- US Conec Ltd. v. Senko Advanced Components, Inc.Rehearing grantedPTAB · Sep 16, 2024 · IPR2024-00122 · APJ Barbara A Parvis · IPR · Rehearing
The Board granted the petitioner's request to withdraw its rehearing request and granted the joint motion to terminate the proceeding.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“agreement to jointly seek termination of this proceeding, and “[b]ased on the settlement, Petitioner hereby requests withdrawal of its Request for Rehearing.” Joint Motion 1. We “may enter non-final orders to administer the proceeding.” 37 C.F.R. § 42.5. Here, the Board has not decided the merits of Petitioner’s Request for Rehearing. Additionally, we stated in our Decision Denying Institution that “the Petition is denied, and no trial is instituted.” Paper 7, 22. Under these circumstances, therefore, we determine that it is appropriate to grant the request to withdraw Petitioner’s Request for Rehearing and terminate this proceeding as to the Parties. III. ORDER Accordingly, for the reasons discussed above, it is: ORDERED that Petitioner’s request for withdrawal of its Request for Rehearing (Paper 8) is granted; and” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“agreement to jointly seek termination of this proceeding, and “[b]ased on the settlement, Petitioner hereby requests withdrawal of its Request for Rehearing.” Joint Motion 1. We “may enter non-final orders to administer the proceeding.” 37 C.F.R. § 42.5. Here, the Board has not decided the merits of Petitioner’s Request for Rehearing. Additionally, we stated in our Decision Denying Institution that “the Petition is denied, and no trial is instituted.” Paper 7, 22. Under these circumstances, therefore, we determine that it is appropriate to grant the request to withdraw Petitioner’s Request for Rehearing and terminate this proceeding as to the Parties.” slip op. at 2
NonePatents in suitUS 11,061,190 - Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Cobblestone Wireless LLCInstitutedPTAB · Jun 24, 2024 · IPR2024-00315 · APJ Barbara A Parvis · IPR · Institution
The Board instituted review of claims 9, 10, 12, 20, 21, and 23 on all petition grounds, granted joinder to IPR2024-00137, and authorized withdrawal of Samsung’s Sotera stipulation.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Carriers’ parallel district-court case. The arguments and facts are substantively the same as those presented in the T-Mobile IPR, except Petitioner here is not a defendant in the Carriers’ parallel district-court case. In the T-Mobile IPR, we found that factor 1 is neutral, factors 2, 3, and 5 weigh in favor of exercising discretion to deny institution, and factor 4 weighs marginally against exercising discretion to deny institution. T-Mobile 6 See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). IPR, Paper 15, 10–14. Because Petitioner in the instant proceeding is not a defendant in the Carriers’ parallel district-court case, we find that factor 5 weighs against exercising discretion to deny institution in the instant proceeding. Regarding the other factors, for the same reasons discussed in the decision to institute in the T-Mobile IPR, we find that factor 1 is neutral, factors 2 and 3 weigh in favor of exercising discretion to deny institution, and factor 4 weighs marginally against exercising discretion to deny institution. T-Mobile IPR, Paper 15, 10–14. We turn to Patent Owner’s arguments based on the Petitioner’s parallel district-court case. Our analysis of factors 1 and 4 is the same as that presented in the T-Mobile IPR because no stay has been requested in Petitioner’s parallel district-court case and Petitioner has agreed to be bound by the same stipulation submitted in the T-Mobile IPR. Joinder Mot. 1. Based on the facts presented by the parties, including the May 5, 2025 trial date, we find that factors 2, 3, and 5 weigh marginally in favor of exercising discretion to deny institution. Taking “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review” (Fintiv, Paper 11, 6), we conclude that the evidence of record and our analysis of factors 1–5 relating to both district-court cases favors exercising our discretion to deny institution of an inter partes review. Regarding factor 6, for the reasons discussed in our institution decision in the T-Mobile IPR, we determine, on this preliminary record, that the merits here are compelling. Accordingly, we decline to exercise our discretion to deny institution” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unpatentability as the ones on which we instituted review in the T-Mobile IPR. Compare Pet. 3, 21–56, with T-Mobile IPR, Paper 1, 6, 25–60. Indeed, Petitioner contends that “the grounds of challenge in this Petition are a ‘copycat’ of the Petition filed in” the T-Mobile IPR and the “expert declaration