- 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 denialPatents in suitUS 6,918,801 - Acxiom Corporation v. Phoenix Licensing, LLCInstitution deniedPTAB · Mar 21, 2016 · CBM2015-00180 · APJ Barry L Grossman · CBM · Institution
The Board denied institution of CBM review of claims 1, 9, 16, 18-25, 34, 49-52, and 57 because Acxiom failed to establish standing.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiDenied
“Acxiom must establish more than just the fact that it has sold products to an entity that has been sued for infringement. It must establish that the relationship between itself and a sued customer is sufficient to constitute privity.1 The evidence provided by Acxiom, which will be discussed in detail below, in short, indicates that Acxiom has sold some unspecified software and/or other goods and services to a variety of entities and that some of those entities have approached Acxiom with claims of indemnity. We are not persuaded that these requests for indemnity without evidence or an acknowledgement of an obligation to indemnify are sufficient to establish privity. See Microsoft Corp. v. DataTern, Inc., 755 F. 3d 899 (Fed. Cit. 2014); Arris Group, Inc. v. British Telecomm. PLC, 639 F.3d 1368, 1375 (Fed. Cir. 2011).” slip op. at 6
Discretionary denialPatents in suitUS 8,352,317 - Ocean Tomo, LLC v. Patent Ratings, LLCInstitution deniedPTAB · Jan 26, 2016 · CBM2015-00157 · APJ Peter P Chen · CBM · Institution
The Board denied institution of CBM review of claims 1, 9, 16, 18–25, 34, 49, 50–52, and 57 because Ocean Tomo failed to establish standing.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied rpiInstitution denied
“must set forth the petitioner’s grounds for standing. 37 C.F.R. § 42.304(a). Rule 42.304(a) states it is Petitioner’s burden to “demonstrate that the patent for which review is sought is a covered business method patent, and that the petitioner meets the eligibility requirements of § 42.302.” Id.” slip op. at 3
- PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiDenied
“this issue, and agree with Patent Owner. This case is factually distinguishable from MedImmune for the reasons described by Patent Owner. We are not persuaded any of the evidence herein sufficiently demonstrates a charge by Patent Owner of Petitioner’s infringement of the ’849 patent. For example, the parties’ amended pleadings in the Illinois action total 15 causes of action, spanning 71 pages and 280 paragraphs of allegations, yet there is no mention of the ’849 patent, or patent infringement, or non-infringement of patents, or charges of patent infringement. Exs. 1004, 1005. The parties’ contract, tort, and related causes of action concern and arise from the fractured employment and business relationship between Petitioner and Mr. Barney and Patent Owner, not from charges of infringement of the ’849 patent.” slip op. at 9
Discretionary denialPatents in suitUS 9,075,849 - Acxiom Corporation v. Phoenix Licensing, LLCRehearing deniedPTAB · Oct 29, 2015 · CBM2015-00068 · APJ Barry L Grossman · CBM · Rehearing
The Board denied Acxiom’s rehearing request, leaving in place the denial of CBM review because Acxiom itself did not meet the statutory standing requirement.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“an abuse of discretion. 37 C.F.R. § 42.71(c). 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. Acxiom asserts that “from oversight or misapprehension” (Req. Reh’g 3) the” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“(emphases added). The statute further defines a “person” who may file a CBM petition as “a person who is not the owner of a patent.” 35 U.S.C. § 321(a).2 We construe the statute to mean that a person, such as a corporate petitioner, may file a CBM petition only if that individual entity, or its real parties in interest or privies, have been sued for, or charged with, infringement. See Joe Matal, A Guide to the Legislative History of the America Invents Act: Part II of II, 21 FED. CIR. B.J. 539, 626 (2012) (“[A] party may petition for a proceeding only if that party or its real parties in interest or privies have been ‘sued for infringement of the patent or . . . charged with infringement under that patent. ’” (emphases added)).” slip op. at 5
Discretionary denialPatents in suitUS 8,352,317 - Acxiom Corporation / AT&T Mobility LLC et al. v. Phoenix Licensing, LLCInstitution deniedPTAB · Aug 11, 2015 · CBM2015-00068 · APJ Barry L Grossman · CBM · Institution
The Board denied institution because Acxiom did not establish standing to seek covered business method review of claims 1, 9, 16, 18-25, 34, 49, 50-52, and 57.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiDenied
“business method patent review of the patent unless the petitioner, the petitioner's real party-in-interest, or a privy of the petitioner has been sued for infringement of the patent or has been charged with infringement under that patent.” 37 CFR § 42.302(a). Thus, Acxiom may acquire standing if (1) Acxiom has been sued for, or charged with, infringement of the patent for which it seeks review; or (2) if a party sued for, or charged with, infringement, is Acxiom’s real party-in-interest; or (3) if the party sued for, or charged with, infringement is a privy of Acxiom. Id. Petitioner has not directed us to persuasive evidence that it has standing under any of these options. The Petition does not assert that Acxiom has been sued or charged with infringement. We have not been directed to persuasive evidence that either Ford Motor Company or AT&T Mobility LLC, the parties sued for infringement of the ’317 patent, are Acxiom’s real party-in-interest or are privies of Acxiom. The allegation that Acxiom is a privy of one or more parties who have been sued for infringement (Pet. 20), even if supported by evidence, would not establish standing for Acxiom. During the September 2011 Senate debates on the AIA, Senator Schumer indicated that the word “privy,” in the context of § 18 of the AIA, “effectively means customers of the petitioner.” 157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011) (statement of Sen. Schumer). Thus, for example, the fact that Ford has been sued for infringement of the ’317 patent does not thereby confer standing on every privy, or customer, of Ford to file a request for a covered business method patent review. Under the applicable statute and rules discussed above, in order to confer standing on Acxiom, the party sued must be a privy of Acxiom, not the” slip op. at 5
Discretionary denialPatents in suitUS 8,352,317
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.