- Code200, Uab / Teso LT, Uab et al. v. Bright Data Ltd.Institution deniedPTAB · Mar 14, 2022 · IPR2021-01502 · APJ Thomas L Giannetti · 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 › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“Joinder may be authorized when warranted, but the decision to grant joinder is discretionary. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. We agree with Petitioner that under § 315(b), a one-year bar does not apply when joinder is granted. However, in view of the specific facts of this case, we determine that grant of the joinder motion is not warranted because of prejudice to Patent Owner as well as Petitioner’s unexplained delay in seeking inter partes review. More specifically, allowing joinder would offer Petitioner a second bite at asserting invalidity after the dismissal of Petitioner’s invalidity counterclaims with prejudice in the prior district court action. We agree with Patent Owner that Petitioner’s “inconsistent actions” in dismissing the invalidity counterclaims with prejudice “undermine the integrity of the judicial process.” Opp. 7. Furthermore, Petitioner’s joinder attempt “undermine[s]” the prior dismissal with prejudice. Id. Patent Owner continues that Petitioner “now seek[s] a second bite at the invalidity apple.” Id. at 8. We agree that the prior dismissal with prejudice of Petitioner’s invalidity counterclaims weighs heavily in favor of denying joinder in this case.” slip op. at 8
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“B. Denial of Inter Partes Review It is undisputed that Petitioner was served with a complaint alleging infringement of the ’044 patent more than one year prior to filing the Petition in this proceeding. See Pet. 2. Accordingly, in view of the denial of the requested relief of joinder with IPR2021-00458, institution of inter partes review as requested by Petitioner is barred by statute. See 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b). VI. CONCLUSION For the foregoing reasons, we deny Petitioner’s motion for joinder. Because Petitioner is barred under 35 U.S.C. § 315(b) from seeking inter partes review of the ’044 patent, we deny the Petition and do not institute review as to any of the challenged claims. VII. ORDER Accordingly, it is: ORDERED that the Motion for Joinder is denied; and FURTHER ORDERED that, the Petition is denied as to all challenged claims and grounds and no trial is instituted.” slip op. at 9
Discretionary denialPatents in suitUS 9,241,044 - Code200, Uab / Teso LT, Uab et al. v. Bright Data Ltd.Institution deniedPTAB · Mar 14, 2022 · IPR2021-01503 · APJ Sheila F Mcshane · IPR · Institution
The Board denied joinder and denied institution on all challenged claims and grounds because the petition was barred by § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“Joinder may be authorized when warranted, but the decision to grant joinder is discretionary. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. We agree with Petitioner that a one-year bar does not apply to joinder under § 315(b). However, in view of the specific facts of this case, we determine that the grant of the motion is not warranted because of prejudice to Patent Owner as well as Petitioner’s unexplained delay in seeking inter partes review. More specifically, allowing joinder would offer Petitioner a second bite at asserting invalidity after the previous dismissal with prejudice of Petitioner’s invalidity counterclaims in the District Court action. As such, joinder would not be in the interest of justice and would be prejudicial to Patent Owner under these circumstances. We agree with Patent Owner that the prior dismissal with prejudice of Petitioner’s invalidity counterclaims weighs heavily in favor of denying joinder in this case. Additionally, Petitioner was sued in District Court on the ’866 patent in 2018. Although it could have done so, Petitioner did not file an inter partes challenge in the one-year time frame following the lawsuit’s commencement. Now, several years later, after a dismissal of the District Court litigation with prejudice, Petitioner seeks to challenge the patent by its joinder motion. Petitioner provides no explanation for not filing for review when it could have earlier done so in the one-year window, but now seeks to join a challenge after dismissal of its earlier counterclaims with prejudice— except to argue that there was no delay for the joinder motion under the statute. Petitioner also does not provide an explanation why fairness now requires joinder. Thus, we agree with Patent Owner that adding Petitioner to the NetNut 465 IPR would not be in the interests of justice and has not been justified.” slip op. at 8
- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“B. Inter Partes Review Petitioner was served with a complaint alleging infringement of the ’866 patent more than one year prior to filing the Petition in this proceeding. See Pet. 2. Accordingly, in view of the denial of the requested relief of joinder with IPR2021-00465, institution of an inter partes review as requested by Petitioner is barred by statute. See 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b). IV. CONCLUSION For the foregoing reasons, we deny Petitioner’s motion for joinder. Because Petitioner is barred under 35 U.S.C. § 315(b) from inter partes review of the ’866 patent, we do not institute review as to any of the challenged claims.” slip op. at 9
