- Tesla, Inc. v. The United States Of America As Represented By The Secretary Of The Navy (Intellectual Ventures II LLC)Institution deniedPTAB · Jul 24, 2025 · IPR2025-00341 · APJ Aaron W Moore · IPR · Institution
The Board denied institution because Tesla had not shown a reasonable likelihood that claims 10, 11, 14, 16, and 18 were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Having considered the Petition, the Preliminary Response, the Reply, and the Sur-reply, as well as the evidence of record, we conclude that Petitioner has not shown a reasonable likelihood that it will prevail in establishing the unpatentability of claims 10, 11, 14, 16, and 18 of the ’743 patent. We accordingly do not institute inter partes review. A.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art would have “been someone knowledgeable and familiar with the areas of networking and distributed computing that are pertinent to the ’743 patent,” would “have a bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent training, and approximately 2-3 years of professional experience relating to distributed computing,” and that a “[l]ack of professional experience can be remedied by additional education, and vice versa.” Pet. 17 (citing Ex.1003, ¶¶ 32-34). Patent Owner does not address this issue in the Preliminary Response. As Patent Owner does not dispute Petitioner’s characterization of the level of skill in the art, we adopt it for purposes of this analysis. B.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“of “event,” in which Petitioner argued that the term should be broad enough to include “processing radar sensor data, performing radar tracking initialization and refinement, and distributing radar tracking information to other modules,” and Patent Owner argued that the specification uses the term as “as an umbrella term to cover various types of ‘internal event and performance data’ such as ‘application statuses, states, performance, and internally detected errors.’” Reply 1; Sur-reply 2. We agree with Patent Owner that that claimed “events” must concern “application statuses, states, performance, and internally detected errors.” See Ex. 1001, 7:44–45. The patent explains that function group 2 collects that type of information from applications using an API and then “correlate[es], combin[es], and reformat[s] [the] application data into higherlevel metrics (composite events) for use by displays or other Resource Management components.” Id. at 7:52–54. The middleware described and claimed in the ’743 is concerned with how applications are performing, not what they doing.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“This claim limitation, however, also requires “event correlation capabilities.” For that, Petitioner asserts that “Welch’s metrics calculation component (part of the ‘second function group’) provides ‘event correlation capabilities’ because the QoS management software “implementation includes the following capabilities: . . . (2) track correlation and filtering algorithms.” Pet. 44–45 (citing Ex. 1003, 4). This, we find, mischaracterizes Welch’s disclosure, because Welch’s metrics calculation component does not perform the identified “correlation.” The language quoted by Petitioner comes from the experimental results section of Welch, which describes how the implementation of the NSWC HiPer-D testbed, the system that was used test Welch’s QoS middleware, included “track correlation and filtering algorithms.” Ex. 1005, 4. Welch is not explaining that the middleware correlates the QoS system level events that Petitioner has identified as the claimed “events,” but, instead, that the NSWC HiPer-D system that was used to test the middleware included the ability to correlate radar data in a shipboard anti-air-warfare system.6 The correlating mentioned in Welch occurs at the application level, not in the middleware.” slip op. at 12
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,181,743 - Innolux Corporation v. Phenix Longhorn LLCInstitution deniedPTAB · Jun 9, 2025 · IPR2025-00044 · APJ Michael J Strauss · IPR · Institution
The Board denied institution because the Petition violated Rule 42.104(b)(3) and did not show a reasonable likelihood that claims 1–3, 5, and 6 were unpatentable as obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Accordingly, Petitioner has not identified corresponding structure for performing the recited functions of “optimizing . . . gamma reference voltage levels using means for executing a predetermined algorithm according to a predetermined criteria and data sensed by . . . at least one sensor, wherein said means for executing said predetermined algorithm is separate from [a] display to achieve [a] desired gamma curve” as required under 37 C.F.R. § 42.104(b)(3). Because Petitioner has not provided constructions, either rebutting the presumption that “means for executing” is a means-plus-function term, or identifying corresponding structure if it is a means-plus-function term, Petitioner has violated Rule 104(b)(3).” