- Amazon.Com, Inc. / Amazon Web Services, Inc. et al. v. Almondnet, Inc And Intent Iq, LLCInstitution deniedPTAB · Jun 6, 2023 · IPR2023-00227 · APJ Kristen L Droesch · IPR · Institution
The Board denied institution of review of claims 36 and 37 as time-barred under § 315(b), and denied the motion for joinder as moot.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) 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.” Patent Owner served Petitioner with a complaint alleging infringement of the ’398 Patent in September 2021. Ex. 1016. Petitioner filed the Petition more than one year later on November 18, 2022. Pet. 80. Petitioner relies on its request to join the Meta IPR to avoid the time bar of 35 U.S.C. § 315(b). Pet. 9 (“Because Petitioner files an accompanying motion for” slip op. at 6
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“In any event, in addition to the mootness of Petitioner’s Motion for Joinder due to termination of the Meta IPR, we are not persuaded that joinder would have been appropriate. More specifically, we are not persuaded by Petitioner’s arguments that “joinder will have little, if any impact on the Meta IPR because . . . the schedule would be unaffected.” Mot. 3; see also Mot. 4 (“Joinder will not affect the schedule in the Meta IPR.”). We note that stipulated Due Date 2 for filing a reply in the Meta IPR was May 2, 2023. See IPR2022-00773, Paper 14. In view of the fact that stipulated Due Date 2 in the Meta IPR has passed, and no reply has been filed in the Meta IPR, Petitioner does not sufficiently address how “the requested joinder will not create any additional burden for the Patent Owner or the Board and will not require any additional time or resources.” Pet. Prelim. Reply 1. As pointed out by Patent Owner, “even if this proceeding went forward by essentially ‘picking up’ where the Meta . . . IPR left off, the existing schedule [of the Meta IPR] would need to be pushed back significantly, to allow time after institution for Petitioner[] to depose Patent Owner’s expert and prepare a reply.” PO Prelim. Sur-Reply 2. Because Petitioner does not meaningfully address the impact joinder would have had on the Meta IPR schedule, joinder also would not have been appropriate.” slip op. at 7
Discretionary denialPatents in suitUS 8,677,398 - Commscope, Inc. v. TQ Delta, LLC.Institution deniedPTAB · Apr 25, 2023 · IPR2023-00068 · APJ Lynne E Pettigrew · IPR · Institution
The Board denied institution of review of claims 9–16 as time-barred under § 315(b), and denied CommScope’s motion for joinder as moot.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“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.”” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“The ’664 IPR, however, has been terminated. Nokia of Am. Corp. v. TQ Delta, LLC, IPR2022-00664, Paper 24 at 3 (PTAB Dec. 8, 2022). Thus, there no longer is a pending proceeding in the ’664 IPR for Petitioner to join. As a result, Petitioner’s request to join the ’664 IPR is moot, and the Petition is not timely under 35 U.S.C. § 315(b). IV. CONCLUSION The Motion for Joinder is denied as moot because the ’664 IPR already has been terminated, and the Petition is denied because it was not filed within the time period set forth in 35 U.S.C. § 315(b). V. ORDER Accordingly, it is ORDERED that the Motion for Joinder is denied as moot; and” slip op. at 5
Discretionary denialPatents in suitUS 7,844,882 - Commscope, Inc. v. TQ Delta, LLCInstitution deniedPTAB · Apr 25, 2023 · IPR2023-00064 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution of review of claims 1–4 as time-barred under § 315(b) and denied joinder as moot because the proceeding to be joined had terminated.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“petitioner is served with a complaint alleging infringement of the patent.” Patent Owner served 2Wire, Inc. (“2Wire”), a privy of Petitioner,1 with a complaint alleging infringement of the ’048 patent in February 2014. Ex. 2001; Ex. 2002. Patent Owner served Petitioner with a complaint alleging infringement of the ’048 patent on August 17, 2021. Ex. 1027; Ex. 3001. Petitioner filed the Petition more than one year later on October 26, 2022. Pet. 79. Petitioner does not dispute those facts, but instead relies on its request to join the ’666 IPR to avoid the time limit in Section 315(b). Pet. 1 (“Because . . . this is a copycat petition . . . accompanied by a motion for joinder . . . , the time bar under § 315(b) does not apply.”); Mot. 8–10 (“the one-year time limitation does not apply to a request for joinder”). The ’666 IPR, however, has been terminated. Nokia of Am. Corp. v. TQ Delta, LLC, IPR2022-00666, Paper 23 at 3 (PTAB Dec. 8, 2022). Thus, there no longer is a pending proceeding in the ’666 IPR for Petitioner to join. As a result, Petitioner’s request to join the ’666 IPR is moot, and the Petition is not timely under Section 315(b).” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“The ’666 IPR, however, has been terminated. Nokia of Am. Corp. v. TQ Delta, LLC, IPR2022-00666, Paper 23 at 3 (PTAB Dec. 8, 2022). Thus, there no longer is a pending proceeding in the ’666 IPR for Petitioner to join. As a result, Petitioner’s request to join the ’666 IPR is moot, and the Petition is not timely under Section 315(b). III. CONCLUSION The Motion for Joinder is denied as moot because the ’666 IPR” slip op. at 5