Discretionary denialPatents in suitUS 9,742,866 - RPX Corporation v. Applications In Internet Time, LLCRehearing deniedPTAB · Dec 4, 2020 · IPR2015-01752 · APJ Scott R Boalick · IPR · Rehearing
The Board denied RPX’s rehearing request, leaving in place the determination that Salesforce was an RPI and the petitions were time-barred under § 315(b).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Thus, a request for rehearing is not an opportunity to present new arguments or evidence or merely to disagree with the panel’s assessment of the arguments or weighing of the evidence.” slip op. at 3
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“legally required for Salesforce to be a “beneficiary.” Req. Reh’g. 14. Further, Petitioner further asserts that we overlooked the authority cited by Petitioner that “‘behest’ means command, and that RPX cannot have acted as Salesforce’s representative unless RPX were appointed by Salesforce to so act.” Id. at 14–15. Petitioner asserts that the evidence, at most, demonstrates that RPX filed as a “mere volunteer to benefit Salesforce.” Id. at 15. We are not persuaded because Petitioner’s argument proposes that we apply a more narrow and rigid analysis of RPI than the one instructed by the Federal Circuit in these cases. As stated by the Federal Circuit, “[d]etermining whether a non-party is a ‘real party in interest’ demands a flexible approach that takes into account both equitable and practical considerations, with an eye toward determining whether the non-party is a clear beneficiary that has a preexisting, established relationship with the petitioner.” AIT, 897 F.3d at 1351; see also Dec. 4–5. Applying this flexible approach to the evidence of record, we determined that Salesforce is an RPI in these proceedings.” slip op. at 16
- PTAB / AIA Trials › §315(b) time barDenied
“In the Final Decision on Remand, we determined that Salesforce was a real party in interest (an “RPI”) in these proceedings, and the Petitions, therefore, were time-barred under 35 U.S.C. § 315(b). Dec. 35, 40. Based on that determination, we terminated the previously instituted inter partes reviews. Id. at 40. On October 9, 2020, RPX Corporation (“Petitioner”) filed a Request for Rehearing of the Board’s Final Decision on Remand. Paper 134 (“Req. Reh’g.”). Pursuant to our authorization, Patent Owner filed a Response (Paper 135, “PO Resp.”), and Petitioner filed a Reply (Paper 136, “Pet. Reply”). For the reasons discussed below, we deny Petitioner’s Request for Rehearing.” slip op. at 2
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for patent owner
“entitled to due process and the protections afforded by the Administrative Procedure Act. Pet. Reply 1 (citing SAS Inst., Inc. v. ComplementSoft, LLC, 825 F.3d 1341, 1351 (Fed. Cir. 2016)). We agree with Patent Owner, however, that all requirements of procedural due process have been met here. “The indispensable ingredients of due process are notice and an opportunity to be heard by a disinterested decision-maker.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015) (quoting Abbott Labs. v. Cordis Corp., 710 F.3d 1318, 1328 (Fed. Cir. 2013)).” slip op. at 4
Discretionary denialPatents in suitUS 7,356,482 - RPX Corporation v. Applications In Internet Time, LLCRehearing deniedPTAB · Dec 4, 2020 · IPR2015-01751 · APJ Scott R Boalick · IPR · Rehearing
The Board denied RPX’s rehearing request, leaving in place termination of the instituted IPRs because Salesforce was an RPI and the petitions were time-barred under § 315(b).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Thus, a request for rehearing is not an opportunity to present new arguments or evidence or merely to disagree with the panel’s assessment of the arguments or weighing of the evidence.” slip op. at 3
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“In the Final Decision on Remand, we determined that Salesforce was a real party in interest (an “RPI”) in these proceedings, and the Petitions, therefore, were time-barred under 35 U.S.C. § 315(b). Dec. 35, 40. Based on that determination, we terminated the previously instituted inter partes reviews. Id. at 40. On October 9, 2020, RPX Corporation (“Petitioner”) filed a Request for Rehearing of the Board’s Final Decision on Remand. Paper 134 (“Req. Reh’g.”). Pursuant to our authorization, Patent Owner filed a Response (Paper 135, “PO Resp.”), and Petitioner filed a Reply (Paper 136, “Pet. Reply”). For the reasons discussed below, we deny Petitioner’s Request for Rehearing.” