- Aylo Freesites Ltd. v. DISH Technologies L.L.C.Institution deniedPTAB · Aug 13, 2024 · IPR2024-00513 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution of review of claims 1–18, finding the General Plastic factors favored or were neutral to discretionary denial under § 314(a).
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“claims, including all of the independent claims of the ’156 patent. Only one of the 18 claims challenged in the instant Petition is not included in the earlier petition, and Petitioner’s treatment of this claim comprises about one page of analysis. Given that the two petitions challenge nearly all of the same claims of the ’156 patent, we find that this factor weighs in favor of exercising discretion to deny institution.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“35 U.S.C. § 314(a) provides that the Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition. Section 314(a) does not require the Director to institute a review. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). Rather, a decision whether to institute is within the” slip op. at 9
Discretionary denialPatents in suitUS 10,757,156 - Aylo Freesites Ltd v. DISH Technologies L.L.C.Institution deniedPTAB · Aug 13, 2024 · IPR2024-00512 · APJ John A Hudalla · IPR · Institution
The Board denied institution for all challenged claims under § 314(a), exercising discretion based on the General Plastic factors.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“In General Plastic, the Board set forth a non-exhaustive list of factors to consider in evaluating whether to exercise discretion, under § 314(a), to deny a petition challenging a patent previously challenged before the Board. Those factors include: 1. whether the same petitioner previously filed a petition directed to the same claims of the same patent; 2. whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it; 3. whether at the time of filing of the second petition the petitioner already received the patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review in the first petition; 4. the length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition; 5. whether the petitioner provides adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent; 6. the finite resources of the Board; and 7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not later than 1 year after the date on which the Director notices institution of review. General Plastic at 16 (citing NVIDIA Corp. v. Samsung Elecs. Co., IPR2016-00134, Paper 9 at 6–7 (PTAB May 4, 2016)). These factors are “a non-exhaustive list” and “additional factors may arise in other cases for consideration, where appropriate.” Id. at 16, 18.” slip op. at 9
Discretionary denialPatents in suitUS 11,470,138 - Aylo Freesites Ltd v. DISH Technologies L.L.C.Institution deniedPTAB · Aug 7, 2024 · IPR2024-00516 · APJ Thu A Dang · IPR · Institution
The Board denied institution on all challenged claims under § 314(a), finding that the General Plastic factors, particularly factors 1–3, 5, and 6, favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“evidence or testimony to substantiate the manner and timing of its search efforts. See Prelim. Resp. 6–9. Here, Petitioner merely provides an attorney argument that Petitioner discovered Leaning on January 5, 2024 (see Pet. 58), which is almost three months after Petitioner filed the petition in IPR2024-00046. Petitioner makes no attempt to establish that it could not have known of Leaning at the time of the IPR2024-00046 petition or that it could not have found Leaning by exercising reasonable diligence at that time. Furthermore, although Petitioner contends that Leaning was not discovered or relied upon by USPTO examiners, ITC respondents, or other litigants (see Pet. 58), allegedly fruitless search efforts of others do not justify Petitioner’s actions. On this record, we find that Petitioner has not sufficiently explained why it could not have found Leaning in earlier searches through the exercise of reasonable diligence before it filed the petition in IPR2024-00046. See General Plastic at 20.” slip op. at 15
Discretionary denialPatents in suitUS 10,951,680 - Aylo Freesites Ltd v. DISH Technologies L.L.C.Institution deniedPTAB · Aug 7, 2024 · IPR2024-00517 · APJ Thu A Dang · IPR · Institution
