- 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
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.