- T-Mobile USA, Inc. v. Voip-Pal.Com, Inc.Institution deniedPTAB · Jul 28, 2023 · IPR2023-00641 · APJ Mitchell C Weatherly · IPR · Institution
The Board denied institution under General Plastic because the factors, considered holistically, favored discretionary denial of T-Mobile’s second set of petitions.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“II. DISCRETIONARY DENIAL OF INSTITUTION Institution of an inter partes review is authorized by statute when “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.” 35 U.S.C. § 314(a). Petitioner challenges the same claims on the same grounds based on the same arguments and evidence presented in the petitions in the Target IPRs. Compare IPR2022-” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). Under 35 U.S.C. § 315(c), the discretion of the Director to join a party to an ongoing IPR is premised on the Director’s determination that the petition warrants institution. That determination is not limited to determining whether the merits of the petition meet the reasonable likelihood threshold for at least one challenged claim. Under General Plastic, the Board may deny a petition based on the Director’s discretionary authority under § 314(a). General Plastic, Paper 19 at 15. Thus, before determining whether to join Petitioner as a party to the Target IPRs, even though the petitions are each a “me-too” petition, we first determine whether General Plastic should be applied and, if applied, whether application of the General Plastic factors warrants the exercise of discretion to deny the Petition under § 314(a).” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“institute these Proceedings without first considering whether to exercise discretion under § 314(a). The statutory provision governing joinder in inter partes review proceedings is 35 U.S.C. § 315(c), which reads: If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. Section 315(c) requires “two different decisions,” both of which are discretionary, first “whether the joinder applicant’s petition for IPR ‘warrants’ institution under § 314,” and second whether to “whether to ‘join as a party’ the joinder applicant”). Facebook, Inc. v. Windy City Innov., LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). Under 35 U.S.C. § 315(c), the discretion of the Director to join a party to an ongoing IPR is premised on the Director’s determination that the petition warrants institution. That determination is not limited to determining whether the merits of the petition meet the reasonable likelihood threshold for at least one challenged claim. Under General Plastic, the Board may deny a petition based on the Director’s discretionary authority under § 314(a). General Plastic, Paper 19 at 15. Thus, before determining whether to join Petitioner as a party to the Target IPRs, even though the petitions are each a “me-too” petition, we first determine whether General Plastic should be applied and, if applied, whether application of the General Plastic factors warrants the exercise of discretion to deny the Petition under § 314(a).” slip op. at 4
Discretionary denialPatents in suitUS 10,880,721 - T-Mobile USA, Inc. v. Voip-Pal.Com, Inc.Institution deniedPTAB · Jul 28, 2023 · IPR2023-00640 · APJ Mitchell C Weatherly · IPR · Institution
The Board denied institution of the challenged proceedings under General Plastic and denied T-Mobile’s motions for joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied general plasticInstitution denied
“II. DISCRETIONARY DENIAL OF INSTITUTION Institution of an inter partes review is authorized by statute when “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.” 35 U.S.C. § 314(a). Petitioner challenges the same claims on the same grounds based on the same arguments and evidence presented in the petitions in the Target IPRs. Compare IPR2022- 2 Petitioner identifies T-Mobile USA, Inc. and T-Mobile US, Inc. as the real parties-in-interest. Pet. 1. 3 We refer to papers and exhibits in IPR2023-00638. Substantially similar documents were filed in IPR2023-00639, IPR2023-00640, and IPR2023- 00641. This Order applies equally to all captioned proceedings. 01231, Paper 3 (Petition), 5–6, 8–73, with Pet. 5, 8–73. In each of the Target IPRs, we determined that “Petitioner . . . demonstrated a reasonable likelihood of establishing that at least [one] claim is unpatentable” and “institute[d] an inter partes review of all challenged claims of the [challenged patents] on all grounds alleged by Petitioner.” IPR2022-01231, Paper 10 (Decision Granting Institution of Inter Partes Review), 3; see also SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). Having already considered the merits of the challenges and evidence presented in these “me too” petitions vis-à-vis the threshold of institution for inter partes review in the Target IPRs, we determine that the Petitions in these proceedings also present a reasonable likelihood of prevailing on the challenge of at least one claim of the challenged patents.