- Cultec, Inc. v. Stormtech LLCInstitution deniedPTAB · Jul 17, 2017 · IPR2017-00526 · APJ Barry L Grossman · IPR · Institution
The Board denied the motion to change the filing date and denied institution on all challenged claims because the petition was time-barred under § 315(b).
RulingsInstitution decision- BurdenDenied
“Petitioner, as the moving party, has the burden of proof to establish that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). As explained below, Petitioner has not met this burden. Accordingly, we deny the Motion.” slip op. at 2
- PTAB / AIA Trials › §315(b) 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. Petitioner acknowledges that “[i]n the absence of a January 5, 2017 filing date, this IPR will be considered untimely” under 35 U.S.C. § 315(b). Motion 4; see also PO Opp. 1 (indicating Patent Owner’s agreement). Accordingly, the petition is barred under 35 U.S.C. § 315(b). V. ORDER In consideration of the foregoing, it is hereby: ORDERED that Petitioner’s Motion is denied; and FURTHER ORDERED that institution of an inter partes review of any challenged claim of Patent No. 8,672,583 is denied under 35 U.S.C. § 315(b).” slip op. at 14
Discretionary denialPatents in suitUS 8,672,583 - Semiconductor Components Industries, LLC D/B/A On Semiconductor v. In-Depth Test LLCInstitution deniedPTAB · Mar 24, 2017 · IPR2016-01833 · APJ Justin T Arbes · IPR · Institution
The Board denied institution on all challenged claims because Fairchild was ON Semiconductor’s privy, making the petition time-barred under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“need to be completed before the merger can close. But in assessing privity, we must take into account the practical situation between the parties at the relevant time. In this case, the Merger Agreement had been in place for nearly ten months, all regulatory approvals had been obtained, and the necessary majority of shares had been tendered as of September 16, 2016. Under these circumstances, finding that ON Semiconductor was not in privity with Fairchild on Friday, September 16, 2016—but was in privity after closing on the morning of the next business day, Monday, September 19, 2016—would put form over substance and ignore the practical situation that existed on September 16, 2016.3” slip op. at 11
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“[o]n November 18, 2015, ON Semiconductor Corporation, Falcon Operations Sub, Inc., and Fairchild Semiconductor International, Inc. (“Fairchild”) entered into an Agreement and Plan of Merger, which calls for Falcon Operations Sub, Inc. to be merged with and into Fairchild, with Fairchild surviving as a wholly-owned subsidiary of ON Semiconductor Corporation. The proposed merger has not yet closed. All of the requirements and closing conditions of the Agreement and Plan of Merger have not been satisfied, and it is uncertain when or whether the merger will close. Fairchild has had no role in the decision to file this Petition, the content of this Petition, or the preparation of this Petition. Fairchild did not contribute in any manner to the funding for this Petition. Fairchild is not a real party in interest or a privy of any petitioner. The real parties in interest do not control and have not controlled any litigation between any affiliate of Fairchild and [Patent Owner]. Pet. 1–2. Patent Owner argues that ON Semiconductor was in privity with Fairchild on September 16, 2016, because (1) all of the conditions precedent for the merger were fully satisfied, such that the merger should be “deemed complete” as of that date, (2) ON Semiconductor will have a full and fair opportunity to litigate the validity of the challenged claims in the district court case, which is ongoing, (3) ON Semiconductor had sufficient control over the district court case based on OSC’s settlement authority and the fact that the case was stayed, and (4) the Petition in this proceeding was timed to” slip op. at 9
Discretionary denialPatents in suitUS 6,792,373 - PTAB · Oct 16, 2014 · IPR2014-00779 · APJ Scott E Kamholz · IPR · Rehearing
The Board denied Histologics’s rehearing request, leaving the institution denial based on the § 315(b) time bar in place.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A Request for Rehearing is not an opportunity to re-argue old arguments or to present new evidence or arguments. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Yet Histologics does all of these, by repeating its Petition arguments, amplifying them, and filing eleven new evidentiary exhibits, nos. 1028-1038, without showing good cause why the evidence should be considered. See id. As to the old arguments, we addressed them fully in the Decision. As to the new, we cannot have misapprehended or overlooked arguments and evidence not presented in the Petition. We gave Histologics’s Petition full consideration and explained the reasoning underlying our determinations. A request for rehearing is not a second chance for a party to present its case. We are not persuaded of an abuse of discretion. IV.” slip op. at 4
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“We gave Histologics’s arguments and evidence complete consideration and addressed them fully in the Decision. As we explained, the issue in this case was whether service of SMR’s complaint was nullified by the Court’s dismissal of the ’612 action. Dec. 5. We explained that service was not nullified, because Histologics remained answerable to the Court for the allegations made in the original ’612 action complaint, and that the parties were not left in the same legal position as if the ’612 action had never been filed. Id. Histologics does not address this determination or explain how it was in error, other than by advancing alternative legal theories.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“A Request for Rehearing is not an opportunity to re-argue old arguments or to present new evidence or arguments. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Yet Histologics does all of these, by repeating its Petition arguments, amplifying them, and filing eleven new evidentiary exhibits, nos. 1028-1038, without showing good cause why the evidence should be considered. See id. As to the old arguments, we addressed them fully in the Decision. As to the new, we cannot have misapprehended or overlooked arguments and evidence not presented in the Petition.” slip op. at 4
Discretionary denialPatents in suitUS 6,258,044
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.