- Trend Micro, Inc. v. Open Text Inc.Institution deniedPTAB · Nov 6, 2023 · IPR2023-00677 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution because Trend Micro did not show a reasonable likelihood that claims 1–19 were obvious over Rockwood and Xie.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“4. Summary In view of the foregoing, we determine that Petitioner has not demonstrated a reasonable likelihood of showing that independent claims 1, 8, and 16 would have been obvious over Rockwood and Xie. Claims 2–7, 9–15, and 17–19 depend from claims 1, 8, or 16. Accordingly, we also determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion as to these dependent claims. IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated on the record before us a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims of the ’045 patent. Therefore, we do not institute trial.10 V. ORDER For the reasons given, it is ORDERED that the Petition is denied and no trial is instituted.” slip op. at 23
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“10 Because we deny the Petition on the merits, we do not reach Patent Owner’s request that we exercise our discretion to deny the petition based on the state of the related litigation. See Prelim. Resp. 2–19.” slip op. at 23
- BurdenNot shown unpatentable
“For these reasons, we find Petitioner’s first mapping insufficient to establish a reasonable likelihood that Petitioner can prove the challenged claims unpatentable in view of Rockwood and Xie.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We additionally find it unclear which reference Petitioner relies on for the correlating. It appears that Petitioner finds the correlating in Rockwood (the reference with the attacker profile); but if Rockwood is intended to provide the correlating, it is unclear what role Xie has in Petitioner’s proposed combination. See Pet. 17–18. We further find that Petitioner does not adequately describe how these references might be combined. Rockwood describes a system that identifies attacks at a network edge as they occur,8 whereas Xie’s system looks for similar changes across different hosts within a network over multiple days. There is insufficient explanation of how Xie’s correlating technique would be beneficial in a system like that of Rockwood.” slip op. at 18
§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 9,578,045 - Google LLC v. Parus Holdings, Inc.All claims unpatentablePTAB · Nov 6, 2023 · IPR2022-00805 · APJ Patrick M Boucher · IPR · Final written decision
Claims 1–26 are unpatentable: claims 1–26 as obvious over Wise and Woods, claims 1–25 over Wise and Dasan, and claim 26 over Wise, Dasan, and Uppaluru.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Petitioner proposes that a person of ordinary skill in the art “would have had a Bachelor’s degree in electrical engineering, computer science or a related field, and at least two years of experience with voice interfaces and information processing.” Pet. 6–7. Petitioner adds that “[m]ore education could substitute for less experience, and vice versa.” Id. Mr. Lipoff supports this articulation, and Patent Owner makes the same proposal. See Ex. 1002 ¶ 77; PO Resp. 1. Because we find the parties’ agreed proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by Mr. Lipoff’s testimony, we adopt it for this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). “Petitioner does not believe that any express constructions are necessary” to resolve the parties’ dispute, and Patent Owner agrees that “claim construction is unnecessary.” See Pet. 7; PO Resp. 1. On the record before us, we do not find it necessary to construe any term for this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Expert testimonyPatent owner expert discountedDecided for petitioner
