- Microsoft Corporation v. Biscotti Inc.Institution deniedPTAB · Oct 19, 2015 · IPR2015-01052 · APJ Neil T Powell · IPR · Institution
The Board denied joinder and denied institution of review of claims 13–16, 33, 34, 46, and 82–86 because the petition was time-barred under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“warranted. Granting the joinder sought by Petitioner would complicate the substantive issues in the ’1457 IPR significantly more than Petitioner suggests. Contrary to Petitioner’s suggestion, joinder would do more than simply add evidence that the HDMI Specification is prior art. See Joinder Motion 8. Joinder would add to the ’1457 IPR an obviousness challenge to claims 13–16, 33, 34, 46, and 82–86, thereby adding the numerous issues that any obviousness analysis entails. Additionally, contrary to Petitioner’s suggestion, the challenge raised in the present Petition does not rely on the same references as the pending challenges in the ’1457 IPR. See Joinder Motion 8 (“The -01052 proceeding involves . . . the same prior art . . . as the -01457 proceeding.”). Unlike the challenge raised in the present Petition, no pending claim challenge in the ’1457 IPR relies on the HDMI Specification. See ’1457 Institution Decision 31. Indeed, joinder would add a significant dispute regarding the public accessibility of the HDMI Specification. Additionally, granting joinder would add significant procedural complications and delay resolution of the ’1457 IPR. In the ’1457 IPR, Patent Owner has filed its Response, and the date for the oral hearing is only weeks away. Granting joinder would require adjusting the schedule to allow Patent Owner discovery on the issues presented by the challenge in the present Petition. Petitioner does not offer a practical way to accommodate the additional discovery and briefing without rushing significantly all involved or delaying the final written decision beyond its current due date of March 19, 2016.” slip op. at 15
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“III. DECISION ON THE PETITION Institution of inter partes review is barred 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); 37 C.F.R. § 42.101(b). The present Petition was filed more than one year after Petitioner was served with a complaint alleging infringement of the ’182 patent. See Joinder Motion 2, 4. Accordingly, in view of our decision to deny Petitioner’s Joinder Motion, we deny the present Petition because it was not filed within the time limits imposed under 35 U.S.C. § 315(b).” slip op. at 16
Discretionary denialPatents in suitUS 8,144,182 - Oracle Corporation v. Crossroads Systems, Inc.Institution deniedPTAB · Sep 9, 2015 · IPR2015-01063 · APJ Kevin W Cherry · IPR · Institution
The Board denied institution for claims 1–14 because the petition was time-barred under § 315(b); the joinder motion was moot.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“Section 315(b) normally 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); 37 C.F.R. § 42.101(b). The one-year time bar, however, does not apply to a request for joinder. 35 U.S.C. § 315(b) (final sentence); 37 C.F.R. § 42.122(b). In a “Statement of Material Facts,” Petitioner states that it “was served with a complaint asserting infringement of U.S. Patent No. 6,425,035 more than one year before filing the petition.” Mot. 1. Without joinder of Petitioner in this proceeding as a party to the ’777 proceeding, the Petition would be barred under 35 U.S.C. § 315(b). Because the Joinder Motion is moot, the present Petition is time barred, and, therefore, we deny the Petition because it was not filed within the time limits imposed under 35 U.S.C. § 315(b). III.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“DISCUSSION The Joinder Motion states that “Petitioner Oracle Corporation respectfully requests joinder pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b) of the above-captioned inter partes review with NetApp, Inc. v. Crossroads Systems, Inc., IPR2015-00777.” Mot. 1. Because we declined to institute inter partes review in the ’777 proceeding, the Joinder Motion is moot.” slip op. at 3
Discretionary denialPatents in suitUS 6,425,035 - Tristar Products, Inc. v. Choon’S Design, LLCInstitution deniedPTAB · Aug 26, 2015 · IPR2015-00840 · APJ Jeremy M Plenzler · IPR · Institution
The Board denied institution in IPR2015-00840 because the petition was filed more than one year after service, triggering the § 315(b) time bar.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“The plain language of 35 U.S.C. § 315(b) requires “the petitioner, real party in interest, or privy of the petitioner [to be] served with a complaint alleging infringement of the patent” to start the one year period for filing a petition for inter partes review. The statute does not include any requirement regarding filing proof of that service with a court. Based on the information before us, there is no reason to conclude that the February 28, 2014 service on Petitioner was defective, or otherwise ineffective to trigger the one-year bar of § 315(b). For example, although Petitioner argues that service might have been ineffective, if the entity served was no longer the registered agent for service of process, it has not come forward with any allegation suggesting this to be the case. See 315(b) Br. 5–6. Nor has Petitioner come forward with any argument that a procedural defect renders the February 28, 2014 service ineffective to trigger the bar. Petitioner’s arguments regarding “not ha[ving] an opportunity to challenge the alleged February 2[8], 2014 service” and “allowing a patent owner to improperly serve a party at an early date, and then effect proper service at a later date” (315(b) Br. 5) are unpersuasive. Based on the particular facts before us, Petitioner had the opportunity to argue that the February 28, 2014 service was defective in the supplemental briefing authorized by the panel (the 315(b) Brief), but as noted above, did not allege any procedural defect in that service.” slip op. at 5
