- Shenzhen Waydoo Intelligence Technology Co., Ltd. v. MHL Custom, Inc.Institution deniedPTAB · Dec 17, 2024 · IPR2024-00999 · APJ Michael L Woods · IPR · Institution
The Board denied joinder and denied institution on all challenged claims and grounds because the petition was time-barred under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“Whether we institute review depends on whether we grant Petitioner’s Motion for Joinder. If granted, the one-year bar does not apply. See 35 U.S.C. § 315(b). If denied, the Petition is time-barred. See id.” slip op. at 6
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“As in Code200 I, Petitioner provides no explanation as to why it did not file a petition seeking inter partes review of the ’659 patent within the one-year window. See generally Mot.; see also Opp. 2 (“Petitioner offers no explanation for why it waited over three years to seek to challenge the patent through IPR proceedings.”). Furthermore, Petitioner provides no explanation as to why joinder would be fair or otherwise in the interests of justice. See generally Mot.; see also Opp. 2 (“Petitioner offers no explanation for how joinder would be fair to, and not otherwise prejudice, Patent Owner.”). Accordingly, Petitioner has failed to establish that it is entitled to the requested relief under our Rules. See 37 C.F.R. §§ 42.1, 42.20(c). For the forgoing reasons, we exercise our discretion to deny Petitioner’s Motion for Joinder.” slip op. at 13
Discretionary denialPatents in suitUS 9,586,659 - Shenzhen Waydoo Intelligence Technology Co., Ltd. v. MHL Custom, Inc.Institution deniedPTAB · Dec 17, 2024 · IPR2024-00998 · APJ Michael L Woods · IPR · Institution
The Board denied joinder and denied institution on all challenged claims because the petition was time-barred under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“establish that it is entitled to the requested relief.” See 37 C.F.R. § 42.20(c). Regarding joinder, the relevant statute provides that: If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. 35 U.S.C. § 315(c).” slip op. at 5
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“This statute further provides that the petition for inter partes review must be filed no later 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.” 35 U.S.C. § 315(b); see also 37 C.F.R. § 42.101(b). This one-year time bar, however, “shall not apply to a request for joinder.” 35 U.S.C. § 315(b); see also 37 C.F.R. § 42.122(b).” slip op. at 5
Discretionary denialPatents in suitUS 9,359,044 - Apple Inc. v. Rfcyber Corp.Institution deniedPTAB · Mar 24, 2022 · PGR2022-00003 · APJ Patrick R Scanlon · PGR · Institution
The Board denied Apple’s untimely joinder motion and denied institution because the petition was filed outside the nine-month PGR filing period.
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“motion under§ 42.22, no later than one month after the institution date of any post-grant review for which joinder is requested.” 37 C.F.R. § 42.222(b). Petitioner’s Motion for Joinder was filed October 20, 2021, which is more than one month after the Board instituted post-grant review in the Google PGR on July 23, 2021. Petitioner, however, argues that special circumstances warrant that the Board exercise its discretion under 37 C.F.R. § 42.5 to waive the one-month joinder period. Mot. 3–6.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“B. Eligibility for Post-Grant Review under 35 U.S.C. § 321 Institution of post-grant review is barred when a petition is filed more than 9 months after the challenged patent is granted. 35 U.S.C. § 321(c). The ’046 patent issued on March 24, 2020 (see Ex. 1001, code (45)), and the Petition in this proceeding was accorded a filing date of October 20, 2021 (see Paper 1). Thus, the Petition was filed outside the 9-month statutory period for requesting post-grant review under § 321(c). Accordingly, in view of our decision to deny Petitioner’s Motion for Joinder, we deny the Petition because it was not filed within the time limit imposed under 35 U.S.C. § 321(c).” slip op. at 8
Discretionary denialPatents in suitUS 10,600,046 - PTAB · Mar 2, 2020 · IPR2019-01589 · APJ Kevin W Cherry · IPR · Institution
The Board denied joinder because no proceeding remained to join, then denied institution because the petition was time barred under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“Because IPR2019-00748 has terminated in a Final Written Decision and no proceeding remains for Petitioner to join, we deny Petitioner’s motion to join IPR2019-00748.” slip op. at 2
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“Under 35 U.S.C. § 315(b), 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 is served with a complaint alleging infringement of the patent.” 35 U.S.C. § 315(b); see also 37 C.F.R. § 42.101(b). Because Petitioner was served with a complaint asserting infringement of the ’535 patent more than one year before it filed the Petition, Pet. 5, we deny the Petition as barred under 35 U.S.C. § 315(b).” slip op. at 2
Discretionary denialPatents in suitUS 8,934,535 - Microsoft Corporation v. Biscotti Inc.Institution deniedPTAB · Oct 20, 2015 · IPR2015-01053 · APJ Neil T Powell · IPR · Institution
The Board denied joinder and denied institution of review of claims 1, 4, and 5 because the petition was time-barred under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“Petitioner has established sufficiently that joinder to the ’1458 IPR is warranted. Granting joinder would complicate the substantive issues in the ’1458 IPR significantly more than Petitioner suggests. We do not agree with Petitioner’s assertion that “granting joinder results in essentially one new substantive issue—whether the HDMI Specification (Ex. 1007) discloses the HDMI element.” Joinder Motion 9. Joinder would add to the ’1458 IPR obviousness challenges to claims 1, 4, and 5, thereby adding for each of these challenges the numerous issues that any obviousness analysis entails. Additionally, the challenge raised in the present Petition does not rely on the same references as the pending challenges in the ’1458 IPR. Unlike the challenge raised in the present Petition, no pending claim challenge in the ’1458 IPR relies on the HDMI Specification. See ’1458 Institution Decision 33–34. Indeed, joinder would add a significant dispute regarding the public accessibility of the HDMI Specification.” slip op. at 17