“Mr. Occhiogrosso made similarly inconsistent statements on this point on cross-examination. For example, when asked whether the claim requires that the “content-descriptor file be a different file,” Mr. Occhiogrosso responded that “[i]n my opinion, there’s nothing inherent that says it has to be stored in the same physical data file on the same storage medium.” Ex. 1057, 68:11–23. But when asked, “Could the content-descriptor file be one of the web pages that make up a website?” he responded, “In my opinion, no.” Id. at 70:9–13. Notwithstanding such inconsistent statements, we find that, taken as a whole, Mr. Occhiogrosso’s testimony reflects an opinion contrary to that of Mr. Lipoff, namely the recited “content-descriptor file” must be a file separate and distinct from an HTML web page. The Federal Circuit has “viewed extrinsic evidence in general as less reliable than the patent and its prosecution history in determining how to read claim terms,” e.g., because expert testimony “is generated at the time of and for the purpose of litigation and thus can suffer from bias that is not present in intrinsic evidence.” Phillips, 415 F.3d at 1318. In this instance, although we discern certain (but contrary) positions in the experts’ opinions on this point, the inconsistencies in their cross-examination testimony limit our confidence in those opinions. We accordingly give greater weight to the intrinsic evidence, which more strongly supports Petitioner’s position. We accordingly determine that Petitioner’s showing with respect to this limitation is sufficient.” slip op. at 39
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Patent Owner disputes Petitioner’s reasoning because Petitioner’s “motivation to combine argument is centered on the periodic retrieval of information from an information source (webpage) and not on an information source that is periodically updated,” as the claim recites. PO Resp. 24. Nevertheless, Patent Owner concedes that Petitioner “establishes . . . that the Wise website information sources are periodically updated,” which Petitioner correctly observes “is all that the claim requires.” Id.; Reply 9. Patent Owner reasons that there is no motivation to combine teachings from the two references because “the Wise system alone already provides the most up-to-date and complete information to the user.” PO Resp. 27. But the Federal Circuit has criticized such an argument as “reasoning [that] belies its conclusion”: “[t]hat [two prior art references] address the same problem and that [one of the references] was a known way to address that problem is precisely the reason that there’s a motivation to combine under KSR and [Federal Circuit] precedent.” Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380 (Fed. Cir. 2023) (quoted in Pet. 10– 11). This is the “known-technique” rationale, in which “[t]here is a motivation to combine when a known technique ‘has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way.” Id. at 1380–1381 (citing KSR, 550 U.S. at 417). Implementing periodic updating of information sources as taught by Dasan would be within the skill of an ordinary artisan to implement in Wise’s system. We accordingly determine that Petitioner articulates sufficient reasoning, supported by rational underpinning, to effect the combination it proposes and to meet the first aspect of the preamble.” slip op. at 19
Patent outcomesUS 9,769,314 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,769,314 - Nokia Of America Corporation v. Alexander Soto And Walter SotoInstitution deniedPTAB · Nov 3, 2023 · IPR2023-00680 · APJ Thu A Dang · IPR · Institution
The Board denied institution for all challenged claims under § 325(d), finding substantially the same art and arguments had been presented to the Office and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“5. 35 U.S.C. § 325(d) Conclusion We conclude that (1) substantially the same art was previously presented to the Office, and (2) Petitioner has not demonstrated that the Office erred. We therefore conclude that it is appropriate to exercise discretion under 35 U.S.C. § 325(d) to deny the Petition.” slip op. at 28
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“III. CONCLUSION After considering the evidence and arguments presented in the Petition and Preliminary Response, we determine that, for each of Petitioner’s challenges, it is appropriate to exercise our discretion under 35 U.S.C. § 325(d) to deny the Petition with respect to those grounds. We accordingly exercise that discretion for the Petition as a whole and deny institution of an inter partes review.3 IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 29
Discretionary denialPatents in suitUS 9,887,795 - Nokia Of America Corporation v. Alexander Soto And Walter SotoInstitution deniedPTAB · Nov 3, 2023 · IPR2023-00681 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution under § 325(d), finding substantially the same art had been presented to the Office and Petitioner had not shown material Office error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“In light of these similarities, we find that the Petition relies on art and arguments that are substantially the same as previously evaluated by the Office.” slip op. at 23
