- Microsoft Corporation v. Science Applications International CorporationInstitution deniedPTAB · 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 denialPatents in suitUS 7,787,012 - Apple Inc. / HTC Corporation et al. v. Invt Spe LLCInstitution deniedPTAB · Jan 15, 2020 · IPR2019-01574 · APJ Scott Raevsky · IPR · Institution
The Board denied institution because Patent Owner statutorily disclaimed challenged claims 16 and 19.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDenied
“the ’949 patent. Ex. 2001. Under 37 C.F.R. § 42.107(e), “patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent,” and “[n]o inter partes review will be instituted based on disclaimed claims.” A disclaimer under 35 U.S.C. § 253(a) is “considered as part of the original” slip op. at 2
Discretionary denialPatents in suitUS 7,339,949 - Hewlett Packard Enterprise Co. v. Chrimar Systems, Inc.Rehearing deniedPTAB · Nov 26, 2019 · IPR2019-00032 · APJ Frederick C Laney · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because § 315(a)(1) barred review after Petitioner filed and voluntarily dismissed a declaratory judgment action.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). The party challenging a decision in a request for rehearing bears the burden of showing that the decision should be modified. Id.” slip op. at 2
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“institution of an inter partes review because Petitioner previously filed a declaratory judgment action challenging the validity of claims in the ’012 patent, notwithstanding Petitioner’s voluntary dismissal without prejudice of that declaratory judgment action. Dec. 5–8. We explained that our conclusion was compelled by the Federal Circuit’s analysis in Click-to-Call Technologies, LP v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018) (en banc as to footnote 3). Dec. 6–8.” slip op. at 2
Discretionary denialPatents in suitUS 8,155,012 - Avigilon Corporation / Avigilon USA Corporation v. Canon Inc.Rehearing deniedPTAB · Sep 17, 2019 · IPR2018-01626 · APJ Lynne E Pettigrew · IPR · Rehearing
The Board denied Avigilon’s rehearing request and maintained denial of institution because § 315(a)(1) barred review after Avigilon’s earlier declaratory judgment action, despite its dismissal without prejudice.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“designated as precedential the decision denying institution of inter partes review in Cisco Systems, Inc. v. Chrimar Systems, Inc., IPR2018-01511, Paper 11 (PTAB Jan. 31, 2019) (precedential). In that decision, the Board addressed the § 315(a)(1) bar in light of the Federal Circuit’s discussion of the § 315(b) time bar in Click-to-Call. See Cisco, Paper 11 at 5 n.1. The Board held in Cisco that § 315(a)(1) barred institution of an inter partes review even though an earlier civil action challenging the validity of a claim of the patent at issue had been voluntarily dismissed without prejudice. Id. at 8. Cisco is binding precedent in the present case, which involves the same issue of statutory interpretation applied to similar facts. See Patent Trial and Appeal Board Standard Operating Procedure 2 (rev. 10) § III.D. Thus, pursuant to the ruling in Cisco, § 315(a)(1) bars institution of an inter partes review of the ’864 patent based on the Petition in this case. Petitioner, therefore, has not shown that our Decision should be modified, and accordingly we deny Petitioner’s Request for Rehearing.” slip op. at 3
Discretionary denialPatents in suitUS 7,034,864 - 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 - Fasteners For Retail, Inc. v. RTC Industries, Inc.Rehearing deniedPTAB · Nov 15, 2018 · IPR2018-00744 · APJ Michael L Woods · IPR · Rehearing
The Board denied Fasteners for Retail’s rehearing request, leaving institution denied because it failed to identify Olympus as a real party in interest.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Petitioner’s argument is without merit because it mischaracterizes our Order. Contrary to Petitioner’s assertion (Request 5), our Order does not “instruct” or “direct” Petitioner to file a reply brief if it believes Olympus is not an unnamed RPI. Rather, our Order explicitly provides that if “Petitioner does not believe that Olympus is an unnamed real party in interest, in lieu of updating its mandatory notices, Petitioner may file a reply brief.” Order 3 (emphasis added). In other words, the Order does not state “Petitioner must file a reply brief,” as Petitioner’s argument would have us believe. The Order further provides:” slip op. at 4
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“We entered a decision denying institution (Paper 25, “DDI”), in which we explained that Petitioner failed to persuade us that Olympus was not an RPI. DDI 14.” slip op. at 2
Discretionary denialPatents in suitUS 9,635,957 - Fasteners For Retail, Inc. v. RTC Industries, Inc.Rehearing deniedPTAB · Nov 15, 2018 · IPR2018-00743 · APJ Michael L Woods · IPR · Rehearing
