- Guest-Tek Interactive Entertainment Ltd. v. Nomadix, Inc.Institution deniedPTAB · Apr 16, 2019 · IPR2018-01668 · APJ Monica S Ullagaddi · IPR · Institution
The Board denied institution on claims 1 and 24, finding the General Plastic factors favored discretionary denial of the follow-on petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“Patent Owner, in the ’376IPR, Petitioner challenged the ’266 patent based on a combination of Slemmer and Vu (U.S. Patent No. 5,623,601) as evidenced by “many other prior art references that also teach [the handshake limitations missing from Slemmer],” including “U.S. Patent No. 6,389,462 to Cohen.” Id. at 11–12 (citing Ex. 2001, 5, 20, 28). Having reviewed Patent Owner’s arguments and the cited evidence, we agree that Petitioner knew about the prior art now asserted when it first challenged claims 1 and 24, and we are persuaded that factors 1 and 2 weigh in favor of exercising our discretion to deny institution of the present proceeding on the basis of 35 U.S.C. § 314(a).” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary 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.” For the reasons that follow, we do not institute an inter partes review of any of the challenged claims of the ’266 patent.” slip op. at 2
Discretionary denialPatents in suitUS 8,266,266 - Guest-Tek Interactive Entertainment Ltd. v. Nomadix, Inc.Rehearing deniedPTAB · Aug 22, 2018 · IPR2018-00392 · APJ Stephen C Siu · IPR · Rehearing
The Board denied rehearing of its denial of institution on the obviousness ground over Slemmer and Vu, finding no abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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). A 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.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Director may not authorize an inter partes review to be instituted unless the Director determines that 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. 35 U.S.C. § 314(a). Notably, we must base our determination of a “reasonable likelihood” that Petitioner would “prevail” on “the information presented in the petition,” specifically. In the present case, Petitioner has not provided a basis, legal or otherwise, in support of its position that we must determine a “reasonable likelihood” based on information presented in some other petition, much less based on some other evidence of record in another proceeding. For example, in IPR2016-00077, the panel based its decision on a “Declaration by Mr. Keith Olsen.” That evidence is not of record in this proceeding.” slip op. at 3
- BurdenDecided for patent owner
“35 U.S.C. § 314(a). Notably, we must base our determination of a “reasonable likelihood” that Petitioner would “prevail” on “the information presented in the petition,” specifically. In the present case, Petitioner has not provided a basis, legal or otherwise, in support of its position that we must determine a “reasonable likelihood” based on information presented in some other petition, much less based on some other evidence of record in another proceeding. For example, in IPR2016-00077, the panel based its decision on a “Declaration by Mr. Keith Olsen.” That evidence is not of record in this proceeding.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“supporting Petitioner’s position that it would have been obvious to one of ordinary skill in the art to have combined the cited references. Req. Reh’g. 8–10. In particular, Petitioner reiterates previous arguments presented in the Petition such as “Vu is one of the first prior art references to teach the handshake” but that “other prior art references also teach it.” Req. Reh’g 8. These arguments were previously addressed. Decision 6–7. Although Petitioner may disagree with our resolution of the arguments that Petitioner presented in its Petition, such arguments were considered fully in our Decision.” slip op. at 4
§ 103 obviousnessPatents in suitUS 8,725,899 - Guest-Tek Interactive Entertainment Ltd. v. Nomadix, Inc.Rehearing deniedPTAB · Aug 22, 2018 · IPR2018-00376 · APJ Stephen C Siu · IPR · Rehearing
