- PTAB · Oct 23, 2023 · IPR2023-00669 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR on claims 1–6 and 9 for all petition grounds, finding a reasonable likelihood that Cisco would prevail on the asserted obviousness challenges.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 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) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1–6 and 9 in the ’708 patent on all challenges included in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Interim Procedure at 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)); see id. at 7, 9. The Interim Procedure also” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“factors to consider when deciding whether to exercise discretion under § 314(a) to deny institution based on a follow-on petition: (1) whether the same petitioner previously filed a petition directed to the same claims of the same patent; (2) whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it; (3) whether at the time of filing of the second petition the petitioner already received the patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review in the first petition; (4) the length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition; (5) whether the petitioner provides adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent; (6) the finite resources of the Board; and (7) the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not later than 1 year after the date on which the Director notices institution of review. Gen. Plastic, IPR2016-01357, Paper 19 at 9–10, 16.” slip op. at 17
- Parallel petitionsDenied
“Parallel Petitions Challenging the Same Patent. Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations. Two or more petitions filed against the same patent at or about the same time (e.g., before the first preliminary response by the patent owner) may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns. See 35 U.S.C. § 316(b). In addition, multiple petitions by a petitioner are not necessary in the vast majority of cases. To date, a substantial majority of patents have been challenged with a single petition. Nonetheless, the Board recognizes that there may be circumstances in which more than one petition may be necessary, including, for example, when the patent owner has asserted a large number of claims in litigation or when there is a dispute about priority date requiring arguments under multiple prior art references. . . .” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,302,708 - LG Electronics Inc. / LG Electronics USA, Inc. v. Image Processing Technologies, LLCInstitution deniedPTAB · May 11, 2023 · IPR2023-00104 · APJ Barbara A Benoit · IPR · Institution
The Board denied institution on claim 1, finding the petition presented the same or substantially the same art or arguments previously considered by the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“under 35 U.S.C. § 325(d) to deny institution of an inter partes review. See 37 C.F.R. § 42.4(a) (The Director delegated her authority to determine whether trial should be instituted to the Board.). Section 325(d) of Title 35 of the United States Code states, in relevant part: “In determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, 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.” We use a two-part framework for evaluating arguments 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.” slip op. at 12
- Prior constructionPrior construction adoptedDecided for petitioner
“applied the construction of “the [at least two] calculation units being configured to form a histogram representative of the parameter” (the “common parameter” limitation) as meaning “the histogram calculation units being configured to each form a histogram representative of at least one common parameter.” Ex. 1005 (IPR 336 Final Written Decision), 12– 14; see Ex. 1006 (IPR 1189 Decision Denying Institution), 9; Ex. 1007 (Reexam 056 Decision finding claim 1 patentable), 8.” slip op. at 11
Claim constructionDiscretionary denialcites Phillips · GrahamPatents in suitUS 6,959,293 - PTAB · Apr 12, 2023 · IPR2022-01528 · APJ Neil T Powell · IPR · Institution
The Board instituted IPR of claims 15–19 on all petitioned grounds, finding a reasonable likelihood that Yong anticipates claim 15.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. We institute an inter partes review of claims 15‒19 based on the grounds set forth in the Petition.” slip op. at 2
- Parallel petitionsDenied
“We do not agree with Patent Owner’s argument that Petitioner’s parallel filing of four petitions warrants denying all four petitions. Prelim. Resp. 7 (“Petitioner’s abuse of process in filing four petitions justifies discretionary denial of all of the petitions.”). Accordingly, given that Petitioner ranks the instant Petition “1,” we decline to deny institution in this proceeding. Additionally, under the circumstances presented, where Patent Owner does not dispute Petitioner’s observation that the ’435 patent has very long claims, we conclude it is not unreasonable for Petitioner to file multiple petitions. In our view, even if it were accurate, Patent Owner’s argument that the claims’ “narrowness” reflects quality examination does not detract from Petitioner’s argument that the length of the claims warrants more than one petition. Prelim. Resp. 6.” slip op. at 33
