- Commscope, Inc. v. TQ Delta, LLC.Institution deniedPTAB · Apr 25, 2023 · IPR2023-00068 · APJ Lynne E Pettigrew · IPR · Institution
The Board denied institution of review of claims 9–16 as time-barred under § 315(b), and denied CommScope’s motion for joinder as moot.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“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.”” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“The ’664 IPR, however, has been terminated. Nokia of Am. Corp. v. TQ Delta, LLC, IPR2022-00664, Paper 24 at 3 (PTAB Dec. 8, 2022). Thus, there no longer is a pending proceeding in the ’664 IPR for Petitioner to join. As a result, Petitioner’s request to join the ’664 IPR is moot, and the Petition is not timely under 35 U.S.C. § 315(b). IV. CONCLUSION The Motion for Joinder is denied as moot because the ’664 IPR already has been terminated, and the Petition is denied because it was not filed within the time period set forth in 35 U.S.C. § 315(b). V. ORDER Accordingly, it is ORDERED that the Motion for Joinder is denied as moot; and” slip op. at 5
Discretionary denialPatents in suitUS 7,844,882 - Commscope, Inc. v. TQ Delta, LLCInstitution deniedPTAB · Apr 25, 2023 · IPR2023-00064 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution of review of claims 1–4 as time-barred under § 315(b) and denied joinder as moot because the proceeding to be joined had terminated.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“petitioner is served with a complaint alleging infringement of the patent.” Patent Owner served 2Wire, Inc. (“2Wire”), a privy of Petitioner,1 with a complaint alleging infringement of the ’048 patent in February 2014. Ex. 2001; Ex. 2002. Patent Owner served Petitioner with a complaint alleging infringement of the ’048 patent on August 17, 2021. Ex. 1027; Ex. 3001. Petitioner filed the Petition more than one year later on October 26, 2022. Pet. 79. Petitioner does not dispute those facts, but instead relies on its request to join the ’666 IPR to avoid the time limit in Section 315(b). Pet. 1 (“Because . . . this is a copycat petition . . . accompanied by a motion for joinder . . . , the time bar under § 315(b) does not apply.”); Mot. 8–10 (“the one-year time limitation does not apply to a request for joinder”). The ’666 IPR, however, has been terminated. Nokia of Am. Corp. v. TQ Delta, LLC, IPR2022-00666, Paper 23 at 3 (PTAB Dec. 8, 2022). Thus, there no longer is a pending proceeding in the ’666 IPR for Petitioner to join. As a result, Petitioner’s request to join the ’666 IPR is moot, and the Petition is not timely under Section 315(b).” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“The ’666 IPR, however, has been terminated. Nokia of Am. Corp. v. TQ Delta, LLC, IPR2022-00666, Paper 23 at 3 (PTAB Dec. 8, 2022). Thus, there no longer is a pending proceeding in the ’666 IPR for Petitioner to join. As a result, Petitioner’s request to join the ’666 IPR is moot, and the Petition is not timely under Section 315(b). III. CONCLUSION The Motion for Joinder is denied as moot because the ’666 IPR” slip op. at 5
Discretionary denialPatents in suitUS 8,276,048 - Commscope, Inc. v. TQ Delta, LLCInstitution deniedPTAB · Apr 25, 2023 · IPR2023-00066 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution of IPR on claims 1–8 as time-barred under § 315(b), and denied joinder as moot because the proceeding sought to be joined had terminated.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“petitioner is served with a complaint alleging infringement of the patent.” Patent Owner served 2Wire, Inc. (“2Wire”), a privy of Petitioner,1 with a complaint alleging infringement of the ’381 patent in February 2014. Ex. 2001; Ex. 2002. Petitioner filed the Petition more than one year later on November 1, 2022. Pet. 79. Petitioner does not dispute those facts, but instead relies on its request to join the ’665 IPR to avoid the time limit in Section 315(b). Pet. 1 (“Because . . . CommScope will file an accompanying motion for joinder . . . , the time bar under § 315(b) does not apply.”); Mot. 8–10 (“the one-year time limitation does not apply to a request for joinder”). The ’665 IPR, however, has been terminated. Nokia of Am. Corp. v. TQ Delta, LLC, IPR2022-00665, Paper 23 at 3 (PTAB Dec. 8, 2022). Thus, there no longer is a pending proceeding in the ’665 IPR for Petitioner to join. As a result, Petitioner’s request to join the ’665 IPR is moot, and the Petition is not timely under Section 315(b).” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“The ’665 IPR, however, has been terminated. Nokia of Am. Corp. v. TQ Delta, LLC, IPR2022-00665, Paper 23 at 3 (PTAB Dec. 8, 2022). Thus, there no longer is a pending proceeding in the ’665 IPR for Petitioner to join. As a result, Petitioner’s request to join the ’665 IPR is moot, and the Petition is not timely under Section 315(b).” slip op. at 5
Discretionary denialPatents in suitUS 7,836,381 - Commscope, Inc. v. TQ Delta, LLCInstitution deniedPTAB · Dec 19, 2022 · IPR2022-01443 · APJ Karl D Easthom · IPR · Institution
The Board denied institution because CommScope’s petition was time-barred under § 315(b), and denied joinder because the IPR it sought to join had been terminated.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“Further, we effectively maintain the Board’s holding that CommScope’s first petition remains time-barred. For the same reasons, the Petition in this proceeding is also time-barred, and institution is denied. See IPR2022-00352, Paper 13.” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“In this proceeding, Petitioner relies on its request to join the ’471 IPR to avoid the time bar in § 315(b). Pet. 68 (“[B]ecause CommScope will file a motion for joinder with the Nokia IPR, the time-bar set forth in 35 U.S.C. § 315(b) does not apply to this petition.”). However, the Board terminated the ’471 IPR based on settlement between the parties, noting the Board’s policy goal of fostering settlements. IPR2022-00471, Paper 41. There is no pending proceeding in the ’471 IPR for Petitioner to join. As a result, Petitioner’s request to join the ’471 IPR is denied.” slip op. at 3