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“review when the petition is filed more than one year after the petitioner (or petitioner’s real party in interest or privy) is served with a complaint alleging infringement of the patent. 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b). That one-year time bar, however, does not apply to a request for joinder. 35 U.S.C. § 315(b) (final sentence); 37 C.F.R. § 42.122(b). This is an important consideration here because Petitioner was served with a complaint asserting infringement of the ’182 patent more than one year before filing the Petition in this proceeding. See Joinder Motion 2–4. As noted above, the ’182 patent is involved in a district court proceeding in the U.S. District Court of the Eastern District of Texas captioned Biscotti Inc. v. Microsoft Corp., Case No. 2:13-cv-01015-JRG (E.D. Tex.) (“District Court Proceeding”). Joinder Motion 2; Pet. 3–4. Petitioner represents that the complaint in the District Court Proceeding was served on Petitioner on November 27, 2013. Joinder Motion 2. As noted above, the present Petition was filed on April 17, 2015. Thus, absent joinder of this proceeding to the ’1458 IPR, institution based on the current Petition is barred under 35 U.S.C. § 315(b).” slip op. at 9
Discretionary denialPatents in suitUS 8,144,182 - Microsoft Corporation v. Biscotti Inc.Institution deniedPTAB · Oct 19, 2015 · IPR2015-01052 · APJ Neil T Powell · IPR · Institution
The Board denied joinder and denied institution of review of claims 13–16, 33, 34, 46, and 82–86 because the petition was time-barred under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“warranted. Granting the joinder sought by Petitioner would complicate the substantive issues in the ’1457 IPR significantly more than Petitioner suggests. Contrary to Petitioner’s suggestion, joinder would do more than simply add evidence that the HDMI Specification is prior art. See Joinder Motion 8. Joinder would add to the ’1457 IPR an obviousness challenge to claims 13–16, 33, 34, 46, and 82–86, thereby adding the numerous issues that any obviousness analysis entails. Additionally, contrary to Petitioner’s suggestion, the challenge raised in the present Petition does not rely on the same references as the pending challenges in the ’1457 IPR. See Joinder Motion 8 (“The -01052 proceeding involves . . . the same prior art . . . as the -01457 proceeding.”). Unlike the challenge raised in the present Petition, no pending claim challenge in the ’1457 IPR relies on the HDMI Specification. See ’1457 Institution Decision 31. Indeed, joinder would add a significant dispute regarding the public accessibility of the HDMI Specification. Additionally, granting joinder would add significant procedural complications and delay resolution of the ’1457 IPR. In the ’1457 IPR, Patent Owner has filed its Response, and the date for the oral hearing is only weeks away. Granting joinder would require adjusting the schedule to allow Patent Owner discovery on the issues presented by the challenge in the present Petition. Petitioner does not offer a practical way to accommodate the additional discovery and briefing without rushing significantly all involved or delaying the final written decision beyond its current due date of March 19, 2016.” slip op. at 15
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“III. DECISION ON THE PETITION Institution of inter partes review is barred when the petition is filed more than one year after the petitioner is served with a complaint alleging infringement of the patent. 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b). The present Petition was filed more than one year after Petitioner was served with a complaint alleging infringement of the ’182 patent. See Joinder Motion 2, 4. Accordingly, in view of our decision to deny Petitioner’s Joinder Motion, we deny the present Petition because it was not filed within the time limits imposed under 35 U.S.C. § 315(b).” slip op. at 16
Discretionary denialPatents in suitUS 8,144,182 - Oracle Corporation v. Crossroads Systems, Inc.Institution deniedPTAB · Sep 9, 2015 · IPR2015-01063 · APJ Kevin W Cherry · IPR · Institution
The Board denied institution for claims 1–14 because the petition was time-barred under § 315(b); the joinder motion was moot.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“Section 315(b) normally bars institution of inter partes review when the petition is filed more than one year after the petitioner is served with a complaint alleging infringement of the patent. 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b). The one-year time bar, however, does not apply to a request for joinder. 35 U.S.C. § 315(b) (final sentence); 37 C.F.R. § 42.122(b). In a “Statement of Material Facts,” Petitioner states that it “was served with a complaint asserting infringement of U.S. Patent No. 6,425,035 more than one year before filing the petition.” Mot. 1. Without joinder of Petitioner in this proceeding as a party to the ’777 proceeding, the Petition would be barred under 35 U.S.C. § 315(b). Because the Joinder Motion is moot, the present Petition is time barred, and, therefore, we deny the Petition because it was not filed within the time limits imposed under 35 U.S.C. § 315(b). III.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“DISCUSSION The Joinder Motion states that “Petitioner Oracle Corporation respectfully requests joinder pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b) of the above-captioned inter partes review with NetApp, Inc. v. Crossroads Systems, Inc., IPR2015-00777.” Mot. 1. Because we declined to institute inter partes review in the ’777 proceeding, the Joinder Motion is moot.” slip op. at 3
Discretionary denialPatents in suitUS 6,425,035
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.