- Shenzhen Mediatek Tong Technology Co., Ltd. v. The Noco CompanyRehearing deniedPTAB · May 17, 2021 · IPR2020-01387 · APJ Jameson Lee · IPR · Rehearing
The Board denied rehearing, leaving in place the denial of institution on claims 1–3, 5, 8–17, 19–21, and 23 because Petitioner did not show an abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When rehearing a decision on institution, we do not review the merits of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, the request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not reached
“We recognize that Paragraph 50 of Zhang describes two ways to measure the voltage “at the two terminals” of the vehicle battery, and the other way is by the small teeth of the output power clip. Ex. 1006 ¶ 50. But Zhang describes the two ways as occurring “at the same time,” and not as alternative implementations. Thus, measurements at both points are taken to obtain the voltage at the two terminals of the vehicle battery. Dr. Hartup does not address or explain how a measurement can be taken at the input terminal of the DC contactor that would be indicative of the voltage of the external vehicle battery connected to the output terminal of the DC contactor, if the DC contactor is not already closed. Ex. 1003 ¶ 59. The Petition does not address Zhang’s disclosure of measuring the voltage of the vehicle battery on the input side of the DC contactor at the same time a measurement is taken by the small teeth of the output power clip. Paper 9, 33 (emphasis added).” slip op. at 3
- BurdenDecided for patent owner
“II. STANDARD OF REVIEW When rehearing a decision on institution, we do not review the merits of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, the request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
§ 102 anticipationPatents in suitUS 9,007,015 - PTAB · Nov 20, 2020 · IPR2020-00846 · APJ David C Mckone · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no overlooked or misapprehended arguments and no abuse of discretion in instituting review.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“an abuse of discretion. See 37 C.F.R. § 42.71(c) (2019). An abuse of discretion may be indicated 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. See Star Fruits S.N.C. v. U.S., 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 burden of showing that the Institution Decision should be modified is on Patent Owner, the party challenging the Decision. See 37 C.F.R. § 42.71(d) (2019). In addition, “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“not be persuasive. We do not view the circumstances to have changed materially. The record still is unclear as to whether the Texas court has set a trial date. Staff at the Texas court has indicated that Patent Owner “may use 7/12/2021 as the scheduled trial date” for a group of trials that will include Petitioners (Ex. 2018, 1), but the record does not indicate that the Texas court has issued any orders to that effect. final decision to assess the weight to be accorded a trial date set earlier than the expected final written decision date. This proximity inquiry is a proxy for the likelihood that the trial court will reach a decision on validity issues before the Board reaches a final written decision. A trial set to occur soon after the institution decision is fairly likely to happen prior to the Board’s final decision, even if the trial date were postponed due to intervening circumstances. Here, however, a July 12, 2021, trial date would be approximately three months before our final written decision is due. Even considering the allegedly changed circumstances raised by Patent Owner, there is at least some persuasive evidence that delays are possible. In these circumstances, the efficiency and system integrity concerns that animate the Fintiv analysis are not as strong—all other things being equal. Accordingly, even if we were to consider Patent Owner’s new arguments, this factor still would be, at best, neutral to whether we should exercise our discretion to deny the Petition. For the same reasons, our analysis of Fintiv factor 5 also would remain unchanged.” slip op. at 7
Discretionary denialPatents in suitUS 7,076,431 - PTAB · Nov 20, 2020 · IPR2020-00847 · APJ David C Mckone · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution in place because it found no overlooked matter or abuse of discretion in its Fintiv analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on institution, we review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c) (2019). An abuse of discretion may be indicated 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. See Star Fruits S.N.C. v. U.S., 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 burden of showing that the Institution Decision should be modified is on Patent Owner, the party challenging the Decision. See 37 C.F.R. § 42.71(d) (2019). In