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“III. CONCLUSION For the foregoing reasons, we exercise discretion under 35 U.S.C. § 325(d) to deny institution of an inter partes review.5 IV. ORDER In consideration of the foregoing, it is ORDERED that the Petition is denied, and no trial is instituted. 5 Because we deny the Petition under 35 U.S.C. § 325(d), we do not reach Patent Owner’s request that we deny the Petition under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 13–14 (PTAB Mar. 20, 2020) (precedential). See Prelim. Resp. 53–60. Nor do we reach the parties’ merits arguments.” slip op. at 26
Discretionary denialPatents in suitUS 10,263,723 - Nokia Of America Corporation v. Alexander Soto And Walter SotoInstitution deniedPTAB · Nov 3, 2023 · IPR2023-00682 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution under § 325(d), finding substantially the same art had been presented to the Office and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”), the Board applied a two-part framework in considering whether to exercise discretion to deny institution under § 325(d): “(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics at 8.” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“D. Conclusion We conclude that (1) substantially the same art was previously presented to the Office, and (2) Petitioner has not demonstrated that the Office erred. We therefore conclude that it is appropriate to exercise discretion under 35 U.S.C. § 325(d) to deny the Petition. III. CONCLUSION For the foregoing reasons, we exercise discretion under 35 U.S.C. § 325(d) to deny institution of an inter partes review.5 IV. ORDER In consideration of the foregoing, it is ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 25
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“5 Because we deny the Petition under 35 U.S.C. § 325(d), we do not reach Patent Owner’s request that we deny the Petition under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 13–14 (PTAB Mar. 20, 2020) (precedential). See Prelim. Resp. 53–60. Nor do we reach the parties’ merits arguments.” slip op. at 26
Discretionary denialPatents in suitUS 10,771,181 - Micron Technology, Inc. / Micron Semiconductor Products, Inc. et al. v. Netlist, Inc.No claims unpatentablePTAB · Oct 30, 2023 · IPR2022-00744 · APJ Daniel J Galligan · IPR · Final written decision
Claims 1–3, 5, 6, 8–10, and 12–14 were not shown unpatentable because Halbert did not disclose the claimed ranks operating at the specified data rate.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not provide a different assessment of the level of ordinary skill, but Dr. Przybylski states that an individual with the level of experience identified by Petitioner “would have less knowledge and familiarity” than presumed by Petitioner’s definition. Ex. 2003 ¶ 46. Dr. Przybylski, however, provides no further discussion explaining this apparent disagreement with Petitioner, nor does he set forth what level of knowledge and familiarity a person of ordinary skill in the art would have had. Based on the complete trial record, we determine that Petitioner’s proposed skill level is consistent with the level of ordinary skill evidenced by the ’314 patent and the asserted prior art, and we adopt that skill level with the exception of the phrases “at least,” which introduce vagueness as to the amount of experience.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We disagree with Petitioner’s interpretation. Taking Petitioner’s point that “‘specified data rate’ means only that the data rate is specified in some way” (Pet. Reply 4), we do not see how, once the rate is specified, claim 1’s later recitations of “the specified data rate” could refer to any other rate, as Petitioner’s arguments suggest. Petitioner argues that “it is clear that the ‘specified data rate’ that provides antecedent basis for later recitations of that term is merely the data rate specified for ‘communicat[ing] data’ between the ‘memory module’ and the external ‘memory controller of the computer (alteration by Petitioner). We agree with this statement, and later recitations of “the specified data rate,” therefore, refer to the data rate that is so specified. Petitioner provides no persuasive argument to support its position that later recitations of “the specified data rate” could be satisfied by data rates that are not the “specified data rate.”” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“PO Resp. 19; see also Ex. 2003 ¶¶ 68–72 (Dr. Przybylski’s testimony explaining this annotated figure). Halbert’s Figure 5 is a timing diagram for two consecutive read operations (Ex. 1005 ¶¶ 16, 37), and Patent Owner includes annotations to show each of ranks 140 and 142 outputting data onto their respective data busses at half the rate that data are output from data interface circuit 120 on the DQ data line. In particular, Halbert explains that each of ranks 140 and 142 is “capable of performing m-bit-wide data transfers.” Ex. 1005 ¶ 30. On a read command, rank 140 sends m-bit-wide data to bi-directional data register 126 on line RDQ0 at the same time that rank 142 sends m-bit-wide data to bi-directional data register 128 on line RDQ1, as shown in Figure 5 between T7n and T8n. Ex. 1005 ¶¶ 31–32, 39. Halbert discloses that register 126 or from register 128 to output to buffer 122, which are then output on line DQ. Ex. 1005 ¶ 33. Halbert explains that “[d]ata is serialized from the data registers onto the memory data bus by reading 2m bits into the data registers during one memory device read cycle, and then driving these bits, m at a time, through MUX 124.” Ex. 1005 ¶ 33. As shown in Halbert’s Figure 5, over one clock cycle (T7n–T8n), each of ranks 140 and 142 outputs one piece of m-bit-wide data, and over one clock cycle (T8–T9), those two pieces of m-bit-wide data are output on line DQ to the system memory data bus. Halbert explains that the second read operation proceeds in the same fashion as the first and that “[t]he net result is that the memory data bus transfers 4m bits of data in two memory bus clock cycles (four mbit transfers), with only two data accesses performed at each memory device on the module.” Ex. 1005 ¶ 42. Thus, Halbert’s memory module outputs data to the system memory data bus at twice the rate that each of ranks 140 and 142 outputs data. See Ex. 2003 ¶¶ 68–73 (Dr. Przybylski’s credible testimony explaining Halbert’s data rates).” slip op. at 11
Patent outcomesUS 10,489,314 not shown unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 10,489,314 - Micron Technology, Inc. / Micron Semiconductor Products, Inc. et al. v. Netlist, Inc.No claims unpatentablePTAB · Oct 30, 2023 · IPR2022-00745 · APJ Daniel J Galligan · IPR · Final written decision
Claims 15–20 and 22–33 were not shown unpatentable because Petitioner did not adequately explain how the proposed combination would use active and non-active chip select signals.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“have been someone with an advanced degree in electrical or computer engineering and at least two years working in the field, or a bachelor’s degree in such engineering disciplines and at least three years working the field,” and Petitioner identifies particular knowledge that a person of ordinary skill in the art would have had. Pet. 3–4 (citing Ex. 1003 ¶ 52).” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“C. Claim Construction We need not construe expressly any claim terms to decide the issues before us. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“As outlined above, Petitioner presents reasoning as to why a person of ordinary skill in the art would have included chip select signals in Halbert’s Figure 4 device. See Pet. 20–31 (addressing limitations 15.4 and 15.5). But Petitioner’s contentions about the use of chip select signals do not address sufficiently how Halbert’s Figure 4 device would operate with active and non-active chip select signals, as recited in claim 15. Indeed, as Patent Owner points out (PO Resp. 12), Petitioner’s contentions for limitation 15.6 only rely on Halbert’s Figure 2 prior art device. See Pet. 31–32. Petitioner’s lack of explanation as to how active and non-active signals would affect the operation of Halbert’s Figure 4 device is significant, as explained below.” slip op. at 12
Patent outcomesUS 10,489,314 not shown unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 10,489,314 - Telefonaktiebolaget LM Ericsson / Ericsson Inc. et al. v. K.Mizra LLCNo claims unpatentablePTAB · Oct 26, 2023 · IPR2022-00730 · APJ Iftikhar Ahmed · IPR · Final written decision
Claims 22, 23, 30, 32, and 33 were not shown unpatentable because Pakzad did not disclose the claimed combined macro and femto timing information, and the obviousness grounds did not address that limitation.
