- Biocon Biologics, Inc. / Biocon Biologics Limited v. Regeneron Pharmaceuticals, Inc.Institution deniedPTAB · Sep 24, 2026 · PGR2026-00039 · APJ John A Squires · PGR · Director review
The Director denied the petition and instituted no trial because it was filed more than nine months after the patent issued, contrary to § 321(c).
RulingsDirector review decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“I agree with Patent Owner that the Petition is barred by § 321(c). Section 321(c) provides that “[a] petition for a post-grant review may only be filed not later than the date that is 9 months after the date of the grant of the patent or of the issuance of a reissue patent (as the case may be).” Joinder is authorized under 35 U.S.C. § 325(c), which provides that “[i]f more than 1 petition for a post-grant review under this chapter is properly filed against the same patent and the Director determines that more than 1 of these petitions warrants the institution of a post-grant review under section 324, the Director may consolidate such reviews into a single post-grant review.” Notably, the statutory authorization for joinder under § 325(c) does not provide an exception to the nine-month statutory bar, as it requires any petition considered for joinder to be “properly filed,” i.e., to meet the statutory filing requirements including the nine-month filing deadline recited in § 321(c). Petitioner argues that I have broad discretion to promulgate rules and permit exceptions, such as here where institution would increase efficiency. See Reply 2–3. I agree that my institution discretion is broad. But § 325(c) provides no exception to the time period in which a petition for post-grant review may be filed.1 The board rule on which Petitioner relies cannot override a clear statutory requirement, and Petitioner does not point” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“Section 321(c) provides that “[a] petition for a post-grant review may only be filed not later than the date that is 9 months after the date of the grant of the patent or of the issuance of a reissue patent (as the case may be).” Joinder is authorized under 35 U.S.C. § 325(c), which provides that “[i]f more than 1 petition for a post-grant review under this chapter is properly filed against the same patent and the Director determines that more than 1 of these petitions warrants the institution of a post-grant review under section 324, the Director may consolidate such reviews into a single post-grant review.” Notably, the statutory authorization for joinder under § 325(c) does not provide an exception to the nine-month statutory bar, as it requires any petition considered for joinder to be “properly filed,” i.e., to meet the statutory filing requirements including the nine-month filing deadline recited in § 321(c). Petitioner argues that I have broad discretion to promulgate rules and permit exceptions, such as here where institution would increase efficiency. See Reply 2–3. I agree that my institution discretion is broad. But § 325(c) provides no exception to the time period in which a petition for post-grant review may be filed.1 The board rule on which Petitioner relies cannot override a clear statutory requirement, and Petitioner does not point 1 Although the Office continues to encourage joinder and early challenges to increase efficiency and resolve patentability challenges early in the life of the patent, these considerations must follow the statute.” slip op. at 3
Discretionary denialPatents in suitUS 12,168,036 - Google LLC v. Soundclear Technologies LLCInstitution deniedPTAB · Mar 17, 2026 · IPR2025-01597 · APJ John A Squires · IPR · Institution
The Director denied Google’s petition for IPR of claims 1–5 because Google filed it after the § 315(b) deadline and showed no exceptional circumstances.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“is acknowledged. Google’s statutory deadline to file a proceeding, however, expired on July 31, 2025, one year after service of the complaint in the parallel litigation between Google and SoundClear Technologies LLC. See Pet. 75. Accordingly, Google’s Petition was filed more than one year after the date on which it was served with a complaint alleging infringement of the ’337 patent and Google is time-barred from filing a petition under § 315(b). “Petitions filed by time-barred parties should proceed only in exceptional circumstances.” Realtek Semiconductor Corp. v. ParkerVision, Inc., IPR2025-00324, Paper 11 (June 25, 2025) (designated precedential January 9, 2026). Google does not present an exceptional circumstance here beyond its goal of judicial efficiency. Judicial efficiency, however, absent other considerations, does not qualify as an exceptional circumstance that would justify institution and joinder of a time-barred party. The better course in a situation like this would have been for Google to file the petition and motion for joinder before the statutory time bar. Here, the Amazon IPR was filed in January 2025, giving Google ample time to file the petition and joinder motion. Parties do not have to wait to request joinder until the case they are seeking to join is instituted. Accordingly, the Petition is denied under 35 U.S.C. § 314(a).” slip op. at 2
Discretionary denialPatents in suitUS 11,069,337 - Walmart Inc. / Walmart Stores Texas, LLC v. Security Technology LLCInstitution deniedPTAB · Aug 14, 2025 · IPR2025-00809 · APJ Coke Morgan Stewart · IPR · Director review
The Director denied institution of Walmart’s petition because Walmart was time-barred and did not show exceptional circumstances justifying joinder.