The Board denied rehearing and upheld denial of institution on the Slemmer and Vu obviousness ground because the petition did not show a reasonable likelihood of prevailing.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on a petition, the Board reviews 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). A 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.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Director may not authorize an inter partes review to be instituted unless the Director determines that 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. 35 U.S.C. § 314(a). Notably, we must base our determination of a “reasonable likelihood” that Petitioner would “prevail” on “the information presented in the petition,” specifically. In the present case, Petitioner has not provided a basis, legal or otherwise, in support of its position that we must determine a “reasonable likelihood” based on information presented in some other petition, much less based on some other evidence of record in another proceeding. For example, in IPR2016-00077, the panel based its decision on a “Declaration by Mr. Keith Olsen.” That evidence is not of record in this proceeding.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“supporting Petitioner’s position that it would have been obvious to one of ordinary skill in the art to have combined the cited references. Req. Reh’g. 8–10. In particular, Petitioner reiterates previous arguments presented in the Petition such as “Vu is one of the first prior art references to teach the handshake” but that “other prior art references also teach it.” Req. Reh’g 9. These arguments were previously addressed. Decision 7–8. Although Petitioner may disagree with our resolution of the arguments that Petitioner presented in its Petition, such arguments were considered fully in our Decision.” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“construction for the term ‘TCP connection hand shake completion data,’ which resulted in an incorrect determination.” Req. Reh’g. 5. In particular, Petitioner now proposes a broadest reasonable construction of the term “TCP connection hand shake completion data” to mean “two devices initiating a communication session by the first device sending information to a second device, and the second device then responding to the first device.” Req. Reh’g. 7. Based on this newly proposed construction of the term “TCP connection hand shake completion data,” Petitioner argues that Vu discloses this feature. Req. Reh’g. 6–8. Under 37 C.F.R. § 42.71(d), Petitioner must “identify all matters [Petitioner] believes the Board misapprehended or overlooked.” Petitioner did not present this proposed construction in the Petition. See generally Req. Reh’g.; see generally Pet. We could not have “misapprehended or overlooked” what was not presented.” slip op. at 4
Claim construction§ 103 obviousnessPatents in suitUS 8,266,266 - SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.Rehearing deniedPTAB · Oct 30, 2017 · IPR2017-00730 · APJ Matthew R Clements · IPR · Rehearing
The Board denied Petitioner’s rehearing request, leaving in place the denial of institution on claims 1–5, 12–14, and 19–20 over Saito and Swain, and claims 3 and 13–14 over Saito, Swain, and Kim.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on a petition, we review the decision for 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. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“Ex. 1005 ¶ 101. Paragraph 101 describes Figure 7. See id. ¶¶ 100, 101. Recognizing that the timing of signals DQ-Pre (between memory controller and data buffer 300 on connectors 120) and the timing of signals DQ-Post (between data buffer 300 and memory chips 200 on data lines L1 or L2) is “off” because “data DQ is buffered by the data register buffer 300,” Saito teaches that “it is required to perform a timing adjustment between the memory chips 200 and the data register buffer 300 and a timing adjustment between the data register buffer 300 and the memory controller in a separate manner.” Ex. 1005 ¶ 101. This paragraph, therefore, does not teach that retiming from CL=5 to CL=6 is based on “time intervals from the leveling operations,” as Petitioner contends. Req. Reh’g 7. To the contrary, it explicitly teaches the necessity of a “separate manner” for adjusting timing between a data buffer and memory chip (i.e., for “signals received by the each respective buffer circuit during a memory write operation,” as recited in claim 1) and adjusting timing between a data buffer and a memory controller (i.e., for “transmission of a respective set of read data signals received from the respective group of memory devices,” as recited in claim 1).” