• Cambridge Mobile Telematics, Inc. v. Sfara, Inc.Institution denied
  PTAB · Dec 13, 2024 · IPR2024-00966 · APJ John F Horvath · IPR · Institution

  The Board denied institution because the Petition did not explain whether the component limitations invoke § 112(f) or identify corresponding structure, as required by Rule 42.104(b)(3).

  RulingsInstitution decision

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

    “The Consolidated Trial Practice Guide[1,2](“CTPG”) . . . instructs that “[w]here claim language may be construed according to 35 U.S.C. § 112(f), a petitioner must provide a construction.” CTPG 45 (emphases added) (citing 37 C.F.R. § 42.104(b)(3)). The CTPG advises that a party “may choose to elaborate why § 112(f) should or should not apply to the limitation at issue.” Id. Notably, the CTPG warns that “[a] petitioner who chooses not to address construction under § 112(f) risks failing to satisfy the requirement of 37 C.F.R. § 42.104(b)(3).” Id.” slip op. at 6

  • BurdenDenied

    “Given these facts, we determine that rule 104(b)(3) mandates that the Petition either identify “the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function” recited in the “component” term limitations or explain why the “component” term limitations are not subject to a means-plus-function construction. This, it fails to do. To be clear, we note that our rules do not prohibit a petitioner from taking inconsistent claim construction positions before the Board and a district court. See 10x Genomics, Inc. v. Bio-Rad Labs, Inc., IPR2020- 00086, Paper 8 at 18 (PTAB Apr. 27, 2020). However, where, as here, a petitioner has proposed a claim term be construed solely as a means-plus-function limitation in a district court proceeding and emphasized that the issue is not only “most significant” but potentially “case . . . dispositive,” we determine the petition is obliged to either apply that construction in this proceeding or explain why that construction is not applicable. Accordingly, we find the Petition to be deficient under rule 104(b)(3).4” slip op. at 8

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Other

    “connote a definite structure. See Williamson, 792 F.3d at 1350 (identifying words such as “mechanism,” “element,” “device,” and others as verbal constructs that do not connote sufficiently definite structures). Indeed, the Specification discloses all of the “components” recited in claims 1, 8, and 15, including the “comparing component,” can be “implemented as a computer having tangible computer-readable media for carrying or having computer-executable instructions or data structures stored thereon.” Ex. 1001, 5:35–43. Thus, like the word “module,” a recognized nonce word, each of the recited “components” is nothing more than “a generic description for software or hardware that performs a specified function” and their recitation “operate[s] as a substitute for ‘means’ in the context of § 112, para. 6.” Williamson, 792 F.3d at 1350. Accordingly, we construe the “comparing component” limitation recited in claims 1, 8, and 15 as a meansplus-function limitation whose function is “generating a comparison signal.”2” slip op. at 14

  • Skill levelNot reached
  Claim constructionDiscretionary denialcites Markman
  Patents in suitUS 9,333,946
• Code200, Uab / Teso LT, Uab et al. v. Bright Data Ltd.Institution denied
  PTAB · Dec 12, 2022 · IPR2022-01109 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied joinder and denied institution on all challenged claims and grounds because the petition was time-barred under § 315(b).

  RulingsInstitution decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied

    “Practice Guide instructs us that a party seeking to maintain multiple challenges to the same patent claims carries a heavy burden of establishing that multiple petitions are necessary. Petitioner contends that Patent Owner has not carried that burden. Joinder Opp. 1. We agree. Petitioner has not explained why the 1492 IPR is an insufficient challenge. It is true that the 135 IPR involves Plamondon, another reference. But Petitioner has not explained how Plamondon differs from Crowds, Border, or MorphMix, or why granting joinder with the 135 IPR would be in the interest of justice, given Petitioner’s involvement managing the1492 IPR challenging substantially the same claims. In the words of our Trial Practice Guide, Petitioner fails to show “why the Board should exercise its discretion to institute additional petitions if it identifies one petition that satisfies petitioner’s burden under 35 U.S.C. § 314(a).” TPG 60. We see no evidence in the record suggesting that The Data Company is unqualified to manage the 135 IPR, or that Petitioner would add anything significant to that proceeding in its understudy role.” slip op. at 12

  • PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied

    “III. DENIAL OF INTER PARTES REVIEW It is undisputed that Petitioner was served with a complaint alleging infringement of the ’319 patent more than one year prior to filing the Petition in this proceeding. See Joinder Mot. 2; Joinder Opp. 1. Accordingly, in view of the denial of the requested relief of joinder with the 135 IPR, institution of inter partes review as requested by Petitioner is barred by statute. See 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b). IV. CONCLUSION For the foregoing reasons, we deny Petitioner’s Motion for Joinder. Because Petitioner is barred under 35 U.S.C. § 315(b) from seeking inter partes review of the ’319 patent, we deny the Petition and do not institute review as to any of the challenged claims.” slip op. at 13

