- 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 - Tristar Products, Inc. v. Choon’S Design, LLCInstitution deniedPTAB · Aug 26, 2015 · IPR2015-00840 · APJ Jeremy M Plenzler · IPR · Institution
The Board denied institution in IPR2015-00840 because the petition was filed more than one year after service, triggering the § 315(b) time bar.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“The plain language of 35 U.S.C. § 315(b) requires “the petitioner, real party in interest, or privy of the petitioner [to be] served with a complaint alleging infringement of the patent” to start the one year period for filing a petition for inter partes review. The statute does not include any requirement regarding filing proof of that service with a court. Based on the information before us, there is no reason to conclude that the February 28, 2014 service on Petitioner was defective, or otherwise ineffective to trigger the one-year bar of § 315(b). For example, although Petitioner argues that service might have been ineffective, if the entity served was no longer the registered agent for service of process, it has not come forward with any allegation suggesting this to be the case. See 315(b) Br. 5–6. Nor has Petitioner come forward with any argument that a procedural defect renders the February 28, 2014 service ineffective to trigger the bar. Petitioner’s arguments regarding “not ha[ving] an opportunity to challenge the alleged February 2[8], 2014 service” and “allowing a patent owner to improperly serve a party at an early date, and then effect proper service at a later date” (315(b) Br. 5) are unpersuasive. Based on the particular facts before us, Petitioner had the opportunity to argue that the February 28, 2014 service was defective in the supplemental briefing authorized by the panel (the 315(b) Brief), but as noted above, did not allege any procedural defect in that service.” slip op. at 5
Discretionary denialPatents in suitUS 8,622,441 - Tristar Products, Inc. v. Choon’S Design, LLCInstitution deniedPTAB · Aug 26, 2015 · IPR2015-00838 · APJ Jeremy M Plenzler · IPR · Institution
The Board denied institution in IPR2015-00838 and IPR2015-00840 because the petitions were filed more than one year after service, triggering the § 315(b) time bar.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“The plain language of 35 U.S.C. § 315(b) requires “the petitioner, real party in interest, or privy of the petitioner [to be] served with a complaint alleging infringement of the patent” to start the one year period for filing a petition for inter partes review. The statute does not include any requirement regarding filing proof of that service with a court. Based on the information before us, there is no reason to conclude that the February 28, 2014 service on Petitioner was defective, or otherwise ineffective to trigger the one-year bar of § 315(b). For example, although Petitioner argues that service might have been ineffective, if the entity served was no longer the registered agent for service of process, it has not come forward with any allegation suggesting this to be the case. See 315(b) Br. 5–6. Nor has Petitioner come forward with any argument that a procedural defect renders the February 28, 2014 service ineffective to trigger the bar. Petitioner’s arguments regarding “not ha[ving] an opportunity to challenge the alleged February 2[8], 2014 service” and “allowing a patent owner to improperly serve a party at an early date, and then effect proper service at a later date” (315(b) Br. 5) are unpersuasive. Based on the particular facts before us, Petitioner had the opportunity to argue that the February 28, 2014 service was defective in the supplemental briefing authorized by the panel (the 315(b) Brief), but as noted above, did not allege any procedural defect in that service.” slip op. at 5
Discretionary denialPatents in suitUS 8,485,565
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.