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We disagree. Neither paragraph teaches that the re-timing from CL=5 to CL=6 is “based on signals received by the each respective buffer circuit during a memory” read or write “operation,” as required by the claims. Paragraph 101 of Saito is reproduced below. Although the data DQ-Pre and the data DQ-Post have the same content, because the data DQ is buffered by the data register buffer 300, the timing is off between the data DQ-Pre and the data DQ-Post. The same is true for a relationship between the data strobe signal DQS-Pre and the data strobe signal DQS-Post. Therefore, in the present embodiment, it is required to perform a timing adjustment between the memory chips 200 and the data register buffer 300 and a timing adjustment between the data register buffer 300 and the memory controller in a separate manner. Details on the timing adjustments will be described later. Ex. 1005 ¶ 101. Paragraph 101 describes Figure 7. See id. ¶¶ 100, 101. Recognizing that the timing of signals DQ-Pre (between memory controller and data buffer 300 on connectors 120) and the timing of signals DQ-Post (between data buffer 300 and memory chips 200 on data lines L1 or L2) is “off” because “data DQ is buffered by the data register buffer 300,” Saito teaches that “it is required to perform a timing adjustment between the memory chips 200 and the data register buffer 300 and a timing adjustment between the data register buffer 300 and the memory controller in a separate manner.” Ex. 1005 ¶ 101. This paragraph, therefore, does not teach that retiming from CL=5 to CL=6 is based on “time intervals from the leveling operations,” as Petitioner contends. Req. Reh’g 7. To the contrary, it explicitly teaches the necessity of a “separate manner” for adjusting timing between a data buffer and memory chip (i.e., for “signals received by the each respective buffer circuit during a memory write operation,” as recited in claim 1) and adjusting timing between a data buffer and a memory controller (i.e., for “transmission of a respective set of read data signals received from the respective group of memory devices,” as recited in claim 1).” slip op. at 3
- Strike new argumentNew argument disregardedDenied
“These arguments were not in the Petition so we could not have misapprehended or overlooked them. To the extent that Petitioner is arguing that these paragraphs of our Decision indicate a misapprehension of what was argued in the Petition, we disagree. Specifically, we are unpersuaded by Petitioner’s contention that Saito’s teaching to use time A to time reception of read data by “input buffer circuit INB and the like” (Ex. 1005 ¶ 149) teaches using that same interval “to time transmission” of read data, as claimed, merely because data is received by that input buffer circuit before, at some later point, being transmitted to the memory controller. Req. Reh’g. 8–9. We also are not persuaded that Saito’s use of “and the like” extends to the timing of the output of read data from buffer 300 in the manner argued. Req. Reh’g 9–11. This argument is particularly unpersuasive because, as our Decision points out (Dec. 13–14), Saito discloses an alternative to timing the output of read data from data buffer 300, which is a read leveling operation by the memory controller. Thus, although “Petitioner does not rely on those data buffer-memory controller operations for any of its arguments” (Req. Reh’g 13), they are nevertheless relevant because they corroborate that Saito does not teach its data buffer 300 using a time interval “based on signals received by [it]” for the purpose of “tim[ing] transmission of a respective set of read data signals.”” slip op. at 5
§ 103 obviousnessPatents in suitUS 9,128,632 - Black Swamp IP, LLC v. Virnetx Inc.Rehearing deniedPTAB · Jul 24, 2017 · IPR2016-00957 · APJ Stephen C Siu · IPR · Rehearing
The Board denied VirnetX’s rehearing request, leaving claims 27 and 51 unpatentable as anticipated by Kiuchi.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“path to address the claimed ‘first location’” and relies on In re Magnum Oil Tools Int’l., Ltd., 829 F.3d 1364 (Fed. Cir. 2016) to support Patent Owner’s implied contention that the Final Decision may not address new arguments raised by Patent Owner in Patent Owner’s Preliminary Response and/or Patent Owner’s Response. Req. Reh’g. 6. We disagree. In the present matter and in accordance with Magnum Oil, the ultimate burden of proof remained with Petitioner and was never shifted to Patent Owner at any time during the proceedings and, as discussed above, at no time was an “entirely new path to address the claimed ‘first location’” introduced in the Decision.” slip op. at 3
- BurdenDecided for petitioner