filed in this proceeding is substantively identical to the expert declaration in” the T-Mobile IPR and is “signed by the same expert.” Id. at 1. Patent Owner states that its arguments on the merits in its Preliminary Response “are likewise ‘copycat’ of the merits arguments Patent Owner presented in its preliminary response in IPR2024-00137.” Prelim. Resp. 1 n.1. We instituted inter partes review of claims 9, 10, 12, 20, 21, and 23 of the ’888 Patent on May 22, 2024, based on the petition filed in the T-Mobile IPR after consideration of all arguments and evidence presented by the parties including Patent Owner’s arguments in its Preliminary Response. T- Mobile IPR, Paper 15. For the same reasons discussed in the Decision on Institution in the T-Mobile IPR, we find Petitioner has demonstrated a reasonable likelihood of showing at least one claim of the ’888 patent is unpatentable. See id. Accordingly, we find the Petition warrants institution of inter partes review of all challenged claims on all grounds raised.” slip op. at 12
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Upon consideration of the parties’ arguments and cited supporting evidence, we are persuaded that Petitioner has met its burden to show that it is appropriate under these circumstances to join Petitioner to the T-Mobile IPR. Petitioner timely filed its Motion for Joinder within one month after 7 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. institution of trial in the T-Mobile IPR, as required by 37 C.F.R. § 42.122(b). Petitioner challenges the same claims that are challenged in the T-Mobile IPR on the same grounds using the same prior art and evidence. See, e.g., Joinder Mot. 1, 6–7; compare Pet. 3, 12–39, with T-Mobile IPR, Paper 1, 6, 16–41. Petitioner states it will take an “understudy” role in the T-Mobile IPR and only assume a primary role should all Carriers cease participation in the T-Mobile IPR. See Joinder Mot. 6. Petitioner further asserts that joinder will have little to no impact on the trial schedule for the T-Mobile IPR and will simplify briefing and discovery. See Joinder Mot. 6, 9–11. Accordingly, joinder to the T-Mobile IPR would further the goals of a just, speedy, and inexpensive resolution of Petitioner’s challenge. See 37 C.F.R. § 42.1(b). Therefore, for the reasons given, we grant Petitioner’s Motion for Joinder and join Petitioner to the T-Mobile IPR.” slip op. at 13
Discretionary denialPatents in suitUS 9,094,888 - Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Cobblestone Wireless LLCInstitutedPTAB · Jun 24, 2024 · IPR2024-00317 · APJ Barbara A Parvis · IPR · Institution
The Board instituted review of claims 23–27 on all petition grounds and granted Samsung’s motion to join the T-Mobile IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“B. Institution of Inter Partes Review The Petition in this proceeding asserts the same grounds of unpatentability as the grounds on which we instituted review in the T-Mobile IPR. Compare Pet. 3, 12–39, with T-Mobile IPR, Paper 1, 6, 16–41. Indeed, Petitioner contends that “the grounds of challenge in this Petition are a ‘copycat’ of the Petition filed in T-Mobile USA, Inc. et al. v. Cobblestone Wireless, LLC, IPR2024-00135” and the “expert declaration filed in this proceeding is substantively identical to the expert declaration in IPR2024- 00135 and signed by the same expert.” Id. at 1.” slip op. at 7
- Parallel petitionsDecided for petitioner
“103(a) Chang III. ANALYSIS A. Discretionary Denial Argument Patent Owner asserts “[t]o the extent that the Board institutes review of the First Petition, institution of the Second Petition should be denied as an unnecessary parallel petition.” Prelim. Resp. 3. We denied institution in the first ranked proceeding. See Samsung Electronics America, Inc., v. Cobblestone Wireless LLC, IPR2024-00318, Paper 11 (PTAB June 21, 2024). Accordingly, we decline to exercise our discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Upon consideration of the parties’ arguments and cited supporting evidence, we are persuaded that Petitioner has met its burden to show that it is appropriate under these circumstances to join Petitioner to the T-Mobile IPR. Petitioner timely filed its Motion for Joinder within one month after institution of trial in the T-Mobile IPR, as required by 37 C.F.R. § 42.122(b). Petitioner challenges the same claims that are challenged in the T-Mobile IPR on the same grounds using the same prior art and evidence. See, e.g., Mot. 1, 6–7; compare Pet. 3, 12–39, with T-Mobile IPR, Paper 1, 6, 16–41. Petitioner states it will take an “understudy” role in the T-Mobile IPR and only assume a primary role should all Carriers cease participation in the T- Mobile IPR. See Mot. 6. Petitioner further asserts that joinder will have little to no impact on the trial schedule for the T-Mobile IPR and will simplify briefing and discovery. See Mot. 6, 9–11. Accordingly, joinder to the T-” slip op. at 11
