• Resmed Corp. v. Cleveland Medical Devices, Inc.Institution denied
  PTAB · Jun 10, 2025 · IPR2025-00157 · APJ Cynthia M Hardman · IPR · Institution

  The Board denied institution of ResMed’s challenge to claims 1–3, 6, and 12–20 under General Plastic because the follow-on petition followed an earlier petition challenging the same claims.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied

    “We find that in view of Petitioner’s prior petition, this factor favors discretionary denial. Code200 is distinguishable. There, the Board exercised its discretion to deny institution of the earlier petitions under 35 U.S.C. § 314(a) based on Fintiv. Code200, Paper 18, 2 n.3. Here, the Board did not discretionarily deny the previous petition, but rather denied it because Petitioner failed to carry its burden of demonstrating a threshold requirement for post-grant review, namely that the patent is eligible for postgrant review. See PGR Dec. 9–10, 24. In evaluating the eligibility issue, the Board thoroughly addressed the merits of Petitioner’s arguments that the ’284 patent claims lack adequate written description and enablement support in the priority applications such that the claims are not entitled to any of the pre-2013 priority dates listed on the face of the patent. See PGR Dec. 10–24. This issue extensively overlapped with Petitioner’s grounds of unpatentability based on lack of written description and enablement in the post-grant petition, which Petitioner included together with prior art challenges. See PGR Dec. 6–7. As such, contrary to Petitioner’s argument, it did have “the opportunity to pursue a decision on the merits,” but failed to carry its burden to secure postgrant review. Prelim. Reply 1 (emphasis added).” slip op. at 8

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied general plasticInstitution denied

    “institute review. An inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “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). For the reasons explained below, we exercise our discretion to deny institution of this follow-on petition because Petitioner previously filed a post-grant review petition challenging the same claims of the same patent.” slip op. at 2

  • BurdenNot reached

    “III. REMAINING ISSUES Because we deny the Petition under 35 U.S.C. § 314(a) and General Plastic, we need not reach the parties’ additional arguments regarding discretionary denial or the merits of Petitioner’s unpatentability challenges.” slip op. at 15

  Discretionary denial
  Patents in suitUS 11,602,284
• Pfenex, Inc. v. Glaxosmithkline Biologicals SAInstitution denied
  PTAB · Feb 10, 2020 · IPR2019-01478 · APJ Jo-Anne M Kokoski · IPR · Institution

  The Board denied institution of review of claims 1, 2, 4–14, and 16–21 under § 314(a), finding all General Plastic factors favored discretionary denial.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied

    “asserted in this Petition when it filed the petitions in the 1027 and 1028 IPRs. Petitioner’s only excuse for its delay in filing this Petition is that Patent Owner “could not have foreseen” that the 230 IPR would settle and terminate. Paper 2, 5. Settlement and termination of an inter partes review proceeding, however, is neither unusual nor rare. Moreover, if Petitioner was interested in pursuing the same challenge as that presented in the 230 IPR, it could have requested joinder under 37 C.F.R. § 42.122(b), which provides that “[j]oinder may be requested by a patent owner or petitioner” and “must be filed, as a motion under § 42.22, no later than one month after the institution date of any inter partes review for which joinder is requested.” That the 230 IPR settled after institution is not an adequate excuse for delay. We are also not persuaded that the fact the Board previously determined that the challenges presented in the 230 IPR presented a reasonable likelihood of success justifies the additional burden of a second petition directed to the ’345 patent, when a trial has already been instituted in the 1028 IPR. See Paper 2, 4. This is particularly true here, where Petitioner ranked the 1028 IPR petition and the 1027 IPR petition ahead of the current Petition, indicating Petitioner’s preference that we consider the merits of this Petition last. Id. at 3.” slip op. at 12

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “set forth above, we exercise discretion under 35 U.S.C. § 314(a) and decline to institute an inter partes review of the ’345 patent.10 IV. ORDER In consideration of the foregoing, it is hereby ORDERED that the Petition is denied and no inter partes review is instituted. 10 Consequently, we do not reach the merits of Petitioner’s challenges, nor do we reach the issue of whether the Petition should be denied under 35 U.S.C. § 325(d).” slip op. at 14

  Discretionary denial
  Patents in suitUS 9,422,345

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.