- Iko Industries, Inc. / Iko Industries Ltd. v. Kirsch Research And Development, LLCInstitution deniedPTAB · May 20, 2022 · IPR2022-00416 · APJ Charles J Boudreau · IPR · Institution
The Board denied institution on all challenged claims because IKO Industries, Inc. and real party in interest Tarco were served more than one year before the petition, barring review under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“We agree with Patent Owner. Despite Petitioner’s “certif[ication],” quoted by Patent Owner in the Preliminary Response, that “Petitioner is not barred or estopped from requesting inter partes review challenging the patent claims on the grounds identified herein” (Pet. 2), the uncontroverted evidence before us demonstrates otherwise. As Patent Owner points out, the January 7, 2022, filing date of the Petition is more than twenty months after both Petitioner IKO Industries, Inc. and real party in interest Tarco were served in the IKO and Tarco lawsuits, respectively. See Exs. 2003, 2005.1” slip op. at 4
Discretionary denialPatents in suitUS 6,308,482 - Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Regents Of The University Of MinnesotaRehearing deniedPTAB · Sep 18, 2020 · IPR2017-01186 · APJ Robert J Weinschenk · IPR · Rehearing
The Board denied Ericsson’s rehearing request, leaving institution denied because the petition was time-barred under § 315(b) based on privity with district court defendants.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS When considering a request for rehearing of a decision whether to institute an inter partes review, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“In the Decision, we explained that 35 U.S.C. § 315(b) provides that 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.” Dec. 4. We also explained that in determining whether a petitioner is in privity with another party, we consider the Supreme Court’s decision in Taylor v. Sturgell, 553 U.S. 880 (2008). Dec. 4–5. Taylor provides six categories of exceptions to the rule against nonparty preclusion, namely 1) when “[a] person . . . agrees to be bound by the determination of issues in an action between others”; 2) “based on a” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“In the Decision, we explained that 35 U.S.C. § 315(b) provides that 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.” Dec. 4. We also explained that in determining whether a petitioner is in privity with another party, we consider the Supreme Court’s decision in Taylor v. Sturgell, 553 U.S. 880 (2008). Dec. 4–5. Taylor provides six categories of exceptions to the rule against nonparty preclusion, namely 1) when “[a] person . . . agrees to be bound by the determination of issues in an action between others”; 2) “based on a” slip op. at 2
Discretionary denialPatents in suitUS 8,774,309 - Juniper Networks, Inc. v. Finjan, Inc.Rehearing deniedPTAB · Feb 27, 2020 · IPR2019-01403 · APJ Patrick M Boucher · IPR · Rehearing
The Board denied Juniper’s rehearing request, finding no abuse of discretion in denying institution because the petition was time-barred under § 315(b).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS The applicable standard for granting a request for rehearing of a petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party seeking rehearing has the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › §315(b) time barInstitution denied time barDecided for patent owner
“district court and the June 13, 2018 vacatur of that grant, we determined that “service occurred at a time authorized by the district court.” Dec. 6. In its Request, Petitioner contends that, because the district court originally granted leave to serve the complaint in “error,” “Patent Owner’s June 8, 2018 filing was not properly served and cannot start the clock on Petitioner’s one-year deadline.” Req. Reh’g 1. But in advancing this contention, Petitioner misconstrues the meaning of “properly served” in the context of the Board’s precedential decision in GoPro, Inc. v. 360Heros, Inc., IPR2018-01754, Paper 38 (PTAB Aug. 23, 2019) (precedential). In recognizing that a complaint “improperly served” does not trigger the § 315(b) time bar, the Precedential Opinion Panel in GoPro cites IpDatatel, LLC v. ICN Acquisition, LLC, IPR2018-01823, Paper 17 at 10–18 (PTAB Apr. 17, 2019) for the interpretation of “served” in § 315(b) as “requir[ing] compliance with Rule 4 of the Federal Rules of Civil Procedure.” GoPro at 14. Although we alerted the parties in our Decision that “we discern no evidence on this record that service failed to comply with Rule 4 of the Federal Rules of Civil Procedure,” Petitioner offers no evidence or argument in its Request that prompts us to reconsider that finding. See Dec. 6.” slip op. at 3
- Other 314aOther
“In this case, the Chief Judge has considered Petitioner’s suggestion for an expanded panel, but has determined that an expanded panel is not warranted.” slip op. at 2
Discretionary denialPatents in suitUS 7,418,731 - Blue Coat Systems, Inc. v. Finjan, Inc.Institution deniedPTAB · Jun 20, 2016 · IPR2016-00478 · APJ James B Arpin · IPR · Institution
The Board denied institution on all challenged claims as time-barred under § 315(b), after dismissing the motion for joinder as moot.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“Petitioner acknowledges that a complaint alleging infringement of the ʼ968 patent was served on Petitioner more than a year before the filing date of the Petition. Pet. 8–9. Under 35 U.S.C. § 315(b), that is a bar to the institution of inter partes review unless Petitioner’s request for joinder is granted. See id. (“[H]owever, a motion to joinder has been filed to join the inter partes review requested in the ’149 petition not later than 1 month after institution in accordance with 37 U.S.C. § 315(c).”). Because we dismiss that Joinder Motion (see supra Section II), we conclude that the Petition should be denied as time-barred under § 315(b). B. Denial on the Same Grounds as the ʼ149 IPR” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“II. DISMISSAL OF MOTION FOR JOINDER Because we denied the petition in IPR2016-00149, and we did not institute inter partes review in that case, Petitioner’s Joinder Motion is dismissed as moot. 35 U.S.C. § 315(c).1” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied time barInstitution denied
“’149 IPR, Paper 11, 7; see ’149 IPR, Paper 2, 8–9. In view of our determination that the Petition is time-barred under 35 U.S.C. § 315(b), however, we do not need to decide the separate grounds for denial urged by Patent Owner. See Prelim. Resp. 18–60. IV. ORDER It is, therefore, ORDERED that the Motion for Joinder is dismissed as moot; and FURTHER ORDERED that the Petition is denied as to all challenged claims as untimely filed, and no trial is instituted.” slip op. at 4
Discretionary denialPatents in suitUS 6,965,968 - Blue Coat Systems, Inc. v. Finjan, Inc.Institution deniedPTAB · Jun 20, 2016 · IPR2016-00479 · APJ James B Arpin · IPR · Institution
The Board denied institution on all challenged claims as untimely under § 315(b), after dismissing the motion for joinder as moot.
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“II. DISMISSAL OF MOTION FOR JOINDER Because we denied the petition in IPR2016-00150, and we did not institute inter partes review in that case, Petitioner’s Joinder Motion is dismissed as moot. 35 U.S.C. § 315(c).1” slip op. at 3
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“Petitioner acknowledges that a complaint alleging infringement of the ʼ968 patent was served on Petitioner more than a year before the filing date of the Petition. Pet. 9. Under 35 U.S.C. § 315(b), that is a bar to the institution of inter partes review unless Petitioner’s request for joinder is granted. See id. (“[H]owever, a motion to joinder has been filed to join the inter partes review requested in the ’150 petition not later than 1 month after institution in accordance with 37 U.S.C. § 315(c).”). Because we dismiss the Joinder Motion (see supra Section II), we conclude that the Petition should be denied as time-barred under § 315(b). B. Denial on the Same Grounds as the ʼ150 IPR” slip op. at 3
Discretionary denialPatents in suitUS 6,965,968
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.