- 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 - 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 - Plaid Technologies, Inc. v. Yodlee, Inc. And Yodlee.Com, Inc.Rehearing grantedPTAB · Aug 12, 2016 · IPR2016-00275 · APJ John A Hudalla · IPR · Rehearing
The Board denied Plaid’s rehearing request and maintained denial of institution because Plaid failed to show good cause to excuse late service and an incomplete, time-barred petition.
RulingsRehearing decision- PTAB / AIA Trials › §315(b) time barDenied
“treatment of the service issue. Our regulations state that a filing date will not be accorded to a Petition until, among other things, service is effected. See 37 C.F.R. §§ 42.105(a), 42.106(a). The undisputed evidence put forth by Plaid indicates that it did not attempt to serve Yodlee with the Petition and supporting evidence until December 3, 2015. See Req. Reh’g 2; Ex. 1022 ¶ 9. In our Decision, we applied the regulations to the particular facts of this case and “determine[d] that December 3, 201[5], is the earliest date by which Plaid satisfied the service requirement for according the Petition a filing date.” Dec. 7 (citing 37 C.F.R. §§ 42.105(a), 42.106(a)). Therefore, we maintained the initial filing date accorded to the Petition, which was one day after the statutory deadline under § 315(b), and we termed Plaid’s service activities to be “late service.”1 Dec. 6–7. Indeed, Plaid would have had no reason to file a motion to change the filing date had its actions not been “late.” Moreover, our Decision expressly stated that we did not need to “address whether, under appropriate circumstances, we have authority to grant an earlier filing date.” Dec. 8. Rather, our Decision focused on whether Plaid had shown good cause to waive the service requirements imposed by 37 C.F.R. §§ 42.105(a) and 42.106(a). Id. at 8–10. Irrespective of the interplay among the relevant regulations and statutory deadline under § 315(b), we found that Plaid had not shown good cause and that it was not in the interests of justice to excuse Plaid’s late service under 37 C.F.R. § 42.5(b) and (c)(3). See id. Among other reasons, we were not persuaded that waiting for potential changes from a declarant constituted good cause for Plaid to delay its filing and eventual service of the Petition and supporting evidence. See Dec. 8–9. We also weighed the potential” slip op. at 3
- RehearingRehearing, grantedRehearing, deniedGranted in part
“for an abuse of discretion. 37 C.F.R. § 42.71(c). 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. Star Fruits S.N.C. v. United States, 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 party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 2
Discretionary denialPatents in suitUS 6,199,077 - Plaid Technologies, Inc. v. Yodlee, Inc. And Yodlee.Com, Inc.Institution deniedPTAB · Jun 9, 2016 · IPR2016-00275 · APJ John A Hudalla · IPR · Institution
The Board denied institution on all challenged claims because Plaid’s petition was time-barred under § 315(b), and denied its motion to change the filing date.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“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.” Given that the complaint in the underlying district court case was served on December 2, 2014, see Pet. 2 (citing Ex. 1002), the one-year deadline in this case under § 315(b) was December 2, 2015.” slip op. at 4
- BurdenDecided for patent owner
“Petition, Plaid has the burden of proof to establish that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). Considering this statutory and regulatory background, and based on the particular factual circumstances of this case, we determine that Plaid failed to complete the following two prerequisites for obtaining a filing date before the expiration of the one-year statutory period of 35 U.S.C. § 315(b): (1) Plaid did not attempt to serve Yodlee with a copy of the Petition before the deadline; and (2) Plaid did not file a complete petition before the deadline. Accordingly, and for the following reasons, we determine Plaid has not met its burden of establishing that it is entitled to change the filing date accorded to the Petition. As a result, we may not institute an inter partes review because the Petition is time-barred under 35 U.S.C. § 315(b).” slip op. at 6
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“have authority to grant an earlier filing date, because we determine based on the current record that Plaid has failed to show good cause to warrant exercising our authority under 37 C.F.R. § 42.5(b) or (c)(3) to waive the service requirement imposed by 37 C.F.R. §§ 42.105(a) and 42.106(a). We agree with Yodlee that Plaid’s “problems arose from its own intentional delay in completing the petition.” Opp. 1. We also agree with Yodlee that, by waiting for potential changes to Dr. Mowry’s declarations, Plaid “knowingly risked not meeting the one year bar by not leaving enough time to complete filing and service, much less enough time to do the multitude of tasks that would have been required in the case of any changes.” Id. at 9–10. In our view, Plaid’s belief that it had sufficient time, see Reply 5, should not insulate Plaid from the consequences of the risk it took. And, more importantly, Plaid puts forth no evidence of extenuating circumstances that forced Plaid or its declarant, Dr. Mowry, to wait until such a late hour to complete the supporting declarations prior to filing and serving the Petition and supporting evidence. Put simply, and based on the evidence presented, Plaid freely chose the time frame of its filing and service activities. Plaid left itself no margin for error despite having had one year to prepare the Petition.” slip op. at 8
Discretionary denialPatents in suitUS 6,199,077
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.