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person of ordinary skill in the art (POSA) “would have had at least a bachelor of science degree in physics, electrical engineering, or the equivalent thereof and three (3) years of experience in circuit design or display technologies.” Pet. 12 (citing Ex. 1003 ¶ 24). According to Petitioner “[s]uch a POSA would have had knowledge of integrated circuits, gamma correction, and storage of gamma correction voltage values within memory, and would have understood how to search available literature for relevant publications.” Id. (citing Ex. 1003 ¶ 24). Patent Owner applies Petitioner’s definition for the purposes of the Preliminary Response. Prelim. Resp. 2. For purposes of this Decision, and based on the current record, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art. Pet. 12. This assessment is consistent with the ’788 Patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 8
- BurdenDecided for patent owner
“Accordingly, Petitioner has not identified corresponding structure for performing the recited functions of “optimizing . . . gamma reference voltage levels using means for executing a predetermined algorithm according to a predetermined criteria and data sensed by . . . at least one sensor, wherein said means for executing said predetermined algorithm is separate from [a] display to achieve [a] desired gamma curve” as required under 37 C.F.R. § 42.104(b)(3). Because Petitioner has not provided constructions, either rebutting the presumption that “means for executing” is a means-plus-function term, or identifying corresponding structure if it is a means-plus-function term, Petitioner has violated Rule 104(b)(3).” slip op. at 20
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“and 5 recites “means for executing.” Ex. 1001, 7:36–40, 8:35–37. The use of the term “means” creates a rebuttable presumption that 35 U.S.C. § 112 ¶ 6 applies. See Williamson, 792 F.3d at 1348. Consistent with Patent Owner’s arguments (Prelim. Resp. 36–39), the Petition does not address the presumption and, more specifically, the Petition does not provide any argument or evidence as to why the presumption is rebutted. Furthermore, even if we were to consider Petitioner’s newly presented argument that “[t]he plain and ordinary meaning of ‘means for executing a predetermined algorithm . . . ’ connotes a general-purpose processor, which is understood as structure sufficient to perform the function” (Pet. Reply 5), such argument is not persuasive as it is not supported by evidence earlier presented in the Petition or otherwise. Furthermore, even if the plain and ordinary meaning of means for executing a predetermined algorithm were a general-purpose processor, for a computer implemented means-plus-function term the corresponding structure must be the specific algorithm implemented by the processor as argued by Petitioner. Pet. Reply 6.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,557,788 - Innolux Corporation v. Phenix Longhorn LLCInstitution deniedPTAB · May 15, 2025 · IPR2025-00043 · APJ Kevin F Turner · IPR · Institution
The Board denied institution of IPR challenging claims 1–5 and 8–14, exercising § 314(a) discretion under Fintiv based on the Texas litigation.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“We agree with Patent Owner that its asserted trial date of February 17, 2026, would likely occur approximately 4 months before the latest date on which a final decision can be issued in this proceeding (June 12, 2026), and that is the metric we should use to determine the proximity of trial date to the projected statutory deadline. Accordingly, the facts underlying this factor weigh in favor of denial.” slip op. at 9
Discretionary denialPatents in suitUS 7,233,305 - Tableau Software, LLC v. Icharts LLCInstitution deniedPTAB · May 14, 2025 · IPR2024-01389 · APJ David C Mckone · IPR · Institution
The Board denied institution for claims 1–4 because Petitioner did not show a reasonable likelihood of establishing unpatentability under any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2019). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we do not institute an inter partes review of the ’000 patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019); see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Neither party proposes construing any claim term. Pet. 6; Prelim. Resp. 36. Based on the record before us, we do not find it necessary to provide express claim constructions of any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 7
- Skill levelSkill level board ownOther
