- Amazon.Com, Inc. / Amazon Web Services, Inc. et al. v. Almondnet, Inc And Intent Iq, LLCInstitution deniedPTAB · Jun 6, 2023 · IPR2023-00227 · APJ Kristen L Droesch · IPR · Institution
The Board denied institution of review of claims 36 and 37 as time-barred under § 315(b), and denied the motion for joinder as moot.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) 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.” Patent Owner served Petitioner with a complaint alleging infringement of the ’398 Patent in September 2021. Ex. 1016. Petitioner filed the Petition more than one year later on November 18, 2022. Pet. 80. Petitioner relies on its request to join the Meta IPR to avoid the time bar of 35 U.S.C. § 315(b). Pet. 9 (“Because Petitioner files an accompanying motion for” slip op. at 6
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“In any event, in addition to the mootness of Petitioner’s Motion for Joinder due to termination of the Meta IPR, we are not persuaded that joinder would have been appropriate. More specifically, we are not persuaded by Petitioner’s arguments that “joinder will have little, if any impact on the Meta IPR because . . . the schedule would be unaffected.” Mot. 3; see also Mot. 4 (“Joinder will not affect the schedule in the Meta IPR.”). We note that stipulated Due Date 2 for filing a reply in the Meta IPR was May 2, 2023. See IPR2022-00773, Paper 14. In view of the fact that stipulated Due Date 2 in the Meta IPR has passed, and no reply has been filed in the Meta IPR, Petitioner does not sufficiently address how “the requested joinder will not create any additional burden for the Patent Owner or the Board and will not require any additional time or resources.” Pet. Prelim. Reply 1. As pointed out by Patent Owner, “even if this proceeding went forward by essentially ‘picking up’ where the Meta . . . IPR left off, the existing schedule [of the Meta IPR] would need to be pushed back significantly, to allow time after institution for Petitioner[] to depose Patent Owner’s expert and prepare a reply.” PO Prelim. Sur-Reply 2. Because Petitioner does not meaningfully address the impact joinder would have had on the Meta IPR schedule, joinder also would not have been appropriate.” slip op. at 7
Discretionary denialPatents in suitUS 8,677,398 - Terremark North America LLC / Verizon Business Network Services Inc. et al. v. Joao Control & Monitoring Systems, LLCInstitution deniedPTAB · Dec 28, 2015 · IPR2015-01486 · APJ Jason J Chung · IPR · Institution
The Board denied institution on all challenged claims because the petition was filed outside § 315(b)’s one-year time bar.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent” (emphasis added). 35 U.S.C. § 315(b). Petitioner acknowledges that Terremark North America LLC, Verizon Business Network Services Inc., Verizon Services Corp., Time Warner Cable Inc., iControl Networks Inc., CoxCom, LLC, Verizon Communications Inc., Verizon Corporate Resources Group, LLC, and Verizon Data Services LLC are real-parties-in-interest. Pet. 1–2. Petitioner also acknowledges that Terremark North America LLC, Verizon Communications Inc., and Time Warner Cable Inc. were served with a complaint on June 23, 2014. Exs. 2003, 2005. Inter partes review is precluded for at least the reasons that Terremark North America LLC and Verizon Communications Inc. are real parties-in-interest and were served with a complaint on June 23, 2014. 35 U.S.C. § 315(b). slip op. at 14
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“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” (emphasis added). 35 U.S.C. § 315(b). Petitioner acknowledges that Terremark North America LLC, Verizon Business Network Services Inc., Verizon Services Corp., Time Warner Cable Inc., iControl Networks Inc., CoxCom, LLC, Verizon Communications Inc., Verizon Corporate Resources Group, LLC, and Verizon Data Services LLC are real-parties-in-interest. Pet. 1–2. Petitioner also acknowledges that Terremark North America LLC, Verizon Communications Inc., and Time Warner Cable Inc. were served with a complaint on June 23, 2014. Exs. 2003, 2005. Inter partes review is precluded for at least the reasons that Terremark North America LLC and Verizon Communications Inc. are real parties-in-interest and were served with a complaint on June 23, 2014. 