- 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 - 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 - Microsoft Corporation v. Science Applications International CorporationInstitution deniedPTAB · Feb 3, 2020 · IPR2019-01361 · APJ Jason M Repko · IPR · Institution
The Board denied institution because the government was Microsoft's privy and the petitions were time-barred under § 315(b); it also independently denied review under § 314(a).
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1317 (Fed. Cir. 2018). Rather, “privity” has a common-law meaning. Id. “Privity is essentially a shorthand statement that collateral estoppel is to be applied in a given case.” Id. at 1318 (quoting Trial Practice Guide, 77 Fed. Reg. at 48,759). The privity “analysis seeks to determine whether the relationship between the purported ‘privy’ and the relevant other party is sufficiently close such that both should be bound by the trial outcome and related estoppels.” TPG 14–15. “[T]he standards for the privity inquiry must be grounded in due process.” WesternGeco, 889 F.3d. at 1319. For example, it is important whether the petitioner and a prior litigant’s relationship is sufficiently close that it can be fairly said that the petitioner had a full and fair opportunity to litigate the patent’s validity in the corresponding lawsuit. See id. “Due process also prohibits a litigant from taking a second bite at the apple by relitigating the same case through the persona of another, its privy.” AIT, 897 F.3d at 1359 (Reyna, J., concurring).” slip op. at 6
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1317 (Fed. Cir. 2018). Rather, “privity” has a common-law meaning. Id. “Privity is essentially a shorthand statement that collateral estoppel is to be applied in a given case.” Id. at 1318 (quoting Trial Practice Guide, 77 Fed. Reg. at 48,759). The privity “analysis seeks to determine whether the relationship between the purported ‘privy’ and the relevant other party is sufficiently close such that both should be bound by the trial outcome and related estoppels.” TPG 14–15. “[T]he standards for the privity inquiry must be grounded in due process.” WesternGeco, 889 F.3d. at 1319. For example, it is important whether the petitioner and a prior litigant’s relationship is sufficiently close that it can be fairly said that the petitioner had a full and fair opportunity to litigate the patent’s validity in the corresponding lawsuit. See id. “Due process also prohibits a litigant from taking a second bite at the apple by relitigating the same case through the persona of another, its privy.” AIT, 897 F.3d at 1359 (Reyna, J., concurring). In Taylor v. Sturgell, 553 U.S. 880 (2008), the Supreme Court identified a non-exhaustive list of six considerations under which nonparty preclusion would be justified: (1) an agreement between the parties to be bound; (2) pre-existing substantive legal relationships between the parties; (3) adequate representation by the named party; (4) the nonparty’s control of the prior litigation; (5) where the nonparty acts as a proxy for the named party to re-litigate the same issues; and (6) where special statutory schemes foreclose successive litigation by the nonparty (e.g., bankruptcy or probate). WesternGeco, 889 F.3d. at 1319−20 (citing Taylor, 553 U.S. at 894–95). The presence of one of these is sufficient to establish privity. See id.” slip op. at 6
- Other 314aInstitution denied discretionary otherInstitution denied
“D. DISCRETIONARY DENIAL UNDER SECTION 314(A) Institution of inter partes review is discretionary. 35 U.S.C. § 314(a); SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with discretion on the question whether to institute review . . . .” (emphasis omitted)); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”); see also 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). “[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016). Even if Petitioner and the government were not in privity, we would exercise our discretion to deny review to avoid any concerns that the government is obtaining a benefit to which it is not permitted under Return Mail.” slip op. at 13
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“All papers are available for public access by default. See 35 U.S.C. § 316(a)(1). A party may file a concurrent motion to seal, and the information at issue is sealed pending the motion’s outcome. 37 C.F.R. § 42.54. The standard for granting a motion to seal is “for good cause.” 37 C.F.R. § 42.54(a). For instance, we consider whether the movant has adequately shown that (1) the information sought to be sealed is truly confidential, (2) a concrete harm would result upon public disclosure, (3) there exists a genuine need to rely in the trial on the specific information sought to be sealed, and (4) on balance, an interest in maintaining confidentiality outweighs the strong public interest in having an open record. Argentum Pharms. LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 at 4 (PTAB Jan. 19, 2018) (Denying Motion to Seal) (informative). Confidential information includes, but is not limited to, commercial information. 37 C.F.R. § 42.54(7). Here, the information to be sealed includes a discussion of and direct quotations from the contract filed as Exhibit 2006. See Pet. Mot. to Seal 3–5; PO Mot. to Seal 1–2. The contract is not publicly available, it has been sealed in this proceeding, and it contains the details and financial terms of an agreement between Petitioner and the government. We are persuaded that the Motions demonstrate that the information sought to be sealed reflects Petitioner’s confidential business information and that “an interest in maintaining confidentiality outweighs the strong public interest in having an open record” here. See Argentum, Paper 27 at 4. Also, Patent Owner asserts that the United States is a real party in interest and privy in this proceeding. The information to be sealed is the basis for Patent Owner’s argument that Petitioner is time-barred under 35 U.S.C. § 315(b). Pet. Mot. to Seal 3–5; PO Mot. to Seal 1–2. Because Patent Owner’s argument and Petitioner’s rebuttal depend on the information to be sealed, the parties have adequately shown that there exists a genuine need to rely on that information. See Argentum, Paper 27 at 4. For these reasons, we determine that good cause exists for sealing part of Petitioner’s Reply, part of Patent Owner’s Sur-Reply, and the concurrently filed exhibits (Exs. 1027, 2006). Thus, we grant the Motions to Seal in each case.” slip op. at 14