Discretionary denialPatents in suitUS 8,276,048 - Commscope, Inc. v. TQ Delta, LLCInstitution deniedPTAB · Apr 25, 2023 · IPR2023-00066 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution of IPR on claims 1–8 as time-barred under § 315(b), and denied joinder as moot because the proceeding sought to be joined had terminated.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“petitioner is served with a complaint alleging infringement of the patent.” Patent Owner served 2Wire, Inc. (“2Wire”), a privy of Petitioner,1 with a complaint alleging infringement of the ’381 patent in February 2014. Ex. 2001; Ex. 2002. Petitioner filed the Petition more than one year later on November 1, 2022. Pet. 79. Petitioner does not dispute those facts, but instead relies on its request to join the ’665 IPR to avoid the time limit in Section 315(b). Pet. 1 (“Because . . . CommScope will file an accompanying motion for joinder . . . , the time bar under § 315(b) does not apply.”); Mot. 8–10 (“the one-year time limitation does not apply to a request for joinder”). The ’665 IPR, however, has been terminated. Nokia of Am. Corp. v. TQ Delta, LLC, IPR2022-00665, Paper 23 at 3 (PTAB Dec. 8, 2022). Thus, there no longer is a pending proceeding in the ’665 IPR for Petitioner to join. As a result, Petitioner’s request to join the ’665 IPR is moot, and the Petition is not timely under Section 315(b).” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“The ’665 IPR, however, has been terminated. Nokia of Am. Corp. v. TQ Delta, LLC, IPR2022-00665, Paper 23 at 3 (PTAB Dec. 8, 2022). Thus, there no longer is a pending proceeding in the ’665 IPR for Petitioner to join. As a result, Petitioner’s request to join the ’665 IPR is moot, and the Petition is not timely under Section 315(b).” slip op. at 5
Discretionary denialPatents in suitUS 7,836,381 - Commscope, Inc. v. TQ Delta, LLCInstitution deniedPTAB · Dec 19, 2022 · IPR2022-01443 · APJ Karl D Easthom · IPR · Institution
The Board denied institution because CommScope’s petition was time-barred under § 315(b), and denied joinder because the IPR it sought to join had been terminated.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“Further, we effectively maintain the Board’s holding that CommScope’s first petition remains time-barred. For the same reasons, the Petition in this proceeding is also time-barred, and institution is denied. See IPR2022-00352, Paper 13.” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“In this proceeding, Petitioner relies on its request to join the ’471 IPR to avoid the time bar in § 315(b). Pet. 68 (“[B]ecause CommScope will file a motion for joinder with the Nokia IPR, the time-bar set forth in 35 U.S.C. § 315(b) does not apply to this petition.”). However, the Board terminated the ’471 IPR based on settlement between the parties, noting the Board’s policy goal of fostering settlements. IPR2022-00471, Paper 41. There is no pending proceeding in the ’471 IPR for Petitioner to join. As a result, Petitioner’s request to join the ’471 IPR is denied.” slip op. at 3
Discretionary denialPatents in suitUS 8,462,835 - Code200, Uab / Teso LT, Uab et al. v. Bright Data Ltd.Institution deniedPTAB · Dec 12, 2022 · IPR2022-01109 · 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
“Practice Guide instructs us that a party seeking to maintain multiple challenges to the same patent claims carries a heavy burden of establishing that multiple petitions are necessary. Petitioner contends that Patent Owner has not carried that burden. Joinder Opp. 1. We agree. Petitioner has not explained why the 1492 IPR is an insufficient challenge. It is true that the 135 IPR involves Plamondon, another reference. But Petitioner has not explained how Plamondon differs from Crowds, Border, or MorphMix, or why granting joinder with the 135 IPR would be in the interest of justice, given Petitioner’s involvement managing the1492 IPR challenging substantially the same claims. In the words of our Trial Practice Guide, Petitioner fails to show “why the Board should exercise its discretion to institute additional petitions if it identifies one petition that satisfies petitioner’s burden under 35 U.S.C. § 314(a).” TPG 60. We see no evidence in the record suggesting that The Data Company is unqualified to manage the 135 IPR, or that Petitioner would add anything significant to that proceeding in its understudy role.” slip op. at 12
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“III. DENIAL OF INTER PARTES REVIEW It is undisputed that Petitioner was served with a complaint alleging infringement of the ’319 patent more than one year prior to filing the Petition in this proceeding. See Joinder Mot. 2; Joinder Opp. 1. Accordingly, in view of the denial of the requested relief of joinder with the 135 IPR, 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). 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 seeking inter partes review of the ’319 patent, we deny the Petition and do not institute review as to any of the challenged claims.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“For the reasons described below, we deny Petitioner’s Motion for Joinder. Furthermore, we deny the Petition as time-barred under 35 U.S.C. § 315(b). We do not reach Patent Owner’s additional contentions including those based on Fintiv or General Plastic.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Not reached
