- 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 - Code200, Uab / Teso LT, Uab et al. v. Bright Data Ltd.Institution deniedPTAB · Jul 25, 2022 · IPR2022-00861 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution under General Plastic’s § 314(a) discretion and denied joinder because the petition did not warrant institution.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“issue of whether the petitioner had the benefit of the Board’s guidance on the use of stipulations that agree not to raise the grounds asserted in the IPR at trial. Intel, Paper 14 at 13–14; Prelim. Resp. 7–9. In Intel, the Board found that the decision denying the earlier petition occurred before the Board had expressed its approval of such stipulations in Sotera Wireless or Sand Revolution II. Id. However, as Patent Owner argues, the petition in the earlier 1266 petition was filed after Sand Revolution II had been designated informative. Prelim. Resp. 8. Unlike the petitioner in Intel, Petitioner here had the guidance provided by Sand Revolution II, and could have proffered such a stipulation, but did not do so. We determine that this failure to provide such a stipulation in the face of clear guidance from the Board weighs strongly in favor of exercising discretion to deny institution and outweighs the fact that the Board did not substantively address the merits of the prior petition.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied general plasticInstitution denied
“3. Conclusion In light of the General Plastic factors, the guidance expressed in the Trial Practice Guide, and the arguments presented for and against the exercise of discretionary denial, we conclude that it is appropriate here to exercise our discretion under 35 U.S.C. § 314(a) to deny institution. IV. DENIAL OF MOTION FOR JOINDER As stated above, the Director may join a party to an ongoing IPR only if the filed petition warrants institution under § 314. 35 U.S.C. § 315(c). Because we exercise discretion to deny institution under § 314, we deny also Petitioner’s Motion for Joinder. V. ORDER Accordingly, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), the Petition is denied; and FURTHER ORDERED that the Motion for Joinder is denied.” slip op. at 16
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“IV. DENIAL OF MOTION FOR JOINDER As stated above, the Director may join a party to an ongoing IPR only if the filed petition warrants institution under § 314. 35 U.S.C. § 315(c). Because we exercise discretion to deny institution under § 314, we deny also Petitioner’s Motion for Joinder. V. ORDER Accordingly, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), the Petition is denied; and FURTHER ORDERED that the Motion for Joinder is denied.” slip op. at 17
Discretionary denialPatents in suitUS 10,257,319 - Apple Inc. v. Gui Global Products, Ltd., D/B/A GweeInstitution deniedPTAB · Feb 4, 2022 · IPR2021-01289 · APJ Bryan F Moore · IPR · Institution
The Board denied institution of IPR on claims 1–19 under General Plastic, finding the second petition unnecessary and inefficient; it also denied Apple’s conditional motion for joinder.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“In none of its briefs does Petitioner explain “why the Board should exercise its discretion to institute additional petitions if it [the Board] identifies one petition that satisfies petitioner’s burden under 35 U.S.C. § 314(a),” short of saying that “Bohbot-Gundlach (470 IPR) and Kim (this Petition) offer very different disclosures.” Explanation 3; TPG 60.8 However, Petitioner does not identify any circumstances identified in the Trial Practice Guide supporting a need for a second petition, such as a large number of claims in litigation or a potential dispute about priority date. TPG 59. Accordingly, based on the record before us, we agree with Patent Owner (Prelim. Resp. 6) that this General Plastic factor weighs in favor of denying institution of the proceeding.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied general plasticInstitution denied
“Conclusion In light of the General Plastic factors, the Uniloc decision, the guidance in the TPG, and the arguments presented for and against the exercise of discretionary denial, we conclude that it is appropriate here to exercise our discretion under 35 U.S.C. § 314(a). IV. DENIAL OF MOTION FOR JOINDER As stated above, the Director may join a party to an ongoing IPR only if the filed petition warrants institution under § 314. 35 U.S.C. § 315(c). Because we exercise discretion to deny institution under § 314, we deny Petitioner’s Conditional Motion for Joinder. V. ORDER Accordingly, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), the Petition is denied; and” slip op. at 11