addition, “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Fintiv factor 2 looks at the proximity of the trial date to the date of our final decision to assess the weight to be accorded a trial date set earlier than the expected final written decision date. This proximity inquiry is a proxy for the likelihood that the trial court will reach a decision on validity issues before the Board reaches a final written decision. A trial set to occur soon after the institution decision is fairly likely to happen prior to the Board’s circumstances. Here, however, a July 12, 2021, trial date would be approximately three months before our final written decision is due. Even considering the allegedly changed circumstances raised by Patent Owner, there is at least some persuasive evidence that delays are possible. In these circumstances, the efficiency and system integrity concerns that animate the Fintiv analysis are not as strong—all other things being equal. Accordingly, even if we were to consider Patent Owner’s new arguments, this factor still would be, at best, neutral to whether we should exercise our discretion to deny the Petition. For the same reasons, our analysis of Fintiv factor 5 also would remain unchanged.” slip op. at 7
Discretionary denialPatents in suitUS 9,451,084 - Apple Inc. v. Parus Holdings, Inc.Rehearing deniedPTAB · Nov 18, 2020 · IPR2020-00687 · APJ David C Mckone · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no misapprehension or abuse of discretion in instituting review despite the asserted changes in the Texas case.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on institution, we review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c) (2019). An abuse of discretion may be indicated 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. See Star Fruits S.N.C. v. U.S., 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 burden of showing that the Institution Decision should be modified is on Patent Owner, the party challenging the Decision. See 37 C.F.R. § 42.71(d) (2019). In addition, “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“The circumstances have not changed materially in the Texas court. Although a motion to stay has been filed, the Texas court has not ruled on it. Accordingly, Patent Owner still asks us to speculate as to how the Texas court might rule. We decline to speculate, and instead determine that this factor remains neutral. See Sand Revolution, Paper 24 at 7; Fintiv II, Paper 15 at 12.” slip op. at 5
- Strike new argumentNew argument disregardedDecided for petitioner
“Patent Owner did not make this argument in its Preliminary Response or Sur-reply; thus, we could not have misapprehended or overlooked it. For that reason alone, Patent Owner’s new argument is improper and insufficient. Nevertheless, even if we were to consider the argument, it would not be persuasive.” slip op. at 5
Discretionary denialPatents in suitUS 9,451,084 - Apple Inc. v. Parus Holdings, Inc.Rehearing deniedPTAB · Nov 18, 2020 · IPR2020-00686 · APJ David C Mckone · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no misapprehension, overlooked argument, or abuse of discretion in instituting review.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on institution, we review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c) (2019). An abuse of discretion may be indicated 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. See Star Fruits S.N.C. v. U.S., 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 burden of showing that the Institution Decision should be modified is on Patent Owner, the party challenging the Decision. See 37 C.F.R. § 42.71(d) (2019). In addition, “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Although a motion to stay has been filed, the Texas court has not ruled on it. Accordingly, Patent Owner still asks us to speculate as to how the Texas court might rule. We decline to speculate, and instead determine that this factor remains neutral. See Sand Revolution, Paper 24 at 7; Fintiv II, Paper 15 at 12.” slip op. at 5
Discretionary denialPatents in suitUS 7,076,431 - Universal Imaging Industries, LLC v. Lexmark International, Inc.Rehearing deniedPTAB · May 4, 2020 · IPR2019-01383 · APJ Justin T Arbes · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution for claims 1–22, finding no reasonable likelihood on four grounds and denying the Adkins ground under § 325(d).