- Apple Inc. v. Koss CorporationInstitution deniedPTAB · Apr 4, 2022 · IPR2022-00053 · APJ Norman H Beamer · IPR · Institution
The Board denied institution under § 314(a) based on the General Plastic factors and denied Apple’s motion to join IPR2021-00612.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“C. Conclusion After a holistic review of the General Plastic factors and the arguments presented for and against the exercise of discretionary denial, we conclude that the factors weigh in favor of denying institution of the proceeding. On balance and in view of the policy goals articulated in General Plastic, we conclude that it is appropriate here to exercise our discretion under 35 U.S.C. § 314(a) to deny the Petition.” slip op. at 14
- 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 are exercising discretion to deny institution under Section 314, we deny Petitioner’s Motion for Joinder.” slip op. at 14
Discretionary denialPatents in suitUS 10,206,025 - Apple, Inc. v. Koss CorporationInstitution deniedPTAB · Oct 12, 2021 · IPR2021-00686 · APJ Gregg I Anderson · IPR · Institution
The Board denied institution of IPR on all challenged claims because two petitions were unnecessary and the General Plastic factors did not justify the follow-on petition.
RulingsInstitution decision- Parallel petitionsDenied
“To that end, the CTPG states that “one petition should be sufficient to challenge the claims of a patent in most situations.” CTPG 59. Thus, “multiple petitions by a petitioner are not necessary in the vast majority of cases.” Id. “Two or more petitions filed against the same patent at or about the same time (e.g., before the first preliminary response by the patent owner) may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns.” Id. (citing 35 U.S.C. § 316(b)). “Nonetheless, the Board recognizes that there may be circumstances in which more than one petition may be necessary, including, for example, when the patent owner has asserted a large number of claims in litigation,” although even then, granting two petitions “should be rare.” See id.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“Nevertheless, Petitioner’s stated reason for filing two petitions is that it could not challenge the large volume of asserted claims in one petition, not that it became aware of the prior art after filing the ’381 IPR petition. The implication is that Petitioner was ready to challenge those claims (and aware of the basis to do so) but for limitations on briefing space. As further evidence of Petitioner’s early knowledge of the prior art, Patent Owner argues that Petitioner was aware of Seshadri-818 and other references by the same inventor at least as early as January 2021, when Petitioner served invalidity contentions with those references in the District Court case. Prelim. Resp. 25 (citing Ex. 2023). Patent Owner further argues that Petitioner was aware of Seshadri at least as early as February 22, 2021, when it filed IPR2021-00546 advancing Seshadri as a reference. Id. at 26. Logically, Petitioner would have been aware of those references even earlier, as it would have spent significant time preparing its invalidity contentions and the Petition. In light of the evidence that Petitioner likely was aware of Seshadri before the filing of the Petition in March 2021, along with Petitioner’s silence as to its knowledge, this factor weighs against institution.” slip op. at 16
Discretionary denialPatents in suitUS 10,491,982 - Apple Inc. v. Koss Corp.Institution deniedPTAB · Oct 12, 2021 · IPR2021-00679 · APJ David C Mckone · IPR · Institution
The Board denied institution of IPR on claims 5–8 and 11–13 because the parallel petitions were unnecessary and the General Plastic factors favored denial.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherInstitution denied
“To that end, the CTPG states that “one petition should be sufficient to challenge the claims of a patent in most situations.” CTPG 59. Thus, “multiple petitions by a petitioner are not necessary in the vast majority of cases.” Id. “Two or more petitions filed against the same patent at or about the same time (e.g., before the first preliminary response by the patent owner) may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns.” Id. (citing 35 U.S.C. § 316(b)). “Nonetheless, the Board recognizes that there may be circumstances in which more than one petition may be necessary, of claims in litigation,” although even then, granting two petitions “should be rare.” See id.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“As to “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” (General Plastic factor 2), Petitioner filed the ’305 Petition on December 23, 2020. Petitioner is silent on when it became aware of Seshadri and Seshadri-818, or whether it knew about those references before December 23. Nevertheless, Petitioner’s stated reason for filing two petitions is that it could not challenge the large volume of asserted claims in one petition, not that it became aware of the prior art after filing the ’305 Petition. The implication is that Petitioner was ready to challenge those claims (and aware of the basis to do so) but for limitations on briefing space. As further evidence of Petitioner’s early knowledge of the prior art, Patent Owner argues that Petitioner was aware of Seshadri-818 and other references by the same inventor at least as early as January 2021, when Petitioner served invalidity contentions with those references in the District Court case. Prelim. Resp. 25 (citing Ex. 2013). Patent Owner further argues that Petitioner was aware of Seshadri at least as early as February 22, 2021, when it filed IPR2021-00546 advancing Seshadri as a reference. Id. Logically, Petitioner would have been aware of those references even earlier, as it would have spent significant time preparing its invalidity contentions and an IPR petition. In light of the evidence that Petitioner likely was aware of Seshadri and Seshadri-818 before the filing of the ’305 Petition, along with Petitioner’s silence as to its knowledge, this factor weighs against institution.” slip op. at 15
Discretionary denialPatents in suitUS 10,506,325
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.