• Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc.Rehearing denied
  PTAB · May 22, 2015 · IPR2014-00488 · APJ Justin T Arbes · IPR · Rehearing

  The Board denied Medtronic’s rehearing requests, leaving in place termination of the proceedings for failure to identify Cardiocom as a real party-in-interest.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “Terminate should be modified lies with Medtronic, the party challenging the Decision. 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. Medtronic makes six arguments in its Requests, which we address in turn.” slip op. at 2

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner

    “acting as a “proxy” for Cardiocom because we ignored Medtronic’s evidence that it exercises exclusive control over these proceedings. Req. Reh’g 7–8. To the contrary, we reviewed and evaluated all of the evidence submitted by the parties, including the declarations and documents again cited by Medtronic in its Requests for Rehearing. See Dec. 9–17. As explained in the Decision, whether a non-party is a real party-in-interest is a “highly fact-dependent question,” taking into account, among other things, the non-party’s “relationship with the petitioner,” the non-party’s “relationship to the petition itself, including the nature and/or degree of involvement in the filing,” and “the nature of the entity filing the petition.” Id. at 7–8 (citing the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759–60 (Aug. 14, 2012)). No one fact was dispositive here; it was the totality of the evidence that showed Cardiocom to be a real party-in-interest, i.e., “the party that desires review of the patent[s].” Id. at 7, 16; Opp. 7–9. We did not ignore any evidence submitted by Medtronic. We drew inferences from the facts supported by the evidence and disagreed with Medtronic’s assessment of that evidence.” slip op. at 5

  Discretionary denial
  Patents in suitUS 7,769,605
• Johnson Health Tech Co. Ltd. / Johnson Health Tech North America, Inc. v. Icon Health & Fitness, Inc.Institution denied
  PTAB · Feb 11, 2015 · IPR2014-01242 · APJ Carl M Defranco · IPR · Institution

  The Board denied institution because JHTNA was served with an infringement complaint more than one year before the petition, and JHT was its privy.

  RulingsInstitution decision

  • PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied

    “review. Prelim. Resp. 3–23. Pursuant to 35 U.S.C. § 315(b), a party may not file a petition for inter partes review more than one-year after being served with a complaint alleging infringement of the patent. The one-year deadline helps to ensure that inter partes review provides a quick and cost effective alternative to litigation, and is not used as a tool for harassment or litigation gamesmanship. H.R. REP. NO. 112-98 at 48, as reprinted in 2011 U.S.C.C.A.N. at 78. In a Preliminary Proceeding,1 the petitioner bears the burden of showing compliance with the threshold requirement of § 315(b). Specifically, in order to show “standing” to file a petition, the petitioner “must certify . . . that the petitioner is not barred or estopped from requesting an inter partes review . . . .” 37 C.F.R. § 42.104(a) (first emphasis added). As grounds for standing, Petitioners purport that the claims challenged in the Petition were not added to the Utah Action until August 5, 2013, when Icon filed an amended complaint alleging infringement of the ’631 patent after completion of reexam and lifting of the stay. Pet. 1–2.” slip op. at 3

  • PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiDecided for patent owner

    “issue of whether JHT is a “privy” of JHTNA for purposes of § 315(b). Specifically, § 315(b) includes within its reach any party that qualifies as a “privy of the petitioner.” In determining whether JHT is a privy of JHTNA, we consider the nature of the relationship between the parties at the time the statutorily-relevant complaint was served, i.e., December 27, 2010. See Taylor v. Sturgell, 553 U.S. 880, 892 (2008) (“A person who was not a party to a suit generally has not had a ‘full and fair opportunity to litigate’ the claims and issues settled in that suit.”). Ultimately, our analysis “seeks to determine whether the relationship between the purported ‘privy’ and the relevant other party is sufficiently close such that both should be bound by the trial outcome and related estoppels.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012).” slip op. at 8

  Discretionary denial
  Patents in suitUS 6,193,631

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.