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Weighing the arguments and evidence, we determine that Petitioner has met its burden under 35 U.S.C. § 314 of demonstrating a reasonable likelihood that Yong qualifies as prior art. Hulu at 13. As Petitioner asserts, the KIPO logo and the multiple instances of publication number 10-2007-0087811 on Yong’s first page provide some evidence of authenticity. Ex. 1009, 1; Reply to Prelim. Resp. 3.” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL Petitioner contends that [a] person having ordinary skill in the art (“POSITA”) as of the claimed priority date would have had a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field or equivalent coursework or experience, and one to two years of experience with mobile device applications and retail POS systems. (Shamos ¶ 34.) More education can supplement practical experience and vice versa. (Id.) Pet. 12. Patent Owner does not dispute Petitioner’s description of a person of ordinary skill in the art. Prelim. Resp. 18. For purposes of deciding whether Petitioner has demonstrated a reasonable likelihood of prevailing, we adopt Petitioner’s definition of a person of ordinary skill in the art, which we find consistent with the ’435 patent and the asserted prior art.” slip op. at 11
Claim construction§ 102 anticipationDiscretionary denialcites PhillipsPatents in suitUS 10,803,435 - PTAB · Mar 9, 2023 · IPR2022-01293 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on claims 1–19 and all petition grounds, finding a reasonable likelihood of unpatentability based on Wu grounds and compelling merits despite Fintiv factors favoring denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“f) Conclusion – Initial Fintiv Analysis We have considered the circumstances and facts before us in view of the first five Fintiv factors. Because our analysis is fact driven, no single factor is determinative of our conclusion. Considering these five Fintiv factors, we determine that they favor a discretionary denial. 2. Assessment of the Compelling Merits As we have found that the first five Fintiv factors favor discretionary denial, we proceed to assess whether the record shows that Petitioner has presented a compelling unpatentability challenge.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [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.” 35 U.S.C. § 314(a) (2018). For the reasons below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. As discussed below, we have considered our whether to exercise our discretion to deny pursuant to 35 U.S.C. § 314(a) and determined not to exercise this discretion. Accordingly, we institute an inter partes review of the challenged claims on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s definition appears generally consistent with Petitioner’s definition, with the exception of requiring 3 years or more (as systems. For the purpose of institution, we adopt Petitioner’s provided definition for the level of skill of a person of ordinary skill in the art as reasonable and consistent with the prior art, which does not encompass an open-ended (“at least 3 years”) amount of experience, and which is supported by the testimony of Dr. Acampora. We would reach the same conclusions if we were to remove the open-ended terminology from Patent Owner’s definition and adopt that.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“Thus, the record does not support Patent Owner’s proposed construction of “radio resources,” that requires the RF carriers, CDMA codes, TDMA time slots or other information defining and describing the way data is being transmitted cannot include the user payload data that is transmitted. 4. Our Partial Construction For our present purposes, we do not need to completely construe the term “radio resources.” Nidec Motor Corp., 868 F.3d at 1017. However, a partial construction is required, and for the reasons discussed above, for this Decision, we construe “radio resources” to encompass RF carriers, CDMA codes, and TDMA time slots, including those in which underlying data is transmitted.” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,334,499 - Yantai Jereh Petroleum Equipment & Technologies Co., Ltd v. BJ Energy Solutions, LLCNo claims unpatentablePTAB · Feb 6, 2023 · PGR2021-00103 · APJ Patrick R Scanlon · PGR · Final written decision
Claims 1–28 were not shown unpatentable on any asserted ground; the Board found the prior art failed to establish key limitations and rejected the enablement and indefiniteness challenges.