Discretionary denialPatents in suitUS 9,618,752 - Microsoft Corporation v. Science Applications International CorporationInstitution deniedPTAB · Feb 3, 2020 · IPR2019-01360 · APJ Jason M Repko · IPR · Institution
The Board denied the petitions because the government was Microsoft’s privy, making the petitions time-barred under § 315(b); it also exercised § 314(a) discretion to deny review.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“pre-existing substantive legal relationships between the parties” Under the second Taylor factor, the evidence shows a “pre-existing substantive legal relationship between” the government and Petitioner. “Qualifying relationships include, but are not limited to, preceding and succeeding owners of property, bailee and bailor, and assignee and assignor.” See Taylor, 553 U.S. at 894. “A common character of these relationships is that the two parties share a high degree of commonality of proprietary or financial interest.” AIT, 897 F.3d at 1352 (Reyna, J., concurring). The evidence here shows that the government and Petitioner share such interests. Before requesting inter partes review, the government had a preexisting, established relationship with Petitioner. In particular, Patent Owner has an ongoing infringement lawsuit against the government in the Court of Federal Claims. Pet. 3 (citing Ex. 1025, (“the Complaint”)). Petitioner entered into the Contract with the government to develop a system incorporating the allegedly infringing feature. Id. slip op. at 7
- PTAB / AIA Trials › §315(b) time barDenied
“C. SECTION 315(B) BARS INSTITUTION We have found that the government, a nonparty to the instant proceedings, is a privy of Petitioner. Under 35 U.S.C. § 315(b), “[a]n 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.” The government was served with a complaint alleging infringement of the patents-at-issue in 2017. The instant Petitions were filed in July 2019, more than 1 year from the service of the complaint on the government. Accordingly, inter partes review may not be instituted under § 315(b).” slip op. at 13
- Other 314aInstitution denied discretionary otherDenied
“D. DISCRETIONARY DENIAL UNDER SECTION 314(A) Institution of inter partes review is discretionary. 35 U.S.C. § 314(a); SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with discretion on the question whether to institute review . . . .” (emphasis omitted)); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”); see also 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). “[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016). Even if Petitioner and the government were not in privity, we would exercise our discretion to deny review to avoid any concerns that the government is obtaining a benefit to which it is not permitted under Return Mail.” slip op. at 13
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“All papers are available for public access by default. See 35 U.S.C. § 316(a)(1). A party may file a concurrent motion to seal, and the information at issue is sealed pending the motion’s outcome. 37 C.F.R. § 42.54. The standard for granting a motion to seal is “for good cause.” 37 C.F.R. § 42.54(a). For instance, we consider whether the movant has adequately shown that (1) the information sought to be sealed is truly confidential, (2) a concrete harm would result upon public disclosure, (3) there exists a genuine need to rely in the trial on the specific information sought to be sealed, and (4) on balance, an interest in maintaining confidentiality outweighs the strong public interest in having an open record. Argentum Pharms. LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 at 4 (PTAB Jan. 19, 2018) (Denying Motion to Seal) (informative). Confidential information includes, but is not limited to, commercial information. 37 C.F.R. § 42.54(7). Here, the information to be sealed includes a discussion of and direct quotations from the contract filed as Exhibit 2006. See Pet. Mot. to Seal 3–5; PO Mot. to Seal 1–2. The contract is not publicly available, it has been sealed in this proceeding, and it contains the details and financial terms of an agreement between Petitioner and the government. We are persuaded that the Motions demonstrate that the information sought to be sealed reflects Petitioner’s confidential business information and that “an interest in maintaining confidentiality outweighs the strong public interest in having an open record” here. See Argentum, Paper 27 at 4.” slip op. at 14
Discretionary denialPatents in suitUS 9,229,230 - Microsoft Corporation v. Science Applications International CorporationInstitution deniedPTAB · Feb 3, 2020 · IPR2019-01359 · APJ Jason M Repko · IPR · Institution
The Board denied institution because the government was Microsoft’s privy and was served with an infringement complaint more than one year before the petitions; it also denied review under § 314(a).