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“testimony because we mistakenly found it to rely on unsupported inherency theories. Req. Reh’g 9–10. According to Petitioner, “Dr. Direen’s Declaration does not rely on any inherency theories.” Id. As pointed out in the Decision, however, Dr. Direen, in multiple instances, clearly bases his testimony on alleged “inherent device operation,” rather than express disclosure in Adkins. See Dec. 20; Ex. 1002, App. 1002-C, 8–18, 23, 26–27, 32, 36. We did not misapprehend his testimony. We maintain our conclusions that Petitioner did not show Examiner error and that Dr. Direen’s testimony did not warrant reconsideration of the prior art or arguments presented during prosecution. See Dec. 19–20. Thus, we are not persuaded by Petitioner’s arguments regarding factors (e) and (f). Petitioner has not shown that we abused our discretion in weighing the Becton, Dickinson factors and denying institution as to the asserted ground based on Adkins under § 325(d). Our evaluation of the Becton, Dickinson factors in the Decision demonstrates that our denial of institution of this ground was warranted under the two-part framework of Advanced Bionics, which was recently designated precedential, because the same art (Adkins) previously was presented to the Office and Petitioner has not demonstrated that the Office erred in a manner material to the patentability of the challenged claims.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”).1 With respect to the first issue, previously “presented” art includes, among other things, “art provided to the Office by an applicant, such as on an Information Disclosure Statement (IDS), in the prosecution history of the challenged patent.” Id. at 7–8. With respect to the second issue, institution generally will be denied if a “petitioner fails to make a showing of material error,” and “[i]f reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability.” Id. at 8–9. “[T]his framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“III. ANALYSIS Petitioner asserted five grounds of unpatentability in its Petition. See Paper 1 (“Pet.”), 3; Dec. 7. In the Decision, we determined that Petitioner had not established a reasonable likelihood of prevailing as to four of those grounds. Dec. 21–41. As to the fifth asserted ground—alleged obviousness of claims 1–22 of the ’079 patent over U.S. Patent Application Publication No. 2010/0306431 A1 (Ex. 1006, “Adkins”)—we found that the evidence weighed in favor of exercising our discretion and denying institution of review as to the ground under 35 U.S.C. § 325(d). Dec. 21, 41. Petitioner in its Request for Rehearing does not dispute our determination as to the four asserted grounds for which we found no reasonable likelihood of prevailing, and instead only disputes our conclusion as to the ground based on Adkins. Req. Reh’g 1 & n.1.” slip op. at 2
- Expert testimonyPetitioner expert discountedDecided for patent owner
“overlooked its argument in the Petition regarding claim 1 that the slave device “implements [the] address change functionality upon instruction from the master, no matter how many times the master sends the instruction. With each address change request, the slave will change its address.” Id. at 9 (quoting Pet. 43; citing Ex. 1002, App. 1002-C, 7 (similar testimony from Petitioner’s declarant, Harry Direen, Ph.D., P.E.)). Petitioner, however, does not explain why we should have understood that vague statement to be the detailed arguments it now makes in the Request for Rehearing. Even if the vague statement was sufficient for claim 1, Petitioner states that “[t]he same argument was presented in connection with each of the challenged claims,” but fails to explain how it would apply to claims that further specify the timing and nature of interaction with the master, such as the “substantially immediately following a predetermined event” and “continual series of a plurality of address change requests” limitations in independent claim 7 (which are recited similarly in independent claims 12 and 17). See id. Indeed, Petitioner in its Petition cited only a single paragraph of Adkins as identify in the Petition any “predetermined event” in Adkins. Dec. 19–20. As to Dr. Direen’s similar testimony, we found that it was “entitled to little weight because it consists primarily of quotations from Adkins, many of which are not cited in the Petition.” Id. at 20 (citing 37 C.F.R. §§ 42.6(a)(3), 42.65(a)). We see no reason to conclude otherwise now.” slip op. at 9
Discretionary denialPatents in suitUS 8,850,079 - Universal Imaging Industries, LLC v. Lexmark International, Inc.Rehearing deniedPTAB · May 4, 2020 · IPR2019-01387 · APJ David C Mckone · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution for the Adkins-based ground under § 325(d), finding no abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“testimony because we mistakenly found it to rely on unsupported inherency theories. Req. 9. According to Petitioner, “Dr. Direen’s Declaration does not rely on any inherency theories.” Id. As pointed out in the Decision (at 18–19), Dr. Direen, in multiple instances, clearly bases his testimony on “inherent device operation,” rather than express disclosure in Adkins. Ex. 1002-C, at C5, C8, C11–C12, C17, C20, C23–C24, C29, C34–C35. We did not misapprehend his testimony. We maintain our conclusions (Dec. 18–19) that Petitioner