RulingsDirector review decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“infringement of the challenged patent on September 15, 2023. DD Req. 14. Petitioner waited until March 28, 2025 to file this Petition, more than eighteen months later. Thus, Petitioner is time-barred under 35 U.S.C. § 315(b) from filing a petition. Petitioner seeks to join a recently instituted inter partes review filed by Home Depot U.S.A., Inc. Paper 3 (motion to join to IPR2024-01420). However, petitions filed by time-barred parties should proceed only in exceptional circumstances. Realtek Semiconductor Corp. v. ParkerVision, Inc., IPR2025-00324, Paper 11 at 3 (Director June 25, 2025). Petitioner does not persuasively demonstrate exceptional circumstances here. For example, Petitioner argues that Patent Owner requested consolidation of its district court proceedings against Petitioner and Home Depot; that an initial district court proceeding was dismissed for standing, causing delays; and that the parallel district court proceeding is stayed. Paper 19, 3. However, Petitioner fails to persuasively demonstrate that these circumstances are exceptional and justify the joinder of a time-barred party. Accordingly, discretionary denial is appropriate under these circumstances.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingDenied
“infringement of the challenged patent on September 15, 2023. DD Req. 14. Petitioner waited until March 28, 2025 to file this Petition, more than eighteen months later. Thus, Petitioner is time-barred under 35 U.S.C. § 315(b) from filing a petition. Petitioner seeks to join a recently instituted inter partes review filed by Home Depot U.S.A., Inc. Paper 3 (motion to join to IPR2024-01420). However, petitions filed by time-barred parties should proceed only in exceptional circumstances. Realtek Semiconductor Corp. v. ParkerVision, Inc., IPR2025-00324, Paper 11 at 3 (Director June 25, 2025). Petitioner does not persuasively demonstrate exceptional circumstances here. For example, Petitioner argues that Patent Owner requested consolidation of its district court proceedings against Petitioner and Home Depot; that an initial district court proceeding was dismissed for standing, causing delays; and that the parallel district court proceeding is stayed. Paper 19, 3. However, Petitioner fails to persuasively demonstrate that these circumstances are exceptional and justify the joinder of a time-barred party. Accordingly, discretionary denial is appropriate under these circumstances.” slip op. at 2
- Other 314aInstitution denied discretionary otherInstitution denied
“infringement of the challenged patent on September 15, 2023. DD Req. 14. Petitioner waited until March 28, 2025 to file this Petition, more than eighteen months later. Thus, Petitioner is time-barred under 35 U.S.C. § 315(b) from filing a petition. Petitioner seeks to join a recently instituted inter partes review filed by Home Depot U.S.A., Inc. Paper 3 (motion to join to IPR2024-01420). However, petitions filed by time-barred parties should proceed only in exceptional circumstances. Realtek Semiconductor Corp. v. ParkerVision, Inc., IPR2025-00324, Paper 11 at 3 (Director June 25, 2025). Petitioner does not persuasively demonstrate exceptional circumstances here. For example, Petitioner argues that Patent Owner requested consolidation of its district court proceedings against Petitioner and Home Depot; that an initial district court proceeding was dismissed for standing, causing delays; and that the parallel district court proceeding is stayed. Paper 19, 3. However, Petitioner fails to persuasively demonstrate that these circumstances are exceptional and justify the joinder of a time-barred party. Accordingly, discretionary denial is appropriate under these circumstances. Although certain arguments are highlighted above, the determination to exercise discretion to deny institution is based on a holistic assessment of all of the evidence and arguments presented. Accordingly, the Petition is denied under 35 U.S.C. § 314(a).” slip op. at 2
Discretionary denialPatents in suitUS 11,562,402 - Walmart Inc. / Walmart Stores Texas, LLC v. Ravenwhite Security, Inc.Institution deniedPTAB · Aug 14, 2025 · IPR2025-00810 · APJ Coke Morgan Stewart · IPR · Director review
The Director granted Patent Owner’s discretionary-denial request and denied the petition, finding Walmart time-barred and no exceptional circumstances justifying joinder.