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “For the reasons described below, we deny Petitioner’s Motion for Joinder. Furthermore, we deny the Petition as time-barred under 35 U.S.C. § 315(b). We do not reach Patent Owner’s additional contentions including those based on Fintiv or General Plastic.” slip op. at 3

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Not reached

    “For the reasons described below, we deny Petitioner’s Motion for Joinder. Furthermore, we deny the Petition as time-barred under 35 U.S.C. § 315(b). We do not reach Patent Owner’s additional contentions including those based on Fintiv or General Plastic.” slip op. at 3

  Discretionary denial
  Patents in suitUS 10,257,319
• Google LLC v. Videoshare LLCInstitution denied
  PTAB · Mar 24, 2021 · CBM2020-00027 · APJ Thomas L Giannetti · CBM · Institution

  The Board denied institution of CBM review for claims 1–7 because the patent did not qualify as a covered business method patent; it did not reach the § 101 challenge.

  RulingsInstitution decision

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

    “covered business method patent review, the focus is on the claims. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1340 (Fed. Cir. 2016) (challenged patent eligible for review because the claims recited “an express financial component in the form of a subsidy” that was “central to the operation of the claimed invention”). Thus, “§ 18 (d)(1) directs us to examine the claims when deciding whether a patent is a CBM patent.” Blue Calypso, 815 F.3d at 1340. More specifically, the focus is on the claims to determine whether there is anything “explicitly or inherently financial in the construed claim language.” Id. The claims of the ’341 patent are directed to “[a] method for sharing video over a structured hierarchical network.” Ex. 1001, 25:14–15. We are not persuaded that this a financial activity. We agree with Patent Owner that the focus of the claims is video sharing technology. Prelim. Resp. 21. The claims describe a series of method steps for sharing video content involving servers and video files. Nowhere do the claims discuss or suggest obtaining payment or remuneration. Thus, the claims are unlike those in Blue Calypso, 815 F.3d 1331. In Blue Calypso, the claims expressly recited the term “subsidy,” which the Board construed as “financial assistance given by one to another.” Id. at 1339–40. The Federal Circuit explained that based on this understanding, the Board had concluded that the claims “were financial in nature” and instituted CBM review. Id. at 1340. The Federal Circuit agreed with the Board’s analysis and affirmed its decision to institute CBM patent review: “Significantly, Blue Calypso has not challenged the Board’s interpretation of subsidy as ‘financial assistance given by one to another.’” Id.” slip op. at 6

  • BurdenDecided for patent owner

    “covered business method patent review, the focus is on the claims. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1340 (Fed. Cir. 2016) (challenged patent eligible for review because the claims recited “an express financial component in the form of a subsidy” that was “central to the operation of the claimed invention”). Thus, “§ 18 (d)(1) directs us to examine the claims when deciding whether a patent is a CBM patent.” Blue Calypso, 815 F.3d at 1340. More specifically, the focus is on the claims to determine whether there is anything “explicitly or inherently financial in the construed claim language.” Id. The claims of the ’341 patent are directed to “[a] method for sharing video over a structured hierarchical network.” Ex. 1001, 25:14–15. We are not persuaded that this a financial activity. We agree with Patent Owner that the focus of the claims is video sharing technology. Prelim. Resp. 21. The claims describe a series of method steps for sharing video content involving servers and video files. Nowhere do the claims discuss or suggest obtaining payment or remuneration. Thus, the claims are unlike those in Blue Calypso, 815 F.3d 1331. In Blue Calypso, the claims expressly recited the term “subsidy,” which the Board construed as “financial assistance given by one to another.” Id. at 1339–40. The Federal Circuit explained that based on this understanding, the Board had concluded that the claims “were financial in nature” and instituted CBM review. Id. at 1340. The Federal Circuit agreed with the Board’s analysis and affirmed its decision to institute CBM patent review: “Significantly, Blue Calypso has not challenged the Board’s interpretation of subsidy as ‘financial assistance given by one to another.’” Id.” slip op. at 6

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Not reached

    “E. Subject Matter Eligibility Under 35 U.S.C. § 101 Petitioner contends that the challenged claims are directed to an abstract idea that is not eligible subject matter for a patent under 35 U.S.C. § 101. Pet. 77. According to Petitioner, “[t]he claims recite the abstract idea of including advertising with appropriately formatted video.” Id. at 80. Patent Owner responds that Petitioner has failed to show that the claims recite ineligible subject matter. Prelim. Resp. 64. According to Patent Owner, “[t]he ’341 Patent claims recite specific steps that improve the functioning of a video server providing shared video files.” Id. Because we have determined that the ’341 patent does not qualify for covered business method patent review, we do not address whether the claims recite eligible subject matter under 35 U.S.C. § 101.” slip op. at 11