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1317 (Fed. Cir. 2018). Rather, “privity” has a common-law meaning. Id. “Privity is essentially a shorthand statement that collateral estoppel is to be applied in a given case.” Id. at 1318 (quoting Trial Practice Guide, 77 Fed. Reg. at 48,759). The privity “analysis seeks to determine whether the relationship between the purported ‘privy’ and the relevant other party is sufficiently close such that both should be bound by the trial outcome and related estoppels.” TPG 14–15. “[T]he standards for the privity inquiry must be grounded in due process.” WesternGeco, 889 F.3d. at 1319. For example, it is important whether the petitioner and a prior litigant’s relationship is sufficiently close that it can be fairly said that the petitioner had a full and fair opportunity to litigate the patent’s validity in the corresponding lawsuit. See id. “Due process also prohibits a litigant from taking a second bite at the apple by relitigating the same case through the persona of another, its privy.” AIT, 897 F.3d at 1359 (Reyna, J., concurring). In Taylor v. Sturgell, 553 U.S. 880 (2008), the Supreme Court identified a non-exhaustive list of six considerations under which nonparty preclusion would be justified: (1) an agreement between the parties to be bound; (2) pre-existing substantive legal relationships between the parties; (3) adequate representation by the named party; (4) the nonparty’s control of the prior litigation; (5) where the nonparty acts as a proxy for the named party to re-litigate the same issues; and (6) where special statutory schemes foreclose successive litigation by the nonparty (e.g., bankruptcy or probate). WesternGeco, 889 F.3d. at 1319−20 (citing Taylor, 553 U.S. at 894–95). The presence of one of these is sufficient to establish privity. See id.” slip op. at 6
- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“nonparty” A special statutory scheme applies here under 35 U.S.C. § 315(b), which bars institution of an IPR if a “privy of the petitioner is served with a complaint alleging infringement of the patent” more than one year before the petition was filed. Moreover, we note that the government, according to a recent Supreme Court case, is not a “person” that can file a Petition for inter partes review under 35 U.S.C. § 311. Return Mail, Inc. v. United States Postal Service, 139 S. Ct. 1853 (2019). Thus, Petitioner’s filings are the only filed Petitions from which the government could benefit, because the government could not file its own petition in light of the June 10, 2019, Return Mail decision.” slip op. at 11
- Other 314aInstitution denied discretionary otherInstitution denied
“D. DISCRETIONARY DENIAL UNDER SECTION 314(A) Institution of inter partes review is discretionary. 35 U.S.C. § 314(a); SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with discretion on the question whether to institute review . . . .” (emphasis omitted)); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”); see also 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). “[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016). Even if Petitioner and the government were not in privity, we would exercise our discretion to deny review to avoid any concerns that the government is obtaining a benefit to which it is not permitted under Return Mail.” slip op. at 13
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“All papers are available for public access by default. See 35 U.S.C. § 316(a)(1). A party may file a concurrent motion to seal, and the information at issue is sealed pending the motion’s outcome. 37 C.F.R. § 42.54. The standard for granting a motion to seal is “for good cause.” 37 C.F.R. § 42.54(a). For instance, we consider whether the movant has adequately shown that (1) the information sought to be sealed is truly confidential, (2) a concrete harm would result upon public disclosure, (3) there exists a genuine need to rely in the trial on the specific information sought to be sealed, and (4) on balance, an interest in maintaining confidentiality outweighs the strong public interest in having an open record. Argentum Pharms. LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 at 4 (PTAB Jan. 19, 2018) (Denying Motion to Seal) (informative). Confidential information includes, but is not limited to, commercial information. 