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“legally required for Salesforce to be a “beneficiary.” Req. Reh’g. 14. Further, Petitioner further asserts that we overlooked the authority cited by Petitioner that “‘behest’ means command, and that RPX cannot have acted as Salesforce’s representative unless RPX were appointed by Salesforce to so act.” Id. at 14–15. Petitioner asserts that the evidence, at most, demonstrates that RPX filed as a “mere volunteer to benefit Salesforce.” Id. at 15. We are not persuaded because Petitioner’s argument proposes that we apply a more narrow and rigid analysis of RPI than the one instructed by the Federal Circuit in these cases. As stated by the Federal Circuit, “[d]etermining whether a non-party is a ‘real party in interest’ demands a flexible approach that takes into account both equitable and practical considerations, with an eye toward determining whether the non-party is a clear beneficiary that has a preexisting, established relationship with the petitioner.” AIT, 897 F.3d at 1351; see also Dec. 4–5. Applying this flexible approach to the evidence of record, we determined that Salesforce is an RPI in these proceedings.” slip op. at 16
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for patent owner
“entitled to due process and the protections afforded by the Administrative Procedure Act. Pet. Reply 1 (citing SAS Inst., Inc. v. ComplementSoft, LLC, 825 F.3d 1341, 1351 (Fed. Cir. 2016)). We agree with Patent Owner, however, that all requirements of procedural due process have been met here. “The indispensable ingredients of due process are notice and an opportunity to be heard by a disinterested decision-maker.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015) (quoting Abbott Labs. v. Cordis Corp., 710 F.3d 1318, 1328 (Fed. Cir. 2013)). In this case, Petitioner had ample opportunity to brief the issue of RPI. See Paper 28, Paper 29 (redacted version); Paper 38, Paper 37 (redacted version); Paper 98, Paper 95 (redacted version); Paper 100, Paper 104 (redacted version); Paper 101, Paper 102 (redacted version). Petitioner also had an opportunity to argue the issue of RPI in two oral hearings. See Paper 77, Paper 112, Paper 123 (redacted version). Moreover, in its Request for Rehearing, Petitioner had a chance to identify any matters it believes this panel misapprehended or overlooked in its Final Decision on Remand. Petitioner further had an opportunity to file a Reply to Patent Owner’s Response to its Request. Thus, both before and after this panel issued its Final Decision on Remand, Petitioner had notice and an opportunity to be heard on issues relevant to these cases on remand from the Federal Circuit. Finally, although a change in panel after remand from the Federal Circuit is not common, this panel, like the original panel, decided the merits of each case based on the entirety of the record. Stated another way, either panel would have decided the case after careful consideration of the same evidence. Nor can Petitioner complain that it lacked notice and an opportunity to be heard regarding the panel change – Petitioner received notice of the panel change both before and in the panel decision, and Petitioner’s Request for Rehearing and Board-authorized Reply gave it ample opportunity to be heard. Accordingly, we are not persuaded that the change in panel has prejudiced Petitioner in any way or violated Petitioner’s due process rights.” slip op. at 4
Discretionary denialPatents in suitUS 7,356,482 - RPX Corporation v. Applications In Internet Time, LLCRehearing deniedPTAB · Dec 4, 2020 · IPR2015-01750 · APJ Scott R Boalick · IPR · Rehearing
The Board denied RPX’s rehearing request, leaving in place the remand decision terminating the reviews because Salesforce was an RPI and the petitions were time-barred under § 315(b).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Thus, a request for rehearing is not an opportunity to present new arguments or evidence or merely to disagree with the panel’s assessment of the arguments or weighing of the evidence.” slip op. at 3
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“legally required for Salesforce to be a “beneficiary.” Req. Reh’g. 14. Further, Petitioner further asserts that we overlooked the authority cited by Petitioner that “‘behest’ means command, and that RPX cannot have acted as Salesforce’s representative unless RPX were appointed by Salesforce to so act.” Id. at 14–15. Petitioner asserts that the evidence, at most, demonstrates that RPX filed as a “mere volunteer to benefit Salesforce.” Id. at 15. We are not persuaded because Petitioner’s argument proposes that we apply a more narrow and rigid analysis of RPI than the one instructed by the Federal Circuit in these cases. As stated by the Federal Circuit, “[d]etermining whether a non-party is a ‘real party in interest’ demands a flexible approach that takes into account both equitable and practical considerations, with an eye toward determining whether the non-party is a clear beneficiary that has a preexisting, established relationship with the petitioner.” AIT, 897 F.3d at 1351; see also Dec. 4–5. Applying this flexible approach to the evidence of record, we determined that Salesforce is an RPI in these proceedings.” slip op. at 16