  § 101 eligibilityDiscretionary denial
  Patents in suitUS 10,362,341
• Eik Engineering SDN. BHD. v. Wilco Marsh Buggies & Draglines, Inc.Rehearing denied
  PTAB · Mar 4, 2021 · IPR2020-00344 · APJ Barry L Grossman · IPR · Rehearing

  The Board denied rehearing and upheld denial of institution because Grounds 7, 8, 11, and 12 lacked particularity, justifying denial of the entire petition.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. REQUEST FOR REHEARING When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of 1 The PTAB E2E docket system correctly identifies the denial of POP review as Paper “11,” dated “October 26, 2020.” This document itself, however, incorrectly states that it is “Paper 10.” In fact, “Paper 10” in the PTAB E2E docket system for this IPR proceeding is Patent Owner’s “RESPONSE TO PETITIONER’S REQUEST FOR REHEARING,” filed on August 21, 2020 See Paper 10. We note that Patent Owner was not authorized to file this response. See Consolidated Office Patent Trial Practice Guide (“Consolidated Practice Guide”), November 2019, 90 (“The opposing party should not file a response to a request for rehearing absent a request from the Board.”). No such request was made by the Board. Accordingly, Paper 10 will be expunged from this record and will not be considered in deciding Petitioner’s Request for Rehearing. discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 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). The burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): (d) Rehearing. . . . 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. Under 35 U.S.C. § 314, 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.” 35 U.S.C. § 314(a). If an inter partes review is instituted, a final written decision under 35 U.S.C. § 318(a) must decide the patentability of all claims, and all grounds, asserted in the petition. SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018).” slip op. at 3

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

    “The Petition fails to identify with particularity what disclosure is relied on from each of the references in Grounds 7, 8, 11, and 12, how it would be combined with the other disclosures, and why the proposed combination would have been obvious to a person of ordinary skill in the relevant technology. Without any explanation as to what, how, and why the references would have been combined in Grounds 7, 8, 11, and 12, we, and the Patent Owner, are left to speculate as to the specific details of asserted unpatentability based on combining the references to arrive at the claimed invention. See Paper 7 (“Decision” or “Dec.”), 14 (citation omitted). We determined that “[t]he lack of particularity [in Grounds 7, 8, 11, and 12] infects the proceeding sufficiently that we do not institute an inter partes review.” Id. at 16–17.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “asserted unpatentability of the claims challenged in Grounds 7 and 8, and why it would have been obvious to combine selected disclosures from each of the three references. We have not been directed to any persuasive evidence that the Petition met this burden.” slip op. at 10

  • Other 314aInstitution denied discretionary otherDenied

    “Petition, “the Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” See, e.g., Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11, 6 (PTAB Mar. 20, 2020) (Precedential). Apple v. Fintiv was decided in the context of evaluating the factors related to a co-pending parallel district court proceeding. The same holistic view applies equally to situations where some claims meet the requirements for instituting a trial and some do not. While we consider the number of claims that fail to meet the statutory and other requirements to institute an inter partes review, as well as the number of claims that meet these requirements, there is no fixed threshold or ratio of claims that meet the requirements compared to those that do not meet the requirements that controls our determination, as suggested by Petitioner (see Req. Reh’g 2. The Patent and Trademark Office addressed this issue in its “SAS Q&As”, which stated: D3. Q: Will the Board institute a petition based on the percentage of claims and grounds that meet the reasonable likelihood standard, e.g., 50%? A: No. The Board does not contemplate a fixed threshold for a sufficient number of challenges for which it will institute. Instead, the panel will evaluate the challenges and determine whether, in the interests of efficient administration of the Office and integrity of the patent system (see 35 USC § 316(b)), the entire petition should be denied under 35 USC § 314(a). Ex. 3003, 8. As explained in our TPG, If a panel determines that a petition meets the standards for institution in relation to fewer than all the challenges presented, or where deficiencies in the petition (such as a failure to provide a construction under 35 U.S.C. § 112(f)) affect only a portion of the challenges presented, the panel will evaluate all the challenges and determine whether, in the interests of efficient administration of the Office and integrity of the patent system, the entire petition should be denied. TPG, 64. Where no trial is instituted, a decision to that effect will be provided, as was done in this proceeding. “The Board expects that the decision will contain a short statement as to why the standards were not met, although this may not be necessary in all cases.” Id. at 64–65.” slip op. at 20

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 6,918,801
• Microsoft Corporation v. Science Applications International CorporationInstitution denied
  PTAB · Feb 3, 2020 · IPR2019-01361 · APJ Jason M Repko · IPR · Institution

  The Board denied institution because the government was Microsoft's privy and the petitions were time-barred under § 315(b); it also independently denied review under § 314(a).

