- Plaid Technologies, Inc. v. Yodlee, Inc. And Yodlee.Com, Inc.Rehearing grantedPTAB · Aug 12, 2016 · IPR2016-00275 · APJ John A Hudalla · IPR · Rehearing
The Board denied Plaid’s rehearing request and maintained denial of institution because Plaid failed to show good cause to excuse late service and an incomplete, time-barred petition.
RulingsRehearing decision- PTAB / AIA Trials › §315(b) time barDenied
“treatment of the service issue. Our regulations state that a filing date will not be accorded to a Petition until, among other things, service is effected. See 37 C.F.R. §§ 42.105(a), 42.106(a). The undisputed evidence put forth by Plaid indicates that it did not attempt to serve Yodlee with the Petition and supporting evidence until December 3, 2015. See Req. Reh’g 2; Ex. 1022 ¶ 9. In our Decision, we applied the regulations to the particular facts of this case and “determine[d] that December 3, 201[5], is the earliest date by which Plaid satisfied the service requirement for according the Petition a filing date.” Dec. 7 (citing 37 C.F.R. §§ 42.105(a), 42.106(a)). Therefore, we maintained the initial filing date accorded to the Petition, which was one day after the statutory deadline under § 315(b), and we termed Plaid’s service activities to be “late service.”1 Dec. 6–7. Indeed, Plaid would have had no reason to file a motion to change the filing date had its actions not been “late.” Moreover, our Decision expressly stated that we did not need to “address whether, under appropriate circumstances, we have authority to grant an earlier filing date.” Dec. 8. Rather, our Decision focused on whether Plaid had shown good cause to waive the service requirements imposed by 37 C.F.R. §§ 42.105(a) and 42.106(a). Id. at 8–10. Irrespective of the interplay among the relevant regulations and statutory deadline under § 315(b), we found that Plaid had not shown good cause and that it was not in the interests of justice to excuse Plaid’s late service under 37 C.F.R. § 42.5(b) and (c)(3). See id. Among other reasons, we were not persuaded that waiting for potential changes from a declarant constituted good cause for Plaid to delay its filing and eventual service of the Petition and supporting evidence. See Dec. 8–9. We also weighed the potential” slip op. at 3
- RehearingRehearing, grantedRehearing, deniedGranted in part
“for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 2
Discretionary denialPatents in suitUS 6,199,077 - Blue Coat Systems, Inc. v. Finjan, Inc.Institution deniedPTAB · Jun 20, 2016 · IPR2016-00478 · APJ James B Arpin · IPR · Institution
The Board denied institution on all challenged claims as time-barred under § 315(b), after dismissing the motion for joinder as moot.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“Petitioner acknowledges that a complaint alleging infringement of the ʼ968 patent was served on Petitioner more than a year before the filing date of the Petition. Pet. 8–9. Under 35 U.S.C. § 315(b), that is a bar to the institution of inter partes review unless Petitioner’s request for joinder is granted. See id. (“[H]owever, a motion to joinder has been filed to join the inter partes review requested in the ’149 petition not later than 1 month after institution in accordance with 37 U.S.C. § 315(c).”). Because we dismiss that Joinder Motion (see supra Section II), we conclude that the Petition should be denied as time-barred under § 315(b). B. Denial on the Same Grounds as the ʼ149 IPR” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“II. DISMISSAL OF MOTION FOR JOINDER Because we denied the petition in IPR2016-00149, and we did not institute inter partes review in that case, Petitioner’s Joinder Motion is dismissed as moot. 35 U.S.C. § 315(c).1” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied time barInstitution denied
“’149 IPR, Paper 11, 7; see ’149 IPR, Paper 2, 8–9. In view of our determination that the Petition is time-barred under 35 U.S.C. § 315(b), however, we do not need to decide the separate grounds for denial urged by Patent Owner. See Prelim. Resp. 18–60. IV. ORDER It is, therefore, ORDERED that the Motion for Joinder is dismissed as moot; and FURTHER ORDERED that the Petition is denied as to all challenged claims as untimely filed, and no trial is instituted.” slip op. at 4
Discretionary denialPatents in suitUS 6,965,968 - Blue Coat Systems, Inc. v. Finjan, Inc.Institution deniedPTAB · Jun 20, 2016 · IPR2016-00479 · APJ James B Arpin · IPR · Institution
The Board denied institution on all challenged claims as untimely under § 315(b), after dismissing the motion for joinder as moot.
