- Apple Inc. v. Memoryweb, LLCInstitution deniedPTAB · Jun 10, 2022 · IPR2022-00111 · APJ Jason M Repko · IPR · Institution
The Board denied institution because the patent was likely subject to the AIA’s nine-month IPR waiting period, and the petition was filed less than six months after grant.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied time barInstitution denied
“A petition for inter partes review shall be filed after the later of either—(1) the date that is 9 months after the grant of a patent; or (2) if a post-grant review is instituted under chapter 32, the date of the termination of such post-grant review.” 35 U.S.C. § 311(c). Similarly, our rules require that, for patents described in section 3(n)(1) of the Leahy-Smith America Invents Act, Pub. L. No. 112–29, 125 Stat. 284 (Sept. 16, 2011) (“AIA”), a petition for inter partes review must be filed no earlier than nine months after the date of the grant of the patent. 37 C.F.R. § 42.102(a)(1). Patents subject to the AIA first-inventor-to file provisions are those that issue from applications “that contain or contained at any time— (A) a claim to a claimed invention that has an effective filing date as defined in section 100(i) of title 35, United States Code, that is on or after [March 16, 2013]; or (B) a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim. AIA § 3(n)(1). slip op. at 6
Discretionary denialPatents in suitUS 11,017,020 - 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 denialPatents in suitUS 8,213,970 - Old Republic General Insurance Group, Inc. / Old Republic Insurance Company et al. v. Intellectual Ventures II LLCInstitution deniedPTAB · Apr 15, 2016 · CBM2015-00184 · APJ Jon B Tornquist · CBM · Institution
The Board denied institution for claims 1-49 because Petitioner did not establish that the patent was eligible for covered business method review.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We apply 35 U.S.C. § 324(a), which provides that a post-grant review may not be instituted “unless . . . the information presented in the petition . . . would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” For the reasons that follow, we do not institute a covered business method patent review.” slip op. at 2
Discretionary denialPatents in suitUS 6,546,002
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.