  RulingsInstitution decision

  • PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied

    “WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1317 (Fed. Cir. 2018). Rather, “privity” has a common-law meaning. Id. “Privity is essentially a shorthand statement that collateral estoppel is to be applied in a given case.” Id. at 1318 (quoting Trial Practice Guide, 77 Fed. Reg. at 48,759). The privity “analysis seeks to determine whether the relationship between the purported ‘privy’ and the relevant other party is sufficiently close such that both should be bound by the trial outcome and related estoppels.” TPG 14–15. “[T]he standards for the privity inquiry must be grounded in due process.” WesternGeco, 889 F.3d. at 1319. For example, it is important whether the petitioner and a prior litigant’s relationship is sufficiently close that it can be fairly said that the petitioner had a full and fair opportunity to litigate the patent’s validity in the corresponding lawsuit. See id. “Due process also prohibits a litigant from taking a second bite at the apple by relitigating the same case through the persona of another, its privy.” AIT, 897 F.3d at 1359 (Reyna, J., concurring).” slip op. at 6

  • PTAB / AIA Trials › Real party in interest / privityDecided for patent owner

    “WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1317 (Fed. Cir. 2018). Rather, “privity” has a common-law meaning. Id. “Privity is essentially a shorthand statement that collateral estoppel is to be applied in a given case.” Id. at 1318 (quoting Trial Practice Guide, 77 Fed. Reg. at 48,759). The privity “analysis seeks to determine whether the relationship between the purported ‘privy’ and the relevant other party is sufficiently close such that both should be bound by the trial outcome and related estoppels.” TPG 14–15. “[T]he standards for the privity inquiry must be grounded in due process.” WesternGeco, 889 F.3d. at 1319. For example, it is important whether the petitioner and a prior litigant’s relationship is sufficiently close that it can be fairly said that the petitioner had a full and fair opportunity to litigate the patent’s validity in the corresponding lawsuit. See id. “Due process also prohibits a litigant from taking a second bite at the apple by relitigating the same case through the persona of another, its privy.” AIT, 897 F.3d at 1359 (Reyna, J., concurring). In Taylor v. Sturgell, 553 U.S. 880 (2008), the Supreme Court identified a non-exhaustive list of six considerations under which nonparty preclusion would be justified: (1) an agreement between the parties to be bound; (2) pre-existing substantive legal relationships between the parties; (3) adequate representation by the named party; (4) the nonparty’s control of the prior litigation; (5) where the nonparty acts as a proxy for the named party to re-litigate the same issues; and (6) where special statutory schemes foreclose successive litigation by the nonparty (e.g., bankruptcy or probate). WesternGeco, 889 F.3d. at 1319−20 (citing Taylor, 553 U.S. at 894–95). The presence of one of these is sufficient to establish privity. See id.” slip op. at 6

  • Other 314aInstitution denied discretionary otherInstitution denied

    “D. DISCRETIONARY DENIAL UNDER SECTION 314(A) Institution of inter partes review is discretionary. 35 U.S.C. § 314(a); SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with discretion on the question whether to institute review . . . .” (emphasis omitted)); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”); see also 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). “[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016). Even if Petitioner and the government were not in privity, we would exercise our discretion to deny review to avoid any concerns that the government is obtaining a benefit to which it is not permitted under Return Mail.” slip op. at 13

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted

    “All papers are available for public access by default. See 35 U.S.C. § 316(a)(1). A party may file a concurrent motion to seal, and the information at issue is sealed pending the motion’s outcome. 37 C.F.R. § 42.54. The standard for granting a motion to seal is “for good cause.” 37 C.F.R. § 42.54(a). For instance, we consider whether the movant has adequately shown that (1) the information sought to be sealed is truly confidential, (2) a concrete harm would result upon public disclosure, (3) there exists a genuine need to rely in the trial on the specific information sought to be sealed, and (4) on balance, an interest in maintaining confidentiality outweighs the strong public interest in having an open record. Argentum Pharms. LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 at 4 (PTAB Jan. 19, 2018) (Denying Motion to Seal) (informative). Confidential information includes, but is not limited to, commercial information. 37 C.F.R. § 42.54(7). Here, the information to be sealed includes a discussion of and direct quotations from the contract filed as Exhibit 2006. See Pet. Mot. to Seal 3–5; PO Mot. to Seal 1–2. The contract is not publicly available, it has been sealed in this proceeding, and it contains the details and financial terms of an agreement between Petitioner and the government. We are persuaded that the Motions demonstrate that the information sought to be sealed reflects Petitioner’s confidential business information and that “an interest in maintaining confidentiality outweighs the strong public interest in having an open record” here. See Argentum, Paper 27 at 4. Also, Patent Owner asserts that the United States is a real party in interest and privy in this proceeding. The information to be sealed is the basis for Patent Owner’s argument that Petitioner is time-barred under 35 U.S.C. § 315(b). Pet. Mot. to Seal 3–5; PO Mot. to Seal 1–2. Because Patent Owner’s argument and Petitioner’s rebuttal depend on the information to be sealed, the parties have adequately shown that there exists a genuine need to rely on that information. See Argentum, Paper 27 at 4. For these reasons, we determine that good cause exists for sealing part of Petitioner’s Reply, part of Patent Owner’s Sur-Reply, and the concurrently filed exhibits (Exs. 1027, 2006). Thus, we grant the Motions to Seal in each case.” slip op. at 14