RulingsDirector review decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDecided for patent owner
“In particular, Petitioner was served with a complaint alleging infringement of the challenged patent on September 15, 2023. DD Req. 12. Petitioner waited until March 28, 2025 to file this Petition, more than eighteen months later. Thus, Petitioner is time-barred under 35 U.S.C. § 315(b) from filing a petition. Petitioner seeks to join a recently instituted inter partes review filed by Home Depot U.S.A., Inc. Paper 3 (motion to join to IPR2024-01316). However, petitions filed by time-barred parties should proceed only in exceptional circumstances. Realtek Semiconductor Corp. v. ParkerVision, Inc., IPR2025-00324, Paper 11 at 3 (Director June 25, 2025). Petitioner does not persuasively demonstrate exceptional circumstances here. For example, Petitioner argues that Patent Owner requested consolidation of its district court proceedings against Petitioner and Home Depot; that an initial district court proceeding was dismissed for standing, causing delays; and that the parallel district court proceeding is stayed. Paper 18, 3. However, Petitioner fails to persuasively demonstrate that these circumstances are exceptional and justify the joinder of a time-barred party. Accordingly, discretionary denial is appropriate under these circumstances.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“infringement of the challenged patent on September 15, 2023. DD Req. 12. Petitioner waited until March 28, 2025 to file this Petition, more than eighteen months later. Thus, Petitioner is time-barred under 35 U.S.C. § 315(b) from filing a petition. Petitioner seeks to join a recently instituted inter partes review filed by Home Depot U.S.A., Inc. Paper 3 (motion to join to IPR2024-01316). However, petitions filed by time-barred parties should proceed only in exceptional circumstances. Realtek Semiconductor Corp. v. ParkerVision, Inc., IPR2025-00324, Paper 11 at 3 (Director June 25, 2025). Petitioner does not persuasively demonstrate exceptional circumstances here. For example, Petitioner argues that Patent Owner requested consolidation of its district court proceedings against Petitioner and Home Depot; that an initial district court proceeding was dismissed for standing, causing delays; and that the parallel district court proceeding is stayed. Paper 18, 3. However, Petitioner fails to persuasively demonstrate that these circumstances are exceptional and justify the joinder of a time-barred party. Accordingly, discretionary denial is appropriate under these circumstances.” slip op. at 2
- Other 314aInstitution denied discretionary otherInstitution denied
“Although certain arguments are highlighted above, the determination to exercise discretion to deny institution is based on a holistic assessment of all of the evidence and arguments presented. Accordingly, the Petition is denied under 35 U.S.C. § 314(a).” slip op. at 3
Discretionary denialPatents in suitUS 10,594,823 - 2985 LLC D/B/A Mountain Voyage Co. v. The Ridge Wallet, LLCInstitution deniedPTAB · Feb 18, 2025 · IPR2024-01264 · APJ Matthew S Meyers · IPR · Institution
The Board denied institution of review of claims 1–24 as time-barred under § 315(b), and denied joinder as moot because the Shenzhen IPR had terminated.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“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.” There is no dispute that Patent Owner served Petitioner with a complaint alleging infringement of the ’808 patent on March 15, 2023. See Mot. 2 (Mountain Voyage identifying March 15, 2023 as the date it was served with Patent Owner’s complaint in the United States District Court of Colorado). There is also no dispute that Mountain Voyage filed the instant Petition more than one year later on August 6, 2024. Pet. 91. Therefore, the evidence in this record shows that Mountain Voyage’s Petition was filed more than 1 year after the date on which Mountain Voyage was served with a complaint alleging infringement of the ’808 patent. Mountain Voyage relies on its request to join the Shenzhen IPR to avoid the time bar of 35 U.S.C. § 315(b). Mot. 1 (“This Motion for Joinder and the accompanying Instant Petition are timely being filed within one month of the decision to institute trial in the Shenzhen IPR.”). The Shenzhen IPR, however, has been terminated. Shenzhen IPR Termination 3–4. Thus, there no longer is a pending proceeding in the Shenzhen IPR for Petitioner to join. Accordingly, Petitioner’s request to join the Shenzhen IPR is moot, and the Petition is not timely under 35 U.S.C. § 315(b).” slip op. at 8
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“Mountain Voyage relies on its request to join the Shenzhen IPR to avoid the time bar of 35 U.S.C. § 315(b). Mot. 1 (“This Motion for Joinder and the accompanying Instant Petition are timely being filed within one month of the decision to institute trial in the Shenzhen IPR.”). The Shenzhen IPR, however, has been terminated. Shenzhen IPR Termination 3–4. Thus, there no longer is a pending proceeding in the Shenzhen IPR for Petitioner to join. Accordingly, Petitioner’s request to join the Shenzhen IPR is moot, and the Petition is not timely under 35 U.S.C. § 315(b). III. CONCLUSION The Motion for Joinder is denied as moot because the Shenzhen IPR” slip op. at 8
Discretionary denialPatents in suitUS 10,791,808 - Charter Communications, Inc. v. Touchstream Technologies, Inc.Institution deniedPTAB · Feb 11, 2025 · IPR2024-01232 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any obviousness ground; it also found the petition time-barred.