RulingsFinal written decision- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“information from all three types of sources together or at the same time. Patent Owner argues that “a [person of ordinary skill in the art] would understand that this passage in Pakzad ‘any one of several sources’ confirms that Pakzad only uses a single signal source at a time.” PO Resp. 34 (citing Ex. 2002 ¶ 69). Dr. Chrissan testifies that he understands this disclosure to mean that “Pakzad teaches a single signal source at a time, not more than one.” Ex. 2002 ¶ 70 (emphasis added). We find Patent Owner’s interpretation, supported by Dr. Chrissan’s testimony, to be a reasonable reading of Pakzad’s disclosure. Dr. Chrissan further testifies that “Pakzad’s invention is about using both a course [sic] routing graph and fine routing graph to make computation of a motion model (e.g., a particle filter) more efficient,” and “Pakzad was not directed to leveraging a heterogenous network by incorporating both macro and femto cells concurrently.” Id. ¶ 68. We agree with Dr. Chrissan’s explanation for the lack of clear disclosure in Pakzad about which measurements Pakzad uses with its particle filter.” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art “would have been someone with at least (1) a bachelor’s degree in electrical engineering, computer engineering/science, or a related scientific field, and (2) either (a) a master’s degree in electrical engineering, computer engineering/science, or a related filed, or (b) two or more years of work or research experience in wireless networking and/or computing.” Pet. 21 (citing Ex. 1009 ¶ 23). Patent Owner does not dispute Petitioner’s definition for a person of ordinary skill in the art, but adds that the person of ordinary skill in the art “may alternatively have additional years of practical and relevant work or research experience as substitution for less or different technical education, and vice versa.” See PO Resp. 17. We determine that the level of ordinary skill proposed by Petitioner is consistent with the ’819 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We adopt Petitioner’s proposed level in deciding the patentability of the challenged claims.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“claim 30 should be construed “to refer to the previously recited ‘femto base station timing information,’ ‘macro base station timing information,’ and ‘femto base station position information.’” PO Resp. 18. Patent Owner argues that its proposed construction is “based on at least three aspects of the intrinsic record: (1) the claim language itself; (2) guidance from the specification defining the disputed term; and (3) illustrative embodiments confirming the meaning of the disputed term.” Id. (citing Ex. 2002 ¶ 47). Specifically, Patent Owner contends that “the specification describes two embodiments that further confirm to a [person of ordinary skill in the art] that ‘the base station information’ consists of the [three types of information previously] recited.” Id. at 19–23 (citing Ex. 1001, 19:29–33, 20:50–54, Figs. 8, 9; Ex. 2002 ¶¶ 47–55).” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“More importantly, anticipation requires that the four corners of a single, prior art document describe every element of the claimed invention, and we are not persuaded that Pakzad describes the combinational use of the two different types of timing information as claimed. See Xerox Corp. v. 3Com Corp., 458 F.3d 1310, 1322 (Fed. Cir. 2006) (citing Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000)). The Federal Circuit has made it clear that “it is not enough that the prior art reference discloses part of the claimed invention, which an ordinary artisan might supplement to make the whole, or that it includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Net MoneyIN, 545 F.3d at 1371 (citation omitted) (emphasis added). In Net MoneyIN, although a prior art reference described two protocols, which when taken together, disclosed “all five links arranged or combined in the same way as claimed,” the Federal Circuit determined that the reference did not anticipate the claim. See id. Rather, the Federal” slip op. at 28
Patent outcomesUS 8,958,819 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Enfish · Phillips · KSR · GrahamPatents in suitUS 8,958,819 - PTAB · Oct 26, 2023 · IPR2023-00883 · APJ Daniel J Galligan · IPR · Institution
The Board instituted IPR on the challenges to claims 1–20 and joined Micron as a petitioner in IPR2022-01427, with its role limited as stated in its motion.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As discussed above, Petitioner’s Motion is unopposed by Samsung and Patent Owner. Petitioner argues that, if joinder is granted, it will take an “understudy” role and would only assume a primary role if Samsung ceases participation in the proceeding. Motion 6–9. In the “understudy” role, Petitioner represents, among other things, that it “will not be making any substantive filings,” that it “agrees to be bound by all filings by Samsung . . . except for filings regarding termination and settlement,” and that it “will not cross-examine or defend any witness at deposition.” Motion 7–8. We have reviewed the Motion, and we determine that it is appropriate under these circumstances to join Petitioner as a party to the 1427 IPR.” slip op. at 4
NonePatents in suitUS 9,318,160 - PTAB · Oct 26, 2023 · IPR2023-00882 · APJ Daniel J Galligan · IPR · Institution
The Board instituted IPR on all petition challenges and joined Micron as a petitioner in IPR2022-01428, subject to its stated understudy role.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“1 Although Petitioner requests that we “join this IPR with the [1428] IPR” (Motion 2), the joinder statute does not permit this. See Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1335 (Fed. Cir. 2020) (“[W]e hold that the clear and unambiguous meaning of § 315(c) does not authorize joinder of two proceedings . . . .”). Thus, we treat Petitioner’s Motion for Joinder as a request to be joined as a petitioner to the 1428 IPR, and, for the reasons discussed herein, we grant that request.” slip op. at 2
NonePatents in suitUS 8,787,060
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.