37 C.F.R. § 42.54(7). Here, the information to be sealed includes a discussion of and direct quotations from the contract filed as Exhibit 2006. See Pet. Mot. to Seal 3–5; PO Mot. to Seal 1–2. The contract is not publicly available, it has been sealed in this proceeding, and it contains the details and financial terms of an agreement between Petitioner and the government. We are persuaded that the Motions demonstrate that the information sought to be sealed reflects Petitioner’s confidential business information and that “an interest in maintaining confidentiality outweighs the strong public interest in having an open record” here. See Argentum, Paper 27 at 4. Also, Patent Owner asserts that the United States is a real party in interest and privy in this proceeding. The information to be sealed is the basis for Patent Owner’s argument that Petitioner is time-barred under 35 U.S.C. § 315(b). Pet. Mot. to Seal 3–5; PO Mot. to Seal 1–2. Because Patent Owner’s argument and Petitioner’s rebuttal depend on the information to be sealed, the parties have adequately shown that there exists a genuine need to rely on that information. See Argentum, Paper 27 at 4. For these reasons, we determine that good cause exists for sealing part of Petitioner’s Reply, part of Patent Owner’s Sur-Reply, and the concurrently filed exhibits (Exs. 1027, 2006). Thus, we grant the Motions to Seal in each case.” slip op. at 14
Discretionary denialPatents in suitUS 9,229,230 - Microsoft Corporation v. Science Applications International CorporationInstitution deniedPTAB · Feb 3, 2020 · IPR2019-01311 · APJ Jason M Repko · IPR · Institution
The Board denied the petitions because the government was Microsoft's privy and had been served with infringement complaints more than one year before filing; it also denied review under § 314(a).
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“The evidence here shows that the government and Petitioner share such interests. Before requesting inter partes review, the government had a preexisting, established relationship with Petitioner. In particular, Patent Owner has an ongoing infringement lawsuit against the government in the Court of Federal Claims. Pet. 3 (citing Ex. 1025, (“the Complaint”)). Petitioner entered into the Contract with the government to develop a system incorporating the allegedly infringing feature. Id. Therefore, both Petitioner and the government share a common interest in canceling the allegedly infringed claims.” slip op. at 7
- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“existing substantive legal relationship. This provides at least one ground of nonparty preclusion under Taylor. We further determine, as discussed below, that two other Taylor factors support our privity determination. 2. “where special statutory schemes foreclose successive litigation by the nonparty” A special statutory scheme applies here under 35 U.S.C. § 315(b), which bars institution of an IPR if a “privy of the petitioner is served with a complaint alleging infringement of the patent” more than one year before the petition was filed. Moreover, we note that the government, according to a recent Supreme Court case, is not a “person” that can file a Petition for inter partes review under 35 U.S.C. § 311. Return Mail, Inc. v. United States Postal Service, 139 S. Ct. 1853 (2019). Thus, Petitioner’s filings are the only filed Petitions from which the government could benefit, because the government could not file its own petition in light of the June 10, 2019, Return Mail decision.” slip op. at 11
- Other 314aInstitution denied discretionary otherDenied
“D. DISCRETIONARY DENIAL UNDER SECTION 314(A) Institution of inter partes review is discretionary. 35 U.S.C. § 314(a); SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with discretion on the question whether to institute review . . . .” (emphasis omitted)); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”); see also 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). “[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016). Even if Petitioner and the government were not in privity, we would exercise our discretion to deny review to avoid any concerns that the government is obtaining a benefit to which it is not permitted under Return Mail.” slip op. at 13
- ExcludeGranted
“All papers are available for public access by default. See 35 U.S.C. § 316(a)(1). A party may file a concurrent motion to seal, and the information at issue is sealed pending the motion’s outcome. 37 C.F.R. § 42.54. The standard for granting a motion to seal is “for good cause.” 37 C.F.R. § 42.54(a). For instance, we consider whether the movant has adequately shown that (1) the information sought to be sealed is truly confidential, (2) a concrete harm would result upon public disclosure, (3) there exists a genuine need to rely in the trial on the specific information sought to be sealed, and (4) on balance, an interest in maintaining confidentiality outweighs the strong public interest in having an open record.” slip op. at 14
Discretionary denialPatents in suitUS 7,787,012 - Microsoft Corporation v. Science Applications International CorporationInstitution deniedPTAB · Feb 3, 2020 · IPR2019-01312 · APJ Jason M Repko · IPR · Institution
