- Ruiz Food Products, Inc. v. Macropoint LLCRehearing deniedPTAB · May 6, 2019 · IPR2017-02018 · APJ Nathan A Engels · IPR · Rehearing
The Board denied the rehearing request, leaving in place dismissal and termination because the petitions were untimely under § 315(a)(1).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“background legal principle (id. at 2–7), the Decision considers the principle but follows the Federal Circuit’s guidance that the principle is not “firmly established and unequivocal” and therefore cannot justify applying an exception to the unambiguous language of § 315(a)(1). Decision 9–10 (citing Click-to-Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321, 1335 (Fed. Cir. 2018) (explaining that a “background legal principle” must be both “firmly established and unequivocal before it can justify ignoring the plain text of the statute”; holding that the principle that “a dismissal without prejudice leaves the parties as if the underlying complaint had never been filed” is “anything but unequivocal”)).” slip op. at 2
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“(Paper 18) and terminating the proceedings, the Board determined that the Petitions were untimely under 35 U.S.C. § 315(a)(1) and that the Board therefore lacked jurisdiction over the proceedings. More specifically, the Board determined that a complaint for declaratory judgment filed before the Petitions triggered the time bar of § 315(a)(1) even though the complaint was dismissed without prejudice after its filing. Decision at 2–3.” slip op. at 2
Discretionary denialPatents in suitUS 9,429,659 - Hewlett Packard Enterprise Co. v. Chrimar Systems, Inc.Institution deniedPTAB · Apr 9, 2019 · IPR2019-00032 · APJ Frederick C Laney · IPR · Institution
The Board denied institution because Hewlett Packard Enterprise had previously filed a civil action challenging the validity of a claim, triggering the § 315(a)(1) bar.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“Action,” bars institution of an inter partes review when a petitioner filed a civil action challenging the validity of a claim of a patent before the date on which that petitioner filed a petition requesting an inter partes review of that patent. 35 U.S.C. § 315(a)(1). Section 315(a)(1) does not include an exception for a civil action that was dismissed without prejudice. Id.; see Click-to-Call, 899 F.3d at 1330. And Congress demonstrated that it knew how to provide an exception to a statutory bar by including an exception to the § 315(b) time bar for a joinder request. 35 U.S.C. § 315(b); see Click-to- Call, 899 F.3d at 1331. Thus, Congress could have included an exception to the § 315(a)(1) bar for a civil action that was dismissed without prejudice, but did not. 35 U.S.C. § 315(a)(1); see Click-to-Call, 899 F.3d at 1331.” slip op. at 6
Discretionary denialPatents in suitUS 8,155,012 - Avigilon Corporation / Avigilon USA Corporation v. Canon Inc.Institution deniedPTAB · Mar 18, 2019 · IPR2018-01627 · APJ Scott E Bain · IPR · Institution
The Board denied institution on claims 1–17 because Avigilon’s previously filed declaratory judgment action triggered the § 315(a)(1) bar despite its later voluntary dismissal.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“Section 315(a)(1), similarly, includes no express exceptions for actions subsequently dismissed, whether voluntary or involuntary, and whether with or without prejudice. Avigilon argues that we should distinguish the Court’s analysis in Click-to-Call from this case, because the text of § 315(a)(1) addresses “filing” rather than “service” of an action, and is triggered by an act of the inter partes review petitioner rather than patent owner. We are not persuaded, however, that the difference in filing from service provides a basis for distinguishing the analysis of Click-to-Call from this case. It is undisputed that Avigilon’s declaratory action was “filed” at one point in time (prior to being dismissed without prejudice), just as the action in Click-to-Call was “served” prior to being dismissed without prejudice. The Court in Click-to-Call held that the meaning of “served” in the statute did not include the effects of voluntary dismissal without prejudice, because there was no common law rule regarding such effects.3 See supra at 8. We are not persuaded that Click-to-Call permits the opposition conclusion regarding “file.”” slip op. at 9
Discretionary denialPatents in suitUS 9,191,630 - PTAB · Oct 20, 2017 · IPR2017-01582 · APJ Erica A Franklin · IPR · Institution
The Board dismissed the joinder motion as moot and denied institution because the petition was time-barred under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“II. ANALYSIS A. The Motion for Joinder is Moot Petitioner seeks joinder with the Mylan IPR. Mot. 1. The Mylan IPR has been terminated based on a settlement between the parties. See IPR2017-00200, Paper 23. Thus, there is no longer a pending proceeding for Petitioner to join. Accordingly, we dismiss the Motion for Joinder as moot.” slip op. at 5
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“B. The Petition Is Time-Barred Under 35 U.S.C. § 315(b) Section 315(b) bars institution of inter partes review when the petition is filed more than one year after the petitioner is served with a complaint alleging infringement of the patent. 35 U.S.C. § 315(b). The one-year time bar, however, does not apply to a request for joinder. Id. The decision whether to grant joinder is discretionary. Id. at § 315(c).” slip op. at 5
Discretionary denialPatents in suitUS 8,603,514 - Par Pharmaceutical, Inc. / Intelgenx Corp. v. Monosol RX, LLCInstitution deniedPTAB · Oct 20, 2017 · IPR2017-01557 · APJ Erica A Franklin · IPR · Institution
