- PTAB · Nov 22, 2019 · IPR2019-01111 · APJ Joni Y Chang · IPR · Institution
The Board denied institution on claims 20 and 69 because the petition was time-barred under § 315(b), finding Amazon was in privity with at least one petitioner.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“(b) PATENT OWNER’S ACTION.—An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c). “[T]he IPR petitioner bears the burden of persuasion to demonstrate that its petitions are not time-barred under § 315(b).” Worlds Inc. v. Bungie, the context of a real party in interest analysis); see also Ventex Co. v. Columbia Sportswear N. Am., Inc., IPR2017-00651, Paper 148 at 4−5 (PTAB Jan. 24, 2019) (precedential) (placing “the burden on IPR petitioners to demonstrate that its petitions are not time-barred under § 315(b) based on a complaint served on a privy more than a year before a petition is filed”). “The Board’s decision under § 315(b) is whether to institute or not. The condition precedent for this decision is whether a time-barred party (a party that has been served with a complaint alleging infringement of the patent more than one year before the IPR was filed) is the petitioner, real party in interest, or privy of the petitioner.” Power Integrations, Inc. v. Semiconductor Components Indus., LLC, 926 F.3d 1306, 1314 (Fed. Cir. 2019) (emphases added). In the Federal Circuit’s view, the language of the statute makes privity and real parties in interest relationships that may arise “before institution relevant to the § 315(b) time-bar analysis.” Id. at 1315 (emphasis added).” slip op. at 8
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“More importantly, upon consideration of the parties’ contentions and evidence before us, we similarly determine that Amazon is a privy of several Petitioner Entities under the Taylor framework. See Taylor, 553 U.S. at 894−95. Here, at least the second, third, and fifth categories of Taylor support our determination that these Petitioner Entities are in privity with Amazon, a time-barred party. Second Taylor Category As to the second Taylor category, the record shows a pre-existing substantive legal relationship between Amazon and several Petitioner Entities—namely, PayPal, Strava, Valassis, Upwork Global, and RetailMeNot. The evidence of record shows that the relationship between Amazon and these Petitioner Entities went beyond typical transactions between supplier and buyer because there exists a substantive legal relationship between them that is defined by legal obligations and a sufficient degree of commonality of interest.” slip op. at 20
Discretionary denialPatents in suitUS 7,802,310 - PTAB · Nov 21, 2019 · IPR2019-01093 · APJ Denise M Pothier · IPR · Institution
The Board denied institution for challenged claims 46, 48, 52, and 55 because Amazon was a privy of at least one petitioner and its 2011 service made the petition time-barred under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDecided for patent owner
“B. Principles of Law Section 315(b) of Title 35 of the United States Code provides: (b) PATENT OWNER’S ACTION.—An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c). Petitioner entities “bear[] the ultimate burden of persuasion to show that [their] petitions are not time-barred under § 315(b) based on a complaint served on an alleged [privy of Petitioner entities] more than a year earlier.” Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018). “[S]ervice of a pleading asserting a claim alleging infringement triggers the one-year time period for a petitioner to file a petition under 35 U.S.C. § 315(b).” GoPro, Inc. v. 360Heros, Inc., IPR2018-01754, Paper 38 at 6 (PTAB Aug. 23, 2019) (precedential); id. at 24. This one-year trigger under 35 U.S.C. § 315(b) also applies to Petitioner entities’ privies or real parties in interest. See id. at 14 (“[T]he text of § 315(b) clearly and unmistakably considers only the date on which the petitioner, its privy, or a real party in interest was properly served with a complaint.”) (quoting Click-to-Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321, 1332 (Fed. Cir. 2018) (en banc in part)).” slip op. at 12
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“We recognize that the mere existence of an indemnity agreement might not be enough to find privity. See, e.g., WesternGeco, 889 F.3d at 1321. However, as is clear from the MDL record (summarized above), Amazon performed pursuant to the indemnity agreement and secured summary judgment related to infringement of the ’544 patent in favor of several of Petitioner entities. See, e.g., Ex. 2012, 3 (including the ’544 patent as part of the infringement action), 9 (listing “Category 3” infringement), 14 (“As to the effect of the indemnification agreement, it is undisputed that: . . . (2) sometime following PersonalWeb’s filing of complaints in the customer cases, Amazon agreed to indemnify its customers”), 16 (“Amazon assumed the indemnification of its customers prior to the consolidation of the MDL, and Amazon has not turned away any customer who has asked for indemnification”), 23 (finding that claim preclusion applied because, inter alia, the 2011 Amazon case involved the same parties or privies as the MDL proceeding), 26 (granting the DJ action “with respect to the Category 3 allegations involving use of . . . S3”). Thus, unlike in WesternGeco, in which the existence of an obligation to indemnify was ambiguous and undefined and, therefore, insufficient, 889 F.3d at 1321, Amazon actually assumed control of the lawsuits involving its customers, defended them, and secured relief on their behalf. We find this to be much stronger evidence of a pre-existing legal relationship than that shown in WesternGeco.” slip op. at 18