did not show Examiner error and that Dr. Direen’s testimony did not warrant reconsideration of the prior art or arguments presented during prosecution. Thus, we did not abuse our discretion in finding that Becton, Dickinson factors (e) and (f) weighed in favor of denial. Petitioner has not shown that we abused our discretion in weighing the Becton, Dickinson factors and denying institution as to the asserted ground based on Adkins under § 325(d). Our evaluation of the Becton, Dickinson factors in the Decision demonstrates that our denial of institution of this ground was warranted under the two-part framework of Advanced Bionics, which was recently designated precedential, because the same art” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In the Decision we explained that Becton, Dickinson factors (a) and (b) weighed in favor of exercise of our discretion under § 325(d) because the identical art (the patent and underlying patent application pertaining to Adkins) was presented to the Examiner during prosecution. Dec. 15. This is consistent with Advanced Bionics, which has confirmed that “[p]reviously to the Office by an applicant, such as on an Information Disclosure Statement (IDS), in the prosecution history of the challenged patent.” Advanced Bionics, slip op. at 7–8. Thus, we did not abuse our discretion in finding that factors (a) and (b) weighed in favor of denial as to the asserted ground based on Adkins.” slip op. at 5
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Req. 8 (quoting Ex. 1002-C, at C4–C5 (emphasis in original)).2 Petitioner did not cite to this testimony with particularity in the Petition. See Pet. 47; see also 37 C.F.R. §§ 42.104(4), (5). Rather, Petitioner simply cited to the 2 This testimony would not have been helpful to Petitioner. Rather, it was presented as part of Dr. Direen’s opinion that the master’s behavior recited in claim 1 would have been inherent in Adkins. Ex. 1002-C, at C4–C5. Dr. Direen did not testify that claim 1 does not require a finding as to the master’s behavior, so long as Adkins’ slave device was capable of responding appropriately. We considered Dr. Direen’s inherency opinion and decided that it was unsupported and, thus, did not support a finding of Examiner error. Dec. 18–19. without providing any specificity. Id. Thus, we could not have overlooked the testimony on which Petitioner now seeks to rely. In any case, as a general matter, we found that “Dr. Direen’s testimony is entitled to little weight because it consists primarily of quotations from Adkins, many of which are not cited in the Petition.” Dec. 18–19 (citing 37 C.F.R. §§ 42.6(a)(3), 42.65(a)). Thus, we did consider Dr. Direen’s testimony, but found it of little value. Petitioner also argues that we improperly discounted Dr. Direen’s testimony because we mistakenly found it to rely on unsupported inherency theories. Req. 9. According to Petitioner, “Dr. Direen’s Declaration does not rely on any inherency theories.” Id. As pointed out in the Decision (at 18–19), Dr. Direen, in multiple instances, clearly bases his testimony on “inherent device operation,” rather than express disclosure in Adkins. Ex. 1002-C, at C5, C8, C11–C12, C17, C20, C23–C24, C29, C34–C35. We did not misapprehend his testimony. We maintain our conclusions (Dec. 18–19) that Petitioner did not show Examiner error and that Dr. Direen’s testimony did not warrant reconsideration of the prior art or arguments presented during prosecution. Thus, we did not abuse our discretion in finding that Becton, Dickinson factors (e) and (f) weighed in favor of denial.” slip op. at 10
Discretionary denialPatents in suitUS 9,176,921 - PTAB · Mar 16, 2020 · IPR2019-01111 · APJ Joni Y Chang · IPR · Rehearing
The Board denied rehearing and maintained denial of the petition as time-barred under § 315(b), because Amazon was a privy of several Petitioner Entities.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Here, Requesters simply disagree with the way in which we resolved the disputed privity issue in our Decision. Mere disagreement with our Decision is not proper basis for rehearing when we had considered and addressed Petitioner Entities’ arguments in the Decision itself. Requesters do not show that we misapprehended or overlooked an argument that they made in the Petition or Reply. Moreover, Requesters have not identified persuasively in the Request an erroneous interpretation of the law or factual findings not supported by substantial evidence such that the Decision should be modified.” slip op. at 9
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“In particular, we explained that the District Court’s ruling is on appeal, and Amazon has intervened in the appeal to continue its defense of Petitioner Entities’ interests in Amazon’s products. Id. at 29−30; Ex. 2017 (Patent Owner’s Appeal Brief); Ex. 2018 (Amazon’s Motion to Intervene). Thus, we concluded that the circumstances present here, which include the above-noted preexisting legal relationship between Amazon and some of the Petitioner Entities, have not changed and that Amazon and Petitioner Entities remain in privity. Dec. 23−24, 27−30, 35.” slip op. at 8