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“II. DISMISSAL OF MOTION FOR JOINDER Because we denied the petition in IPR2016-00150, and we did not institute inter partes review in that case, Petitioner’s Joinder Motion is dismissed as moot. 35 U.S.C. § 315(c).1” slip op. at 3
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“Petitioner acknowledges that a complaint alleging infringement of the ʼ968 patent was served on Petitioner more than a year before the filing date of the Petition. Pet. 9. Under 35 U.S.C. § 315(b), that is a bar to the institution of inter partes review unless Petitioner’s request for joinder is granted. See id. (“[H]owever, a motion to joinder has been filed to join the inter partes review requested in the ’150 petition not later than 1 month after institution in accordance with 37 U.S.C. § 315(c).”). Because we dismiss the Joinder Motion (see supra Section II), we conclude that the Petition should be denied as time-barred under § 315(b). B. Denial on the Same Grounds as the ʼ150 IPR” slip op. at 3
Discretionary denialPatents in suitUS 6,965,968 - Plaid Technologies, Inc. v. Yodlee, Inc. And Yodlee.Com, Inc.Institution deniedPTAB · Jun 9, 2016 · IPR2016-00275 · APJ John A Hudalla · IPR · Institution
The Board denied institution on all challenged claims because Plaid’s petition was time-barred under § 315(b), and denied its motion to change the filing date.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“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 . . . is served with a complaint alleging infringement of the patent.” Given that the complaint in the underlying district court case was served on December 2, 2014, see Pet. 2 (citing Ex. 1002), the one-year deadline in this case under § 315(b) was December 2, 2015.” slip op. at 4
- BurdenDecided for patent owner
“Petition, Plaid has the burden of proof to establish that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). Considering this statutory and regulatory background, and based on the particular factual circumstances of this case, we determine that Plaid failed to complete the following two prerequisites for obtaining a filing date before the expiration of the one-year statutory period of 35 U.S.C. § 315(b): (1) Plaid did not attempt to serve Yodlee with a copy of the Petition before the deadline; and (2) Plaid did not file a complete petition before the deadline. Accordingly, and for the following reasons, we determine Plaid has not met its burden of establishing that it is entitled to change the filing date accorded to the Petition. As a result, we may not institute an inter partes review because the Petition is time-barred under 35 U.S.C. § 315(b).” slip op. at 6
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“have authority to grant an earlier filing date, because we determine based on the current record that Plaid has failed to show good cause to warrant exercising our authority under 37 C.F.R. § 42.5(b) or (c)(3) to waive the service requirement imposed by 37 C.F.R. §§ 42.105(a) and 42.106(a). We agree with Yodlee that Plaid’s “problems arose from its own intentional delay in completing the petition.” Opp. 1. We also agree with Yodlee that, by waiting for potential changes to Dr. Mowry’s declarations, Plaid “knowingly risked not meeting the one year bar by not leaving enough time to complete filing and service, much less enough time to do the multitude of tasks that would have been required in the case of any changes.” Id. at 9–10. In our view, Plaid’s belief that it had sufficient time, see Reply 5, should not insulate Plaid from the consequences of the risk it took. And, more importantly, Plaid puts forth no evidence of extenuating circumstances that forced Plaid or its declarant, Dr. Mowry, to wait until such a late hour to complete the supporting declarations prior to filing and serving the Petition and supporting evidence. Put simply, and based on the evidence presented, Plaid freely chose the time frame of its filing and service activities. Plaid left itself no margin for error despite having had one year to prepare the Petition.” slip op. at 8
Discretionary denialPatents in suitUS 6,199,077 - Blue Coat Systems, Inc. v. Finjan, Inc.Institution deniedPTAB · Jun 8, 2016 · IPR2016-00493 · APJ Thomas L Giannetti · IPR · Institution
The Board denied institution on all challenged claims because the petition was time-barred under § 315(b); the joinder motion was dismissed as moot.