“path to address the claimed ‘first location’” and relies on In re Magnum Oil Tools Int’l., Ltd., 829 F.3d 1364 (Fed. Cir. 2016) to support Patent Owner’s implied contention that the Final Decision may not address new arguments raised by Patent Owner in Patent Owner’s Preliminary Response and/or Patent Owner’s Response. Req. Reh’g. 6. We disagree. In the present matter and in accordance with Magnum Oil, the ultimate burden of proof remained with Petitioner and was never shifted to Patent Owner at any time during the proceedings and, as discussed above, at no time was an “entirely new path to address the claimed ‘first location’” introduced in the Decision.” slip op. at 3
NonePatents in suitUS 7,921,211 - Black Swamp IP, LLC v. Virnetx Inc.Rehearing deniedPTAB · Jul 24, 2017 · IPR2016-00693 · APJ Stephen C Siu · IPR · Rehearing
The Board denied VirnetX’s rehearing request, leaving intact its determination that claims 27 and 51 are anticipated by Kiuchi.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“path to address the claimed ‘first location’” and relies on In re Magnum Oil Tools Int’l., Ltd., 829 F.3d 1364 (Fed. Cir. 2016) to support Patent Owner’s implied contention that the Final Decision may not address new arguments raised by Patent Owner in Patent Owner’s Preliminary Response and/or Patent Owner’s Response. Req. Reh’g. 6. We disagree. In the present matter and in accordance with Magnum Oil, the ultimate burden of proof remained with Petitioner and was never shifted to Patent Owner at any time during the proceedings and, as discussed above, at no time was an “entirely new path to address the claimed ‘first location’” introduced in the Decision.” slip op. at 3
- BurdenDecided for petitioner
“path to address the claimed ‘first location’” and relies on In re Magnum Oil Tools Int’l., Ltd., 829 F.3d 1364 (Fed. Cir. 2016) to support Patent Owner’s implied contention that the Final Decision may not address new arguments raised by Patent Owner in Patent Owner’s Preliminary Response and/or Patent Owner’s Response. Req. Reh’g. 6. We disagree. In the present matter and in accordance with Magnum Oil, the ultimate burden of proof remained with Petitioner and was never shifted to Patent Owner at any time during the proceedings and, as discussed above, at no time was an “entirely new path to address the claimed ‘first location’” introduced in the Decision.” slip op. at 3
NonePatents in suitUS 7,418,504 - PTAB · Oct 20, 2016 · IPR2015-01047 · APJ Stephen C Siu · IPR · Rehearing
The Board denied VirnetX’s rehearing request, rejecting its real-party-in-interest arguments and finding the challenged claims remained unpatentable based on the Petition and Kiuchi.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The applicable standard for a request for rehearing is set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request 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, opposition, or a reply.” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Paper 82, 8. We are not persuaded by Patent Owner’s argument. Even assuming that Petitioner, in fact, “admitted that the US Feeder and the Cayman Feeder are ‘controlling shareholders’ of the Mangrove Petitioner,” as Patent Owner asserts, Patent Owner does not demonstrate persuasively that Petitioner also “admitted” that the “US Feeder and the Cayman Feeder” exerted control over the filing or preparation of the Petition. Nor does Patent Owner provide sufficient evidence demonstrating such control.” slip op. at 2
- Expert testimonyDecided for petitioner
“1003 is entitled to no weight and reverse its findings of unpatentability that improperly rely on Exhibit 1003.” Paper 82, 14. Reference to Exhibit 1003 in the Decision was made in conjunction with the Petition in describing the Kiuchi disclosure with respect to claim features. Decision 5. We note that Exhibit 1003 merely confirms what is already apparent in the Petition and/or the Kiuchi reference itself (both of which are also relied upon in consideration of the Kiuchi reference with respect to claim features). Hence, to the extent that any modifications might have been made to the relevant portions of Exhibit 1003, we conclude that such alleged potential modifications (if any) are of insubstantial relevance in view of the fact that analysis of the Petition and the Kiuchi reference itself (without reliance on Exhibit 1003 in this regard) indicate that Petitioner has met its burden by a preponderance of the evidence that claims 1, 2, 6–8, and 12–14 of the ’151 patent are unpatentable, as indicated in the Decision. See, e.g., Decision 1-4, 6-24, and 26-38. Reference