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“later than one month after we initially instituted inter partes review in the Comcast IPR. See 37 C.F.R. § 42.122(b). As discussed above, however, inter partes review is no longer instituted in the Comcast IPR. Under these circumstances, we do not grant Petitioner’s Joinder Motion because there is no pending proceeding to join. See 35 U.S.C. § 315(c) (“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 . . . that the Director . . . determines warrants the institution of an inter partes review.”). Petitioner’s Joinder Motion is denied.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed board ownDecided for patent owner
“least in part on a second message including at least one command in a second format.’” Pet. 4 (citing Ex. 1104, 168–173). The cited portion of the prosecution history shows that the applicant distinguished its claims from the prior art based on different first and second formats. The applicant argued in particular, Applicant submits that [the prior art] is completely silent with regard to “receiving, from the remote server device, a first message that includes at least one command in a first format, wherein the first message is received based at least in part on a second message including at least one command in a second format having been sent from the associated remote computing device.” In fact, [the prior art] never describes commands in different formats. . . . Ex. 1104, 170. Based on the applicant’s argument in this regard, we find that the prosecution history limits the scope of claim 1 to different first and second formats. In other words, the applicant’s argument during prosecution distinguishing its claims from the prior art based on different first and second formats overcomes the presumption based on claim differentiation that claim 1 encompasses first and second formats that are the same. See Fenner Invs., Ltd. v. Cellco P’Ship, 778 F.3d 1320, 1327 (Fed. Cir. 2015) (“Although claim differentiation is a useful analytic tool, it cannot . . . relieve any claim of limitations imposed by the prosecution history.”). Accordingly, claim 1 is limited to different first and second formats.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“argument and evidence. As discussed above in the claim construction section, the recited first and second formats are limited to different formats. See supra Part IV.A. To satisfy this aspect of limitation 1D under its theory, Petitioner needs to show that in Danciu the format of the control information sent from the remote control to the server is different from the format of the control information sent from the server to the controlled device. The cited disclosures in Danciu, however, do not teach or suggest that these formats are different. Nor does Petitioner explain adequately how Danciu’s disclosures teach or suggest the two formats are different. We recognize that the control information in Danciu may be “processed” or “repackaged,” as Petitioner asserts, but it is not clear that the control information is processed or repackaged such that the format of the control information sent from the remote control to the server and the format of the control information sent from the server to the controlled device are different. Petitioner does not rely on Mahajan to teach or suggest the recited first and second formats but relies on Mahajan instead as providing “implementation details for transmission of commands for controlling a client.” Pet. 27. Petitioner contends that its proposed combination of Danciu and Mahajan would have provided a system where “Danciu’s remote control would translate commands associated with a first type of media playing application to a generic format, transmit them to the controlled device, which would translate them to a command associated with a second type of media playing application for execution.” Id. at 31. In other words, the controlled device would receive the generic commands sent from the remote control and then translate the generic commands. It is not clear how the proposed combination in this way teaches or suggests the format of a command sent from the remote control to a server is different from the format of a command sent from the server to the controlled device.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Aldrey and Mahajan meets limitation 1D under Petitioner’s second theory. Petitioner only alleges that it would have been obvious to an ordinarily skilled artisan that Mahajan’s RTS Media Abstraction Module could operate at a server like Aldrey’s service provider network 103. Pet. 65. The Federal Circuit has explained that “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). Petitioner does not adequately explain why an ordinarily skilled artisan would have considered locating Mahajan’s abstraction module at a server, even if the abstraction module could operate at the server. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). We note Petitioner further argues that combining Mahajan and Aldrey would have provided a system where “Aldrey’s end terminal would translate commands associated with a first type of media playing application to a command associated with a second type of media playing application on a STB.” Pet. 66–67; see also id. at 66 (“Mahajan’s server-command teachings could be implemented on Aldrey’s end terminal remote control.”). Arguing that Aldrey’s end terminal would translate commands seems inconsistent with Petitioner’s earlier argument for locating Mahajan’s abstraction module (which translates commands) at Aldrey’s network service provider. See id. at 65–67. Moreover, it is not readily apparent how command translation by Aldrey’s end terminal––rather than Aldrey’s network service provider–– teaches or suggests the format of a command sent from the end terminal to the network service provider is different from the format of a command sent from the network service provider to the STB. Petitioner does not close these logical gaps.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,048,751 - Shenzhen Waydoo Intelligence Technology Co., Ltd. v. MHL Custom, Inc.Institution deniedPTAB · Dec 17, 2024 · IPR2024-00999 · APJ Michael L Woods · 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 › §315(b) time barInstitution denied time barDenied
“Whether we institute review depends on whether we grant Petitioner’s Motion for Joinder. If granted, the one-year bar does not apply. See 35 U.S.C. § 315(b). If denied, the Petition is time-barred. See id.” slip op. at 6
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“As in Code200 I, Petitioner provides no explanation as to why it did not file a petition seeking inter partes review of the ’659 patent within the one-year window. See generally Mot.; see also Opp. 2 (“Petitioner offers no explanation for why it waited over three years to seek to challenge the patent through IPR proceedings.”). Furthermore, Petitioner provides no explanation as to why joinder would be fair or otherwise in the interests of justice. See generally Mot.; see also Opp. 2 (“Petitioner offers no explanation for how joinder would be fair to, and not otherwise prejudice, Patent Owner.”). Accordingly, Petitioner has failed to establish that it is entitled to the requested relief under our Rules. See 37 C.F.R. §§ 42.1, 42.20(c). For the forgoing reasons, we exercise our discretion to deny Petitioner’s Motion for Joinder.” slip op. at 13
Discretionary denialPatents in suitUS 9,586,659 - Shenzhen Waydoo Intelligence Technology Co., Ltd. v. MHL Custom, Inc.Institution deniedPTAB · Dec 17, 2024 · IPR2024-00998 · APJ Michael L Woods · IPR · Institution
The Board denied joinder and denied institution on all challenged claims because the petition was time-barred under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“establish that it is entitled to the requested relief.” See 37 C.F.R. § 42.20(c). Regarding joinder, the relevant statute provides that: 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. 35 U.S.C. § 315(c).” slip op. at 5
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“This statute further provides that the petition for inter partes review must be filed no later 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); see also 37 C.F.R. § 42.101(b). This one-year time bar, however, “shall not apply to a request for joinder.” 35 U.S.C. § 315(b); see also 37 C.F.R. § 42.122(b).” slip op. at 5
Discretionary denialPatents in suitUS 9,359,044 - Luminex International Co., Ltd. v. Signify Holdings B.V.Institution deniedPTAB · May 9, 2024 · IPR2024-00101 · APJ Steven M Amundson · IPR · Institution
The Board denied institution because Menard was a real party in interest served with an infringement complaint more than one year before the Petition was filed.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“Thus, the evidence shows that: (1) Petitioner and Menard are parties to an agreement; (2) under the agreement, Petitioner supplies accused products to Menard; (3) the agreement includes an indemnity provision; (4) under the agreement, Menard made multiple demands for Petitioner to “indemnify or defend as a matter of first defense”; and (5) Petitioner responded to Menard’s multiple demands by, among other things, filing the Petition challenging the claims in the ’336 patent. See Ex. 2001 ¶¶ 21, 24–26, 28–29, 32–33, 35; Ex. 2002, 5–9 (¶¶ 21, 24–26, 28–29, 32–33, 35); Ex. 2013, 5–9 (¶¶ 21, 24–26, 28–29, 32–33, 35); Ex. 3003 ¶¶ 21, 24–26, 28–29, 32–33, 35. That Petitioner responded to Menard’s multiple demands for Petitioner to “indemnify or defend as a matter of first defense” by filing the Petition shows that the Petition was filed at Menard’s “behest.” Specifically, Menard demanded defense from infringement liability, and Petitioner responded by initiating this proceeding seeking to free Menard from infringement liability for all 20 claims in the ’336 patent. See Pet. 15–89.” slip op. at 36
