• Amazon.Com, Inc. v. Vocalife LLCInstituted
  PTAB · Jan 31, 2022 · IPR2021-01331 · APJ Amber L Hagy · IPR · Institution

  The Board instituted review of claims 22–41 on every petitioned ground, finding a reasonable likelihood of prevailing on at least one claim and declining Fintiv denial.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “The granting of a stay pending inter partes review allays concerns about inefficiency and duplication of efforts and has weighed strongly against exercising discretion to deny institution. See Snap, Inc. v. SRK Tech. LLC, IPR2020-00820, Paper 15 at 9 (PTAB Oct. 21, 2020) (precedential as to § II.A); see Fintiv, Paper 11 at 6. Here, although the reasons for the stay of the parallel District Court proceeding are unrelated to Petitioner’s request for inter partes review, that stay nonetheless allays such concerns. Accordingly, we find that the consideration of the first Fintiv factor weighs against exercising our discretion to deny institution. According to Fintiv, “[i]f the court’s trial date is earlier than the projected statutory deadline, the Board generally has weighed this fact in favor of exercising authority to deny institution under NHK.” Fintiv, Paper 11 at 9. Because the trial date has been removed from the calendar in the parallel District Court proceeding, consideration of the second Fintiv factor also weighs against discretionary denial. See Snap, Paper 15 at 9.” slip op. at 14

  • Strike new argumentNew argument disregardedGranted in part

    “We agree with Petitioner that Patent Owner’s arguments made in its Sur-reply are improper because they (1) exceed the scope of permission extended by the Board; and (2) are not responsive to any arguments made by Petitioner in its Reply. The Board’s authorization limited Patent Owner’s Sur-reply to “the issue of discretionary denial under § 314(a).” Ex. 3001. Although the merits of a petition are part of the Fintiv considerations for discretionary denial, it is not reasonable to interpret the Board’s authorization for a sur-reply as an open invitation to rehash and expand the merits arguments made in the Preliminary Response, particularly where such arguments are in no way responsive to anything Petitioner argued in its Reply. Patent Owner does not contend that its Sur-reply is premised on new facts or information not available to Patent Owner at the time of filing its Preliminary Response. It is also not reasonable to assume that the Board’s rule on “Oppositions, replies, and sur-replies” (Rule 42.23) has no relevance to surreplies filed, with Board authorization, prior to institution. As Petitioner aptly notes, Rule 42.108(c) specifically invokes the constraints of Rule 42.23 in providing that a “petitioner may seek leave to file a reply to the preliminary response in accordance with §§ 42.23 and 42.24(c).” 37 C.F.R. § 42.108(c) (emphasis added). Although sur-replies are not explicitly mentioned, patent owners granted leave to respond to such replies should expect similar constraints to apply to their sur-replies. Nevertheless, we decline to strike Patent Owner’s Sur-reply because it is useful to maintain the Sur-reply in the record as evidence of what it does not argue—in particular, as addressed further below, Patent Owner presents no rebuttal to any of the facts or circumstances as stated by Petitioner regarding the stay of the Vocalife II litigation or the impact of such a stay on the § 314(a) analysis. Although the Sur-reply will remain in the record, we note that we decline to give Patent Owner’s new arguments any weight in our substantive analysis herein. We do, however, grant Petitioner’s Motion to Strike as to the Dmochowski Declaration on the grounds that the declaration is untimely and not responsive to anything argued in Petitioner’s Reply. Our granting this motion is without prejudice to Patent Owner resubmitting such evidence as appropriate according to our rules during trial.” slip op. at 11

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Applying those standards, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing unpatentability of at least one challenged claim of the ’371 patent. We institute review on all challenged claims and on all grounds raised in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying on the declaration testimony of Dr. Strawn, Petitioner asserts: A [person of ordinary skill in the art (“POSITA”)] in September 2010 would have had a graduate degree in electrical engineering, computer science, or a similar field, with courses in digital signal processing. Alternatively, a POSITA would have had a bachelor’s degree in such a field with 3–4 years of industry experience in digital signal processing. Pet. 9 (citing Ex. 1007 ¶ 35). At this stage, Patent Owner does not propose an alternative assessment. To the extent necessary, and for purposes of this Decision, we accept the assessment offered by Petitioner as it is consistent with the ’371 patent and the asserted prior art.” slip op. at 22

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham

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.