“3 The parties do not dispute that a skilled artisan “would have had a B.S. degree in Computer Science, Computer Engineering, or equivalent experience relating to computing, as well as two to three additional years of academic or industry experience related to web application development and data visualization services.” Pet. 6 (citing Ex. 1003 ¶ 85); Prelim. Resp. 35– 36. 4 The record does not include allegations or evidence of objective indicia of nonobviousness.” slip op. at 8
- Expert testimonyPetitioner expert discountedPatent owner expert creditedOther
“connotes interactivity, and does not explain why a “Data Animation Effect” would be interactive.6 These aspects of Figure 53 do not appear to show interactivity. Thus, the issue is whether selecting a choice other than “Hide” for “Scroll buttons” in box 710 of Figure 53 adds to chart 840, once published, a feature that allows a user to interact with that chart via scrolling, or whether “Scroll buttons” refers to some other feature of the configuration process (such as the scroll buttons shown in Figure 53 for scrolling through the various charts in the layout). Both experts provide conclusory testimony stating how they view Figure 53. Ex. 1003 ¶ 181 (“For example, Figure 53 of Rostoker shows the ‘Configure Chart View’ toolbar, which includes multiple ‘interactive’ features, such as making the chart ‘Selectable’ (suggesting interactivity using an input device such as a mouse), including ‘Scroll buttons’ to scroll the chart, and adding ‘Data Animation[s].’”); Ex. 2001 ¶ 141 (“Schmandt relies on the ‘Configure Chart View’ toolbar of FIG. 53 of Rostoker, but he is confusing the configuration step 330 of Rostoker with the end result.”). Petitioner invites us to speculate as to the behavior of features that are depicted in Figure 53 but otherwise are not described in any meaningful detail by Rostoker. We conclude that this is insufficient to show a reasonable likelihood of prevailing.” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,520,000 - Tableau Software, LLC v. Icharts LLCInstitution deniedPTAB · May 14, 2025 · IPR2024-01388 · APJ David C Mckone · IPR · Institution
The Board denied institution for claims 1–18 because the petition did not show a reasonable likelihood that any challenged claim was unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2019). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we do not institute an inter partes review of the ’595 patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“We agree with Patent Owner. At most, Jou teaches that it was known to interact with charts in a Windows environment or a browser window. Ex. 1007 ¶ 34. But Rostoker already teaches that a user could interact with a chart, via a graphical user interface in a web browser, while configuring the chart. Ex. 1005 ¶¶ 67–75. Petitioner does not explain persuasively why a skilled artisan, per the teachings of Jou, would have made Rostoker’s published charts interactive. Mr. Schmandt’s testimony that a skilled artisan “would have been motivated to incorporate Jou’s additional ‘interactive’ features into Rostoker’s system to enable users to better visualize and explore business data,” is not supported by his citations to Jou, at least as to whether a skilled artisan would have modified Rostoker’s published charts. Ex. 1003 ¶ 259 (citing Ex. 1007 ¶¶ 8, 9). Petitioner’s argument that Flash and Java could enable interactive features, at most, show that a skilled artisan could have implemented interactive features with Rostoker’s a reason why a skilled artisan would have made these modifications. See Auris Health, Inc. v. Intuitive Surgical Operations, Inc., 32 F.4th 1154, 1158 (Fed. Cir. 2022) (“The motivation-to-combine inquiry asks whether a skilled artisan ‘not only could have made but would have been motivated to make the combinations . . . of prior art to arrive at the claimed invention.’” (quoting Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis omitted))). Thus, we are not persuaded that Petitioner is likely to show that a skilled artisan would have incorporated Jou’s interactive features into Rostoker to make Rostoker’s published charts interactive.” slip op. at 35
- Expert testimonyPetitioner expert discountedDecided for patent owner
“client is required for display and usage of an existing QlikView document (.qvw file). While the QlikView Server is responsible for opening, hosting, and calculating the document, the clients are required for user interaction and presenting the document and its objects.” Ex. 1009, 123. Petitioner points to no persuasive evidence that a Java or AJAX object or client executing at a web browser is a website separate from the server that serves the object or client. Mr. Schmandt makes conclusory statements to that effect, but does not state the basis for his testimony. Ex. 1003 ¶¶ 338–339. Thus, Mr. Schmandt’s testimony on this point is entitled to little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential) (“Dr. Jones does not cite to any additional supporting evidence or provide any technical reasoning to support his statement. Thus, the cited declaration testimony is conclusory and support, and is entitled to little weight.”).” slip op. at 44
