- Microsoft Corporation v. Biscotti Inc.Institution deniedPTAB · Oct 20, 2015 · IPR2015-01053 · APJ Neil T Powell · IPR · Institution
The Board denied joinder and denied institution of review of claims 1, 4, and 5 because the petition was time-barred under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“Petitioner has established sufficiently that joinder to the ’1458 IPR is warranted. Granting joinder would complicate the substantive issues in the ’1458 IPR significantly more than Petitioner suggests. We do not agree with Petitioner’s assertion that “granting joinder results in essentially one new substantive issue—whether the HDMI Specification (Ex. 1007) discloses the HDMI element.” Joinder Motion 9. Joinder would add to the ’1458 IPR obviousness challenges to claims 1, 4, and 5, thereby adding for each of these challenges the numerous issues that any obviousness analysis entails. Additionally, the challenge raised in the present Petition does not rely on the same references as the pending challenges in the ’1458 IPR. Unlike the challenge raised in the present Petition, no pending claim challenge in the ’1458 IPR relies on the HDMI Specification. See ’1458 Institution Decision 33–34. Indeed, joinder would add a significant dispute regarding the public accessibility of the HDMI Specification.” slip op. at 17
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“review when the petition is filed more than one year after the petitioner (or petitioner’s real party in interest or privy) is served with a complaint alleging infringement of the patent. 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b). That 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). This is an important consideration here because Petitioner was served with a complaint asserting infringement of the ’182 patent more than one year before filing the Petition in this proceeding. See Joinder Motion 2–4. As noted above, the ’182 patent is involved in a district court proceeding in the U.S. District Court of the Eastern District of Texas captioned Biscotti Inc. v. Microsoft Corp., Case No. 2:13-cv-01015-JRG (E.D. Tex.) (“District Court Proceeding”). Joinder Motion 2; Pet. 3–4. Petitioner represents that the complaint in the District Court Proceeding was served on Petitioner on November 27, 2013. Joinder Motion 2. As noted above, the present Petition was filed on April 17, 2015. Thus, absent joinder of this proceeding to the ’1458 IPR, institution based on the current Petition is barred under 35 U.S.C. § 315(b).” slip op. at 9
Discretionary denialPatents in suitUS 8,144,182 - Microsoft Corporation v. Biscotti Inc.Institution deniedPTAB · Oct 19, 2015 · IPR2015-01052 · APJ Neil T Powell · IPR · Institution
The Board denied joinder and denied institution of review of claims 13–16, 33, 34, 46, and 82–86 because the petition was time-barred under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“warranted. Granting the joinder sought by Petitioner would complicate the substantive issues in the ’1457 IPR significantly more than Petitioner suggests. Contrary to Petitioner’s suggestion, joinder would do more than simply add evidence that the HDMI Specification is prior art. See Joinder Motion 8. Joinder would add to the ’1457 IPR an obviousness challenge to claims 13–16, 33, 34, 46, and 82–86, thereby adding the numerous issues that any obviousness analysis entails. Additionally, contrary to Petitioner’s suggestion, the challenge raised in the present Petition does not rely on the same references as the pending challenges in the ’1457 IPR. See Joinder Motion 8 (“The -01052 proceeding involves . . . the same prior art . . . as the -01457 proceeding.”). Unlike the challenge raised in the present Petition, no pending claim challenge in the ’1457 IPR relies on the HDMI Specification. See ’1457 Institution Decision 31. Indeed, joinder would add a significant dispute regarding the public accessibility of the HDMI Specification. Additionally, granting joinder would add significant procedural complications and delay resolution of the ’1457 IPR. In the ’1457 IPR, Patent Owner has filed its Response, and the date for the oral hearing is only weeks away. Granting joinder would require adjusting the schedule to allow Patent Owner discovery on the issues presented by the challenge in the present Petition. Petitioner does not offer a practical way to accommodate the additional discovery and briefing without rushing significantly all involved or delaying the final written decision beyond its current due date of March 19, 2016.” slip op. at 15
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“III. DECISION ON THE 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 present Petition was filed more than one year after Petitioner was served with a complaint alleging infringement of the ’182 patent. See Joinder Motion 2, 4. Accordingly, in view of our decision to deny Petitioner’s Joinder Motion, we deny the present Petition because it was not filed within the time limits imposed under 35 U.S.C. § 315(b).” slip op. at 16
Discretionary denialPatents in suitUS 8,144,182 - 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
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.