“For the reasons described below, we deny Petitioner’s Motion for Joinder. Furthermore, we deny the Petition as time-barred under 35 U.S.C. § 315(b). We do not reach Patent Owner’s additional contentions including those based on Fintiv or General Plastic.” slip op. at 3
Discretionary denialPatents in suitUS 10,257,319 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Memoryweb, LLCInstitution deniedPTAB · Nov 17, 2022 · IPR2022-00885 · APJ Kevin C Trock · IPR · Institution
The Board denied institution because the IPR petition was filed less than nine months after the patent issued and before termination of the concurrent PGR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied time barInstitution denied
“either—(1) the date that is 9 months after the grant of a patent; or (2) if a post-grant review is instituted under chapter 32, the date of the termination of such post-grant review.” 35 U.S.C. § 311(c). Similarly, our rules require that, for patents described in section 3(n)(1) of the Leahy-Smith America Invents Act, Pub. L. No. 112–29, 125 Stat. 284 (Sept. 16, 2011) (“AIA”), a petition for inter partes review must be filed no earlier than nine months after the date of the grant of the patent. 37 C.F.R. § 42.102(a)(1). Patents subject to the AIA first-inventor-to file provisions are those that issue from applications “that contain or contained at any time—” slip op. at 6
Discretionary denialPatents in suitUS 11,163,823 - Commscope, Inc. v. TQ Delta, LLCInstitution deniedPTAB · Aug 19, 2022 · IPR2022-00352 · APJ Joni Y Chang · IPR · Institution
The Board denied institution on all challenged claims because time-barred 2Wire was an RPI and was in privity with CommScope under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“It is undisputed that 2Wire is time-barred under § 315(b) because 2Wire was served with a complaint alleging infringement of the ’835 patent 12 on February 7, 2014, more than one year before December 31, 2021, the filing date of the Petition. Pet. 65; Ex. 1034; Prelim. Resp. 12. CommScope identifies ARRIS Solutions as an RPI to this IPR proceeding and confirms that “2Wire, Inc. was merged into ARRIS Solutions, Inc.” Paper 7, 2. Indeed, 2Wire’s Amended Corporate Disclosure Statement filed in the Delaware case indicates that “the undersigned counsel of record for 2Wire, Inc. certifies that 2Wire, Inc. has been merged to form ARRIS Solutions, Inc.” and that “[t]his name change is the result of a merger . . . that became effective January 1, 2017.” Ex. 2009, 1. Moreover, CommScope acknowledges that 2Wire is “CommScope’s predecessor-in-interest in the District of Delaware,” and that “[o]n April 4, 2019, CommScope Holding Company, Inc.[, an RPI identified by Petitioner,] acquired the successor-ininterest of 2 Wire.” Ex. 2035, 5; Pet. 64. In sum, CommScope identifies ARRIS Solutions as an RPI in this IPR proceeding and 2Wire merged with ARRIS Solutions. As a result, we are persuaded that 2Wire is an RPI in this IPR proceeding. Accordingly, the Petition is time-barred under § 315(b). See Power Integrations, Inc., 926 F.3d at 1310, 1318 (holding that the IPR Petition was time-barred under § 315(b) because time-barred entity Fairchild, which had merged with the petitioner, was an RPI at the time of institution).” slip op. at 12
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“on February 7, 2014, more than one year before December 31, 2021, the filing date of the Petition. Pet. 65; Ex. 1034; Prelim. Resp. 12. CommScope identifies ARRIS Solutions as an RPI to this IPR proceeding and confirms that “2Wire, Inc. was merged into ARRIS Solutions, Inc.” Paper 7, 2. Indeed, 2Wire’s Amended Corporate Disclosure Statement filed in the Delaware case indicates that “the undersigned counsel of record for 2Wire, Inc. certifies that 2Wire, Inc. has been merged to form ARRIS Solutions, Inc.” and that “[t]his name change is the result of a merger . . . that became effective January 1, 2017.” Ex. 2009, 1. Moreover, CommScope acknowledges that 2Wire is “CommScope’s predecessor-in-interest in the District of Delaware,” and that “[o]n April 4, 2019, CommScope Holding Company, Inc.[, an RPI identified by Petitioner,] acquired the successor-ininterest of 2 Wire.” Ex. 2035, 5; Pet. 64. In sum, CommScope identifies ARRIS Solutions as an RPI in this IPR proceeding and 2Wire merged with ARRIS Solutions. As a result, we are persuaded that 2Wire is an RPI in this IPR proceeding. Accordingly, the Petition is time-barred under § 315(b). See Power Integrations, Inc., 926 F.3d at 1310, 1318 (holding that the IPR Petition was time-barred under § 315(b) because time-barred entity Fairchild, which had merged with the petitioner, was an RPI at the time of institution).” slip op. at 13
Discretionary denialPatents in suitUS 8,462,835 - 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 - 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
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.