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“Petitions are “me too” petitions and the merits of the challenges in the Target IPRs were formulated and fixed in the record on June 30, 2022, Petitioner did not receive any guidance from Patent Owner or the Board on its first set of petitions in October and December of 2022. Accordingly, any guidance provided by Patent Owner or the Board could not have influenced the content of the Petitions at issue in this proceeding. For this reason, we determine that the third General Plastic factor weighs against discretionarily denying institution.” slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. Section 315(c) requires “two different decisions,” both of which are discretionary, first “whether the joinder applicant’s petition for IPR ‘warrants’ institution under § 314,” and second whether to “whether to ‘join as a party’ the joinder applicant”). Facebook, Inc. v. Windy City Innov., LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). Under 35 U.S.C. § 315(c), the discretion of the Director to join a party to an ongoing IPR is premised on the Director’s determination that the petition warrants institution. That determination is not limited to determining whether the merits of the petition meet the reasonable likelihood threshold for at least one challenged claim. Under General Plastic, the Board may deny a petition based on the Director’s discretionary authority under § 314(a). General Plastic, Paper 19 at 15. Thus, before determining whether to join Petitioner as a party to the Target IPRs, even though the petitions are each a “me-too” petition, we first determine whether General Plastic should be applied and, if applied, whether application of the General Plastic factors warrants the exercise of discretion to deny the Petition under § 314(a).” slip op. at 4
Discretionary denialPatents in suitUS 10,880,721 - T-Mobile USA, Inc. v. Voip-Pal.Com, Inc.Institution deniedPTAB · Jul 28, 2023 · IPR2023-00639 · APJ Mitchell C Weatherly · IPR · Institution
The Board denied institution on all challenged claims under General Plastic and denied T-Mobile’s motions for joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“II. DISCRETIONARY DENIAL OF INSTITUTION Institution of an inter partes review is authorized by statute when “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.” 35 U.S.C. § 314(a). Petitioner challenges the same claims on the same grounds based on the same arguments and evidence presented in the petitions in the Target IPRs. Compare IPR2022-” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“second set of challenges to the patents, and upon the Target IPRs settling, Petitioner would stand in to continue proceedings that would otherwise be terminated. In effect, it would be as if Petitioner had brought the second set of challenges in the first instance. This effect is especially apparent in these particular circumstances because the original petitioner in the Target IPRs, Meta, has already been dismissed from those proceedings, and the remaining parties have jointly moved to terminate them because they have settled their dispute. The current circumstances, in which a second petition has been filed after the first was denied on the merits, are the particular circumstances that General Plastic was intended to address. General Plastic, Paper 19 at 17 (“Multiple, staggered petitions challenging the same patent and same claims raise the potential for abuse.”).” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“institute these Proceedings without first considering whether to exercise discretion under § 314(a). The statutory provision governing joinder in inter partes review proceedings is 35 U.S.C. § 315(c), which reads: If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. Section 315(c) requires “two different decisions,” both of which are discretionary, first “whether the joinder applicant’s petition for IPR ‘warrants’ institution under § 314,” and second whether to “whether to ‘join as a party’ the joinder applicant”). Facebook, Inc. v. Windy City Innov., LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). Under 35 U.S.C. § 315(c), the discretion of the Director to join a party to an ongoing IPR is premised on the Director’s determination that the petition warrants institution. That determination is not limited to determining whether the merits of the petition meet the reasonable likelihood threshold for at least one challenged claim. Under General Plastic, the Board may deny a petition based on the Director’s discretionary authority under § 314(a). General Plastic, Paper 19 at 15. Thus, before determining whether to join Petitioner as a party to the Target IPRs, even though the petitions are each a “me-too” petition, we first determine whether General Plastic should be applied and, if applied, whether application of the General Plastic factors warrants the exercise of discretion to deny the Petition under § 314(a).” slip op. at 4
Discretionary denialPatents in suitUS 8,630,234 - T-Mobile USA, Inc. v. Voip-Pal.Com, Inc.Institution deniedPTAB · Jul 28, 2023 · IPR2023-00638 · APJ Mitchell C Weatherly · IPR · Institution
The Board denied institution in IPR2023-00638 through IPR2023-00641 under General Plastic and denied the motions for joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied general plasticInstitution denied