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In reply, Petitioner argues that the ’764 patent’s control system is not complex as there are no detailed algorithms, logic, or software. Pet. Reply 4. Instead, the control system merely raises or lowers power of the pumps in accordance with the demand HHP of the job design. Id. (citing Ex. 1036, 97:15–98:18, 98:21–99:25, 100:1–101:25, 102:2–7, 115:4–9, 115:24–116:4, 116:17–22; Ex. 1001, 5:2–6, 6:36–7:7, 10:4–64). According to Petitioner, this “rudimentary control concept” does not necessitate the higher skill level proposed by Patent Owner. Id. Petitioner further notes that Dr. Adnan testifies that “a mechanical engineer who has worked in the industry developing programming and control systems could fall within this definition,” and the person of ordinary skill in the art “is ‘just a specifier.’” Id. (quoting Ex. 2003 ¶ 22; Ex. 1036, 161:21–164:18). Based on our review of the record before us, particularly the ’764 patent’s description and Dr. Adnan’s testimony, we agree with Petitioner that the ordinary level of skill in the art does not require the high level of specialized knowledge of control systems suggested by Patent Owner. Moreover, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we apply Petitioner’s definition, although our conclusions with respect to obviousness would be the same if we were to apply Patent Owner’s definition.” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Based on the full record, we are not persuaded that Mr. Marscher is unqualified to serve as an expert in this proceeding. As noted above, a person of ordinary skill in the art is not required to have been a fracturing operator. Patent Owner’s proposed definition does not even require experience as a fracturing operator. See PO Resp. 20–21. Furthermore, Mr. Marscher testifies that he has extensive experience developing pumps for fracturing applications. Ex. 2027, 6:24–8:7. Mr. Marscher also testifies that he has experience with control systems relating to pumps and pumps units. Id. at 212:19–23. This testimony, as well as his declaration and curriculum vitae, show that Mr. Marscher has extensive education and experience in relevant fields. Ex. 1003 ¶¶ 8–17; Ex. 1004. Accordingly, we are not persuaded that Mr. Marscher’s qualifications or experience provide reason to discount the weight associated with Mr. Marscher’s testimony.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“In its Reply, Petitioner argues that the maximum power output value is the pump unit’s highest HHP output and one of ordinary skill in the art would have understood this value is the pump unit’s output power in intermittent duty. Pet. Reply 2–3 (citing Ex. 1003 ¶¶ 71–72, 123–124; Pet. 9–10; Ex. 1036, 64:17–67:13, 119:17–120:11, 124:7–24, 198:9–200:9, 221:8–222:15). However, even if Petitioner is correct that the “maximum power output value” is near or equivalent to a pump unit’s output power in intermittent duty, we are still not persuaded that the term “maximum intermittent power” should be tied to the “maximum power output value,” in conflict with the definition provided in the Specification. Petitioner also argues that Patent Owner’s proposed construction is indefinite. Pet. Reply 3. For the reasons discussed below (see supra § II.I.1), we determine that Petitioner has not shown by a preponderance of the evidence that the term “maximum intermittent power,” as defined in the Specification, is indefinite. Thus, based on the complete record before us, we maintain our prior construction of “maximum intermittent power” for this Final Written Decision.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“3. Additional Terms We determine that we need not expressly construe any other claim terms to resolve the parties’ disputes because doing so would have no effect on the analysis below. 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 13
Patent outcomesUS 10,815,764 not shown unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,815,764 - PTAB · Aug 24, 2022 · IPR2022-00399 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted IPR on claims 1–3, 6–8, 10, 12, 13, 15, and 18–20 on all proposed grounds, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)InstitutedDenied
“[W]here the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation at 4–5.3 “Compelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. at 4. On the current record, we agree with Petitioner that “the merits of the Petition are ‘compelling.’” Prelim. Reply 1. For the reasons explained below, we determine that the merits of Petitioner’s challenges to be compelling, and, therefore, we decline to exercise discretion under § 314(a) to deny institution. Additionally, even if we were to consider the Fintiv factors in detail, we would not exercise discretion to deny institution. As noted above, the district court litigation between the parties was recently transferred to the U.S. District Court for the Southern District of Texas. See Ex. 1205. That Court has scheduled an initial pretrial conference for September 22, 2022, during which the Court will set a schedule for initial preparation and enter a scheduling order for the proceeding. See Ex. 1204, 1–2. Thus, any argument that we should deny institution based on the timing of the district court litigation would be speculative at best. slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION For the foregoing reasons, we determine that the information presented establishes a reasonable likelihood that Petitioner would prevail in showing that at least one of the challenged claims of the ’049 patent is unpatentable. At this preliminary stage, we have not made a final determination with respect to the patentability of the challenged claims or any underlying factual and legal issues. See TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016) (noting that “there is a significant difference between a petitioner’s burden to establish a ‘reasonable likelihood of success’ at institution, and actually proving invalidity by a preponderance of the evidence at trial”). Accordingly, inter partes review is instituted as to all challenged claims and all proposed grounds of unpatentability. See SAS, 138 S. Ct. at 1359–60; see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”); CTPG 64 (“The Board will not institute on fewer than all claims or all challenges in a petition.”). IV. ORDER Accordingly, it is: ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–3, 6–8, 10, 12, 13, 15, and 18–20 of the ’049 patent is instituted with respect to all grounds set forth in the Petition; and” slip op. at 49
