- Avigilon Corporation / Avigilon USA Corporation v. Canon Inc.Rehearing deniedPTAB · Sep 17, 2019 · IPR2018-01627 · APJ Scott E Bain · IPR · Rehearing
The Board denied Avigilon’s rehearing request, holding that § 315(a)(1) barred institution because Avigilon had filed a declaratory judgment action challenging the patent’s validity.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION A request for rehearing must “identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). The party challenging a decision in a request for rehearing bears the burden of showing that the decision should be modified. Id.” slip op. at 2
- PTAB / AIA Trials › §315(b) time barDenied
“In our Decision, we concluded that 35 U.S.C. § 315(a)(1) barred institution of an inter partes review because Avigilon previously filed a declaratory judgment action challenging the validity of claims in the ’630 patent, notwithstanding Avigilon’s voluntary dismissal without prejudice of that declaratory judgment action. Dec. 6–11. We explained that our conclusion was compelled by the Federal Circuit’s analysis in Clickto-Call Technologies, LP v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018) (en banc as to footnote 3). Dec. 8–10.” slip op. at 2
Discretionary denialPatents in suitUS 9,191,630 - Avigilon Corporation / Avigilon USA Corporation v. Canon Inc.Institution deniedPTAB · Mar 18, 2019 · IPR2018-01627 · APJ Scott E Bain · IPR · Institution
The Board denied institution on claims 1–17 because Avigilon’s previously filed declaratory judgment action triggered the § 315(a)(1) bar despite its later voluntary dismissal.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“Section 315(a)(1), similarly, includes no express exceptions for actions subsequently dismissed, whether voluntary or involuntary, and whether with or without prejudice. Avigilon argues that we should distinguish the Court’s analysis in Click-to-Call from this case, because the text of § 315(a)(1) addresses “filing” rather than “service” of an action, and is triggered by an act of the inter partes review petitioner rather than patent owner. We are not persuaded, however, that the difference in filing from service provides a basis for distinguishing the analysis of Click-to-Call from this case. It is undisputed that Avigilon’s declaratory action was “filed” at one point in time (prior to being dismissed without prejudice), just as the action in Click-to-Call was “served” prior to being dismissed without prejudice. The Court in Click-to-Call held that the meaning of “served” in the statute did not include the effects of voluntary dismissal without prejudice, because there was no common law rule regarding such effects.3 See supra at 8. We are not persuaded that Click-to-Call permits the opposition conclusion regarding “file.”” slip op. at 9
Discretionary denialPatents in suitUS 9,191,630 - Oracle Corporation v. Crossroads Systems, Inc.Institution deniedPTAB · Sep 9, 2015 · IPR2015-01063 · APJ Kevin W Cherry · IPR · Institution
The Board denied institution for claims 1–14 because the petition was time-barred under § 315(b); the joinder motion was moot.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“Section 315(b) normally bars institution of inter partes review when the petition is filed more than one year after the petitioner is served with a complaint alleging infringement of the patent. 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b). The one-year time bar, however, does not apply to a request for joinder. 35 U.S.C. § 315(b) (final sentence); 37 C.F.R. § 42.122(b). In a “Statement of Material Facts,” Petitioner states that it “was served with a complaint asserting infringement of U.S. Patent No. 6,425,035 more than one year before filing the petition.” Mot. 1. Without joinder of Petitioner in this proceeding as a party to the ’777 proceeding, the Petition would be barred under 35 U.S.C. § 315(b). Because the Joinder Motion is moot, the present Petition is time barred, and, therefore, we deny the Petition because it was not filed within the time limits imposed under 35 U.S.C. § 315(b). III.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“DISCUSSION The Joinder Motion states that “Petitioner Oracle Corporation respectfully requests joinder pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b) of the above-captioned inter partes review with NetApp, Inc. v. Crossroads Systems, Inc., IPR2015-00777.” Mot. 1. Because we declined to institute inter partes review in the ’777 proceeding, the Joinder Motion is moot.” slip op. at 3
Discretionary denialPatents in suitUS 6,425,035 - Tristar Products, Inc. v. Choon’S Design, LLCInstitution deniedPTAB · Aug 26, 2015 · IPR2015-00840 · APJ Jeremy M Plenzler · IPR · Institution
The Board denied institution in IPR2015-00840 because the petition was filed more than one year after service, triggering the § 315(b) time bar.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“The plain language of 35 U.S.C. § 315(b) requires “the petitioner, real party in interest, or privy of the petitioner [to be] served with a complaint alleging infringement of the patent” to start the one year period for filing a petition for inter partes review. The statute does not include any requirement regarding filing proof of that service with a court. Based on the information before us, there is no reason to conclude that the February 28, 2014 service on Petitioner was defective, or otherwise ineffective to trigger the one-year bar of § 315(b). For example, although Petitioner argues that service might have been ineffective, if the entity served was no longer the registered agent for service of process, it has not come forward with any allegation suggesting this to be the case. See 315(b) Br. 5–6. Nor has Petitioner come forward with any argument that a procedural defect renders the February 28, 2014 service ineffective to trigger the bar. Petitioner’s arguments regarding “not ha[ving] an opportunity to challenge the alleged February 2[8], 2014 service” and “allowing a patent owner to improperly serve a party at an early date, and then effect proper service at a later date” (315(b) Br. 5) are unpersuasive. Based on the particular facts before us, Petitioner had the opportunity to argue that the February 28, 2014 service was defective in the supplemental briefing authorized by the panel (the 315(b) Brief), but as noted above, did not allege any procedural defect in that service.” slip op. at 5
Discretionary denialPatents in suitUS 8,622,441 - Tristar Products, Inc. v. Choon’S Design, LLCInstitution deniedPTAB · Aug 26, 2015 · IPR2015-00838 · APJ Jeremy M Plenzler · IPR · Institution
The Board denied institution in IPR2015-00838 and IPR2015-00840 because the petitions were filed more than one year after service, triggering the § 315(b) time bar.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“The plain language of 35 U.S.C. § 315(b) requires “the petitioner, real party in interest, or privy of the petitioner [to be] served with a complaint alleging infringement of the patent” to start the one year period for filing a petition for inter partes review. The statute does not include any requirement regarding filing proof of that service with a court. Based on the information before us, there is no reason to conclude that the February 28, 2014 service on Petitioner was defective, or otherwise ineffective to trigger the one-year bar of § 315(b). For example, although Petitioner argues that service might have been ineffective, if the entity served was no longer the registered agent for service of process, it has not come forward with any allegation suggesting this to be the case. See 315(b) Br. 5–6. Nor has Petitioner come forward with any argument that a procedural defect renders the February 28, 2014 service ineffective to trigger the bar. Petitioner’s arguments regarding “not ha[ving] an opportunity to challenge the alleged February 2[8], 2014 service” and “allowing a patent owner to improperly serve a party at an early date, and then effect proper service at a later date” (315(b) Br. 5) are unpersuasive. Based on the particular facts before us, Petitioner had the opportunity to argue that the February 28, 2014 service was defective in the supplemental briefing authorized by the panel (the 315(b) Brief), but as noted above, did not allege any procedural defect in that service.” slip op. at 5
Discretionary denialPatents in suitUS 8,485,565
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.