35 U.S.C. § 315(b). CoxCom, LLC, is precluded additionally from filing the Petition for other reasons. In PNC Bank, N.A. et al. v. Maxim Integrated Prods., Inc., Case CBM2014-00041 (PTAB June 3, 2014) (Paper No. 19), the Board addressed a Motion of Adverse Judgement against PNC. In PNC Bank, PNC, one of three petitioners, violated 35 U.S.C. § 325(a)(1) by filing the petition for covered business method review (“CBM”) after it had filed a district court suit challenging the validity of the patent challenged in the CBM. In an attempt to eliminate the statutory bar against PNC, PNC moved for entry of adverse judgment against it in the CBM proceeding and 14 contended that other petitioners could proceed with the petition without further involvement by PNC. The Board denied institution on the CBM petition and dismissed the motion because PNC already had exerted substantial control over the case, and granting PNC’s request for adverse judgment would not obviate the control that PNC already had exerted. Id., slip op. at 4. Similarly, Terremark North America LLC and the named Verizon entities in this case already have exerted substantial control over the case by participating in filing the Petition, appointing counsel, etc. The presence of CoxCom, LLC, therefore, does not remove the statutory bar. slip op. at 14
Discretionary denialPatents in suitUS 6,549,130 - Terremark North America LLC / Verizon Business Network Services Inc. et al. v. Joao Control & Monitoring Systems, LLCInstitution deniedPTAB · Dec 28, 2015 · IPR2015-01482 · APJ Jason J Chung · IPR · Institution
The Board denied institution on all challenged claims because the petition was filed outside the one-year time bar under 35 U.S.C. § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“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” (emphasis added). 35 U.S.C. § 315(b). Petitioner acknowledges that Terremark North America LLC, Verizon Communications Inc., Verizon Services Corp., Verizon Communications Inc., Verizon Corporate Resources Group, LLC, and Verizon Data Services LLC are real-parties-in-interest. Pet. 1–2. Petitioner also acknowledges that Terremark North America LLC and Verizon Communications Inc. were 14 served with a complaint on June 23, 2014. Ex. 2003. Inter partes review is precluded for at least the reasons that Terremark North America LLC and Verizon Communications Inc. are real parties-in-interest and were served with a complaint on June 23, 2014. 35 U.S.C. § 315(b). slip op. at 14
- BurdenDecided for patent owner
“Petitioner was served with a complaint alleging infringement. 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b). Moreover, a petition is only accorded a filing date once (1) a petition has been filed; (2) payment has been made; and (3) the complete petition is served on the patent owner. 35 U.S.C. § 312(a); 37 C.F.R. § 42.106(a). The Board has discretion to waive non-statutory requirements per 37 C.F.R. § 42.5(b). In addition, our rules permit a party to file a motion to correct a “clerical or typographical mistake.” 37 C.F.R. § 42.104(c). The burden of proof rests with the moving party, which is, in this case, Petitioner. 37 C.F.R. § 42.20(c); Motion 2.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“Petitioner acknowledges that Terremark North America LLC, Verizon Communications Inc., Verizon Services Corp., Verizon Communications Inc., Verizon Corporate Resources Group, LLC, and Verizon Data Services LLC are real-parties-in-interest. Pet. 1–2. Petitioner also acknowledges that Terremark North America LLC and Verizon Communications Inc. were 14 served with a complaint on June 23, 2014. Ex. 2003. Inter partes review is precluded for at least the reasons that Terremark North America LLC and Verizon Communications Inc. are real parties-in-interest and were served with a complaint on June 23, 2014. 