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“concerns by evaluating whether one or more of the Taylor’s categories apply. Dec. 18−36. We separately and expressly analyzed three grounds— namely, Taylor’s second, third, and fifth categories identified above. Id. For example, the third Taylor category, addressing due process concerns, is whether a party not involved in a lawsuit nevertheless was represented adequately by someone with the same interests who was a party to the lawsuit. See Taylor, 553 U.S. at 894; WesternGeco, 889 F.3d at 1319. We determined that Amazon is a privy of several Petitioner Entities under this ground, as well as two additional grounds. Dec. 18−36.” slip op. at 5
Discretionary denialPatents in suitUS 7,802,310 - PTAB · Mar 16, 2020 · IPR2019-01092 · APJ David C Mckone · IPR · Rehearing
The Board denied rehearing and maintained its denial of the petition as time-barred under § 315(b) because Petitioner entities remained in privity with Amazon.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated 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. See Star Fruits S.N.C. v. U.S., 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 burden of showing that the Decision should be modified is on Petitioner entities, the parties challenging the Institution Decision. See 37 C.F.R. § 42.71(d) (2018). In addition, “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 3
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“particular, we explained that the District Court’s ruling is on appeal, and Amazon has intervened in the appeal to continue its defense of Petitioner entities’ interests in Amazon’s products. Dec. 18, 20–21; Exs. 2017–2018. Thus, we concluded that the circumstances present here, which include the above-noted preexisting legal relationship between Amazon and at least some of the Petitioner entities, have not changed, and that Amazon and Petitioner entities remain in privity. Dec. 18, 21.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiDecided for patent owner
“the customer cases [, which include at least some Petitioner entities,3] are in privity with Amazon because they share the same interest in the unfettered use of Amazon’s web services, and Amazon adequately represented this interest in the [2011] Texas Action.” Ex. 2012, 14 (emphases added), quoted in Dec. 14. We do not understand Petitioner entities to be arguing that this determination was incorrect—Petitioner entities are the clear beneficiaries of the District Court’s ruling. In our Decision, we noted that the District Court’s articulation “is very similar, if not identical, to category three (adequate representation by the named party) in Taylor, where nonparty preclusion based on a privity relationship may be found.”” slip op. at 5
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for patent owner
“preclusion is, of course, subject to due process limitations,” and that “[a] person who was not a party to a suit generally has not had a ‘full and fair opportunity to litigate’ the claims and issues settled in that suit.” Taylor v. Sturgell, 533 U.S. 880 (2008), 891–92. Thus, “[a]s informed by Taylor and other cases, the standards for the privity inquiry must be grounded in due process.” WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1319 (Fed. Cir. 2018). According to the U.S. Court of Appeals for the Federal Circuit, “[b]ecause nonparty preclusion risks binding those who have not had a full and fair opportunity to litigate, the Supreme Court has cautioned that there is a general rule against nonparty preclusion, subject to certain exceptions.” Id. (emphasis added); accord Taylor, 533 U.S. at 893 (“[T]he rule against nonparty preclusion is subject to exceptions.”). Taylor groups such exceptions into six categories, 533 U.S. at 893–95, three of which we analyzed in the Decision, at 13–27 (analyzing exceptions 2, 3, and” slip op. at 4
Discretionary denialPatents in suitUS 6,928,442 - PTAB · Mar 16, 2020 · IPR2019-01093 · APJ Denise M Pothier · IPR · Rehearing
The Board denied rehearing and maintained denial of institution because the petitioner entities remained in privity with time-barred Amazon under § 315(b).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” The abuse of discretion standard of review is the same heightened standard that federal appeals courts use to review district court factual findings. See PNY Techs., Inc. v. Phison Elecs. Corp., IPR2013-00472, Paper 16 at 2 (PTAB Apr. 23, 2014) (Final Written Decision) (citing Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005) (“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.”)). A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d) (2018). The party must identify specifically all matters that we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id.” slip op. at 3
- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“entities’ interests in Amazon’s products. Id. at 19, 21–22; Exs. 2017–2018. Thus, we concluded that the circumstances present here, which include the above-noted preexisting legal relationship between Amazon and at least some of the Petitioner entities, have not changed and that Amazon and Petitioner entities remain in privity. Dec. 19, 22–23.” slip op. at 8
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“Specifically, the District Court expressly found that “the defendants in the customer cases[, which include at least some Petitioner entities,3] are in privity with Amazon because they share the same interest in the unfettered use of Amazon’s web services, and Amazon adequately represented this interest in the [2011] Texas Action.” Ex. 2012, 14 (emphases added), quoted in Dec. 23. Petitioner entities are the clear beneficiaries of this ruling by the District Court, and we do not understand Petitioner entities to be arguing that this determination by the District Court was incorrect. In our 3 As stated in the Decision (Dec. 13), the U.S. Court of Appeals for the Federal Circuit in Click-to-Call read § 315(b) “to apply petition-by-petition, not petitioner-by-petitioner, with the collection of petitioners on a single petition treated as a unit indistinguishable from each member of that collection” “for the one-year time bar.” Click-to-Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321, 1338 (Fed. Cir. 2018) (en banc in part). Decision, we noted that the District Court’s articulation “is very similar, if not identical, to [exception] three (adequate representation by the named party) in Taylor, where nonparty preclusion based on a privity relationship may be found.” Dec. 16. In the Decision, we further agreed with the District Court’s determination related to privity and reached the same conclusion upon considering the parties’ arguments and evidence. Id. at 23– 27. Thus, we considered whether denying the Petition was consistent with and grounded in due process, and concluded that it was, because, as analyzed in the Decision and discussed above, the record’s evidence met the third Taylor exception.” slip op. at 5
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for patent owner
“The Supreme Court has stated that “[t]he federal common law of preclusion is, of course, subject to due process limitations,” and that “[a] person who was not a party to a suit generally has not had a ‘full and fair opportunity to litigate’ the claims and issues settled in that suit.” Taylor, 533 U.S. at 891–92. Thus, “[a]s informed by Taylor and other cases, the standards for the privity inquiry must be grounded in due process.” WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1319 (Fed. Cir. 2018). According to the Federal Circuit, “[b]ecause nonparty preclusion risks binding those who have not had a full and fair opportunity to litigate, the Supreme Court has cautioned that there is a general rule against nonparty preclusion, subject to certain exceptions.” Id. (emphasis added); accord Taylor, 533 U.S. at 893 (“[T]he rule against nonparty preclusion is subject to exceptions.”). Taylor groups such exceptions into six categories, 533 U.S. at 893–95, three of which we analyzed in the Decision. Dec. 13–28 (analyzing the second exception (pre-existing substantive legal relationship between the 2 Patent Owner filed a complaint against Amazon on December 8, 2011, in the Eastern District of Texas (“the 2011 Amazon lawsuit”), alleging infringement of the ’544 patent based on Amazon’s Simple Storage Service (“S3”). Pet. 2; Prelim. Resp. 13–14 (citing PersonalWeb Techs. LLC v. Amazon Web Servs. LLC, No. 6:11-cv-00658 (E.D. Tex. dismissed on June 9, 2014)). parties), the third exception (adequate representation by the named party), and fifth exception (the nonparty acts as a proxy for the named party to re-litigate the same issues)). See also WesternGeco, 889 F.3d at 1319 (summarizing Taylor’s “non-exhaustive list of considerations where nonparty preclusion would be justified”). In the Decision, we addressed Petitioner entities’ due process concerns by evaluating whether one or more of Taylor’s exceptions apply. For example, one of the Taylor exceptions (the third exception) addressing due process concerns considers whether a nonparty to a lawsuit was represented adequately by someone with the same interests who was a party to the lawsuit. See Taylor, 553 U.S. at 894; WesternGeco, 889 F.3d at 1319. As explained below, we considered and analyzed this exception in the Decision.” slip op. at 4
Discretionary denialPatents in suitUS 7,945,544
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.