• Code200, Uab / Teso LT, Uab et al. v. Bright Data Ltd.Institution denied
  PTAB · 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 denial
  Patents in suitUS 10,257,319
• Ford Motor Company v. Versata Development Group, Inc.Rehearing denied
  PTAB · Jul 6, 2017 · IPR2017-00151 · APJ James B Arpin · IPR · Rehearing

  The Board denied Ford’s rehearing requests, leaving in place the denials of institution because the dismissals did not lift the § 315(b) time bar.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “[a] request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. It is not an abuse of discretion to have performed an analysis or reached a conclusion with which Petitioner disagrees, and mere disagreement with the Board’s analysis or conclusion is not a proper basis for rehearing. Sophos, Inc. v. Finjan, Inc., Case IPR2015-01022, slip op. at 3–4 (PTAB Jan. 28, 2016) (Paper 9).” slip op. at 13

  • PTAB / AIA Trials › §315(b) time barDecided for patent owner

    “to pursue courses of action available to them before the action had been brought.” Req. 7–8 (quoting Atlanta Gas, slip op. at 13). Unlike Atlanta Gas and the other cases cited by Petitioner, we are persuaded that, after the dismissal of the Versata action, the parties in the instant proceedings did not enjoy the restored ability to pursue courses of action available to them before the Versata action had been brought. The Ford action would remain the first action filed, so that a new action by Patent Owner filed in the U.S. District Court for the Eastern District of Texas would remain subject to the Eleventh Circuit’s first-to-file rule. See Merrill Lynch, Pierce, Fenner & Smith, Inc. v. Haydu, 675 F.2d 1169, 1174 (11th Cir. 1982) (“In the absence of compelling circumstances, the court initially seized of a controversy should be the one to decide the case.” (Emphasis added.)). Further, although the U.S. District Court for the Eastern District of Texas had asked the parties to provide any “good faith reasons” for maintaining the Versata action, Patent Owner responded that it did not oppose dismissal, and Petitioner chose not to respond. Dec. 7–8. Thus, on this record, we understand that either party could have argued to retain the Versata action, but that, after the dismissal, the parties no longer enjoyed the ability to bring this action in the U.S. District Court for the Eastern District of Texas.” slip op. at 9

  • PTAB / AIA Trials › Real party in interest / privityNot reached

    “Req. 11. As an initial matter, Section 315(b) requires us to look at both the action, as well as the asserted patent (i.e., “a complaint alleging infringement of the patent”). Petitioner does not contend, for example, that challenged patents (e.g., the ’651 patent) were not asserted in “a complaint alleging infringement” in the Versata action. Regardless, we disagree with Petitioner’s characterization of the Board’s decisions. In discussing the significance of the Versata and Ford actions, our focus clearly was on the actions as well. Dec. 11–12. In particular, we noted that in resolving the forum dispute in favor of the Michigan court, the respective courts treated the cases as if they were a single proceeding at least in terms of ability to assert claims and recognition of timing. Consequently, we agree that the relevant factor in determining whether the earlier complaint in the Versata action is operative for purposes of § 315(b) is the continuous assertion of the patent against Ford, not whether the case was formally consolidated. Id. at 12; see also Ex. 1131 (instructing the parties to provide good faith reasons why the Versata action should not be dismissed, “so that the issues may [be] dealt with in the Michigan court”). Further, regarding Petitioner’s arguments concerning the relative numbers of patents raised in the Versata action as compared to the Ford action and the allegedly differing “Versata parties” in Texas and Michigan, Petitioner did not raise these arguments during the Preliminary Proceedings, and we cannot have overlooked or misapprehended arguments not raised.” slip op. at 11

  Discretionary denial
  Patents in suitUS 7,882,057

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