  Discretionary denial
  Patents in suitUS 9,618,752
• Microsoft Corporation v. Science Applications International CorporationInstitution denied
  PTAB · Feb 3, 2020 · IPR2019-01360 · APJ Jason M Repko · IPR · Institution

  The Board denied the petitions because the government was Microsoft’s privy, making the petitions time-barred under § 315(b); it also exercised § 314(a) discretion to deny review.

  RulingsInstitution decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner

    “pre-existing substantive legal relationships between the parties” Under the second Taylor factor, the evidence shows a “pre-existing substantive legal relationship between” the government and Petitioner. “Qualifying relationships include, but are not limited to, preceding and succeeding owners of property, bailee and bailor, and assignee and assignor.” See Taylor, 553 U.S. at 894. “A common character of these relationships is that the two parties share a high degree of commonality of proprietary or financial interest.” AIT, 897 F.3d at 1352 (Reyna, J., concurring). The evidence here shows that the government and Petitioner share such interests. Before requesting inter partes review, the government had a preexisting, established relationship with Petitioner. In particular, Patent Owner has an ongoing infringement lawsuit against the government in the Court of Federal Claims. Pet. 3 (citing Ex. 1025, (“the Complaint”)). Petitioner entered into the Contract with the government to develop a system incorporating the allegedly infringing feature. Id. slip op. at 7

  • PTAB / AIA Trials › §315(b) time barDenied

    “C. SECTION 315(B) BARS INSTITUTION We have found that the government, a nonparty to the instant proceedings, is a privy of Petitioner. Under 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” The government was served with a complaint alleging infringement of the patents-at-issue in 2017. The instant Petitions were filed in July 2019, more than 1 year from the service of the complaint on the government. Accordingly, inter partes review may not be instituted under § 315(b).” slip op. at 13

  • Other 314aInstitution denied discretionary otherDenied

    “D. DISCRETIONARY DENIAL UNDER SECTION 314(A) Institution of inter partes review is discretionary. 35 U.S.C. § 314(a); SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with discretion on the question whether to institute review . . . .” (emphasis omitted)); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”); see also 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). “[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016). Even if Petitioner and the government were not in privity, we would exercise our discretion to deny review to avoid any concerns that the government is obtaining a benefit to which it is not permitted under Return Mail.” slip op. at 13

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted

    “All papers are available for public access by default. See 35 U.S.C. § 316(a)(1). A party may file a concurrent motion to seal, and the information at issue is sealed pending the motion’s outcome. 37 C.F.R. § 42.54. The standard for granting a motion to seal is “for good cause.” 37 C.F.R. § 42.54(a). For instance, we consider whether the movant has adequately shown that (1) the information sought to be sealed is truly confidential, (2) a concrete harm would result upon public disclosure, (3) there exists a genuine need to rely in the trial on the specific information sought to be sealed, and (4) on balance, an interest in maintaining confidentiality outweighs the strong public interest in having an open record. Argentum Pharms. LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 at 4 (PTAB Jan. 19, 2018) (Denying Motion to Seal) (informative). Confidential information includes, but is not limited to, commercial information. 37 C.F.R. § 42.54(7). Here, the information to be sealed includes a discussion of and direct quotations from the contract filed as Exhibit 2006. See Pet. Mot. to Seal 3–5; PO Mot. to Seal 1–2. The contract is not publicly available, it has been sealed in this proceeding, and it contains the details and financial terms of an agreement between Petitioner and the government. We are persuaded that the Motions demonstrate that the information sought to be sealed reflects Petitioner’s confidential business information and that “an interest in maintaining confidentiality outweighs the strong public interest in having an open record” here. See Argentum, Paper 27 at 4.” slip op. at 14

  Discretionary denial
  Patents in suitUS 9,229,230
• Microsoft Corporation v. Science Applications International CorporationInstitution denied
  PTAB · Feb 3, 2020 · IPR2019-01359 · APJ Jason M Repko · IPR · Institution

  The Board denied institution because the government was Microsoft’s privy and was served with an infringement complaint more than one year before the petitions; it also denied review under § 314(a).