Discretionary denialPatents in suitUS 8,622,441 - Tristar Products, Inc. v. Choon’S Design, LLCInstitution deniedPTAB · Aug 26, 2015 · IPR2015-00838 · APJ Jeremy M Plenzler · IPR · Institution
The Board denied institution in IPR2015-00838 and IPR2015-00840 because the petitions were filed more than one year after service, triggering the § 315(b) time bar.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“The plain language of 35 U.S.C. § 315(b) requires “the petitioner, real party in interest, or privy of the petitioner [to be] served with a complaint alleging infringement of the patent” to start the one year period for filing a petition for inter partes review. The statute does not include any requirement regarding filing proof of that service with a court. Based on the information before us, there is no reason to conclude that the February 28, 2014 service on Petitioner was defective, or otherwise ineffective to trigger the one-year bar of § 315(b). For example, although Petitioner argues that service might have been ineffective, if the entity served was no longer the registered agent for service of process, it has not come forward with any allegation suggesting this to be the case. See 315(b) Br. 5–6. Nor has Petitioner come forward with any argument that a procedural defect renders the February 28, 2014 service ineffective to trigger the bar. Petitioner’s arguments regarding “not ha[ving] an opportunity to challenge the alleged February 2[8], 2014 service” and “allowing a patent owner to improperly serve a party at an early date, and then effect proper service at a later date” (315(b) Br. 5) are unpersuasive. Based on the particular facts before us, Petitioner had the opportunity to argue that the February 28, 2014 service was defective in the supplemental briefing authorized by the panel (the 315(b) Brief), but as noted above, did not allege any procedural defect in that service.” slip op. at 5
Discretionary denialPatents in suitUS 8,485,565 - Zhongshan Broad Ocean Motor Co., Ltd. / Broad Ocean Motor LLC et al. v. Nidec Motor CorporationInstitution deniedPTAB · Jul 20, 2015 · IPR2015-00762 · APJ Patrick M Boucher · IPR · Institution
The Board denied joinder and denied institution because the petition was time-barred under § 315(b), despite finding a reasonable likelihood that claims 1–3, 8, 9, 12, 16, and 19 were anticipated.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied
“Petitioners were served with a complaint alleging infringement of the ’349 patent on September 25, 2013. The Petition was filed on February 20, 2015, more than a year later. Notwithstanding our determination that the Petition meets the standard set forth in 35 U.S.C. § 314(a), we conclude that institution of an inter partes review is barred by § 315(b).” slip op. at 11
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“Section 315(c) provides: If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. In our view, the phrase “join as a party” indicates that only a person who is not already a party to an instituted inter partes review can be joined to the proceeding. A person cannot be joined as a party to a proceeding in which it is already a party. That the statute uses the expansive term “any person” is of little moment because the overall language of the statute places unambiguous limits on the term. Specifically, the phrase “join as a party” excludes a person who is already a party.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstituted
“We conclude that Petitioners have established a reasonable likelihood of prevailing on their contention that Hideji discloses performing sinewave commutation using independent values of Q and d axis currents in the manner recited in each of independent claims 1, 16, and 19. Thus, we conclude that Petitioners have established a reasonable likelihood of prevailing on their challenge of claims 1–3, 8, 9, 12, 16, and 19 as anticipated by Hideji. B. Time Bar Under 35 U.S.C. § 315(b) Section 315(b) provides: 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. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c). Petitioners were served with a complaint alleging infringement of the ’349 patent on September 25, 2013. The Petition was filed on February 20, 2015, more than a year later. Notwithstanding our determination that the Petition meets the standard set forth in 35 U.S.C. § 314(a), we conclude that institution of an inter partes review is barred by § 315(b).” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“contention that Hideji discloses “performing sinewave commutation, using independent values of Q and d axis currents, in response to one or more control signals received from the system controller to produce continuous phase currents in the permanent magnet motor for driving the air-moving component,” recited in each of independent claims 1, 16, and 19. Pet. at 19– 26. Patent Owner contends that Hideji fails to disclose the use of independent values of Q and d axis currents: “In fact, Hideji discloses that it employs calculations in the rotating frame of reference in which Q and d axis currents depend on each other.” Prelim. Resp. 20. Petitioners observe that Figure 2 of Hideji illustrates that three-phase / two-phase coordinate conversion part 36 outputs separate values for Iq and Id, i.e. the Q and d axis currents.3 Pet. 23–24. Hideji discloses that 3 We note that the labels “Iq” and “Id” output from part 36 of Hideji are identified directly as such in the original Japanese reference. Ex. 1003, 8. [t]he three-phase/two-phase coordinate conversion part 36 converts the coordinates of the alternating current Iu and Iv introduced by the current input part 35 to a revolving coordination system (d-q coordination system) on the rotor of the brushless DC motor 30A, and calculates flux current Id (d-axis current) and torque current Iq (q-axis current). Ex. 1005 ¶ 35. Petitioners reason that such transformation results in separate, independent values of Q and d axis currents determined from control signals received from the system controller. Pet. 23. Petitioners support this reasoning with testimony by Dr. Ehsani. Ex. 1009 ¶ 38. Patent Owner responds that “the values coming from part 36 are at best a transform into the rotating frame of reference of actual measured currents” and that “[t]hey are not the demanded currents generated by the controller.” Prelim. Resp. 22. Notwithstanding the explicit identification of these values as “Iq” and “Id” in the original Japanese reference, Patent Owner also contends that they “are not values one of ordinary skill would refer to as Iq and Id.” Id. at 23. In addition, Patent Owner contends that “[i]t is the current control part 40 output that is used to create the continuous phase sine wave commutated currents for the motor after being transformed back out of the rotating frame of reference,” reasoning that “[i]f Iq and Id are not independent at this step, the ‘motor controller’ is not using ‘independent values of Q and d axis current’ to perform ‘sine wave commutation.’” Id. at 24. Patent Owner contends that such inputs are not independent, noting” slip op. at 9
Claim construction§ 102 anticipationDiscretionary denialPatents in suitUS 7,626,349 - Amazon.Com, Inc. / Amazon Web Services, Inc. v. Appistry, Inc.Institution deniedPTAB · Jul 13, 2015 · IPR2015-00480 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board denied institution because the petition did not identify all real parties in interest and, even if corrected, would be untimely under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiDenied
“§ 312(a)(2) that a petition identify all real parties-in-interest is a threshold issue. See Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., Case IPR2013-00453, slip op. at 7–8 (PTAB Jan. 16, 2015) (Paper 88). We generally accept the petitioner’s identification of real parties-in-interest at the time of filing the petition. Our practice in this regard, however, acts as a rebuttable presumption that benefits the petitioner. When, as here, a patent owner provides sufficient rebuttal evidence that reasonably brings into question the accuracy of the petitioner’s identification of real parties-in-interest, the burden remains with the petitioner to establish that it has complied with the statutory requirement. This allocation of the burden for establishing whether a third party has, or has not, been identified properly as a real party-in-interest accounts appropriately for the fact that a petitioner is far more likely to be in possession of, or have access to, evidence relevant to the issue than the patent owner.” slip op. at 3
- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“statutory requirement to identify each real party-in-interest, the Board determines that the Petition is incomplete. Board Rule 42.106(b) provides that “[w]here a party files an incomplete petition, no filing date will be accorded, and the Office will dismiss the petition if the deficiency in the petition is not corrected within one month from the notice of an incomplete petition.” In this instance, however, it is uncontroverted that a complaint alleging infringement of the ’746 patent was served on December 23, 2013. Pet. 2; Prelim. Resp. 12. Thus, even if corrected, the earliest filing date that could be accorded to the Petition would not fall within the one-year period specified by 35 U.S.C. § 315(b), and the Petition would be denied as untimely.” slip op. at 6
Discretionary denialPatents in suitUS 8,200,746 - CQG, Inc. / CQGT, LLC v. Trading Technologies International, Inc.Institution deniedPTAB · Jul 10, 2015 · CBM2015-00057 · APJ Sally C Medley · CBM · Institution
The Board denied institution of review of claims 1-40 of the ’304 patent and claims 1-56 of the ’132 patent because § 325(a)(1) barred the petitions.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“(1) POST–GRANT REVIEW BARRED BY CIVIL ACTION.—A post-grant review may not be instituted under this chapter if, before the date on which the petition for such a review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.” slip op. at 5
Discretionary denialPatents in suitUS 6,766,304 - CQG, Inc. / CQGT, LLC v. Trading Technologies International, Inc.Institution deniedPTAB · Jul 10, 2015 · CBM2015-00058 · APJ Sally C Medley · CBM · Institution
The Board denied institution of CBM review of claims 1-56 of the ’132 patent and claims 1-40 of the ’304 patent because Petitioner was barred under § 325(a)(1).
