- Apple Inc. v. Rfcyber Corp.Institution deniedPTAB · Mar 24, 2022 · PGR2022-00003 · APJ Patrick R Scanlon · PGR · Institution
The Board denied Apple’s untimely joinder motion and denied institution because the petition was filed outside the nine-month PGR filing period.
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“motion under§ 42.22, no later than one month after the institution date of any post-grant review for which joinder is requested.” 37 C.F.R. § 42.222(b). Petitioner’s Motion for Joinder was filed October 20, 2021, which is more than one month after the Board instituted post-grant review in the Google PGR on July 23, 2021. Petitioner, however, argues that special circumstances warrant that the Board exercise its discretion under 37 C.F.R. § 42.5 to waive the one-month joinder period. Mot. 3–6.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“B. Eligibility for Post-Grant Review under 35 U.S.C. § 321 Institution of post-grant review is barred when a petition is filed more than 9 months after the challenged patent is granted. 35 U.S.C. § 321(c). The ’046 patent issued on March 24, 2020 (see Ex. 1001, code (45)), and the Petition in this proceeding was accorded a filing date of October 20, 2021 (see Paper 1). Thus, the Petition was filed outside the 9-month statutory period for requesting post-grant review under § 321(c). Accordingly, in view of our decision to deny Petitioner’s Motion for Joinder, we deny the Petition because it was not filed within the time limit imposed under 35 U.S.C. § 321(c).” slip op. at 8
Discretionary denialPatents in suitUS 10,600,046 - ROKU, Inc. v. Universal Electronics, Inc.Institution deniedPTAB · Nov 10, 2020 · IPR2020-00952 · APJ Sharon Fenick · IPR · Institution
The Board denied institution on claims 1, 2, 6, and 8 because the petition was time-barred under § 315(b), and denied Roku’s motion for joinder.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“III. ANALYSIS “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.” 35 U.S.C. § 315(b). The parties agree that the Petition was filed more than one year after the date on which Petitioner was served in the related litigation with a complaint” slip op. at 8
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“Petitioner’s argument is nevertheless foreclosed by the Federal Circuit’s recent decision in Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321 (Fed. Cir. 2020). In that decision, the Federal Circuit expressly considered the impact of Thryv, determining that the Board’s joinder decisions are “unlike” the challenges it is precluded from reviewing and “more like” those that it may review. Windy City, 973 F.3d at 1332. the Board’s joinder decisions.” Id. And after reviewing such a joinder decision, the court further concluded that 35 U.S.C. § 315(c) “does not authorize same-party joinder, and does not authorize the joinder of new issues.” Id. at 1333–38. In accordance with the Federal Circuit’s decision, we deny Petitioner’s Motion for Joinder. Consequently, we conclude that the Petition is time-barred and that no exception applies under the facts before us. We therefore deny the Petition.” slip op. at 9
Discretionary denialPatents in suitUS 9,716,853 - 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 - Blue Coat Systems, Inc. v. Finjan, Inc.Institution deniedPTAB · Jun 8, 2016 · IPR2016-00493 · APJ Thomas L Giannetti · IPR · Institution
The Board denied institution on all challenged claims because the petition was time-barred under § 315(b); the joinder motion was dismissed as moot.
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“II. DISMISSAL OF MOTION FOR JOINDER Because the petition in IPR2016-02000 was denied and inter partes review was not instituted, Petitioner’s Joinder Motion is dismissed as moot. 35 U.S.C. § 315(c).” slip op. at 3
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“Petitioner admits that a complaint alleging infringement of the ʼ731 patent was served on Petitioner more than a year before the filing date of the Petition. Pet. 4. Under 35 U.S.C. § 315(b), that is a bar to the institution of inter partes review unless Petitioner’s request for joinder is granted. See id., final sentence. Because we conclude supra that the joinder motion is dismissed, we conclude also that the Petition should be denied as time-barred under § 315(b). B. Denial on the Same Grounds as the ʼ2000 IPR” slip op. at 3
Discretionary denialPatents in suitUS 7,418,731 - Blue Coat Systems, Inc. v. Finjan, Inc.Institution deniedPTAB · Jun 8, 2016 · IPR2016-00492 · APJ Thomas L Giannetti · IPR · Institution
The Board denied institution on claims 1–18 as time-barred under § 315(b), after dismissing the joinder motion as moot because the related IPR was denied.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“Petitioner admits that a complaint alleging infringement of the ʼ780 patent was served on Petitioner more than a year before the filing date of the Petition. Pet. 5. Under 35 U.S.C. § 315(b), that is a bar to the institution of inter partes review unless Petitioner’s request for joinder is granted. See id., final sentence. Because we conclude supra that the joinder motion is dismissed, we conclude also that the Petition should be denied as time-barred under § 315(b). B. Denial on the Same Grounds as the ʼ165 IPR” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“II. DISMISSAL OF MOTION FOR JOINDER Because the petition in IPR2016-00165 was denied and inter partes review was not instituted, Petitioner’s Joinder Motion is dismissed as moot. 35 U.S.C. § 315(c).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In view of our determination that the Petition is time-barred under 35 U.S.C. § 315(b), however, we do not need to decide this separate ground for denial urged by Patent Owner. IV. ORDER It is, therefore, ORDERED that the Motion for Joinder is dismissed as moot; FURTHER ORDERED that the Petition is denied as to all challenged claims and no trial is instituted.” slip op. at 4
Discretionary denialPatents in suitUS 6,804,780 - Sega Of America, Inc. v. Uniloc USA, Inc. And Uniloc Luxembourg S.A.Institution deniedPTAB · Jun 2, 2016 · IPR2016-00427 · APJ Donna M Praiss · IPR · Institution
The Board denied joinder and denied institution on all challenged claims and grounds because § 315(b) barred the time-barred petition without joinder.