to Exhibit 1003 in the Decision was also made in the Petition as corroboration that RFC documents are “publications [that] are prepared and distributed,” “published and widely distributed” for “a period for others to provide comments on the document,” “can be obtained from a number of Internet hosts using . . . document-retrieval systems,” and contain a date “in the top right corner of the first page of the document.” Decision 25. Such testimony merely corroborates what is already clear on its face. For example, the fact that RFC documents are prepared and distributed, are for others to provide comments, are published on a specific date, and that the top right corner of such documents specify a date is clear on simple inspection of the RFC document itself. Therefore, we determine that the importance of any alleged modifications to Dr. Guerin’s testimony confirming what is already apparent on its face is of insubstantial importance. Also, Patent Owner does not demonstrate sufficiently that any modifications were, in fact, made to Dr. Guerin’s testimony that RFC documents are published on a specific date and that the top right corner of such documents specify a date.” slip op. at 6
NonePatents in suitUS 7,490,151 - PTAB · Feb 26, 2016 · IPR2015-01047 · APJ Stephen C Siu · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution of IPR2016-00167 and its joinder with IPR2015-01047 in place.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“because “the ’167 IPR is entirely devoid of any supporting expert testimony” but expert testimony was supposedly submitted in IPR2015-01047. Req. Reh’g 3–4. As previously explained, however, the record reflects that Petitioner has demonstrated a reasonable likelihood of prevailing and Patent Owner fails to demonstrate sufficiently that the absence of expert testimony alone indicates the failure to demonstrate a reasonable likelihood of prevailing in proving unpatentability of a challenged claim. See, e.g., Decision 4.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingOther
“(“Req. Reh’g” or “Request”), seeks reversal of the Board’s Decision granting institution in IPR2016-00167 and joining IPR2016-00167 with IPR2015-01047. See Req. Reh’g 1. The Board denies the requested relief.” slip op. at 2
NonePatents in suitUS 7,490,151 - PTAB · Feb 26, 2016 · IPR2015-01047 · APJ Stephen C Siu · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution of IPR2016-00063 and its joinder with IPR2015-01047 in place.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We have considered Patent Owner’s arguments in the Request but find them unpersuasive to demonstrate that we misapprehended or overlooked any points.” slip op. at 3
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“Patent Owner argues that we incorrectly granted institution of IPR2016-00062 under 35 U.S.C. § 315(b). See, e.g., Req. Reh’g 6–10. Contrary to Patent Owner’s contention, our granting of institution of IPR2016-00063 is in accordance with 35 U.S.C. § 315(b) for at least the reasons previously discussed. Decision 4. Patent Owner reiterates that an alternative interpretation of 35 U.S.C. § 315(b) should be adopted to permit denial of institution of IPR2016-00063. See, e.g., Req. Reh’g 6–10. In support of this contention, Patent Owner continues to cite the dissent in Target Corp. v. Destination Maternity Corp., Case IPR2014-00508, dissent slip op. at 18 (PTAB Feb. 12, 2015) (Fitzpatrick, Bisk, & Weatherly, A.P.JJ., dissenting) (Paper 28) but does not explain why a dissent in this cited matter should compel us to adopt an alternate interpretation of 35 U.S.C. § 315(b). We therefore continue not to do so.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Patent Owner argues that “Apple’s past conduct and the numerous challenges to the ’151 patent nonetheless compel that the Petition be denied under § 325(d).” Req. Reh’g 10. According to 35 U.S.C. § 325(d), “the Director may take into account whether, and reject the petition or request, because the same or substantially the same prior art or arguments previously were presented to the Office.” Having carefully considered Patent Owner’s arguments (Req. Reh’g 10–12), we decline to exercise our discretion to reject the petition or request because the same or substantially the same prior art or arguments previously were presented (allegedly) to the Office, even assuming that the same or substantially the same prior art or arguments were, in fact, previously presented to the Office.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedDecided for petitioner