Discretionary denialPatents in suitUS 8,554,196 - Snap Inc. v. Playvuu, Inc.Adverse judgmentPTAB · Feb 29, 2024 · IPR2023-00848 · APJ Barbara A Parvis · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment and entered judgment against Patent Owner on claims 1–11 after abandonment.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Judgment (Paper 14, “Request for Adverse Judgment”), which states “[p]ursuant to 37 C.F.R. § 42.73(b)(4) Patent Owner makes this request for the Board to enter adverse judgment against Patent Owner with respect to claims 1-11” of the ’911 patent. Id. at 1. Patent Owner further states “Patent Owner makes this request because Patent Owner is not filing a Patent Owner Response and is abandoning this proceeding.” Id. Upon review of Patent Owner’s unopposed Request for Adverse Judgment, we grant the request for adverse judgment pursuant to 37 C.F.R. § 42.73(b)(4).” slip op. at 2
NonePatents in suitUS 10,931,911 - Ao Kaspersky Lab v. Open Text Inc.InstitutedPTAB · Jan 29, 2024 · IPR2024-00035 · APJ Garth D Baer · IPR · Institution
The Board instituted IPR of claims 1–30, finding a reasonable likelihood that claims 1–30 are unpatentable under § 103, and granted AO Kaspersky Lab’s motion for joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“which provides that an inter partes review may not be instituted unless the information presented in the Petition “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.” For the reasons described below, we institute inter partes review of all the challenged claims, and grant Petitioner’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“A motion for joinder should (1) set forth 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” slip op. at 3
NonePatents in suitUS 8,726,389 - Trend Micro, Inc. v. Open Text Inc.InstitutedPTAB · Jan 25, 2024 · IPR2023-01459 · APJ Garth D Baer · IPR · Institution
The Board instituted inter partes review of claims 1–30 based on a reasonable likelihood of unpatentability under § 103 and granted Trend Micro’s motion to join the CrowdStrike IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority under 37 C.F.R. § 42.4(a) and 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented in the Petition “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.” For the reasons described below, we institute inter partes review of all the challenged claims, and grant Petitioner’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“A motion for joinder should (1) set forth 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) address specifically how briefing and discovery may be simplified. See Kyocera Corp. v. SoftView LLC, Case IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013).” slip op. at 4
NonePatents in suitUS 8,726,389 - PTAB · May 22, 2023 · IPR2023-00136 · APJ James J Mayberry · IPR · Institution
The Board instituted inter partes review of claims 1–34 on the asserted grounds and granted NETGEAR and Aruba’s motion to join the Samsung IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (permitting the Board to institute trial on behalf of the Director). To institute an inter partes review, we must determine that the information presented in the Petition shows “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). For the reasons that follow, we determine that institution of inter partes review is warranted on the same grounds instituted in the Samsung IPR, and we grant Petitioner’s Motion.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As discussed above, the Petition does not present any new grounds or issues. See Mot. 1, 4–5, 7. Petitioner has shown that the trial schedule will not be affected by joinder. Mot. 7−8. No changes in the schedule are anticipated or necessary, and the limited participation, if at all, of Petitioner will not impact the timeline of the ongoing trial. Id. Petitioner has agreed to an “understudy” role, which will simplify matters if Petitioner is joined to the ongoing Samsung IPR, and joining Petitioner to the ongoing Samsung IPR will be an efficient use of resources because it will allow the same issues to be decided in a single proceeding. Id. at 9−11. Accordingly, we determine that Petitioner has met its burden of showing that we should exercise our discretion to join Petitioner to IPR2022-00613.” slip op. at 12
NonePatents in suitUS 10,594,376 - PTAB · May 19, 2023 · IPR2023-00174 · APJ James J Mayberry · IPR · Institution