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“III. ANALYSIS In the Final Decision on Remand, we determined that Petitioner had not shown, by a preponderance of the evidence, that Salesforce was not an RPI in these proceedings. Dec. 1–2, 6–7, 30–35, 40. As noted above, in light of this determination, we terminated the previously instituted inter partes reviews, and denied inter partes reviews under 35 U.S.C. § 315(b). Id. at 35, 40.” slip op. at 3
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for patent owner
“entitled to due process and the protections afforded by the Administrative Procedure Act. Pet. Reply 1 (citing SAS Inst., Inc. v. ComplementSoft, LLC, 825 F.3d 1341, 1351 (Fed. Cir. 2016)). We agree with Patent Owner, however, that all requirements of procedural due process have been met here. “The indispensable ingredients of due process are notice and an opportunity to be heard by a disinterested decision-maker.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015) (quoting Abbott Labs. v. Cordis Corp., 710 F.3d 1318, 1328 (Fed. Cir. 2013)). In this case, Petitioner had ample opportunity to brief the issue of RPI. See Paper 28, Paper 29 (redacted version); Paper 38, Paper 37 (redacted version); Paper 98, Paper 95 (redacted version); Paper 100, Paper 104 (redacted version); Paper 101, Paper 102 (redacted version). Petitioner also had an opportunity to argue the issue of RPI in two oral hearings. See Paper 77, Paper 112, Paper 123 (redacted version). Moreover, in its Request for Rehearing, Petitioner had a chance to identify any matters it believes this panel misapprehended or overlooked in its Final Decision on Remand. Petitioner further had an opportunity to file a Reply to Patent Owner’s Response to its Request. Thus, both before and after this panel issued its Final Decision on Remand, Petitioner had notice and an opportunity to be heard on issues relevant to these cases on remand from the Federal Circuit. Finally, although a change in panel after remand from the Federal Circuit is not common, this panel, like the original panel, decided the merits of each case based on the entirety of the record. Stated another way, either panel would have decided the case after careful consideration of the same evidence. Nor can Petitioner complain that it lacked notice and an opportunity to be heard regarding the panel change – Petitioner received notice of the panel change both before and in the panel decision, and Petitioner’s Request for Rehearing and Board-authorized Reply gave it ample opportunity to be heard. Accordingly, we are not persuaded that the change in panel has prejudiced Petitioner in any way or violated Petitioner’s due process rights.” slip op. at 4
Discretionary denialPatents in suitUS 8,484,111 - ROKU, Inc. v. Universal Electronics, Inc.Institution deniedPTAB · Nov 10, 2020 · IPR2020-00952 · APJ Sharon Fenick · IPR · Institution
The Board denied institution on claims 1, 2, 6, and 8 because the petition was time-barred under § 315(b), and denied Roku’s motion for joinder.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“III. ANALYSIS “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.” 35 U.S.C. § 315(b). The parties agree that the Petition was filed more than one year after the date on which Petitioner was served in the related litigation with a complaint” slip op. at 8
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“Petitioner’s argument is nevertheless foreclosed by the Federal Circuit’s recent decision in Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321 (Fed. Cir. 2020). In that decision, the Federal Circuit expressly considered the impact of Thryv, determining that the Board’s joinder decisions are “unlike” the challenges it is precluded from reviewing and “more like” those that it may review. Windy City, 973 F.3d at 1332. the Board’s joinder decisions.” Id. And after reviewing such a joinder decision, the court further concluded that 35 U.S.C. § 315(c) “does not authorize same-party joinder, and does not authorize the joinder of new issues.” Id. at 1333–38. In accordance with the Federal Circuit’s decision, we deny Petitioner’s Motion for Joinder. Consequently, we conclude that the Petition is time-barred and that no exception applies under the facts before us. We therefore deny the Petition.” slip op. at 9
Discretionary denialPatents in suitUS 9,716,853 - 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 - PTAB · Mar 16, 2020 · IPR2019-01111 · APJ Joni Y Chang · IPR · Rehearing
The Board denied rehearing and maintained denial of the petition as time-barred under § 315(b), because Amazon was a privy of several Petitioner Entities.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Here, Requesters simply disagree with the way in which we resolved the disputed privity issue in our Decision. Mere disagreement with our Decision is not proper basis for rehearing when we had considered and addressed Petitioner Entities’ arguments in the Decision itself. Requesters do not show that we misapprehended or overlooked an argument that they made in the Petition or Reply. Moreover, Requesters have not identified persuasively in the Request an erroneous interpretation of the law or factual findings not supported by substantial evidence such that the Decision should be modified.” slip op. at 9