Discretionary denialPatents in suitUS 7,945,544 - Avigilon Corporation / Avigilon USA Corporation v. Canon Inc.Rehearing deniedPTAB · Sep 17, 2019 · IPR2018-01627 · APJ Scott E Bain · IPR · Rehearing
The Board denied Avigilon’s rehearing request, holding that § 315(a)(1) barred institution because Avigilon had filed a declaratory judgment action challenging the patent’s validity.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION A request for rehearing must “identify all matters the party believes 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 barDenied
“In our Decision, we concluded that 35 U.S.C. § 315(a)(1) barred institution of an inter partes review because Avigilon previously filed a declaratory judgment action challenging the validity of claims in the ’630 patent, notwithstanding Avigilon’s voluntary dismissal without prejudice of that declaratory judgment action. Dec. 6–11. We explained that our conclusion was compelled by the Federal Circuit’s analysis in Clickto-Call Technologies, LP v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018) (en banc as to footnote 3). Dec. 8–10.” slip op. at 2
Discretionary denialPatents in suitUS 9,191,630 - Ruiz Food Products, Inc. v. Macropoint LLCRehearing deniedPTAB · May 6, 2019 · IPR2017-02018 · APJ Nathan A Engels · IPR · Rehearing
The Board denied the rehearing request, leaving in place dismissal and termination because the petitions were untimely under § 315(a)(1).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“background legal principle (id. at 2–7), the Decision considers the principle but follows the Federal Circuit’s guidance that the principle is not “firmly established and unequivocal” and therefore cannot justify applying an exception to the unambiguous language of § 315(a)(1). Decision 9–10 (citing Click-to-Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321, 1335 (Fed. Cir. 2018) (explaining that a “background legal principle” must be both “firmly established and unequivocal before it can justify ignoring the plain text of the statute”; holding that the principle that “a dismissal without prejudice leaves the parties as if the underlying complaint had never been filed” is “anything but unequivocal”)).” slip op. at 2
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“(Paper 18) and terminating the proceedings, the Board determined that the Petitions were untimely under 35 U.S.C. § 315(a)(1) and that the Board therefore lacked jurisdiction over the proceedings. More specifically, the Board determined that a complaint for declaratory judgment filed before the Petitions triggered the time bar of § 315(a)(1) even though the complaint was dismissed without prejudice after its filing. Decision at 2–3.” slip op. at 2
Discretionary denialPatents in suitUS 9,429,659 - Hewlett Packard Enterprise Co. v. Chrimar Systems, Inc.Institution deniedPTAB · Apr 9, 2019 · IPR2019-00032 · APJ Frederick C Laney · IPR · Institution
The Board denied institution because Hewlett Packard Enterprise had previously filed a civil action challenging the validity of a claim, triggering the § 315(a)(1) bar.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“Action,” bars institution of an inter partes review when a petitioner filed a civil action challenging the validity of a claim of a patent before the date on which that petitioner filed a petition requesting an inter partes review of that patent. 35 U.S.C. § 315(a)(1). Section 315(a)(1) does not include an exception for a civil action that was dismissed without prejudice. Id.; see Click-to-Call, 899 F.3d at 1330. And Congress demonstrated that it knew how to provide an exception to a statutory bar by including an exception to the § 315(b) time bar for a joinder request. 35 U.S.C. § 315(b); see Click-to- Call, 899 F.3d at 1331. Thus, Congress could have included an exception to the § 315(a)(1) bar for a civil action that was dismissed without prejudice, but did not. 35 U.S.C. § 315(a)(1); see Click-to-Call, 899 F.3d at 1331.” slip op. at 6
Discretionary denialPatents in suitUS 8,155,012 - Avigilon Corporation / Avigilon USA Corporation v. Canon Inc.Institution deniedPTAB · Mar 18, 2019 · IPR2018-01627 · APJ Scott E Bain · IPR · Institution
The Board denied institution on claims 1–17 because Avigilon’s previously filed declaratory judgment action triggered the § 315(a)(1) bar despite its later voluntary dismissal.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“Section 315(a)(1), similarly, includes no express exceptions for actions subsequently dismissed, whether voluntary or involuntary, and whether with or without prejudice. Avigilon argues that we should distinguish the Court’s analysis in Click-to-Call from this case, because the text of § 315(a)(1) addresses “filing” rather than “service” of an action, and is triggered by an act of the inter partes review petitioner rather than patent owner. We are not persuaded, however, that the difference in filing from service provides a basis for distinguishing the analysis of Click-to-Call from this case. It is undisputed that Avigilon’s declaratory action was “filed” at one point in time (prior to being dismissed without prejudice), just as the action in Click-to-Call was “served” prior to being dismissed without prejudice. The Court in Click-to-Call held that the meaning of “served” in the statute did not include the effects of voluntary dismissal without prejudice, because there was no common law rule regarding such effects.3 See supra at 8. We are not persuaded that Click-to-Call permits the opposition conclusion regarding “file.”” slip op. at 9
Discretionary denialPatents in suitUS 9,191,630
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.