The Board instituted IPR on claims 1–34 based on the same grounds as the Samsung IPR and granted eero’s motion to join that proceeding.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We incorporate our previous analysis in our Decision on Institution in IPR2022-00613 regarding the asserted grounds of unpatentability, and conclude that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’376 patent challenged in the Petition for the same reasons. See IPR2022-00613, Paper 12, 50. Accordingly, we determine that Petitioner has met its burden of showing that the Petition warrants institution of inter partes review on all claims and all challenges asserted in the Petition.” slip op. at 11
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As discussed above, the Petition does not present any new grounds or issues. See Mot. 1, 4, 6. Petitioner has shown that the trial schedule will not be affected by joinder. Mot. 7−8. No changes in the schedule are anticipated or necessary, and the limited participation, if at all, of Petitioner will not impact the timeline of the ongoing trial. Id. Petitioner has agreed to an “understudy” role, which will simplify matters if Petitioner is joined to the ongoing Samsung IPR, and joining Petitioner to the ongoing Samsung IPR will be an efficient use of resources because it will allow the same issues to be decided in a single proceeding. Id. at 8−10. Accordingly, we determine that Petitioner has met its burden of showing that we should exercise our discretion to join Petitioner to IPR2022-00613.” slip op. at 11
NonePatents in suitUS 10,594,376 - PTAB · Feb 6, 2023 · IPR2022-01398 · APJ James J Mayberry · IPR · Institution
The Board instituted IPR on claims 8–14 based on the asserted obviousness grounds and granted Dell’s motion to join the Apple & HP IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We incorporate our previous analysis in our Decision on Institution in IPR2022-00367 regarding the asserted grounds of unpatentability, and conclude that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’235 patent challenged in the Petition for the same reasons. See IPR2022-00367, Paper 10, 40. Accordingly, we determine that Petitioner has met its burden of showing that joinder is appropriate, and that the Petition warrants institution of inter partes review on all claims and all challenges asserted in the Petition.” slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As discussed above, the Petition does not present any new grounds or issues. See Mot. 1, 3, 4–5. Petitioner has shown that the trial schedule will not be affected by joinder. Mot. 5–6. No changes in the schedule are anticipated or necessary, and the limited participation, if at all, of Petitioner will not impact the timeline of the ongoing trial. Id. Petitioner has agreed to an “understudy” role, which will simplify matters in the ongoing Apple & HP IPR and will be an efficient use of resources. Id. at 6. “Petitioners will assume a primary role only if the Apple & HP IPR petitioners cease to participate in the IPR.” Id. Accordingly, we determine that Petitioner has met its burden of showing that we should exercise our discretion to join Petitioner to IPR2022-00367.” slip op. at 10
NonePatents in suitUS 10,715,235 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. XR Communications LLCInstitutedPTAB · Feb 3, 2023 · IPR2022-01362 · APJ James J Mayberry · IPR · Institution
The Board instituted review of claims 8–14 on the asserted §103 grounds and granted joinder to IPR2022-00367.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We incorporate our previous analysis in our Decision on Institution in IPR2022-00367 regarding the asserted grounds of unpatentability, and conclude that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’235 patent challenged in the Petition for the same reasons. See IPR2022-00367, Paper 10, 40. Accordingly, we determine that Petitioner has met its burden of showing that joinder is appropriate, and that the Petition warrants institution of inter partes review on all claims and all challenges asserted in the Petition.” slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As discussed above, the Petition does not present any new grounds or issues. See Mot. 3, 4. Petitioner has shown that the trial schedule will not be affected by joinder. Mot. 4. No changes in the schedule are anticipated or necessary, and the limited participation, if at all, of Petitioner will not impact the timeline of the ongoing trial. See id. Petitioner has agreed to an “understudy” role, which will simplify matters in the ongoing Apple IPR and will be an efficient use of resources. Id. at 4−5. “Petitioner will assume the primary role [in IPR2022-00367] only if the parties ahead of [Petitioner] cease to participate in the Apple/HP IPR.” Id. at 5. Accordingly, we determine that Petitioner has met its burden of showing that we should exercise our discretion to join Petitioner to IPR2022-00367.” slip op. at 10
NonePatents in suitUS 10,715,235
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.