- Iko Industries, Inc. / Iko Industries Ltd. v. Kirsch Research And Development, LLCInstitution deniedPTAB · May 20, 2022 · IPR2022-00416 · APJ Charles J Boudreau · IPR · Institution
The Board denied institution on all challenged claims because IKO Industries, Inc. and real party in interest Tarco were served more than one year before the petition, barring review under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“We agree with Patent Owner. Despite Petitioner’s “certif[ication],” quoted by Patent Owner in the Preliminary Response, that “Petitioner is not barred or estopped from requesting inter partes review challenging the patent claims on the grounds identified herein” (Pet. 2), the uncontroverted evidence before us demonstrates otherwise. As Patent Owner points out, the January 7, 2022, filing date of the Petition is more than twenty months after both Petitioner IKO Industries, Inc. and real party in interest Tarco were served in the IKO and Tarco lawsuits, respectively. See Exs. 2003, 2005.1” slip op. at 4
Discretionary denialPatents in suitUS 6,308,482 - LG Electronics, Inc. v. Ati Technologies UlcInstitution deniedPTAB · Feb 2, 2016 · IPR2015-01620 · APJ Brian J Mcnamara · IPR · Institution
The Board denied joinder and denied institution on claim 21 because the petition was time-barred under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“In consideration of the above, we agree with the Patent Owner that joinder is not appropriate in this case because the Petition uses our Decision to Institute in IPR2015-00321 as a guide to remedy deficiencies in the First Petition. Although there may be efficiencies to gain from addressing the same claims in inter partes review that are at issue in pending district court litigation, permitting second chances without constraint undermines judicial efficiency by expending our resources on issues that were not adequately presented the first time. Atoptech, Inc., Case IPR2015-00760, slip. op. at 8–9. Petitioner has not demonstrated a reasoned justification for its failure to assert in the First Petition the obviousness challenges it asserts in this Petition. Petitioner presents no argument or evidence that Anderson or Hoogenboom was not known or available at the time Petitioner filed the First Petition. As discussed above, the arguments in the Petition concerning Hatanaka and claim 21 were cursory and inadequate. The Petition now presents arguments that Petitioner could have made in the First Petition, had it chosen to do so. The Petition is aimed at matters identified in the Decision to Institute in IPR2015-00321 as not adequately addressed to justify inter partes review. See Travelocity.com L.P. v. Cronos Technologies, LLC, Case CBM2015-00047, slip op. at 13 (PTAB June 12, 2015) (Paper 7) (“[A] decision on a petition for covered business method review is not simply part of a feedback loop by which a petitioner may perfect its challenges through a subsequent filing.”).” slip op. at 10
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“DECISION ON PETITION Institution of inter partes review is barred 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 record indicates that Petitioner was served with a complaint more than one year before filing the Petition. Accordingly, in view of our decision to deny Petitioner’s Motion for Joinder, we deny the Petition because it was not filed within the time limit imposed by 35 U.S.C. § 315(b)” slip op. at 11
Discretionary denialPatents in suitUS 7,095,945 - 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.