- PTAB · Oct 10, 2019 · IPR2018-00991 · APJ Patrick R Scanlon · IPR · Rehearing
The Board denied rehearing and left in place its discretionary denial of institution under § 314(a), concluding that the General Plastic factors supported denial.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a single 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, an opposition, or a reply. We review our Decision under an abuse of discretion standard. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDecided for patent owner
“between Petitioner and the Prior Petitioners. Unlike the Valve case, however, the majority opinion did not find that the first factor favors denying institution. Rather, the majority opinion determined that the first factor weighs against exercising discretion to deny institution, but only moderately because of the complete overlap in the challenged claims between the Petition and the petition in the 136 IPR, as well as the overlap of many issues and arguments raised by the Petition and the 136 IPR petition. Dec. 12–13. Petitioner’s arguments do not establish that we overlooked or misapprehended anything, or used unreasonable judgment, in determining that the first factor weighs only moderately against exercising discretion to deny institution. Furthermore, even if we were to determine that the first factor heavily weighs against exercising discretion to deny institution, as advocated by Petitioner, this determination would not alter our overall weighing of the General Plastic factors.” slip op. at 8
Discretionary denialPatents in suitUS 9,144,700 - Shenzhen Silver Star Intelligent Technology Co., Ltd. v. Irobot Corp.Institution deniedPTAB · Oct 1, 2018 · IPR2018-00880 · APJ Amanda F Wieker · IPR · Institution
The Board denied institution for all challenged claims under § 314(a), applying the General Plastic factors to find that the later-filed petition presented a tactical filing concern.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“Petitioner had access to Patent Owner’s Preliminary Response in the –00005 IPR (filed January 12, 2018), and to the Board’s Decision denying institution of that petition (filed March 20, 2018). Thus, the timing of Petitioner’s filing in this case raises the potential for abuse, because Petitioner had ample opportunity to study the arguments raised by Patent Owner, and the Board’s findings and conclusions of law, regarding the commonly challenged claims of the ’090 patent. See Prelim. Resp. 13–15. Thus, we determine that Factor 3 weighs strongly against institution.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response 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; see also 37 C.F.R § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we do not institute an inter partes review of any of the challenged claims of the ’090 patent.” slip op. at 2
Discretionary denialPatents in suitUS 8,474,090 - Shenzhen Silver Star Intelligent Technology Co., Ltd. v. Irobot Corp.Institution deniedPTAB · Oct 1, 2018 · IPR2018-00882 · APJ Amanda F Wieker · IPR · Institution
The Board denied institution on all challenged claims under § 314(a), finding the General Plastic factors, including tactical follow-on filing and substantially similar prior art and arguments, favored denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“Petitioner had access to Patent Owner’s Preliminary Response in the –2050 IPR (filed December 14, 2017), and to the Board’s Decision denying institution of that petition (filed March 12, 2018). Thus, the timing of Petitioner’s filing in this case raises the potential for abuse, because Petitioner had ample opportunity to study the arguments raised by Patent Owner, and the Board’s findings and conclusions of law, regarding the commonly challenged claims of the ’233 patent. See Prelim. Resp. 16. Thus, we determine that Factor 3 weighs strongly against institution.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response 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; see also 37 C.F.R § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we do not institute an inter partes review of any of the challenged claims of the ’233 patent.” slip op. at 2
Discretionary denialPatents in suitUS 9,038,233 - Shenzhen Silver Star Intelligent Technology Co., Ltd. v. Irobot Corp.Institution deniedPTAB · Oct 1, 2018 · IPR2018-00898 · APJ Amanda F Wieker · IPR · Institution
The Board denied institution on all challenged claims under § 314(a), finding the General Plastic factors, considered as a whole, favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“Petitioner had access to Patent Owner’s Preliminary Response in the –2133 IPR (filed January 5, 2018), and to the Board’s Decision denying institution of that petition (filed March 28, 2018). Thus, the timing of Petitioner’s filing in this case raises the potential for abuse, because Petitioner had ample opportunity to study the arguments raised by Patent Owner, and the Board’s findings and conclusions of law, regarding the commonly challenged claims of the ’553 patent. See Prelim. Resp. 16–23. Indeed, it appears that Petitioner took advantage of “the opportunity to strategically stage their prior art and arguments,” to account for the Board’s decision in the –2133 IPR. Gen. Plastic, slip op. at 17–18. For example, in the –2133 IPR, the Board determined that Petitioner had not established sufficiently the prior art status of “Suckmaster II Vacuum Robot” (–2133 IPR, Ex. 1004) and “Suckmaster II vacuum robot control program” (–2133 IPR, Ex. 1005). –2133 IPR, Paper 8, 6. In this proceeding, Petitioner appears to attempt to avoid a similar outcome by submitting a different version of the Suckmaster Article and a different declaration from the author of the Suckmaster Article, Mr. Dale Heatherington. Prelim. Resp. 20; compare –2133 IPR, Exs. 1004, 1006, with Exs. 1008, 1010. This approach suggest that Petitioner was aware of, and relied upon, the papers filed in the –2133 IPR when preparing this Petition. Thus, we determine that Factor 3 weighs strongly against institution.” slip op. at 11
Discretionary denialPatents in suitUS 8,600,553 - Shenzhen Silver Star Intelligent Technology Co., Ltd. v. Irobot Corp.Institution deniedPTAB · Oct 1, 2018 · IPR2018-00897 · APJ William V Saindon · IPR · Institution
The Board denied institution of review on all challenged claims under § 314(a), finding that the General Plastic factors favored Patent Owner and Petitioner offered no mitigating explanation.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it.” Gen. Plastic, slip op. at 16. Factor 2 favors Patent Owner because at the time iLife filed its petition, Petitioner knew or should have known of the prior art asserted in its Petition. In particular, Petitioner and iLife both submitted invalidity contentions in the ITC proceeding effectively identifying all of the prior art asserted in this proceeding on September 29, 2017, over 6 months prior to Petitioner filing the Petition on April 16, 2018. See Ex. 2009, 4, 8, 13, 15, 17–19, 23, 25. Petitioner knew about the prior art asserted in this proceeding at the time the iLife petition was submitted and thus had apparent opportunity to file this Petition at a time on par with the iLife petition. Petitioner offers no explanation for why it waited until after Patent Owner filed its Preliminary Response and we issued our Decision on Institution in that proceeding. Accordingly, Factor 2 favors Patent Owner.” slip op. at 9
Discretionary denialPatents in suitUS 6,809,490 - Shenzhen Silver Star Intelligent Technology Co., Ltd. v. Irobot Corp.Institution deniedPTAB · Sep 5, 2018 · IPR2018-00761 · APJ Amanda F Wieker · IPR · Institution
The Board denied institution of inter partes review for all challenged claims under its General Plastic discretionary analysis.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“[F]actor 3 is directed to Petitioner’s potential benefit from receiving and having the opportunity to study Patent Owner’s Preliminary Response, as well as our institution decisions on the first-filed petitions, prior to its filing of follow-on petitions. . . . Multiple, staggered petitions challenging the same patent and same claims raise the potential for abuse. The absence of any restrictions on follow-on petitions would allow petitioners the opportunity to strategically stage their prior art and arguments in multiple petitions, using our decisions as a roadmap . . . . All other factors aside, this is unfair to patent owners and is an inefficient use of the inter partes review process and other post-grant review processes. Id. at 17–18 (internal citation and footnote omitted).” slip op. at 11
Discretionary denialPatents in suitUS 7,155,308
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.