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b). A motion for joinder should: (1) set forth the reasons why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the existing review; and (4) specifically address how briefing and discovery may be simplified. See, e.g., Kyocera Corp. v. Softview LLC, Case IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15).” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsOther
“weigh in favor of denying Petitioner’s Motion for Joinder. Petitioner previously filed a petition for inter partes review of the ’216 patent in IPR2014-01453 and a petition for a covered business patent review of the ’216 patent in CBM2014-00183. Sega of America, Inc. v. Uniloc USA, Inc., IPR2014-01453 (Paper 6); Sega of America, Inc. v. Uniloc USA, Inc., CBM2014-00183 (Paper 6). The earlier petitions were filed within one year of the date on which Petitioner was served with a complaint alleging infringement of the ’216 patent. Id. The grounds and arguments now asserted by Petitioner are substantially identical to the grounds presented in CBM2014-00183, which was denied, and could have been brought in IPR2014-01453, which was instituted. Petitioner did not include the asserted grounds in a petition for inter partes review until now. Nor has Petitioner explained sufficiently why the petition in IPR2014-01453 did not contain the grounds and arguments set forth in the Petition in this proceeding. Joinder may be authorized when warranted, but the decision to grant joinder is discretionary. 35 U.S.C. § 315(c). When exercising that discretion, the Board is mindful that patent trial regulations, including the rules of joinder, must be construed to secure the just, speedy, and inexpensive resolution of every proceeding. See 37 C.F.R. § 42.1 (b). In view of the facts and circumstances of this case, we determine that Petitioner has not met its burden to show that joinder would be appropriate, even if IPR2015-01207 had not been terminated.” slip op. at 5
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“is filed more than one year after the petitioner (or the petitioner’s real partyin-interest or privy) is served with a complaint alleging infringement of the patent, see 37 C.F.R. § 42.101(b), the one-year time bar does not apply to a request for joinder. 35 U.S.C. § 315(b) (stating that “[t]he time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c)” of 35 U.S.C. § 315); 37 C.F.R. § 42.122(b). In the present case, Petitioner was served with a complaint alleging infringement of the ’216 patent more than one year prior to filing the Petition in this proceeding. See Pet. 51; Ex. 1025. Thus, absent joinder of this proceeding with IPR2015-01207, institution of inter partes review is barred.” slip op. at 4
Discretionary denialPatents in suitUS 5,490,216 - Ubisoft, Inc. / Zebra Technologies Corporation et al. v. Uniloc USA, Inc. And Uniloc Luxembourg S.A.Institution deniedPTAB · Jun 2, 2016 · IPR2016-00414 · APJ Donna M Praiss · 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
“As a moving party, Petitioner has the burden of proof in establishing entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b). A motion for joinder should: (1) set forth the reasons why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the existing review; and (4) specifically address how briefing and discovery may be simplified. See, e.g., Kyocera Corp. v. Softview LLC, Case IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15).” slip op. at 4
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“is filed more than one year after the petitioner (or the petitioner’s real partyin-interest or privy) is served with a complaint alleging infringement of the patent, see 37 C.F.R. § 42.101(b), the one-year time bar does not apply to a request for joinder. 35 U.S.C. § 315(b) (stating that “[t]he time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c)” of 35 U.S.C. § 315); 37 C.F.R. § 42.122(b). In the present case, Petitioner was served with a complaint alleging infringement of the ’216 patent more than one year prior to filing the Petition in this proceeding. See Pet. 52; Exs. 1025–27. Thus, absent joinder of this proceeding with IPR2015-01207, institution of inter partes review is barred.” slip op. at 4
Discretionary denialPatents in suitUS 5,490,216 - 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 - Samsung Electronics Co. Ltd. v. Fractus, S.A.Rehearing deniedPTAB · Feb 26, 2014 · IPR2014-00008 · APJ Glenn J Perry · IPR · Rehearing
The Board denied Samsung’s rehearing request and maintained denial of institution because the petitions were filed more than one year after service of infringement complaints.
RulingsRehearing decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“(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). (Emphasis added). The USPTO rule implementing section 315(b) is set forth in 37 C.F.R.” slip op. at 3
- RehearingRehearing, deniedDenied
“discretion. The requirements are set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Each of the four patents is involved in patent litigation captioned Fractus,” slip op. at 2
Discretionary denialPatents in suitUS 7,123,208 - Samsung Electronics Co. Ltd. v. Fractus, S.A.Rehearing deniedPTAB · Feb 26, 2014 · IPR2014-00012 · APJ Glenn J Perry · IPR · Rehearing
The Board denied Samsung’s rehearing request, leaving institution denied for the challenged claims because the petitions were time-barred under § 315(b).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“discretion. The requirements are set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Each of the four patents is involved in patent litigation captioned Fractus,” slip op. at 2
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“(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). (Emphasis added). The USPTO rule implementing section 315(b) is set forth in 37 C.F.R.” slip op. at 3
Discretionary denialPatents in suitUS 7,394,432
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.