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“In particular, we explained that the District Court’s ruling is on appeal, and Amazon has intervened in the appeal to continue its defense of Petitioner Entities’ interests in Amazon’s products. Id. at 29−30; Ex. 2017 (Patent Owner’s Appeal Brief); Ex. 2018 (Amazon’s Motion to Intervene). Thus, we concluded that the circumstances present here, which include the above-noted preexisting legal relationship between Amazon and some of the Petitioner Entities, have not changed and that Amazon and Petitioner Entities remain in privity. Dec. 23−24, 27−30, 35.” slip op. at 8
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“concerns by evaluating whether one or more of the Taylor’s categories apply. Dec. 18−36. We separately and expressly analyzed three grounds— namely, Taylor’s second, third, and fifth categories identified above. Id. For example, the third Taylor category, addressing due process concerns, is whether a party not involved in a lawsuit nevertheless was represented adequately by someone with the same interests who was a party to the lawsuit. See Taylor, 553 U.S. at 894; WesternGeco, 889 F.3d at 1319. We determined that Amazon is a privy of several Petitioner Entities under this ground, as well as two additional grounds. Dec. 18−36.” slip op. at 5
Discretionary denialPatents in suitUS 7,802,310 - PTAB · Mar 16, 2020 · IPR2019-01092 · APJ David C Mckone · IPR · Rehearing
The Board denied rehearing and maintained its denial of the petition as time-barred under § 315(b) because Petitioner entities remained in privity with Amazon.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burden of showing that the Decision should be modified is on Petitioner entities, the parties challenging the Institution Decision. See 37 C.F.R. § 42.71(d) (2018). In addition, “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 3
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“particular, we explained that the District Court’s ruling is on appeal, and Amazon has intervened in the appeal to continue its defense of Petitioner entities’ interests in Amazon’s products. Dec. 18, 20–21; Exs. 2017–2018. Thus, we concluded that the circumstances present here, which include the above-noted preexisting legal relationship between Amazon and at least some of the Petitioner entities, have not changed, and that Amazon and Petitioner entities remain in privity. Dec. 18, 21.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiDecided for patent owner
“the customer cases [, which include at least some Petitioner entities,3] are in privity with Amazon because they share the same interest in the unfettered use of Amazon’s web services, and Amazon adequately represented this interest in the [2011] Texas Action.” Ex. 2012, 14 (emphases added), quoted in Dec. 14. We do not understand Petitioner entities to be arguing that this determination was incorrect—Petitioner entities are the clear beneficiaries of the District Court’s ruling. In our Decision, we noted that the District Court’s articulation “is very similar, if not identical, to category three (adequate representation by the named party) in Taylor, where nonparty preclusion based on a privity relationship may be found.”” slip op. at 5
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for patent owner
“preclusion is, of course, subject to due process limitations,” and that “[a] person who was not a party to a suit generally has not had a ‘full and fair opportunity to litigate’ the claims and issues settled in that suit.” Taylor v. Sturgell, 533 U.S. 880 (2008), 891–92. Thus, “[a]s informed by Taylor and other cases, the standards for the privity inquiry must be grounded in due process.” WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1319 (Fed. Cir. 2018). According to the U.S. Court of Appeals for the Federal Circuit, “[b]ecause nonparty preclusion risks binding those who have not had a full and fair opportunity to litigate, the Supreme Court has cautioned that there is a general rule against nonparty preclusion, subject to certain exceptions.” Id. (emphasis added); accord Taylor, 533 U.S. at 893 (“[T]he rule against nonparty preclusion is subject to exceptions.”). Taylor groups such exceptions into six categories, 533 U.S. at 893–95, three of which we analyzed in the Decision, at 13–27 (analyzing exceptions 2, 3, and” slip op. at 4
Discretionary denialPatents in suitUS 6,928,442 - PTAB · Mar 16, 2020 · IPR2019-01093 · APJ Denise M Pothier · IPR · Rehearing