The Board denied institution because the government was Microsoft’s privy, making the petitions time-barred under § 315(b); it also independently denied review under § 314(a) discretion.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“customer-manufacturer relationship” may not be sufficient to establish privity. WesternGeco, 889 F.3d at 1321. Petitioner and the government, however, have more than a standard relationship here. As discussed in detail above, Petitioner intervened in the infringement case against the government (Mot. to Intervene), the Petition and the infringement claims against the government are intertwined (Mot. to Stay, 6–7; Ex. 2009, 4), and the Thus, we determine that the government and Petitioner have a pre- existing substantive legal relationship. This provides at least one ground of nonparty preclusion under Taylor. We further determine, as discussed below, that two other Taylor factors support our privity determination. 2. “where special statutory schemes foreclose successive litigation by the” slip op. at 11
- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“C. SECTION 315(B) BARS INSTITUTION We have found that the government, a nonparty to the instant proceedings, is a privy of Petitioner. Under 35 U.S.C. § 315(b), “[a]n 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.” The government was served with a complaint alleging infringement of the patents-at-issue in 2017. The instant Petitions were filed in July 2019, more than 1 year from the service of the complaint on the government. Accordingly, inter partes review may not be instituted under § 315(b).” slip op. at 13
- Other 314aInstitution denied discretionary otherDenied
“D. DISCRETIONARY DENIAL UNDER SECTION 314(A) Institution of inter partes review is discretionary. 35 U.S.C. § 314(a); SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with discretion on the question whether to institute review . . . .” (emphasis omitted)); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”); see also 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). “[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016). Even if Petitioner and the government were not in privity, we would exercise our discretion to deny review to avoid any concerns that the government is obtaining a benefit to which it is not permitted under Return Mail.” slip op. at 13
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“§ 316(a)(1). A party may file a concurrent motion to seal, and the information at issue is sealed pending the motion’s outcome. 37 C.F.R. § 42.54. The standard for granting a motion to seal is “for good cause.” 37 C.F.R. § 42.54(a). For instance, we consider whether the movant has adequately shown that (1) the information sought to be sealed is truly confidential, (2) a concrete harm would result upon public disclosure, (3) there exists a genuine need to rely in the trial on the specific information sought to be sealed, and (4) on balance, an interest in maintaining confidentiality outweighs the strong public interest in having an open record.” slip op. at 14
Discretionary denialPatents in suitUS 8,817,103 - PTAB · Nov 22, 2019 · IPR2019-01111 · APJ Joni Y Chang · IPR · Institution
The Board denied institution on claims 20 and 69 because the petition was time-barred under § 315(b), finding Amazon was in privity with at least one petitioner.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“(b) PATENT OWNER’S ACTION.—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. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c). “[T]he IPR petitioner bears the burden of persuasion to demonstrate that its petitions are not time-barred under § 315(b).” Worlds Inc. v. Bungie, the context of a real party in interest analysis); see also Ventex Co. v. Columbia Sportswear N. Am., Inc., IPR2017-00651, Paper 148 at 4−5 (PTAB Jan. 24, 2019) (precedential) (placing “the burden on IPR petitioners to demonstrate that its petitions are not time-barred under § 315(b) based on a complaint served on a privy more than a year before a petition is filed”). “The Board’s decision under § 315(b) is whether to institute or not. The condition precedent for this decision is whether a time-barred party (a party that has been served with a complaint alleging infringement of the patent more than one year before the IPR was filed) is the petitioner, real party in interest, or privy of the petitioner.” Power Integrations, Inc. v. Semiconductor Components Indus., LLC, 926 F.3d 1306, 1314 (Fed. Cir. 2019) (emphases added). In the Federal Circuit’s view, the language of the statute makes privity and real parties in interest relationships that may arise “before institution relevant to the § 315(b) time-bar analysis.” Id. at 1315 (emphasis added).” slip op. at 8
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“More importantly, upon consideration of the parties’ contentions and evidence before us, we similarly determine that Amazon is a privy of several Petitioner Entities under the Taylor framework. See Taylor, 553 U.S. at 894−95. Here, at least the second, third, and fifth categories of Taylor support our determination that these Petitioner Entities are in privity with Amazon, a time-barred party. Second Taylor Category As to the second Taylor category, the record shows a pre-existing substantive legal relationship between Amazon and several Petitioner Entities—namely, PayPal, Strava, Valassis, Upwork Global, and RetailMeNot. The evidence of record shows that the relationship between Amazon and these Petitioner Entities went beyond typical transactions between supplier and buyer because there exists a substantive legal relationship between them that is defined by legal obligations and a sufficient degree of commonality of interest.” slip op. at 20