  RulingsInstitution decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner

    “WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1317 (Fed. Cir. 2018). Rather, “privity” has a common-law meaning. Id. “Privity is essentially a shorthand statement that collateral estoppel is to be applied in a given case.” Id. at 1318 (quoting Trial Practice Guide, 77 Fed. Reg. at 48,759). The privity “analysis seeks to determine whether the relationship between the purported ‘privy’ and the relevant other party is sufficiently close such that both should be bound by the trial outcome and related estoppels.” TPG 14–15. “[T]he standards for the privity inquiry must be grounded in due process.” WesternGeco, 889 F.3d. at 1319. For example, it is important whether the petitioner and a prior litigant’s relationship is sufficiently close that it can be fairly said that the petitioner had a full and fair opportunity to litigate the patent’s validity in the corresponding lawsuit. See id. “Due process also prohibits a litigant from taking a second bite at the apple by relitigating the same case through the persona of another, its privy.” AIT, 897 F.3d at 1359 (Reyna, J., concurring). In Taylor v. Sturgell, 553 U.S. 880 (2008), the Supreme Court identified a non-exhaustive list of six considerations under which nonparty preclusion would be justified: (1) an agreement between the parties to be bound; (2) pre-existing substantive legal relationships between the parties; (3) adequate representation by the named party; (4) the nonparty’s control of the prior litigation; (5) where the nonparty acts as a proxy for the named party to re-litigate the same issues; and (6) where special statutory schemes foreclose successive litigation by the nonparty (e.g., bankruptcy or probate). WesternGeco, 889 F.3d. at 1319−20 (citing Taylor, 553 U.S. at 894–95). The presence of one of these is sufficient to establish privity. See id.” slip op. at 6

  • PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied

    “nonparty” A special statutory scheme applies here under 35 U.S.C. § 315(b), which bars institution of an IPR if a “privy of the petitioner is served with a complaint alleging infringement of the patent” more than one year before the petition was filed. Moreover, we note that the government, according to a recent Supreme Court case, is not a “person” that can file a Petition for inter partes review under 35 U.S.C. § 311. Return Mail, Inc. v. United States Postal Service, 139 S. Ct. 1853 (2019). Thus, Petitioner’s filings are the only filed Petitions from which the government could benefit, because the government could not file its own petition in light of the June 10, 2019, Return Mail decision.” slip op. at 11

  • Other 314aInstitution denied discretionary otherInstitution denied

    “D. DISCRETIONARY DENIAL UNDER SECTION 314(A) Institution of inter partes review is discretionary. 35 U.S.C. § 314(a); SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with discretion on the question whether to institute review . . . .” (emphasis omitted)); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”); see also 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). “[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016). Even if Petitioner and the government were not in privity, we would exercise our discretion to deny review to avoid any concerns that the government is obtaining a benefit to which it is not permitted under Return Mail.” slip op. at 13

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted

    “All papers are available for public access by default. See 35 U.S.C. § 316(a)(1). A party may file a concurrent motion to seal, and the information at issue is sealed pending the motion’s outcome. 37 C.F.R. § 42.54. The standard for granting a motion to seal is “for good cause.” 37 C.F.R. § 42.54(a). For instance, we consider whether the movant has adequately shown that (1) the information sought to be sealed is truly confidential, (2) a concrete harm would result upon public disclosure, (3) there exists a genuine need to rely in the trial on the specific information sought to be sealed, and (4) on balance, an interest in maintaining confidentiality outweighs the strong public interest in having an open record. Argentum Pharms. LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 at 4 (PTAB Jan. 19, 2018) (Denying Motion to Seal) (informative). Confidential information includes, but is not limited to, commercial information. 37 C.F.R. § 42.54(7). Here, the information to be sealed includes a discussion of and direct quotations from the contract filed as Exhibit 2006. See Pet. Mot. to Seal 3–5; PO Mot. to Seal 1–2. The contract is not publicly available, it has been sealed in this proceeding, and it contains the details and financial terms of an agreement between Petitioner and the government. We are persuaded that the Motions demonstrate that the information sought to be sealed reflects Petitioner’s confidential business information and that “an interest in maintaining confidentiality outweighs the strong public interest in having an open record” here. See Argentum, Paper 27 at 4. Also, Patent Owner asserts that the United States is a real party in interest and privy in this proceeding. The information to be sealed is the basis for Patent Owner’s argument that Petitioner is time-barred under 35 U.S.C. § 315(b). Pet. Mot. to Seal 3–5; PO Mot. to Seal 1–2. Because Patent Owner’s argument and Petitioner’s rebuttal depend on the information to be sealed, the parties have adequately shown that there exists a genuine need to rely on that information. See Argentum, Paper 27 at 4. For these reasons, we determine that good cause exists for sealing part of Petitioner’s Reply, part of Patent Owner’s Sur-Reply, and the concurrently filed exhibits (Exs. 1027, 2006). Thus, we grant the Motions to Seal in each case.” slip op. at 14