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“IV. DENIAL OF MOTION FOR JOINDER As stated above, the Director may join a party to an ongoing IPR only if the filed petition warrants institution under § 314. 35 U.S.C. § 315(c). Because we exercise discretion to deny institution under § 314, we deny Petitioner’s Conditional Motion for Joinder. V. ORDER Accordingly, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), the Petition is denied; and FURTHER ORDERED that the Conditional Motion for Joinder is denied.” slip op. at 11
Discretionary denialPatents in suitUS 10,259,020 - Apple Inc. v. Gui Global Products, Ltd., D/B/A GweeInstitution deniedPTAB · Feb 3, 2022 · IPR2021-01292 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution of IPR on claims 1–13 under § 314(a), applying General Plastic to Apple's follow-on petition, and denied Apple's conditional motion for joinder.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“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.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“requires two different decisions.” Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). First, we “determine whether the joinder applicant’s petition for IPR ‘warrants’ institution under § 314.” Id. Second, if the petition warrants institution, we then “decide whether to ‘join as a party’ the joinder applicant.” Id. Thus, before determining whether to join Petitioner as a party to the 338 IPR, we first determine whether the petition warrants institution under § 314(a).” slip op. at 4
Discretionary denialPatents in suitUS 10,589,320 - Apple Inc. v. Gui Global Products, Ltd., D/B/A GweeInstitution deniedPTAB · Feb 1, 2022 · IPR2021-01291 · APJ Sally C Medley · IPR · Institution
The Board denied institution of IPR on claims 1–13 under § 314(a), finding the General Plastic factors favored denying Apple’s second petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“Factor 1: “whether the same petitioner previously filed a petition directed to the same claims of the same patent” As explained above, before us is Petitioner’s second petition challenging the claims of the ’077 patent. Pet. 74; Prelim. Resp. 6. We understand that Petitioner filed this Petition in case we did not institute review in the 472 IPR. Pet. 74; Explanation 4–5 (Petitioner “respectfully requests that the Board institute” review in the 472 IPR, but if the Board does not “the next-most efficient course of action would be for the Board to institute” in this proceeding). As stated above, we instituted inter partes review in the 472 IPR. The 472 IPR involves claims 1–5 and 7–13 of the ’077 patent and the 337 IPR involves claims 1–13. Thus, one more claim is challenged here than in the 472 IPR. Nonetheless, Petitioner provides no explanation why it is again challenging claims 1–5 and 7–13 here or why Petitioner needs two instituted inter partes reviews on the common claims. Pet. 74–75. In none of its briefs does Petitioner explain “why the Board should exercise its discretion to institute additional petitions if it [the Board] identifies one petition that satisfies petitioner’s burden under 35 U.S.C. § 314(a),” short of saying that “(Gundlach (472 IPR) and Kim (this Petition) offer very different disclosures.” Explanation 3; TPG 60.7 However, Petitioner does not identify any circumstances identified in the Trial Practice Guide supporting a need for a second petition, such as a large number of claims in litigation or a potential dispute about priority date. TPG 59. Accordingly, based on the record before us, we agree with Patent Owner (Prelim. Resp. 6) that this General Plastic factor weighs in favor of denying institution of the proceeding. Factor 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” Petitioner argues that it “learned of the prior art in the Samsung Petition [in the 337 IPR] around the time that petition was filed.” Pet. 75. Petitioner argues that because it filed its petition in the 472 IPR five weeks after the petition was filed in the 337 IPR, it “could not have reasonably leveraged its knowledge” of the prior art involved in the 337 IPR against Patent Owner. Id. Patent Owner argues that because Petitioner admitted that it knew of the prior art asserted in the 337 IPR prior to Petitioner filing the petition in the 472 IPR, General