The Board denied institution on all challenged claims, exercising § 314(a) discretion based on its balanced assessment of the General Plastic factors.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“evidence or testimony to substantiate the manner and timing of its search efforts. See Prelim. Resp. 6–9. Here, Petitioner merely provides an attorney argument that Petitioner discovered Leaning on January 5, 2024 (see Pet. 61), which is almost three months after Petitioner filed the petition in IPR2024-00043. Petitioner makes no attempt to establish that it could not have known of Leaning at the time of the IPR2024-00043 petition or that it could not have found Leaning by exercising reasonable diligence at that time. Furthermore, although Petitioner contends that Leaning was not discovered or relied upon by USPTO examiners, ITC respondents, or other litigants (see Pet. 61), allegedly fruitless search efforts of others do not justify Petitioner’s actions. On this record, we find that Petitioner has not sufficiently explained why it could not have found Leaning in earlier searches through the exercise of reasonable diligence before it filed the petition in IPR2024-00043. See General Plastic at 20.” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“our discretion to deny institution, factor 2 strongly favors exercising the discretion, and factors 4 and 7 are neutral. Therefore, based on a balanced assessment of these factors, we exercise our discretion to deny institution of an inter partes review. III. CONCLUSION For the reasons above, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review. IV. ORDER Accordingly, it is ORDERED that the Petition is denied as to all challenged claims, and no inter partes review is instituted.” slip op. at 24
Discretionary denialPatents in suitUS 11,677,798 - Aylo Freesites Ltd v. DISH Technologies L.L.C.Institution deniedPTAB · Aug 7, 2024 · IPR2024-00514 · APJ Elizabeth M Roesel · IPR · Institution
The Board denied institution under § 314(a), finding that most General Plastic factors favored denying this follow-on petition challenging claims 1–5, 7–14, and 16–30.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“Petitioner filed two staggered petitions challenging twenty-five common claims, including all of the independent claims of the ’554 patent. Only three of the twenty-eight claims challenged in the instant Petition are not included in the earlier petition, and Petitioner’s treatment of these three claims comprises less than one page of analysis. Pet. 39–40, 49, 53. Given that the two petitions challenge nearly all of the same claims of the ’554 patent, we find that this factor weighs in favor of exercising discretion to deny institution.” slip op. at 10
Discretionary denialPatents in suitUS 10,469,554 - Micron Technology, Inc. / Micron Semiconductor Products, Inc. et al. v. Netlist, Inc.Institution deniedPTAB · Jul 23, 2024 · IPR2024-00370 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution of review of claims 1–5 under § 314(a), finding that the General Plastic factors as a whole favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“We have authority under 35 U.S.C. § 314(a), which provides that 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.” For the reasons described below we do not institute an inter partes review of the challenged claims and we deny Petitioner’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“We disagree. In our earlier decision in the Micron IPR, institution was denied because petitioner did not demonstrate sufficient support that the asserted anticipatory reference disclosed that write and read leveling circuitry were included in the data paths, as the independent claim recited. Ex. 2002, 19–20. In the Samsung IPR, the petitioner there asserts an obviousness challenge rather than an anticipation challenge to the independent claim, and a secondary reference, Butt, was added to address the deficiencies of the petition of the previous Micron IPR petition. The challenge in the Samsung IPR was modified in a manner that was directed to the deficiencies of the Micron IPR, and therefore appears to be an attempt to use the information gained in the Micron IPR to improve the possible success of the later petition. In other words, the Samsung IPR appears to use our prior decision as a roadmap. See General Plastic, 17–18. By moving for joinder to the Samsung IPR, Petitioner is also therefore seeking to capitalize on the benefits of this road mapping. As Uniloc states, “the copied petition is Petitioner’s second challenge to the patent” and “[i]n effect, it would be as if [petitioner] brought the second challenge to the patent,” wherein “[t]his is the kind of serial attack that General Plastic was intended to address.” Uniloc, 4 (citing General Plastic at 17).” slip op. at 15