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“the immediate continuation of the first action into the second action, including the legal positions taken by the parties, that was the dispositive factor for determining that the dismissal without prejudice of the first case did not have the effect as if the first case never existed. Apple, Case IPR2014-00319, slip op. at 3–4 (PTAB July 31, 2014) (Paper 14). In rendering the original decision, the panel relied on Brennan v. Kulick, 407 F.3d 603 (3d Cir. 2005). Apple, Paper 12, slip op. at 6. In Brennan, the court explained that prior cases are treated as if they never existed after dismissal because “[a]n order merely dismissing a complaint without prejudice could result in a significant period of delay prior to the bringing of 7 a new action.” Brennan, 407 F.3d at 607. The court further explained that with a conditional dismissal, a prior case would be treated as if it existed because “[t]he conditions specified in the order prevent a plaintiff from indefinitely extending the limitations period.” Id. Treating a case dismissed without prejudice as if it never existed, therefore, depends on the circumstances surrounding the dismissal.” slip op. at 7
Discretionary denialPatents in suitUS 6,772,132 - Johnson Health Tech Co. Ltd. / Johnson Health Tech North America, Inc. v. Icon Health & Fitness, Inc.Institution deniedPTAB · Feb 11, 2015 · IPR2014-01242 · APJ Carl M Defranco · IPR · Institution
The Board denied institution because JHTNA was served with an infringement complaint more than one year before the petition, and JHT was its privy.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“review. Prelim. Resp. 3–23. Pursuant to 35 U.S.C. § 315(b), a party may not file a petition for inter partes review more than one-year after being served with a complaint alleging infringement of the patent. The one-year deadline helps to ensure that inter partes review provides a quick and cost effective alternative to litigation, and is not used as a tool for harassment or litigation gamesmanship. H.R. REP. NO. 112-98 at 48, as reprinted in 2011 U.S.C.C.A.N. at 78. In a Preliminary Proceeding,1 the petitioner bears the burden of showing compliance with the threshold requirement of § 315(b). Specifically, in order to show “standing” to file a petition, the petitioner “must certify . . . that the petitioner is not barred or estopped from requesting an inter partes review . . . .” 37 C.F.R. § 42.104(a) (first emphasis added). As grounds for standing, Petitioners purport that the claims challenged in the Petition were not added to the Utah Action until August 5, 2013, when Icon filed an amended complaint alleging infringement of the ’631 patent after completion of reexam and lifting of the stay. Pet. 1–2.” slip op. at 3
- PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiDecided for patent owner
“issue of whether JHT is a “privy” of JHTNA for purposes of § 315(b). Specifically, § 315(b) includes within its reach any party that qualifies as a “privy of the petitioner.” In determining whether JHT is a privy of JHTNA, we consider the nature of the relationship between the parties at the time the statutorily-relevant complaint was served, i.e., December 27, 2010. See Taylor v. Sturgell, 553 U.S. 880, 892 (2008) (“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.”). Ultimately, our 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.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012).” slip op. at 8
Discretionary denialPatents in suitUS 6,193,631 - PTAB · Oct 16, 2014 · IPR2014-00779 · APJ Scott E Kamholz · IPR · Rehearing
The Board denied Histologics’s rehearing request, leaving the institution denial based on the § 315(b) time bar in place.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A Request for Rehearing is not an opportunity to re-argue old arguments or to present new evidence or arguments. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Yet Histologics does all of these, by repeating its Petition arguments, amplifying them, and filing eleven new evidentiary exhibits, nos. 1028-1038, without showing good cause why the evidence should be considered. See id. As to the old arguments, we addressed them fully in the Decision. As to the new, we cannot have misapprehended or overlooked arguments and evidence not presented in the Petition. We gave Histologics’s Petition full consideration and explained the reasoning underlying our determinations. A request for rehearing is not a second chance for a party to present its case. We are not persuaded of an abuse of discretion. IV.” slip op. at 4
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“We gave Histologics’s arguments and evidence complete consideration and addressed them fully in the Decision. As we explained, the issue in this case was whether service of SMR’s complaint was nullified by the Court’s dismissal of the ’612 action. Dec. 5. We explained that service was not nullified, because Histologics remained answerable to the Court for the allegations made in the original ’612 action complaint, and that the parties were not left in the same legal position as if the ’612 action had never been filed. Id. Histologics does not address this determination or explain how it was in error, other than by advancing alternative legal theories.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“A Request for Rehearing is not an opportunity to re-argue old arguments or to present new evidence or arguments. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Yet Histologics does all of these, by repeating its Petition arguments, amplifying them, and filing eleven new evidentiary exhibits, nos. 1028-1038, without showing good cause why the evidence should be considered. See id. As to the old arguments, we addressed them fully in the Decision. As to the new, we cannot have misapprehended or overlooked arguments and evidence not presented in the Petition.” slip op. at 4
Discretionary denialPatents in suitUS 6,258,044
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.