The Board dismissed the joinder motion as moot and denied institution because the petition was time-barred under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“II. ANALYSIS A. The Motion for Joinder is Moot Petitioner seeks joinder with the Mylan IPR. Mot. 1. The Mylan IPR has been terminated based on a settlement between the parties. See IPR2017-00200, Paper 23. Thus, there is no longer a pending proceeding for Petitioner to join. Accordingly, we dismiss the Motion for Joinder as moot.” slip op. at 5
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“is filed more than one year after the petitioner is served with a complaint alleging infringement of the patent. 35 U.S.C. § 315(b). The one-year time bar, however, does not apply to a request for joinder. Id. The decision whether to grant joinder is discretionary. Id. at § 315(c). Petitioner admits that Patent Owner filed a complaint alleging infringement of the ’514 patent against Petitioner on April 4, 2014. Mot. 2 (explaining that a complaint alleging infringement of the ’514 patent against Par Pharmaceutical, Inc. and Intelgenx Corp., LLC was filed on April 4, 1 R. Ilango et al., In-Vitro studies on Buccal strips of Glibenclamide using Chitosan, 59 INDIAN J. PHARM. SCI. 232–35 (1997). Ex. 1005 (“Ilango”). 2 Patent Application Publication No. WO 00/42992 by Li-Lan Chen et al., published July27, 2000. Ex. 1006 (“Chen”). 2014). Petitioner was served with that complaint on April 7, 2014, more than one year before it filed its Petition. See Ex. 2003 (Par Proof of Service); Ex. 2004 (Intelgenx Proof of Service). Despite the late filing, Petitioner asserts as its grounds for standing that “under 37 C.F.R. § 42.104(a), if the simultaneous motion for joinder is granted, the ’514 patent is available for inter partes review.” Pet. 20. As discussed above, Petitioner’s Motion for Joinder is dismissed as moot because there is no instituted inter partes review for Petitioner to join. Thus, the Petition is statutorily barred, and no inter partes review may be instituted. 35 U.S.C. § 315(b).” slip op. at 5
Discretionary denialPatents in suitUS 8,603,514 - Cultec, Inc. v. Stormtech LLCInstitution deniedPTAB · Jul 17, 2017 · IPR2017-00526 · APJ Barry L Grossman · IPR · Institution
The Board denied the motion to change the filing date and denied institution on all challenged claims because the petition was time-barred under § 315(b).
RulingsInstitution decision- BurdenDenied
“Petitioner, as the moving party, has the burden of proof to establish that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). As explained below, Petitioner has not met this burden. Accordingly, we deny the Motion.” slip op. at 2
- PTAB / AIA Trials › §315(b) time barInstitution denied
“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. Petitioner acknowledges that “[i]n the absence of a January 5, 2017 filing date, this IPR will be considered untimely” under 35 U.S.C. § 315(b). Motion 4; see also PO Opp. 1 (indicating Patent Owner’s agreement). Accordingly, the petition is barred under 35 U.S.C. § 315(b). V. ORDER In consideration of the foregoing, it is hereby: ORDERED that Petitioner’s Motion is denied; and FURTHER ORDERED that institution of an inter partes review of any challenged claim of Patent No. 8,672,583 is denied under 35 U.S.C. § 315(b).” slip op. at 14
Discretionary denialPatents in suitUS 8,672,583 - Ford Motor Company v. Versata Development Group, Inc.Rehearing deniedPTAB · 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 denialPatents in suitUS 7,882,057 - Ford Motor Company v. Versata Development Group, Inc.Rehearing deniedPTAB · Jul 6, 2017 · IPR2017-00150 · APJ James B Arpin · IPR · Rehearing
Denied Ford’s rehearing requests, leaving institution denied because the earlier infringement complaint remained operative under § 315(b).
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.” 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
- BurdenDecided for patent owner
“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 12
Discretionary denialPatents in suitUS 7,882,057 - Ford Motor Company v. Versata Development Group, Inc.Rehearing deniedPTAB · Jul 6, 2017 · IPR2017-00147 · APJ James B Arpin · IPR · Rehearing
The Board denied Ford’s rehearing requests, leaving in place the denial of institution because § 315(b)’s time bar applied after the dismissal without prejudice.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“For these reasons, we were persuaded that, because the facts of the instant proceedings, namely, that the dismissal “was not pursuant to Rule 41(a), was not ‘voluntary,’ and, most importantly, did not leave the parties as though the action had never been brought,” are not sufficiently similar to the facts present in the precedential decisions, we are not bound to find that 5 As we noted in our decisions denying institution, in holding that the dismissal put the appellant in the position in which it would have been, had it never filed a notice of appeal, the Federal Circuit in Graves compared those circumstances with the voluntary dismissal in Bonneville, in which the “nullifying effect of a voluntary dismissal in accordance with Fed. R. Civ. P. 41(a)(1) was applied.” Dec. 6 (quoting Graves, 294 F.3d at 1356). the dismissal of the Versata action “without prejudice” necessarily lifted the Section 315(b) bar. 2. Creation of “Continuous Chain of Assertion” Exception” slip op. at 10
- 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
- BurdenDecided for patent owner
“We understand that Petitioner would weigh the relevant facts differently than we do. Nevertheless, [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
Discretionary denialPatents in suitUS 7,464,064 - Ford Motor Company v. Versata Development Group, Inc.Rehearing deniedPTAB · Jul 6, 2017 · IPR2017-00146 · APJ James B Arpin · IPR · Rehearing
The Board denied Ford’s rehearing requests, leaving in place the denial of institution because the § 315(b) time bar applied after the Versata action was dismissed without prejudice.
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
Discretionary denialPatents in suitUS 5,825,651
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.