• General Motors LLC / Nissan North America, Inc. v. Neo Wireless LLCInstitution denied
  PTAB · 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 denial
  Patents in suitUS 10,447,450
• Ford Motor Company v. Neo Wireless LLCInstitution denied
  PTAB · 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 denial
  Patents in suitUS 10,447,450
• American Honda Motor Co., Inc. v. Neo Wireless LLCInstitution denied
  PTAB · 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 denial
  Patents in suitUS 10,771,302

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.