Plastic factor two weighs in favor of 7 As discussed above, in the Explanation, Petitioner requests that we should institute inter partes review in the 472 IPR, and if we do not, then we should institute here. Explanation 3–5. In the Reply, however, Petitioner requests that we institute here, despite having instituted the 472 IPR, without explaining why we should do so. Reply 2–3. denying institution of the proceeding. Prelim. Resp. 7. We agree that this factor weighs in favor of denying institution of the proceeding because Petitioner does not explain sufficiently why it had to file the petition in the 472 IPR five weeks after the petition was filed in the 337 IPR such that Petitioner could not have “leveraged its knowledge” of the prior art involved in the 337 IPR against Patent Owner. In other words, Petitioner fails to explain sufficiently why it could not have included the claims or prior art it asserts here in the 472 IPR. Accordingly, we determine that this second General Plastic factor weighs in favor of denying institution of the proceeding.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“claims 1–13 of U.S. Patent No. 10,562,077 B2 (Ex. 1001, “the ’077 patent”). Paper 3 (“Pet.”). Petitioner also filed a Conditional Motion for Joinder with Samsung et al. v. GUI Global Products, Ltd., IPR2021-00337 (“the 337 IPR” or “the Samsung 337 IPR”). Paper 4 (“Mot.”). GUI Global Products, Ltd., d/b/a Gwee (“Patent Owner”) filed a Preliminary Response to the Petition. Paper 10 (“Prelim. Resp.”). Patent Owner also filed an Opposition to the Conditional Motion for Joinder. Paper 8 (“Opp.”). Petitioner filed a Reply to Patent Owner’s Opposition. Paper 9 (“Reply”). 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 deny Petitioner’s Conditional Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“To join a party to an instituted IPR, the plain language of § 315(c) requires two different decisions.” Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). First, we “determine whether the joinder applicant’s petition for IPR ‘warrants’ institution under § 314.” Id. Second, if the petition warrants institution, we then “decide whether to ‘join as a party’ the joinder applicant.” Id. Thus, before determining whether to join Petitioner as a party to the 337 IPR, we first determine whether the petition warrants institution under § 314(a). slip op. at 4
Discretionary denialPatents in suitUS 10,562,077 - Apple Inc. v. Gui Global Products, Ltd., D/B/A GweeInstitution deniedPTAB · Feb 1, 2022 · IPR2021-01290 · APJ Sally C Medley · IPR · Institution
The Board denied institution of review of claims 1–19 under § 314(a), applying the General Plastic factors, and denied Apple’s conditional motion for joinder.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“patent and the Petition here involves claims 1–19. Thus, more claims are challenged here than in the 471 IPR. Nonetheless, Petitioner provides no explanation why it is again challenging claims 1, 2, 4–10, 12, 14–17, and 19 here or why Petitioner needs two instituted inter partes reviews on the common claims. Pet. 73–74. In none of its briefs does Petitioner explain “why the Board should exercise its discretion to institute additional petitions if it [the Board] identifies one petition that satisfies petitioner’s burden under 35 U.S.C. § 314(a),” short of saying that “Gundlach (471 IPR) and Kim (this Petition) offer very different disclosures.” Explanation 3; TPG 60.8 However, Petitioner does not identify any circumstances identified in the Trial Practice Guide supporting a need for a second petition, such as a large number of claims in litigation or a potential dispute about priority date. TPG 59. Accordingly, based on the record before us, we agree with Patent Owner (Prelim. Resp. 6) that this General Plastic factor weighs in favor of denying institution of the proceeding.” slip op. at 6
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“IV. DENIAL OF MOTION FOR JOINDER As stated above, the Director may join a party to an ongoing IPR only if the filed petition warrants institution under § 314. 35 U.S.C. § 315(c). Because we exercise discretion to deny institution under § 314, we deny Petitioner’s Conditional Motion for Joinder. V. ORDER Accordingly, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), the Petition is denied; and FURTHER ORDERED that the Conditional Motion for Joinder is denied.” slip op. at 11
Discretionary denialPatents in suitUS 10,259,021
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.