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“III. MOTION FOR JOINDER The Director may join a party to an ongoing inter partes review only if the filed petition warrants institution under § 314. See 35 U.S.C. § 315(c). Because we are exercising discretion to deny institution under § 314, we deny Petitioner’s Motion for Joinder. IV. ORDER Accordingly, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review is denied; and FURTHER ORDERED that, pursuant to 35 U.S.C. § 315(c), Petitioner’s motion for joinder is denied.” slip op. at 19
Discretionary denialPatents in suitUS 10,268,608 - Luminex International Co., Ltd. v. Signify Holdings B.V.Institution deniedPTAB · May 9, 2024 · IPR2024-00101 · APJ Steven M Amundson · IPR · Institution
The Board denied institution because Menard was a real party in interest served with an infringement complaint more than one year before the Petition was filed.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“Thus, the evidence shows that: (1) Petitioner and Menard are parties to an agreement; (2) under the agreement, Petitioner supplies accused products to Menard; (3) the agreement includes an indemnity provision; (4) under the agreement, Menard made multiple demands for Petitioner to “indemnify or defend as a matter of first defense”; and (5) Petitioner responded to Menard’s multiple demands by, among other things, filing the Petition challenging the claims in the ’336 patent. See Ex. 2001 ¶¶ 21, 24–26, 28–29, 32–33, 35; Ex. 2002, 5–9 (¶¶ 21, 24–26, 28–29, 32–33, 35); Ex. 2013, 5–9 (¶¶ 21, 24–26, 28–29, 32–33, 35); Ex. 3003 ¶¶ 21, 24–26, 28–29, 32–33, 35. That Petitioner responded to Menard’s multiple demands for Petitioner to “indemnify or defend as a matter of first defense” by filing the Petition shows that the Petition was filed at Menard’s “behest.” Specifically, Menard demanded defense from infringement liability, and Petitioner responded by initiating this proceeding seeking to free Menard from infringement liability for all 20 claims in the ’336 patent. See Pet. 15–89.” slip op. at 36
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“For the real-party-in-interest analysis, we initially consider “whether a petition has been filed at a nonparty’s ‘behest,’” i.e., “the heart of the inquiry.” Uniloc 2017, 989 F.3d at 1027–28; AIT, 897 F.3d at 1351; CTPG at 14. In its third-party complaints, Menard alleged that it and Petitioner “are parties to a Menards Customer Returns, Defective Goods Policy and Conditions of Order Agreement” that requires Petitioner to “indemnify, defend and hold harmless Menard from and against any claims, litigation, or suits,” including “patent infringement arising from Menard’s use, sale or offering for sale of any goods provided by” Petitioner. Ex. 2001 ¶¶ 21, 24, 26, 28; Ex. 3003 ¶¶ 21, 24, 26, 28. Menard also alleged that the Conditions of Order Agreement requires Petitioner to “indemnify or defend as a matter of first defense and payment, not as a matter of reimbursement.” Ex. 2001 ¶ 29; Ex. 3003 ¶ 29.” slip op. at 35
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that 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) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2
Discretionary denialPatents in suitUS 10,299,336 - Ubiquiti Inc. v. XR Communications LLC D/B/A Vivato Tech.Institution deniedPTAB · May 6, 2024 · IPR2024-00148 · APJ James J Mayberry · IPR · Institution
The Board denied joinder and denied institution because the target IPR had been terminated and the petition was time-barred under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“A threshold issue for joinder is that there must be an inter partes review to which the party seeking joinder can join. See 35 U.S.C. § 315(c) (giving the Director discretion to join the moving party to “that inter partes review,” that is, to the inter partes review that has been instituted).6 The ’613 IPR was terminated on October 3, 2023, more than one month before Petitioner filed the Petition and motion for joinder. Understanding this hurdle, Petitioner moves for us to reopen the ’613 IPR proceeding. Paper 2; see also Paper 3, 1 (“Ubiquiti is filing this motion for joinder concurrently with a motion for leave to file a motion to reopen IPR2022-00613, [and] a petition for inter partes review of the ’376 patent.”). Patent Owner opposes the motion. Paper 9. Petitioner replied to the opposition. Paper 10. In an Order filed concurrently with this Decision, we deny Petitioner’s motion to reopen the ’613 IPR proceeding.” slip op. at 10
- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“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.” Petitioner was served with a complaint alleging infringement of the ’376 patent on June 21, 2021—over two years before filing the present Petition. See Paper 9, 2; see also Ex. 3001 (providing proof of service); Paper 10 (not disputing Patent Owner’s contention regarding the service date). The AIA statute and our rules permit, at the discretion of the Director, a party to be joined to an inter partes review proceeding even if that party filed its petition after the one-year time bar. See 35 U.S.C. § 315(b) (“The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c).”); 37 C.F.R. § 42.122(b) (“The time period set forth in § 42.101(b) [that is, the one-year time bar] shall not apply when the petition is accompanied by a request for joinder.”). However, as we determine above, we deny Petitioner’s motion for joinder, as there is no inter partes review proceeding to join. As such, the provision allowing an otherwise time-barred petition is not implicated here. Accordingly, Petitioner’s Petition is time-barred under 35 U.S.C.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied time barInstitution denied
“CONCLUSION We deny Petitioner’s motion for joinder, as the ’613 IPR proceeding, to which Petitioner seeks joinder, has been terminated and will not be reopened. See Paper 11. Also, because the Petition was filed more than one year after Petitioner was served with a complaint for infringing the ’376 patent, the Petition is time-barred under 35 U.S.C. § 315(b), and is denied. V. ORDER In consideration of the foregoing, it is hereby ORDERED that, pursuant to 35 U.S.C. § 315(c), we deny Petitioner’s motion for joinder; and FURTHER ORDERED that an inter partes is not instituted.” slip op. at 12
Discretionary denialPatents in suitUS 10,594,376 - Masimo Corporation v. Apple Inc.Institution deniedPTAB · Apr 25, 2024 · IPR2024-00071 · APJ Robert L Kinder · IPR · Institution
The Board denied institution under § 314(a), finding substantial road-mapping concerns from Masimo’s staggered petition challenging claims 6 and 7.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“has modified its prior positions to account for both arguments made in preliminary responses, as well as concerns identified by the panel in the 745 IPR decision to institute. See Prelim. Resp. 11. Claims 6 and 7 depend from claims 1 and 4. Masimo has bolstered its analysis of Markel and Mills with respect to certain elements of claim 1 and its reasons for combining the references in this second Petition. For example, Petitioner added new mappings of the Markel-Mills combination to address claim 1 in direct response to concerns identified by Patent Owner and by the panel in the 745 IPR. See id. at 11–13. Addressing limitation 1[b(i)], Petitioner added a new mapping of Markel based on pushbuttons having electrodes as shown in Figure 2 of Markel. See Pet. 51–52. Petitioner even identified this discussion of Figure 2 as “a second mapping of the claims.” Id. This second mapping of claim 1 based on Figure 2, and the corresponding analysis, appear nowhere in the analysis of claim 1 (or claim 4) in Masimo’s 745 IPR petition. The new embodiments relied on and modified arguments addressing claim 1 of the ’257 patent suggest that Petitioner is using the prior proceedings as a roadmap to address issues to its first petition in the 745 IPR. Accordingly, this factor weighs strongly in favor of invoking our discretion to deny institution.” slip op. at 20
Discretionary denialPatents in suitUS 10,076,257 - Oxylabs, Uab v. Bright Data Ltd.Institution deniedPTAB · Mar 20, 2024 · IPR2023-01425 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution under § 314(a), finding the General Plastic factors, considered as a whole, favored denying review of claims 1, 8, 16, 17, 22, 29, and 30.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“As General Plastic states: “[t]he relevant issue under factor 2 is whether [the prior art references] could have been found with reasonable diligence . . . . [A] petitioner is free to explain why a reasonably diligent search could not have uncovered the newly applied prior art.” General Plastic, at 20. As discussed above, Petitioner provides no support explaining the nature and extent of the prior search done for the -936 IPR, short of alleging that prior-art search focused on printed publications (Pet. 50). Therefore, in view of the dearth of evidence provided, there is little to support and demonstrate that a reasonably diligent search had been previously done. Accordingly, Petitioner provides little evidence to demonstrate the diligence of its previous prior art search. This factor weighs strongly against institution.” slip op. at 11
Discretionary denialPatents in suitUS 11,206,317
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.