“DISCUSSION In the Decision dated January 25, 2016, Paper 29 (“Decision”), we granted institution of IPR2016-00063 (filed by Apple Inc.) and joined IPR2016-00063 with the instant matter (i.e., IPR2015-01047). Decision 7.” slip op. at 2
Discretionary denialPatents in suitUS 7,490,151 - PTAB · Feb 26, 2016 · IPR2015-01047 · APJ Stephen C Siu · IPR · Rehearing
The Board granted Patent Owner limited additional discovery about Ward Dietrich’s involvement in preparing or controlling the Petition and denied discovery of other requested materials.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“We have considered Patent Owner’s arguments in the Request but, with the exception noted below, find them unpersuasive to demonstrate that we misapprehended or overlooked any points. For example, we disagree with Patent Owner that “[t]he Motion certainly met this standard [of showing beyond speculation that something useful would be uncovered as to RPI issues]” for at least the reasons previously detailed in the Decision. See Decision 1–5. However, Patent Owner argues that “Ward Dietrich is Chief Operating Officer of the Mangrove Partners Master Fund” and “has no public role in petitioner” (Motion 3 (citing Ex. 2002 at 2)) and that “Ward Dietrich held himself out as an ‘authorized person’ to sign the Power of Attorney on behalf of Petitioner” (Req. Reh’g 6 (quoting Motion 3)). Petitioner does not appear to refute this contention. Patent Owner further requests “[c]ommunications and documents or things . . . including assistance with identification of prior art, filing, funding, compensation, and/or preparation of any papers related to the Mangrove IPRs” and the identification of “persons and entities . . . involved in the preparation and filing of the petitions” and “persons and entities . . . who controlled or had the ability to control the preparation and filing of the petitions in the Mangrove IPRs.” Ex. 2034, 3; Ex. 2035, 3. In view of Ward Dietrich’s alleged role as an officer of Mangrove Partners and the named Petitioner, we grant Patent Owner’s motion for additional discovery for the limited purpose of providing communications and/or agreements pertaining to Ward Dietrich’s involvement in the preparation and filing of the Petition and/or control or ability to control the preparation and filing of the Petition.” slip op. at 2
- Additional discoveryAdditional discovery, grantedAdditional discovery, deniedGranted in part
“However, Patent Owner argues that “Ward Dietrich is Chief Operating Officer of the Mangrove Partners Master Fund” and “has no public role in petitioner” (Motion 3 (citing Ex. 2002 at 2)) and that “Ward Dietrich held himself out as an ‘authorized person’ to sign the Power of Attorney on behalf of Petitioner” (Req. Reh’g 6 (quoting Motion 3)). Petitioner does not appear to refute this contention. Patent Owner further requests “[c]ommunications and documents or things . . . including assistance with identification of prior art, filing, funding, compensation, and/or preparation of any papers related to the Mangrove IPRs” and the identification of “persons and entities . . . involved in the preparation and filing of the petitions” and “persons and entities . . . who controlled or had the ability to control the preparation and filing of the petitions in the Mangrove IPRs.” Ex. 2034, 3; Ex. 2035, 3. In view of Ward Dietrich’s alleged role as an officer of Mangrove Partners and the named Petitioner, we grant Patent Owner’s motion for additional discovery for the limited purpose of providing communications and/or agreements pertaining to Ward Dietrich’s involvement in the preparation and filing of the Petition and/or control or ability to control the preparation and filing of the Petition.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“Patent Owner requests an “expanded panel that includes the Chief Judge” because, according to Patent Owner, an expanded panel “is necessary to secure and maintain uniformity” and to “clarify the standard for additional discovery.” Req. Reh’g 1–2, 8–9. Discretion to expand a panel rests with the Chief Judge, who, on behalf of the Director, may act to expand a panel on a suggestion from a judge or panel. AOL Inc. v. Coho Sicensing LLC, Case IPR2014-00771, slip op. at 2 (PTAB Mar. 24, 2015)(Paper 12)(informative). Patent Owner’s suggestion was considered by the Acting Chief Administrative Patent Judge, who declined to expand the panel.” slip op. at 3
NonePatents in suitUS 7,490,151
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.