“01231, Paper 3 (Petition), 5–6, 8–73, with Pet. 5, 8–73. In each of the Target IPRs, we determined that “Petitioner . . . demonstrated a reasonable likelihood of establishing that at least [one] claim is unpatentable” and “institute[d] an inter partes review of all challenged claims of the [challenged patents] on all grounds alleged by Petitioner.” IPR2022-01231, Paper 10 (Decision Granting Institution of Inter Partes Review), 3; see also SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). Having already considered the merits of the challenges and evidence presented in these “me too” petitions vis-à-vis the threshold of institution for inter partes review in the Target IPRs, we determine that the Petitions in these proceedings also present a reasonable likelihood of prevailing on the challenge of at least one claim of the challenged patents. Notwithstanding the merits, however, Patent Owner argues that we” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). Under 35 U.S.C. § 315(c), the discretion of the Director to join a party to an ongoing IPR is premised on the Director’s determination that the petition warrants institution. That determination is not limited to determining whether the merits of the petition meet the reasonable likelihood threshold for at least one challenged claim. Under General Plastic, the Board may deny a petition based on the Director’s discretionary authority under § 314(a). General Plastic, Paper 19 at 15. Thus, before determining whether to join Petitioner as a party to the Target IPRs, even though the petitions are each a “me-too” petition, we first determine whether General Plastic should be applied and, if applied, whether application of the General Plastic factors warrants the exercise of discretion to deny the Petition under § 314(a).” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. Section 315(c) requires “two different decisions,” both of which are discretionary, first “whether the joinder applicant’s petition for IPR ‘warrants’ institution under § 314,” and second whether to “whether to ‘join as a party’ the joinder applicant”). Facebook, Inc. v. Windy City Innov., LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). Under 35 U.S.C. § 315(c), the discretion of the Director to join a party to an ongoing IPR is premised on the Director’s determination that the petition warrants institution. That determination is not limited to determining whether the merits of the petition meet the reasonable likelihood threshold for at least one challenged claim. Under General Plastic, the Board may deny a petition based on the Director’s discretionary authority under § 314(a). General Plastic, Paper 19 at 15. Thus, before determining whether to join Petitioner as a party to the Target IPRs, even though the petitions are each a “me-too” petition, we first determine whether General Plastic should be applied and, if applied, whether application of the General Plastic factors warrants the exercise of discretion to deny the Petition under § 314(a).” slip op. at 4
Discretionary denialPatents in suitUS 8,630,234 - 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 - Micron Technology, Inc. / Micron Semiconductor Products, Inc. et al. v. Unification Technologies LLCInstitution deniedPTAB · Dec 15, 2021 · IPR2021-00940 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution of review of claims 15–21 and 26, exercising § 314(a) discretion because all seven General Plastic factors favored denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“We agree with UTL that Micron’s explanation for the delay between the two petitions is inadequate. Because Micron does not assert the Frank Shu presentations (Exs. 1022, 1024) as prior art, the timing of their discovery is not relevant to the delay in asserting Shu, the Trim Proposals, Ban, and Jenett in the present Petition. We also agree with UTL that Micron should have known UTL’s position on the priority date of the ’406 patent when UTL served its Initial Infringement Contentions on August 21, 2020, well before Micron filed its first petition. See Ex. 2005, 5 (contending that “claims [15–21 and 26–30] of the ’406 Patent are entitled to a priority date no later than December 6, 2006.”). Thus, any delay in UTL’s interrogatory responses in April 2021 does not adequately explain Micron’s delay in filing the current Petition.” slip op. at 11
Discretionary denialPatents in suitUS 8,533,406 - Micron Technology, Inc., Micron Semiconductor Products, Inc., And Micron Technology Texas LLC v. Unification Technologies LLCInstitution deniedPTAB · Dec 15, 2021 · IPR2021-00941 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution of review of claims 1–5 and 8–12, finding all seven General Plastic factors favored denying the follow-on petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“General Plastic, Paper 19 at 16. The General Plastic factors “are not dispositive, but part of a balanced assessment of all relevant circumstances in the case, including the merits.” Consolidated Trial Practice Guide 58 (Nov. 2019) (“Trial Practice Guide”), https://go.usa.gov/xpvPF (citing General Plastic, Paper 19 at 15).” slip op. at 7
Discretionary denialPatents in suitUS 8,762,658
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.