• HTC Corporation / HTC America, Inc. et al. v. Agis Software Development, LLCInstitution denied
  PTAB · Jul 1, 2019 · IPR2019-00485 · APJ Christa P Zado · IPR · Institution

  The Board denied institution because ZTE filed a civil action challenging the patent’s validity before filing the petition, barring review under § 315(a)(1).

  RulingsInstitution decision

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

    “For the foregoing reasons, we determine that under the circumstances presented here, institution of inter partes review is barred under 35 U.S.C. § 315(a)(1). Therefore, we do not institute an inter partes review in this proceeding. In addition, because institution of inter partes review is barred under § 315(a)(1) and this section does not provide an exception for joinder under 35 U.S.C. § 315(c), we dismiss Petitioner’s Motion as moot.” slip op. at 11

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

    “We agree with Patent Owner that § 315(a)(1) bars institution of inter partes review in this case. There is no dispute that ZTE is the petitioner and a real party-in-interest in this proceeding. See Pet. 1 (identifying ZTE as the petitioner); see also id. at 79 (identifying ZTE as a real party-in-interest). Patent Owner contends, and Petitioner does not dispute, that on October 9, 2018, prior to the December 20, 2018 filing date of the Petition, ZTE filed a complaint for declaratory judgment alleging invalidity of the ’970 patent. Prelim. Resp. 4 (citing ZTE (USA), Inc. v. AGIS Software Devlopment LLC et al., No. 4:18-cv-06185 (N.D. Cal.) (filed October 9, 2018) (“ZTE action”)). Because ZTE filed a civil action challenging the validity of the ’970 patent before the date on which it filed the Petition, we agree with Patent Owner that inter partes review is barred by ZTE’s civil action. 35 U.S.C. § 315(a)(1).” slip op. at 8

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

    “Unlike 35 U.S.C. § 315(b), which provides an exception to the statutory time bar when a request for joinder is filed, nothing in the language of § 315(a)(1) indicates that the time bar does not apply if a party files for joinder. Consistent with the plain language of § 315(a)(1), which does not include a joinder exception, the Board has expressly held that a motion for joinder does not exempt a petitioner from the statutory bar under this section. Prelim. Resp. 5 (citing Colas Sols. Inc. v. Blacklidge Emulsions, Inc., Case IPR2018-00243, slip op. at 6, 9 (PTAB Feb. 27, 2018) (Paper 10) (informative)).” slip op. at 9

  Discretionary denial
  Patents in suitUS 8,213,970

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