  Discretionary denial
  Patents in suitUS 9,229,230
• Microsoft Corporation v. Science Applications International CorporationInstitution denied
  PTAB · Feb 3, 2020 · IPR2019-01311 · APJ Jason M Repko · IPR · Institution

  The Board denied the petitions because the government was Microsoft's privy and had been served with infringement complaints more than one year before filing; it also denied review under § 314(a).

  RulingsInstitution decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner

    “The evidence here shows that the government and Petitioner share such interests. Before requesting inter partes review, the government had a preexisting, established relationship with Petitioner. In particular, Patent Owner has an ongoing infringement lawsuit against the government in the Court of Federal Claims. Pet. 3 (citing Ex. 1025, (“the Complaint”)). Petitioner entered into the Contract with the government to develop a system incorporating the allegedly infringing feature. Id. Therefore, both Petitioner and the government share a common interest in canceling the allegedly infringed claims.” slip op. at 7

  • PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied

    “existing substantive legal relationship. This provides at least one ground of nonparty preclusion under Taylor. We further determine, as discussed below, that two other Taylor factors support our privity determination. 2. “where special statutory schemes foreclose successive litigation by the nonparty” A special statutory scheme applies here under 35 U.S.C. § 315(b), which bars institution of an IPR if a “privy of the petitioner is served with a complaint alleging infringement of the patent” more than one year before the petition was filed. Moreover, we note that the government, according to a recent Supreme Court case, is not a “person” that can file a Petition for inter partes review under 35 U.S.C. § 311. Return Mail, Inc. v. United States Postal Service, 139 S. Ct. 1853 (2019). Thus, Petitioner’s filings are the only filed Petitions from which the government could benefit, because the government could not file its own petition in light of the June 10, 2019, Return Mail decision.” slip op. at 11

  • Other 314aInstitution denied discretionary otherDenied

    “D. DISCRETIONARY DENIAL UNDER SECTION 314(A) Institution of inter partes review is discretionary. 35 U.S.C. § 314(a); SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with discretion on the question whether to institute review . . . .” (emphasis omitted)); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”); see also 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). “[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016). Even if Petitioner and the government were not in privity, we would exercise our discretion to deny review to avoid any concerns that the government is obtaining a benefit to which it is not permitted under Return Mail.” slip op. at 13

  • ExcludeGranted

    “All papers are available for public access by default. See 35 U.S.C. § 316(a)(1). A party may file a concurrent motion to seal, and the information at issue is sealed pending the motion’s outcome. 37 C.F.R. § 42.54. The standard for granting a motion to seal is “for good cause.” 37 C.F.R. § 42.54(a). For instance, we consider whether the movant has adequately shown that (1) the information sought to be sealed is truly confidential, (2) a concrete harm would result upon public disclosure, (3) there exists a genuine need to rely in the trial on the specific information sought to be sealed, and (4) on balance, an interest in maintaining confidentiality outweighs the strong public interest in having an open record.” slip op. at 14

  Discretionary denial
  Patents in suitUS 7,787,012
• Microsoft Corporation v. Science Applications International CorporationInstitution denied
  PTAB · Feb 3, 2020 · IPR2019-01312 · APJ Jason M Repko · IPR · Institution

  The Board denied institution because the government was Microsoft’s privy, making the petitions time-barred under § 315(b); it also independently denied review under § 314(a) discretion.

  RulingsInstitution decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner

    “customer-manufacturer relationship” may not be sufficient to establish privity. WesternGeco, 889 F.3d at 1321. Petitioner and the government, however, have more than a standard relationship here. As discussed in detail above, Petitioner intervened in the infringement case against the government (Mot. to Intervene), the Petition and the infringement claims against the government are intertwined (Mot. to Stay, 6–7; Ex. 2009, 4), and the Thus, we determine that the government and Petitioner have a pre- existing substantive legal relationship. This provides at least one ground of nonparty preclusion under Taylor. We further determine, as discussed below, that two other Taylor factors support our privity determination. 2. “where special statutory schemes foreclose successive litigation by the” slip op. at 11

  • PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied

    “C. SECTION 315(B) BARS INSTITUTION We have found that the government, a nonparty to the instant proceedings, is a privy of Petitioner. Under 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” The government was served with a complaint alleging infringement of the patents-at-issue in 2017. The instant Petitions were filed in July 2019, more than 1 year from the service of the complaint on the government. Accordingly, inter partes review may not be instituted under § 315(b).” slip op. at 13