Discretionary denialPatents in suitUS 8,462,835 - Commscope, Inc. v. TQ Delta, LLCInstitution deniedPTAB · Aug 19, 2022 · IPR2022-00352 · APJ Joni Y Chang · IPR · Institution
The Board denied institution on all challenged claims because time-barred 2Wire was an RPI and was in privity with CommScope under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“It is undisputed that 2Wire is time-barred under § 315(b) because 2Wire was served with a complaint alleging infringement of the ’835 patent 12 on February 7, 2014, more than one year before December 31, 2021, the filing date of the Petition. Pet. 65; Ex. 1034; Prelim. Resp. 12. CommScope identifies ARRIS Solutions as an RPI to this IPR proceeding and confirms that “2Wire, Inc. was merged into ARRIS Solutions, Inc.” Paper 7, 2. Indeed, 2Wire’s Amended Corporate Disclosure Statement filed in the Delaware case indicates that “the undersigned counsel of record for 2Wire, Inc. certifies that 2Wire, Inc. has been merged to form ARRIS Solutions, Inc.” and that “[t]his name change is the result of a merger . . . that became effective January 1, 2017.” Ex. 2009, 1. Moreover, CommScope acknowledges that 2Wire is “CommScope’s predecessor-in-interest in the District of Delaware,” and that “[o]n April 4, 2019, CommScope Holding Company, Inc.[, an RPI identified by Petitioner,] acquired the successor-ininterest of 2 Wire.” Ex. 2035, 5; Pet. 64. In sum, CommScope identifies ARRIS Solutions as an RPI in this IPR proceeding and 2Wire merged with ARRIS Solutions. As a result, we are persuaded that 2Wire is an RPI in this IPR proceeding. Accordingly, the Petition is time-barred under § 315(b). See Power Integrations, Inc., 926 F.3d at 1310, 1318 (holding that the IPR Petition was time-barred under § 315(b) because time-barred entity Fairchild, which had merged with the petitioner, was an RPI at the time of institution).” slip op. at 12
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“on February 7, 2014, more than one year before December 31, 2021, the filing date of the Petition. Pet. 65; Ex. 1034; Prelim. Resp. 12. CommScope identifies ARRIS Solutions as an RPI to this IPR proceeding and confirms that “2Wire, Inc. was merged into ARRIS Solutions, Inc.” Paper 7, 2. Indeed, 2Wire’s Amended Corporate Disclosure Statement filed in the Delaware case indicates that “the undersigned counsel of record for 2Wire, Inc. certifies that 2Wire, Inc. has been merged to form ARRIS Solutions, Inc.” and that “[t]his name change is the result of a merger . . . that became effective January 1, 2017.” Ex. 2009, 1. Moreover, CommScope acknowledges that 2Wire is “CommScope’s predecessor-in-interest in the District of Delaware,” and that “[o]n April 4, 2019, CommScope Holding Company, Inc.[, an RPI identified by Petitioner,] acquired the successor-ininterest of 2 Wire.” Ex. 2035, 5; Pet. 64. In sum, CommScope identifies ARRIS Solutions as an RPI in this IPR proceeding and 2Wire merged with ARRIS Solutions. As a result, we are persuaded that 2Wire is an RPI in this IPR proceeding. Accordingly, the Petition is time-barred under § 315(b). See Power Integrations, Inc., 926 F.3d at 1310, 1318 (holding that the IPR Petition was time-barred under § 315(b) because time-barred entity Fairchild, which had merged with the petitioner, was an RPI at the time of institution).” slip op. at 13
Discretionary denialPatents in suitUS 8,462,835 - 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 - Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Regents Of The University Of MinnesotaRehearing deniedPTAB · Sep 18, 2020 · IPR2017-01186 · APJ Robert J Weinschenk · IPR · Rehearing
The Board denied Ericsson’s rehearing request, leaving institution denied because the petition was time-barred under § 315(b) based on privity with district court defendants.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS When considering a request for rehearing of a decision whether to institute an inter partes review, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“In the Decision, we explained that 35 U.S.C. § 315(b) provides that 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.” Dec. 4. We also explained that in determining whether a petitioner is in privity with another party, we consider the Supreme Court’s decision in Taylor v. Sturgell, 553 U.S. 880 (2008). Dec. 4–5. Taylor provides six categories of exceptions to the rule against nonparty preclusion, namely 1) when “[a] person . . . agrees to be bound by the determination of issues in an action between others”; 2) “based on a” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“In the Decision, we explained that 35 U.S.C. § 315(b) provides that 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.” Dec. 4. We also explained that in determining whether a petitioner is in privity with another party, we consider the Supreme Court’s decision in Taylor v. Sturgell, 553 U.S. 880 (2008). Dec. 4–5. Taylor provides six categories of exceptions to the rule against nonparty preclusion, namely 1) when “[a] person . . . agrees to be bound by the determination of issues in an action between others”; 2) “based on a” slip op. at 2
Discretionary denialPatents in suitUS 8,774,309 - 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 - 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 - 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
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.