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“II. DISMISSAL OF MOTION FOR JOINDER Because the petition in IPR2016-02000 was denied and inter partes review was not instituted, Petitioner’s Joinder Motion is dismissed as moot. 35 U.S.C. § 315(c).” slip op. at 3
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“Petitioner admits that a complaint alleging infringement of the ʼ731 patent was served on Petitioner more than a year before the filing date of the Petition. Pet. 4. Under 35 U.S.C. § 315(b), that is a bar to the institution of inter partes review unless Petitioner’s request for joinder is granted. See id., final sentence. Because we conclude supra that the joinder motion is dismissed, we conclude also that the Petition should be denied as time-barred under § 315(b). B. Denial on the Same Grounds as the ʼ2000 IPR” slip op. at 3
Discretionary denialPatents in suitUS 7,418,731 - Blue Coat Systems, Inc. v. Finjan, Inc.Institution deniedPTAB · Jun 8, 2016 · IPR2016-00492 · APJ Thomas L Giannetti · IPR · Institution
The Board denied institution on claims 1–18 as time-barred under § 315(b), after dismissing the joinder motion as moot because the related IPR was denied.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“Petitioner admits that a complaint alleging infringement of the ʼ780 patent was served on Petitioner more than a year before the filing date of the Petition. Pet. 5. Under 35 U.S.C. § 315(b), that is a bar to the institution of inter partes review unless Petitioner’s request for joinder is granted. See id., final sentence. Because we conclude supra that the joinder motion is dismissed, we conclude also that the Petition should be denied as time-barred under § 315(b). B. Denial on the Same Grounds as the ʼ165 IPR” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“II. DISMISSAL OF MOTION FOR JOINDER Because the petition in IPR2016-00165 was denied and inter partes review was not instituted, Petitioner’s Joinder Motion is dismissed as moot. 35 U.S.C. § 315(c).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In view of our determination that the Petition is time-barred under 35 U.S.C. § 315(b), however, we do not need to decide this separate ground for denial urged by Patent Owner. IV. ORDER It is, therefore, ORDERED that the Motion for Joinder is dismissed as moot; FURTHER ORDERED that the Petition is denied as to all challenged claims and no trial is instituted.” slip op. at 4
Discretionary denialPatents in suitUS 6,804,780 - Sega Of America, Inc. v. Uniloc USA, Inc. And Uniloc Luxembourg S.A.Institution deniedPTAB · Jun 2, 2016 · IPR2016-00427 · APJ Donna M Praiss · IPR · Institution
The Board denied joinder and denied institution on all challenged claims and grounds because § 315(b) barred the time-barred petition without joinder.
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b). A motion for joinder should: (1) set forth the reasons why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the existing review; and (4) specifically address how briefing and discovery may be simplified. See, e.g., Kyocera Corp. v. Softview LLC, Case IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15).” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsOther
“weigh in favor of denying Petitioner’s Motion for Joinder. Petitioner previously filed a petition for inter partes review of the ’216 patent in IPR2014-01453 and a petition for a covered business patent review of the ’216 patent in CBM2014-00183. Sega of America, Inc. v. Uniloc USA, Inc., IPR2014-01453 (Paper 6); Sega of America, Inc. v. Uniloc USA, Inc., CBM2014-00183 (Paper 6). The earlier petitions were filed within one year of the date on which Petitioner was served with a complaint alleging infringement of the ’216 patent. Id. The grounds and arguments now asserted by Petitioner are substantially identical to the grounds presented in CBM2014-00183, which was denied, and could have been brought in IPR2014-01453, which was instituted. Petitioner did not include the asserted grounds in a petition for inter partes review until now. Nor has Petitioner explained sufficiently why the petition in IPR2014-01453 did not contain the grounds and arguments set forth in the Petition in this proceeding. Joinder may be authorized when warranted, but the decision to grant joinder is discretionary. 35 U.S.C. § 315(c). When exercising that discretion, the Board is mindful that patent trial regulations, including the rules of joinder, must be construed to secure the just, speedy, and inexpensive resolution of every proceeding. See 37 C.F.R. § 42.1 (b). In view of the facts and circumstances of this case, we determine that Petitioner has not met its burden to show that joinder would be appropriate, even if IPR2015-01207 had not been terminated.” slip op. at 5
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“is filed more than one year after the petitioner (or the petitioner’s real partyin-interest or privy) is served with a complaint alleging infringement of the patent, see 37 C.F.R. § 42.101(b), the one-year time bar does not apply to a request for joinder. 35 U.S.C. § 315(b) (stating that “[t]he time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c)” of 35 U.S.C. § 315); 37 C.F.R. § 42.122(b). In the present case, Petitioner was served with a complaint alleging infringement of the ’216 patent more than one year prior to filing the Petition in this proceeding. See Pet. 51; Ex. 1025. Thus, absent joinder of this proceeding with IPR2015-01207, institution of inter partes review is barred.” slip op. at 4