  • Other 314aInstitution denied discretionary otherDenied

    “D. DISCRETIONARY DENIAL UNDER SECTION 314(A) Institution of inter partes review is discretionary. 35 U.S.C. § 314(a); SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with discretion on the question whether to institute review . . . .” (emphasis omitted)); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”); see also 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). “[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016). Even if Petitioner and the government were not in privity, we would exercise our discretion to deny review to avoid any concerns that the government is obtaining a benefit to which it is not permitted under Return Mail.” slip op. at 13

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted

    “§ 316(a)(1). A party may file a concurrent motion to seal, and the information at issue is sealed pending the motion’s outcome. 37 C.F.R. § 42.54. The standard for granting a motion to seal is “for good cause.” 37 C.F.R. § 42.54(a). For instance, we consider whether the movant has adequately shown that (1) the information sought to be sealed is truly confidential, (2) a concrete harm would result upon public disclosure, (3) there exists a genuine need to rely in the trial on the specific information sought to be sealed, and (4) on balance, an interest in maintaining confidentiality outweighs the strong public interest in having an open record.” slip op. at 14

  Discretionary denial
  Patents in suitUS 8,817,103
• Ford Motor Company v. Versata Development Group, Inc.Rehearing denied
  PTAB · Jul 6, 2017 · IPR2017-00151 · APJ James B Arpin · IPR · Rehearing

  The Board denied Ford’s rehearing requests, leaving in place the denials of institution because the dismissals did not lift the § 315(b) time bar.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “[a] request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. It is not an abuse of discretion to have performed an analysis or reached a conclusion with which Petitioner disagrees, and mere disagreement with the Board’s analysis or conclusion is not a proper basis for rehearing. Sophos, Inc. v. Finjan, Inc., Case IPR2015-01022, slip op. at 3–4 (PTAB Jan. 28, 2016) (Paper 9).” slip op. at 13

  • PTAB / AIA Trials › §315(b) time barDecided for patent owner

    “to pursue courses of action available to them before the action had been brought.” Req. 7–8 (quoting Atlanta Gas, slip op. at 13). Unlike Atlanta Gas and the other cases cited by Petitioner, we are persuaded that, after the dismissal of the Versata action, the parties in the instant proceedings did not enjoy the restored ability to pursue courses of action available to them before the Versata action had been brought. The Ford action would remain the first action filed, so that a new action by Patent Owner filed in the U.S. District Court for the Eastern District of Texas would remain subject to the Eleventh Circuit’s first-to-file rule. See Merrill Lynch, Pierce, Fenner & Smith, Inc. v. Haydu, 675 F.2d 1169, 1174 (11th Cir. 1982) (“In the absence of compelling circumstances, the court initially seized of a controversy should be the one to decide the case.” (Emphasis added.)). Further, although the U.S. District Court for the Eastern District of Texas had asked the parties to provide any “good faith reasons” for maintaining the Versata action, Patent Owner responded that it did not oppose dismissal, and Petitioner chose not to respond. Dec. 7–8. Thus, on this record, we understand that either party could have argued to retain the Versata action, but that, after the dismissal, the parties no longer enjoyed the ability to bring this action in the U.S. District Court for the Eastern District of Texas.” slip op. at 9

  • PTAB / AIA Trials › Real party in interest / privityNot reached

    “Req. 11. As an initial matter, Section 315(b) requires us to look at both the action, as well as the asserted patent (i.e., “a complaint alleging infringement of the patent”). Petitioner does not contend, for example, that challenged patents (e.g., the ’651 patent) were not asserted in “a complaint alleging infringement” in the Versata action. Regardless, we disagree with Petitioner’s characterization of the Board’s decisions. In discussing the significance of the Versata and Ford actions, our focus clearly was on the actions as well. Dec. 11–12. In particular, we noted that in resolving the forum dispute in favor of the Michigan court, the respective courts treated the cases as if they were a single proceeding at least in terms of ability to assert claims and recognition of timing. Consequently, we agree that the relevant factor in determining whether the earlier complaint in the Versata action is operative for purposes of § 315(b) is the continuous assertion of the patent against Ford, not whether the case was formally consolidated. Id. at 12; see also Ex. 1131 (instructing the parties to provide good faith reasons why the Versata action should not be dismissed, “so that the issues may [be] dealt with in the Michigan court”). Further, regarding Petitioner’s arguments concerning the relative numbers of patents raised in the Versata action as compared to the Ford action and the allegedly differing “Versata parties” in Texas and Michigan, Petitioner did not raise these arguments during the Preliminary Proceedings, and we cannot have overlooked or misapprehended arguments not raised.” slip op. at 11

  Discretionary denial
  Patents in suitUS 7,882,057

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.