- 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 - 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 - Johnson Health Tech Co. Ltd. / Johnson Health Tech North America, Inc. v. Icon Health & Fitness, Inc.Institution deniedPTAB · Feb 11, 2015 · IPR2014-01242 · APJ Carl M Defranco · IPR · Institution
The Board denied institution because JHTNA was served with an infringement complaint more than one year before the petition, and JHT was its privy.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“review. Prelim. Resp. 3–23. Pursuant to 35 U.S.C. § 315(b), a party may not file a petition for inter partes review more than one-year after being served with a complaint alleging infringement of the patent. The one-year deadline helps to ensure that inter partes review provides a quick and cost effective alternative to litigation, and is not used as a tool for harassment or litigation gamesmanship. H.R. REP. NO. 112-98 at 48, as reprinted in 2011 U.S.C.C.A.N. at 78. In a Preliminary Proceeding,1 the petitioner bears the burden of showing compliance with the threshold requirement of § 315(b). Specifically, in order to show “standing” to file a petition, the petitioner “must certify . . . that the petitioner is not barred or estopped from requesting an inter partes review . . . .” 37 C.F.R. § 42.104(a) (first emphasis added). As grounds for standing, Petitioners purport that the claims challenged in the Petition were not added to the Utah Action until August 5, 2013, when Icon filed an amended complaint alleging infringement of the ’631 patent after completion of reexam and lifting of the stay. Pet. 1–2.” slip op. at 3
- PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiDecided for patent owner
“issue of whether JHT is a “privy” of JHTNA for purposes of § 315(b). Specifically, § 315(b) includes within its reach any party that qualifies as a “privy of the petitioner.” In determining whether JHT is a privy of JHTNA, we consider the nature of the relationship between the parties at the time the statutorily-relevant complaint was served, i.e., December 27, 2010. See Taylor v. Sturgell, 553 U.S. 880, 892 (2008) (“A person who was not a party to a suit generally has not had a ‘full and fair opportunity to litigate’ the claims and issues settled in that suit.”). Ultimately, our analysis “seeks to determine whether the relationship between the purported ‘privy’ and the relevant other party is sufficiently close such that both should be bound by the trial outcome and related estoppels.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012).” slip op. at 8
Discretionary denialPatents in suitUS 6,193,631
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.