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“For the real-party-in-interest analysis, we initially consider “whether a petition has been filed at a nonparty’s ‘behest,’” i.e., “the heart of the inquiry.” Uniloc 2017, 989 F.3d at 1027–28; AIT, 897 F.3d at 1351; CTPG at 14. In its third-party complaints, Menard alleged that it and Petitioner “are parties to a Menards Customer Returns, Defective Goods Policy and Conditions of Order Agreement” that requires Petitioner to “indemnify, defend and hold harmless Menard from and against any claims, litigation, or suits,” including “patent infringement arising from Menard’s use, sale or offering for sale of any goods provided by” Petitioner. Ex. 2001 ¶¶ 21, 24, 26, 28; Ex. 3003 ¶¶ 21, 24, 26, 28. Menard also alleged that the Conditions of Order Agreement requires Petitioner to “indemnify or defend as a matter of first defense and payment, not as a matter of reimbursement.” Ex. 2001 ¶ 29; Ex. 3003 ¶ 29.” slip op. at 35
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2
Discretionary denialPatents in suitUS 10,299,336 - Ubiquiti Inc. v. XR Communications LLC D/B/A Vivato Tech.Institution deniedPTAB · May 6, 2024 · IPR2024-00148 · APJ James J Mayberry · IPR · Institution
The Board denied joinder and denied institution because the target IPR had been terminated and the petition was time-barred under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“A threshold issue for joinder is that there must be an inter partes review to which the party seeking joinder can join. See 35 U.S.C. § 315(c) (giving the Director discretion to join the moving party to “that inter partes review,” that is, to the inter partes review that has been instituted).6 The ’613 IPR was terminated on October 3, 2023, more than one month before Petitioner filed the Petition and motion for joinder. Understanding this hurdle, Petitioner moves for us to reopen the ’613 IPR proceeding. Paper 2; see also Paper 3, 1 (“Ubiquiti is filing this motion for joinder concurrently with a motion for leave to file a motion to reopen IPR2022-00613, [and] a petition for inter partes review of the ’376 patent.”). Patent Owner opposes the motion. Paper 9. Petitioner replied to the opposition. Paper 10. In an Order filed concurrently with this Decision, we deny Petitioner’s motion to reopen the ’613 IPR proceeding.” slip op. at 10
- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“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 was served with a complaint alleging infringement of the ’376 patent on June 21, 2021—over two years before filing the present Petition. See Paper 9, 2; see also Ex. 3001 (providing proof of service); Paper 10 (not disputing Patent Owner’s contention regarding the service date). The AIA statute and our rules permit, at the discretion of the Director, a party to be joined to an inter partes review proceeding even if that party filed its petition after the one-year time bar. See 35 U.S.C. § 315(b) (“The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c).”); 37 C.F.R. § 42.122(b) (“The time period set forth in § 42.101(b) [that is, the one-year time bar] shall not apply when the petition is accompanied by a request for joinder.”). However, as we determine above, we deny Petitioner’s motion for joinder, as there is no inter partes review proceeding to join. As such, the provision allowing an otherwise time-barred petition is not implicated here. Accordingly, Petitioner’s Petition is time-barred under 35 U.S.C.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied time barInstitution denied
“CONCLUSION We deny Petitioner’s motion for joinder, as the ’613 IPR proceeding, to which Petitioner seeks joinder, has been terminated and will not be reopened. See Paper 11. Also, because the Petition was filed more than one year after Petitioner was served with a complaint for infringing the ’376 patent, the Petition is time-barred under 35 U.S.C. § 315(b), and is denied. V. ORDER In consideration of the foregoing, it is hereby ORDERED that, pursuant to 35 U.S.C. § 315(c), we deny Petitioner’s motion for joinder; and FURTHER ORDERED that an inter partes is not instituted.” slip op. at 12
Discretionary denialPatents in suitUS 10,594,376
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.