- Micron Technology, Inc. / Micron Semiconductor Products, Inc. et al. v. Netlist, Inc.Institution deniedPTAB · Jul 23, 2024 · IPR2024-00370 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution of review of claims 1–5 under § 314(a), finding that the General Plastic factors as a whole favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“We have authority under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons described below we do not institute an inter partes review of the challenged claims and we deny Petitioner’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“We disagree. In our earlier decision in the Micron IPR, institution was denied because petitioner did not demonstrate sufficient support that the asserted anticipatory reference disclosed that write and read leveling circuitry were included in the data paths, as the independent claim recited. Ex. 2002, 19–20. In the Samsung IPR, the petitioner there asserts an obviousness challenge rather than an anticipation challenge to the independent claim, and a secondary reference, Butt, was added to address the deficiencies of the petition of the previous Micron IPR petition. The challenge in the Samsung IPR was modified in a manner that was directed to the deficiencies of the Micron IPR, and therefore appears to be an attempt to use the information gained in the Micron IPR to improve the possible success of the later petition. In other words, the Samsung IPR appears to use our prior decision as a roadmap. See General Plastic, 17–18. By moving for joinder to the Samsung IPR, Petitioner is also therefore seeking to capitalize on the benefits of this road mapping. As Uniloc states, “the copied petition is Petitioner’s second challenge to the patent” and “[i]n effect, it would be as if [petitioner] brought the second challenge to the patent,” wherein “[t]his is the kind of serial attack that General Plastic was intended to address.” Uniloc, 4 (citing General Plastic at 17).” slip op. at 15
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“III. MOTION FOR JOINDER The Director may join a party to an ongoing inter partes review only if the filed petition warrants institution under § 314. See 35 U.S.C. § 315(c). Because we are exercising discretion to deny institution under § 314, we deny Petitioner’s Motion for Joinder. IV. ORDER Accordingly, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review is denied; and FURTHER ORDERED that, pursuant to 35 U.S.C. § 315(c), Petitioner’s motion for joinder is denied.” slip op. at 19
Discretionary denialPatents in suitUS 10,268,608 - One World Technologies, Inc. D/B/A Techtronic Industries Power Equipment v. The Chamberlain Group, Inc.Institution deniedPTAB · Dec 13, 2017 · IPR2017-01546 · APJ Jon M Jurgovan · IPR · Institution
The Board denied institution on all challenged claims under § 314(a), finding that a majority of the General Plastic factors weighed strongly against institution.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“or should have known of the Kikuya reference at the time of filing its first two petitions (September 9, 2016). Petitioner does not provide any explanation as to why the reference could not have been found with a reasonably diligent search at the time of the earlier petitions. See General Plastic at 11 (“Petitioner . . . provided no explanation why it could not have found this new prior art earlier— prior to filing the first-filed petitions—through the exercise of reasonable diligence.”), 19 (“the record is devoid of any explanation why Petitioner could not have found the newly asserted prior art in any earlier search(es) through the exercise of reasonable diligence”). Furthermore, what bearing the Federal Circuit’s claim construction (or those of the Board or the District Court) had on whether the Kikuya reference reasonably could have been located earlier is not explained adequately in the Petition. In this regard, we note that Petitioner states that it requested the later patent search on February 23, 2017, which was shortly after receiving our decisions denying institution in Cases IPR2016-01772 and IPR2016-01774 on February 21, 2017. Petitioner makes no mention of how this factored into the decision to request the later patent search. Moreover, Petitioner states that it requested the patent search that yielded the Kikuya reference on February 23, 2017, and the District Court adopted a “broader construction” in an order issued April 7, 2017. Pet. 7. Given this sequence of events, we do not see how the scope of the patent search could have taken into account a “broader” claim construction that did not exist when Petitioner requested the later patent search. We agree with Patent Owner that factor (2) weighs in favor of exercising our discretion to deny the Petition. See Prelim. Resp. 10–14. In view of the foregoing, this factor weighs against institution.” slip op. at 6
Discretionary denialPatents in suitUS 7,224,275 - 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.