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,712,595 - Apple Inc. v. Proxense, LLCInstitution deniedPTAB · May 2, 2025 · IPR2025-00074 · APJ Thu A Dang · IPR · Institution
The Board denied institution on claims 1–20 because it had already instituted the related IPR2025-00075 and granted joinder to the Google IPR.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherInstitution denied
“Here, Petitioner acknowledges that it “has two concurrent petitions challenging the validity of the same patent,” i.e., the current Petition and the petition in the 0075 IPR. Notice 1. Although Petitioner provides “a ranking of the petitions in the order in which it wishes the Board to consider the merits” and “a succinct explanation of the differences” (id.), according to Petitioner, “[s]hould the Board decide to institute only a single petition and grant only a single motion for joinder against the ’289 patent, Petitioner requests that the Board institute Petitioner’s petition in the 0075 IPR and grant its Motion for Joinder in the Google IPR if the Board institutes that proceeding.” Id. Since, as discussed above, the Board has instituted an inter partes review of the ’289 patent in IPR2025-00075 and granted the Motion for Joinder to the Google IPR, we deny the Petition in the current IPR.” slip op. at 2
Discretionary denialPatents in suitUS 9,679,289 - Hulu, LLC v. Piranha Media Distribution, LLCInstitution deniedPTAB · May 1, 2025 · IPR2025-00082 · APJ Karl D Easthom · IPR · Institution
The Board denied institution because the district court had already held all challenged claims invalid under § 101.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherInstitution denied
“recent Director Review decision (i.e. in the above-noted related cases, IPR2024-01252 and IPR2024-01253) reached the opposite conclusion to that of AviaGames in holding that a district court’s § 101 invalidity judgment precludes instituting challenges to the invalid claims even though an appeal of that judgment is pending. Specifically, in Hulu, LLC v. Piranha Media Distribution, LLC, IPR2024-01252, -01253, Paper 27 (PTAB April 17, 2025) (Director Review decision) (“Hulu”), the Acting Director held that “[b]ecause the patent claims already stand invalid [due to the District Court’s § 101 invalidity judgment], it is unnecessary to institute another proceeding to review them for patentability under other grounds.” Hulu at 2, 3 (reasoning that “[i]n the event the Federal Circuit reverses the district court’s decision, Petitioner may raise such invalidity arguments in the district court on remand”) (remanding the panel’s institution decisions and denying institution). Accordingly, under clear guidance from Hulu, because the District Court held all the ’403 patent claims invalid under § 101, we deny institution. See Hulu at 3 (holding that “where a district court already has found the challenged claims invalid, the efficiency and integrity of the patent system is best served by denying institution” (citing Fintiv at 16)).” slip op. at 8
Discretionary denialPatents in suitUS 10,986,403 - Hulu, LLC v. Piranha Media Distribution, LLCInstitution deniedPTAB · May 1, 2025 · IPR2025-00081 · APJ Karl D Easthom · IPR · Institution
The Board denied institution on all challenged claims because the district court had already held those claims invalid under § 101.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“IPR2024-01252 and IPR2024-01253) reached the opposite conclusion to that of AviaGames in holding that a district court’s § 101 invalidity judgment precludes instituting challenges to the invalid claims even though an appeal of that judgment is pending. Specifically, in Hulu, LLC v. Piranha Media Distribution, LLC, IPR2024-01252, -01253, Paper 27 (PTAB April 17, 2025) (Director Review decision) (“Hulu”), the Acting Director held that “[b]ecause the patent claims already stand invalid [due to a district court’s § 101 invalidity judgment], it is unnecessary to institute another proceeding to review them for patentability under other grounds.” Hulu at 2, 3 (reasoning that “[i]n the event the Federal Circuit reverses the district court’s decision, Petitioner may raise such invalidity arguments in the district court on remand”) (remanding the panel’s institution decisions and denying institution). Accordingly, under clear guidance from Hulu, because the District Court held all the ’403 patent claims invalid under § 101, we deny institution. See Hulu at 3 (holding that “where a district court already has found the challenged claims invalid, the efficiency and integrity of the patent system is best served by denying institution” (citing Fintiv at 16)).” slip op. at 8
Discretionary denialPatents in suitUS 10,986,403 - Apple Inc. v. Proxsense LLCInstitution deniedPTAB · Feb 26, 2025 · IPR2024-01486 · APJ David C Mckone · IPR · Institution