The Board denied rehearing and maintained denial of institution because the petitioner entities remained in privity with time-barred Amazon under § 315(b).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” The abuse of discretion standard of review is the same heightened standard that federal appeals courts use to review district court factual findings. See PNY Techs., Inc. v. Phison Elecs. Corp., IPR2013-00472, Paper 16 at 2 (PTAB Apr. 23, 2014) (Final Written Decision) (citing Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005) (“An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.”)). A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d) (2018). The party must identify specifically all matters that we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id.” slip op. at 3
- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“entities’ interests in Amazon’s products. Id. at 19, 21–22; Exs. 2017–2018. Thus, we concluded that the circumstances present here, which include the above-noted preexisting legal relationship between Amazon and at least some of the Petitioner entities, have not changed and that Amazon and Petitioner entities remain in privity. Dec. 19, 22–23.” slip op. at 8
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“Specifically, the District Court expressly found that “the defendants in the customer cases[, which include at least some Petitioner entities,3] are in privity with Amazon because they share the same interest in the unfettered use of Amazon’s web services, and Amazon adequately represented this interest in the [2011] Texas Action.” Ex. 2012, 14 (emphases added), quoted in Dec. 23. Petitioner entities are the clear beneficiaries of this ruling by the District Court, and we do not understand Petitioner entities to be arguing that this determination by the District Court was incorrect. In our 3 As stated in the Decision (Dec. 13), the U.S. Court of Appeals for the Federal Circuit in Click-to-Call read § 315(b) “to apply petition-by-petition, not petitioner-by-petitioner, with the collection of petitioners on a single petition treated as a unit indistinguishable from each member of that collection” “for the one-year time bar.” Click-to-Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321, 1338 (Fed. Cir. 2018) (en banc in part). Decision, we noted that the District Court’s articulation “is very similar, if not identical, to [exception] three (adequate representation by the named party) in Taylor, where nonparty preclusion based on a privity relationship may be found.” Dec. 16. In the Decision, we further agreed with the District Court’s determination related to privity and reached the same conclusion upon considering the parties’ arguments and evidence. Id. at 23– 27. Thus, we considered whether denying the Petition was consistent with and grounded in due process, and concluded that it was, because, as analyzed in the Decision and discussed above, the record’s evidence met the third Taylor exception.” slip op. at 5
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for patent owner
“The Supreme Court has stated that “[t]he federal common law of preclusion is, of course, subject to due process limitations,” and that “[a] person who was not a party to a suit generally has not had a ‘full and fair opportunity to litigate’ the claims and issues settled in that suit.” Taylor, 533 U.S. at 891–92. Thus, “[a]s informed by Taylor and other cases, the standards for the privity inquiry must be grounded in due process.” WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1319 (Fed. Cir. 2018). According to the Federal Circuit, “[b]ecause nonparty preclusion risks binding those who have not had a full and fair opportunity to litigate, the Supreme Court has cautioned that there is a general rule against nonparty preclusion, subject to certain exceptions.” Id. (emphasis added); accord Taylor, 533 U.S. at 893 (“[T]he rule against nonparty preclusion is subject to exceptions.”). Taylor groups such exceptions into six categories, 533 U.S. at 893–95, three of which we analyzed in the Decision. Dec. 13–28 (analyzing the second exception (pre-existing substantive legal relationship between the 2 Patent Owner filed a complaint against Amazon on December 8, 2011, in the Eastern District of Texas (“the 2011 Amazon lawsuit”), alleging infringement of the ’544 patent based on Amazon’s Simple Storage Service (“S3”). Pet. 2; Prelim. Resp. 13–14 (citing PersonalWeb Techs. LLC v. Amazon Web Servs. LLC, No. 6:11-cv-00658 (E.D. Tex. dismissed on June 9, 2014)). parties), the third exception (adequate representation by the named party), and fifth exception (the nonparty acts as a proxy for the named party to re-litigate the same issues)). See also WesternGeco, 889 F.3d at 1319 (summarizing Taylor’s “non-exhaustive list of considerations where nonparty preclusion would be justified”). In the Decision, we addressed Petitioner entities’ due process concerns by evaluating whether one or more of Taylor’s exceptions apply. For example, one of the Taylor exceptions (the third exception) addressing due process concerns considers whether a nonparty to a lawsuit was represented adequately by someone with the same interests who was a party to the lawsuit. See Taylor, 553 U.S. at 894; WesternGeco, 889 F.3d at 1319. As explained below, we considered and analyzed this exception in the Decision.” slip op. at 4
Discretionary denialPatents in suitUS 7,945,544
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.