The Board denied Fasteners for Retail’s rehearing request and left institution denied because it failed to identify Olympus as a real party in interest.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Petitioner’s argument is without merit because it mischaracterizes our Order. Contrary to Petitioner’s assertion (Request 5), our Order does not “instruct” or “direct” Petitioner to file a reply brief if it believes Olympus is not an unnamed RPI. Rather, our Order explicitly provides that if “Petitioner does not believe that Olympus is an unnamed real party in interest, in lieu of updating its mandatory notices, Petitioner may file a reply brief.” Order 3 (emphasis added). In other words, the Order does not state “Petitioner must file a reply brief,” as Petitioner’s argument would have us believe. The Order further provides: ORDERED that within 7 days of the entry of this Order, Petitioner may amend its mandatory notices to name other parties, including Olympus as a real party in interest in each [proceeding] . . . FURTHER ORDERED that in lieu of updating its mandatory notices, Petitioner may file a 7-page reply brief to address Patent Owner’s RPI arguments in each [proceeding].” slip op. at 4
- PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiDecided for patent owner
“We entered a decision denying institution (Paper 25, “DDI”), in which we explained that Petitioner failed to persuade us that Olympus was not an RPI. DDI 14.” slip op. at 2
Discretionary denialPatents in suitUS 9,504,321 - Fasteners For Retail, Inc. v. RTC Industries, Inc.Rehearing deniedPTAB · Nov 15, 2018 · IPR2018-00742 · APJ Michael L Woods · IPR · Rehearing
The Board denied the rehearing request in all four proceedings, upholding denial of institution because Petitioner failed to identify Olympus as a real party in interest.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“b. Standard for Reconsideration The party filing a request for rehearing has the burden of showing a decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d). Therefore, Petitioner bears the burden of establishing that we misapprehended or overlooked the matters that it requests that we review. When rehearing a decision whether to institute a trial, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 3
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“I. INTRODUCTION a. Background Fasteners for Retail, Inc. (“Petitioner”), filed four petitions (IPR2018- 00741, IPR2018-00742, IPR2018-00743, and IPR2018-00744) requesting inter partes review of claims in U.S. Patent Nos. 9,173,505, 9,149,132, 9,504,321, and 9,635,957. Paper 1.2 RTC Industries, Inc. (“Patent Owner”), filed a Preliminary Response (Paper 8, “Prelim. Resp.”) arguing that Petitioner failed to identify Olympus Partners LP (“Olympus”) as a real party-in-interest (“RPI”). Prelim. Resp. 28–39. After receiving the Preliminary Response, we issued an order (Paper 13, “Order”) permitting Petitioner to either: (1) amend its mandatory notices within 7 days to name Olympus as an RPI; or (2) file a reply brief within 7 days to address Patent Owner’s RPI argument. Order 4. Although it amended its mandatory notices to add certain additional RPIs (Paper 14), Petitioner chose to file a reply brief (Paper 15, “Reply”) rather than name Olympus as an RPI. We entered a decision denying institution (Paper 25, “DDI”), in which we explained that Petitioner failed to persuade us that Olympus was not an RPI. DDI 14.” slip op. at 2
Discretionary denialPatents in suitUS 9,149,132 - Fasteners For Retail, Inc. v. RTC Industries, Inc.Rehearing deniedPTAB · Nov 15, 2018 · IPR2018-00741 · APJ Michael L Woods · IPR · Rehearing
The Board denied Fasteners for Retail’s rehearing request, leaving institution denied because Petitioner failed to identify Olympus as a real party in interest.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“b. Standard for Reconsideration The party filing a request for rehearing has the burden of showing a decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d). Therefore, Petitioner bears the burden of establishing that we misapprehended or overlooked the matters that it requests that we review. When rehearing a decision whether to institute a trial, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 3
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“Moreover, the 7-day period for amending its mandatory notices to name Olympus as an RPI expired on July 27, 2018, (Order 4), and we entered our decision denying institution based on Petitioner’s failure to name Olympus as an RPI on September 12, 2018, (DDI 14). To permit Petitioner to now amend its mandatory notices to cure its failure to name Olympus as an RPI would be unfair to Patent Owner and would encourage gamesmanship by allowing petitioners to refrain from naming all RPIs until if and after such unnamed RPI is the cause for denying institution. Indeed, we are not aware of any Board decision that has permitted such amendment to mandatory notices after a decision denying institution. Accordingly, Petitioner’s Request is denied.” slip op. at 5
Discretionary denialPatents in suitUS 9,173,505 - American Honda Motor Co., Inc. v. Intellectual Ventures II LLCInstitution deniedPTAB · Jun 21, 2018 · IPR2018-00350 · APJ Amanda F Wieker · IPR · Institution
The Board denied institution because Patent Owner statutorily disclaimed all challenged claims 3, 9, and 11.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDenied
“Under 37 C.F.R. § 42.107(e), “[t]he patent owner may file a statutory disclaimer under 35 U.S.C. [§] 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent. No inter partes review will be instituted based on disclaimed claims.” A disclaimer under 35 U.S.C. § 253(a) shall be recorded in the Office, and is “considered as part of the original patent.” See 35 U.S.C. § 253(a).” slip op. at 4
Discretionary denialPatents in suitUS 7,067,944
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.