The Board denied institution for claims 1–17 because Apple did not justify a second petition, and denied its motion to join IPR2024-00775.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherInstitution denied
“challenges a subset of the claims of the ’730 patent based on the prior art references Ludtke and Kon, while the instant Petition challenges all 17 claims of the ’730 patent based on the prior art references Burger and Robinson. Id. at 2–3. According to Petitioner, these are “significantly different invalidity grounds.” Id. at 3. However, Petitioner does not explain why challenging the same patent with different invalidity grounds, without more, justifies instituting both petitions.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2019). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we decline to institute an inter partes review of the ’730 patent. We also deny Petitioner’s Joinder Motion.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“IPR2024-00775. Joinder Mot. 1. As the moving party, Petitioner bears the burden of proving that it is entitled to joinder. See 37 C.F.R. § 42.20(c).” slip op. at 8
Discretionary denialPatents in suitUS 8,352,730 - Apple Inc. v. Proxsense LLCInstitution deniedPTAB · Feb 26, 2025 · IPR2024-01485 · APJ David C Mckone · IPR · Institution
The Board denied institution on claims 1–29 under § 314(a), finding insufficient justification for a second petition, and denied Apple’s motion for joinder.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherInstitution denied
“According to PTAB guidance, “[b]ased on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations.” Consolidated Trial Practice Guide (“TPG”) 59 (Nov. 2019), available at https://go.usa.gov/xpvPF. “Two or more petitions filed against the same patent at or about the same time (e.g., before the first preliminary response by the patent owner),” the situation we have here, “may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns.” Id. Thus, “multiple petitions by a petitioner are not necessary in the vast majority of cases.” Id. That said, the Board recognizes that there may be circumstances in which more than one petition may be necessary, including, for example, when the patent owner has asserted a large number of claims in litigation or when there is a dispute about priority date requiring arguments under multiple prior art references. In such cases two petitions by a petitioner may be needed, although this should be rare. Id. In such situations, a petitioner is invited to identify, either in its petition or a separate ranking paper (Petitioner filed the Ranking Notice): (1) a ranking of the petitions in the order in which it wishes the Board to consider the merits, if the Board uses its discretion to institute any of the petitions, and (2) a succinct explanation of the differences between the petitions, why the issues addressed by the differences are material, and why the Board should exercise its discretion to institute additional petitions if it identifies one petition that satisfies petitioner’s burden under 35 U.S.C. § 314(a).” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2019). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we decline to institute an inter partes review of the ’954 patent. We also deny Petitioner’s Joinder Motion.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“(c) JOINDER.—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 parties review under section 314. “To join a party to an instituted [inter partes review (IPR)], the plain language of § 315(c) requires two different decisions.” Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). “First, the statute requires that the Director (or the Board acting through a delegation of authority) . . . determine whether the joinder applicant’s petition for IPR ‘warrants’ institution under § 314.” Id. “Second, to effect joinder, § 315(c) requires the Director to exercise h[er] discretion to decide whether to ‘join as a party’ the joinder applicant.” Id. “The statute makes clear that the joinder decision is made after a determination that a petition warrants institution, thereby affecting the manner in which an IPR will proceed.” Id. (citing Thyrv, Inc. v. Click-to-Call Techs., LP, 140 S.Ct. 1367, 1377 (2020)). As we explain above, Petitioner has not shown that we should institute a second Petition by Petitioner challenging the ’954 patent. Instead, we determine that the Petition does not warrant institution. Accordingly, the Joinder Motion fails at the first step, whether the Petition warrants institution, and we need not evaluate further the second step, whether to join Petitioner as a party to IPR2024-00846. Petitioner’s Joinder Motion is denied.” slip op. at 8
Discretionary denialPatents in suitUS 8,886,954
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.