Discretionary denialPatents in suitUS 5,490,216 - Ubisoft, Inc. / Zebra Technologies Corporation et al. v. Uniloc USA, Inc. And Uniloc Luxembourg S.A.Institution deniedPTAB · Jun 2, 2016 · IPR2016-00414 · APJ Donna M Praiss · 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 › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“As a moving party, Petitioner has the burden of proof in establishing entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b). A motion for joinder should: (1) set forth the reasons why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the existing review; and (4) specifically address how briefing and discovery may be simplified. See, e.g., Kyocera Corp. v. Softview LLC, Case IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15).” slip op. at 4
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“is filed more than one year after the petitioner (or the petitioner’s real partyin-interest or privy) is served with a complaint alleging infringement of the patent, see 37 C.F.R. § 42.101(b), the one-year time bar does not apply to a request for joinder. 35 U.S.C. § 315(b) (stating that “[t]he time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c)” of 35 U.S.C. § 315); 37 C.F.R. § 42.122(b). In the present case, Petitioner was served with a complaint alleging infringement of the ’216 patent more than one year prior to filing the Petition in this proceeding. See Pet. 52; Exs. 1025–27. Thus, absent joinder of this proceeding with IPR2015-01207, institution of inter partes review is barred.” slip op. at 4
Discretionary denialPatents in suitUS 5,490,216 - Teva Pharmaceuticals USA, Inc. v. Monosol RX, LLCInstitution deniedPTAB · May 23, 2016 · IPR2016-00281 · APJ Erica A Franklin · IPR · Institution
The Board denied the filing-date motions and denied institution on all challenged claims because the petitions were filed after the § 315(b) time bar.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied 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. As discussed in Section I supra, the parties agree that because Petitioner was served with complaints asserting the patents at issue on December 3, 2014, and that the statutory bar date for IPR281 and IPR282 is December 3, 2015.5 Mot. 1–2, 6; Opp. 1. The petitions in IPR281 and IPR282 each were accorded a filing date of December 4, 2015, one day after the statutory bar date. Paper 3, 1. We have declined to change that date. As Petitioner acknowledges, if the filing dates accorded to the petitions are not changed, each “petition would be barred under 35 U.S.C. § 315(b).” Mot. 6. Accordingly, the petitions are barred under 35 U.S.C. § 315(b). ORDER In consideration of the foregoing, it is hereby: ORDERED that Petitioner’s Motions are denied; FURTHER ORDERED that institution of an inter partes review of any challenged claim of the ’514 patent in IPR281 is denied; and FURTHER ORDERED that institution of an inter partes review of any challenged claim of the ’150 patent in IPR282 is denied.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“December 3, 2015.5 Mot. 1–2, 6; Opp. 1. The petitions in IPR281 and IPR282 each were accorded a filing date of December 4, 2015, one day after the statutory bar date. Paper 3, 1. We have declined to change that date. As Petitioner acknowledges, if the filing dates accorded to the petitions are not changed, each “petition would be barred under 35 U.S.C. § 315(b).” Mot. 6. Accordingly, the petitions are barred under 35 U.S.C. § 315(b). ORDER In consideration of the foregoing, it is hereby: ORDERED that Petitioner’s Motions are denied; FURTHER ORDERED that institution of an inter partes review of any challenged claim of the ’514 patent in IPR281 is denied; and FURTHER ORDERED that institution of an inter partes review of any challenged claim of the ’150 patent in IPR282 is denied.” slip op. at 14
Discretionary denialPatents in suitUS 8,603,514 - Teva Pharmaceuticals USA, Inc. v. Monosol RX, LLCInstitution deniedPTAB · May 23, 2016 · IPR2016-00282 · APJ Erica A Franklin · IPR · Institution
The Board denied the motions to change the filing dates and denied institution because both petitions were filed after the § 315(b) deadline.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“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. As discussed in Section I supra, the parties agree that because Petitioner was served with complaints asserting the patents at issue on December 3, 2014, and that the statutory bar date for IPR281 and IPR282 is December 3, 2015.5 Mot. 1–2, 6; Opp. 1. The petitions in IPR281 and IPR282 each were accorded a filing date of December 4, 2015, one day after the statutory bar date. Paper 3, 1. We have declined to change that date. As Petitioner acknowledges, if the filing dates accorded to the petitions are not changed, each “petition would be barred under 35 U.S.C. § 315(b).” Mot. 6. Accordingly, the petitions are barred under 35 U.S.C. § 315(b).” slip op. at 13
- BurdenDenied
“IPR281 and IPR282 did not satisfy the latter two requirements by the filing date that it now requests. Petitioner, however, asserts that we should exercise our discretion to waive those regulatory requirements because technical difficulties caused by PRPS prevented Petitioner from satisfying those requirements on December 3, 2015. As the moving party, Petitioner has the burden of proof to establish that it is entitled to the requested relief. See 37 C.F.R. § 42.20(c). Having considered the arguments and evidence, we agree with Patent Owner that Petitioner has not established that it is entitled to a waiver of the regulatory requirements for according a filing date to a petition. In particular, we do not find that Petitioner has established persuasively that a “compromised PRPS system” caused Petitioner’s delay in uploading the petition documents, or prevented Petitioner from paying the petition fees, and serving Patent Owner with the petitions on December 3, 2015. See Mot. 10. Rather, based upon our review, Petitioner has not shown that such delays are attributable to the system rather than to the users.” slip op. at 9
Discretionary denialPatents in suitUS 8,017,150
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.