and decline to institute inter partes review under 35 U.S.C. § 325(d)” based on the assertion of the same references against claim 13. 384 Dec. on Inst. 9–10. Moreover, although at the time Petitioner filed its second Petition, Petitioner did not know on which, if any, of its asserted grounds we might institute review, Petitioner’s request that we consider identical challenges to claim 13 in each” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for patent owner
“Petition is unquestionably an attempt to obtain a “second bite at the apple,” at least with respect to claim 13.3 384 Dec. on Inst. 11; see Reh’g Req. 1. Moreover, to the extent that Petitioner also relies upon Arisawa to challenge claims 14, 15, or 19 on another ground(s), Petitioner’s asserted grounds and arguments make clear that Akiho or Charrat and Kuhl, or both, allegedly teach the additional limitations recited in claims 14, 15, or 19. See, e.g., Pet. 26–30 (applying the teachings of Akiho to claims 14, 15, and 19), 39–43 (applying the teachings of Amtmann and Arisawa to claims 14, 15, and 19). Petitioner presents no evidence or argument that Arisawa was not known or available to Petitioner at the time the Petition was filed in IPR2014-01199. We also note that Arisawa is listed among the “References Cited” on page 2 in Kuhl. See Conopo, Inc. v. The Proctor & Gamble Co., Case IPR2014-00506, slip op. at 6 (PTAB July 7, 2014) (Paper 17) (informative) (“The instant Petition relies on thirteen pieces of prior art: six that were raised in the 505 Petition . . .; and seven that are new to this proceeding . . . . Unilever, however, presents no argument or evidence that the seven newly cited references were not known or available to it at the time of filing of the 505 Petition.”); see also Samsung Elecs. Co. v. Rembrandt Wireless Techs., LP, Case IPR2015-00555, slip op. at 7 (PTAB June 19, 2015) (Paper 20) (“Petitioner simply presents arguments now that it could have made in [its earlier Petition], had it merely chosen to do so.”). Therefore, we deny Petitioner’s Request for Rehearing on this basis. 3 As noted below, however, Petitioner waited until after Patent Owner had filed a Preliminary Response in IPR2014-01199 before filing the follow-on Petition in IPR2015-00384.” slip op. at 5
- Strike new argumentNew argument disregardedDecided for patent owner
“presents evidence (e.g., Arisawa) and arguments that Petitioner had no reason to raise in the Petition in IPR2014-01199. Reh’g Req. 8–10. In particular, Petitioner argues that Patent Owner had not asserted that Petitioner infringed dependent claims 14, 15, and 19 until after the Petition in IPR2014-01199 was filed. Id. Petitioner presents a timeline in its Request for Rehearing, in which Petitioner suggests that Patent Owner filed an amended complaint in the related litigation alleging for the first time that Petitioner infringed dependent claims 14, 15, and 19. Id. at 2. Petitioner argues in the Request for Rehearing that, on August 19, 2014, Patent Owner served a second set of infringement contentions in the lawsuit, asserting dependent claims 14, 15, and 19 for the very first time. Because it was too late to address those claims in the first petition, Petitioner[] prepared and filed this second petition for inter partes review on December 6, 2014. Id. at 3 (emphasis added). Petitioner does not identify, however, where it raised this argument in its Petition in IPR2015-00384, as required by 37 C.F.R. § 42.71(d). See id. We determine that neither the timeline nor the fact that Patent Owner filed an amended complaint was raised or argued in the Petition in IPR2015-00384, as justification for filing a second petition. We could not have “misapprehended or overlooked” evidence or argument not previously presented. Therefore, we also deny Petitioner’s Request for Rehearing on this basis.” slip op. at 6
Discretionary denialPatents in suitUS 7,665,664
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.