Discretionary denialPatents in suitUS 7,802,310 - PTAB · Nov 21, 2019 · IPR2019-01093 · APJ Denise M Pothier · IPR · Institution
The Board denied institution for challenged claims 46, 48, 52, and 55 because Amazon was a privy of at least one petitioner and its 2011 service made the petition time-barred under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDecided for patent owner
“B. Principles of Law Section 315(b) of Title 35 of the United States Code provides: (b) PATENT OWNER’S ACTION.—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. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c). Petitioner entities “bear[] the ultimate burden of persuasion to show that [their] petitions are not time-barred under § 315(b) based on a complaint served on an alleged [privy of Petitioner entities] more than a year earlier.” Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018). “[S]ervice of a pleading asserting a claim alleging infringement triggers the one-year time period for a petitioner to file a petition under 35 U.S.C. § 315(b).” GoPro, Inc. v. 360Heros, Inc., IPR2018-01754, Paper 38 at 6 (PTAB Aug. 23, 2019) (precedential); id. at 24. This one-year trigger under 35 U.S.C. § 315(b) also applies to Petitioner entities’ privies or real parties in interest. See id. at 14 (“[T]he text of § 315(b) clearly and unmistakably considers only the date on which the petitioner, its privy, or a real party in interest was properly served with a complaint.”) (quoting Click-to-Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321, 1332 (Fed. Cir. 2018) (en banc in part)).” slip op. at 12
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“We recognize that the mere existence of an indemnity agreement might not be enough to find privity. See, e.g., WesternGeco, 889 F.3d at 1321. However, as is clear from the MDL record (summarized above), Amazon performed pursuant to the indemnity agreement and secured summary judgment related to infringement of the ’544 patent in favor of several of Petitioner entities. See, e.g., Ex. 2012, 3 (including the ’544 patent as part of the infringement action), 9 (listing “Category 3” infringement), 14 (“As to the effect of the indemnification agreement, it is undisputed that: . . . (2) sometime following PersonalWeb’s filing of complaints in the customer cases, Amazon agreed to indemnify its customers”), 16 (“Amazon assumed the indemnification of its customers prior to the consolidation of the MDL, and Amazon has not turned away any customer who has asked for indemnification”), 23 (finding that claim preclusion applied because, inter alia, the 2011 Amazon case involved the same parties or privies as the MDL proceeding), 26 (granting the DJ action “with respect to the Category 3 allegations involving use of . . . S3”). Thus, unlike in WesternGeco, in which the existence of an obligation to indemnify was ambiguous and undefined and, therefore, insufficient, 889 F.3d at 1321, Amazon actually assumed control of the lawsuits involving its customers, defended them, and secured relief on their behalf. We find this to be much stronger evidence of a pre-existing legal relationship than that shown in WesternGeco.” slip op. at 18
Discretionary denialPatents in suitUS 7,945,544 - Avigilon Corporation / Avigilon USA Corporation v. Canon Inc.Rehearing deniedPTAB · Sep 17, 2019 · IPR2018-01627 · APJ Scott E Bain · IPR · Rehearing
The Board denied Avigilon’s rehearing request, holding that § 315(a)(1) barred institution because Avigilon had filed a declaratory judgment action challenging the patent’s validity.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION A request for rehearing must “identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). The party challenging a decision in a request for rehearing bears the burden of showing that the decision should be modified. Id.” slip op. at 2
- PTAB / AIA Trials › §315(b) time barDenied
“In our Decision, we concluded that 35 U.S.C. § 315(a)(1) barred institution of an inter partes review because Avigilon previously filed a declaratory judgment action challenging the validity of claims in the ’630 patent, notwithstanding Avigilon’s voluntary dismissal without prejudice of that declaratory judgment action. Dec. 6–11. We explained that our conclusion was compelled by the Federal Circuit’s analysis in Clickto-Call Technologies, LP v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018) (en banc as to footnote 3). Dec. 8–10.” slip op. at 2
Discretionary denialPatents in suitUS 9,191,630
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.