35 U.S.C. § 315(b). CoxCom, LLC, is precluded additionally from filing the Petition for other reasons. In PNC Bank, N.A. et al. v. Maxim Integrated Prods., Inc., Case CBM2014-00041 (PTAB June 3, 2014) (Paper No. 19), the Board addressed a Motion of Adverse Judgement against PNC. In PNC Bank, PNC, one of three petitioners, violated 35 U.S.C. § 325(a)(1) by filing the petition for covered business method review (“CBM”) after it had filed a district court suit challenging the validity of the patent challenged in the CBM. In an attempt to eliminate the statutory bar against PNC, PNC moved for entry of adverse judgment against it in the CBM proceeding and contended that other petitioners could proceed with the petition without further involvement by PNC. The Board denied institution on the CBM petition and dismissed the motion because PNC already had exerted substantial control over the case, and granting PNC’s request for adverse judgment would not obviate the control that PNC already had exerted. Id., slip op. at 4. Similarly, Terremark North America LLC and the named Verizon entities in this case already have exerted substantial control over the case by participating in filing the Petition, appointing counsel, etc. The presence of CoxCom, LLC, therefore, does not remove the statutory bar.” slip op. at 14
Discretionary denialPatents in suitUS 7,397,363 - Terremark North America LLC / Verizon Communications Inc. et al. v. Joao Control & Monitoring Systems, LLCInstitution deniedPTAB · Dec 28, 2015 · IPR2015-01485 · APJ Jason J Chung · IPR · Institution
The Board denied institution on all challenged claims because the petition was filed after the one-year time bar in § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“Petitioner was served with a complaint alleging infringement. 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b). Moreover, a petition is only accorded a filing date once (1) a petition has been filed; (2) payment has been made; and (3) the complete petition is served on the patent owner. 35 U.S.C. § 312(a); 37 C.F.R. § 42.106(a). The Board has discretion to waive non-statutory requirements per 37 C.F.R. § 42.5(b). In addition, our rules permit a party to file a motion to correct a “clerical or typographical mistake.” 37 C.F.R. § 42.104(c). The burden of proof rests with the moving party, which is, in this case, Petitioner. 37 C.F.R. § 42.20(c); Motion 2.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityInstitution denied time barDecided for patent owner
“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” (emphasis added). 35 U.S.C. § 315(b).” slip op. at 13
Discretionary denialPatents in suitUS 7,397,363 - Terremark North America LLC / Verizon Business Network Services Inc. et al. v. Joao Control & Monitoring Systems, LLCInstitution deniedPTAB · Dec 28, 2015 · IPR2015-01484 · APJ Jason J Chung · IPR · Institution
The Board denied institution on all challenged claims because the petition was filed, served, and paid one day after the § 315(b) one-year time bar.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“Petitioner was served with a complaint alleging infringement. 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b). Moreover, a petition is only accorded a filing date once: (1) a petition has been filed; (2) payment has been made; and (3) the complete petition is served on the patent owner. 35 U.S.C. § 312(a); 37 C.F.R. § 42.106(a). The Board has discretion to waive non-statutory requirements per 37 C.F.R. § 42.5(b). In addition, our rules permit a party to file a motion to correct a “clerical or typographical mistake.” 37 C.F.R. § 42.104(c). The burden of proof rests with the moving party, which is, in this case, Petitioner. 37 C.F.R. § 42.20(c); Motion 2. It is undisputed that at least two of the petitioning parties were served with a complaint alleging infringement of the ’010 patent on June 23, 2014. Ex. 2001 ¶¶ 1–4; Exs. 2002–2005. On June 23, 2015, Petitioner failed to comply with the statutory requirements of 35 U.S.C. § 312(a) by not paying the required fee and failing to meet the requirements of 37 C.F.R. § 42.106(a) by not filing and serving the Petition and its supporting evidence. Motion 2–6 (citing Ex. 1008 ¶¶ 1–13; Ex. 1009 ¶¶ 1–12). On June 24, 2015, one day after the one year statutory deadline, Petitioner completed filing of the Petitions at issue. Id. at 5–6 (citing Ex. 1008 ¶¶ 1– 13; Ex. 1009 ¶¶ 1–12).” slip op. at 5
Discretionary denialPatents in suitUS 7,277,010
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.