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party proffers a definition for any claim term. Pet. 2; Prelim. Resp. 2. For purposes of this Decision, and based on the record before us, we determine that no construction of any term is necessary. We note that this determination does not preclude the parties from arguing their proposed constructions of the claims during trial. Indeed, the parties are hereby given notice that claim construction, in general, is an issue to be addressed at trial. A final determination as to claim construction will be made at the close of the proceeding, after any hearing, based on all the evidence of record. The parties are expected to assert all of their claim construction arguments and evidence in the Petition, Patent Owner’s Response, Petitioner’s Reply, or otherwise during trial, as permitted by our rules. slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The level of ordinary skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” Id. (internal quotation marks and citation omitted). Petitioner contends that a person having ordinary skill in the art at the time of the invention (“POSITA”) would have a “range of qualifications” including “a bachelor’s degree in mechanical or chemical engineering and five years of work experience in the field of mechanical systems, motors, pumps, and/or oil field services.” Pet. 7 (citing Ex. 1003 ¶¶ 22–23). Patent Owner does not contest Petitioner’s proposed definition or offer a definition of its own. Prelim. Resp. 2. Based on the arguments presented and the cited references, we find Petitioner’s definition of the level of ordinary skill reasonable and for purposes of this Decision, adopt it as our own.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,395,049 - Apple Inc. v. Koss Corp.Institution deniedPTAB · Apr 14, 2022 · IPR2022-00188 · APJ Karl D Easthom · IPR · Institution
The Board denied institution of review of claims 1-22, 32-41, 47, and 49-62 under § 314(a), applying the General Plastic factors to Apple’s third petition; it also denied joinder.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“(‘Schrager’)—the primary reference that forms the basis of Grounds 1A–1D of the [’]680 Proceeding—before Bose filed IPR2021-00612 (a petition against related U.S. Patent No. 10,206,025) a day later on March 3, 2021.” Mot. 7. This contention does not specifically address what Apple knew or should have known at the time of filing of its second petition, which Apple filed after the filing of the Bose ’680 petition and after March 3, 2021. See id. In any event, Apple appears to admit that it knew of Schrader prior to filing its second petition on March 23, 2021. See id. In addition, Patent Owner introduces evidence that Apple knew or should have known about Schrager prior to filing of its first petition. See Prelim. Resp. 15 (showing “Petitioner had been aware of Schrager since at least 2014” (citing Ex. 2003; Ex. 2004) and identifying “over 100 times” Apple “had cited Schrager to the Office . . . in its own patent applications” (citing Ex. 2002)); 4 (citing Ex. 2002, 10–15 (web document listing Apple as assignee on multiple patents citing Schrager between 2014 and 2018)); Ex. 2003 (Information Disclosure Statement (IDS) filed by Apple listing Schrager in 2014); Ex. 2004 (IDS filed by Apple listing Schrager in 2016). Accordingly, this second General Plastic factor weighs in favor of exercising discretion to deny institution.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“D. Conclusion After a holistic review of the General Plastic factors and the arguments presented for and against the exercise of discretionary denial, and following Uniloc, we exercise discretion under 35 U.S.C. § 314(a) and deny institution.” slip op. at 15
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“IV DENIAL OF MOTION FOR JOINDER As stated above, the Director may join a party to an ongoing IPR only if the filed petition warrants institution under § 314. 35 U.S.C. § 315(c). Because we deny institution under § 314, we deny Petitioner’s Motion for Joinder. IV. ORDER Accordingly, it is ORDERED that, pursuant to 35 U.S.C. § 314(a), the Petition is denied; and FURTHER ORDERED that the Motion for Joinder is denied.” slip op. at 15
Discretionary denialPatents in suitUS 10,469,934 - PTAB · Apr 13, 2022 · IPR2022-00229 · APJ Eric C Jeschke · IPR · Institution
The Board denied institution for claims 1 and 46 under § 314(a), finding that the Fintiv factors and parallel litigation supported discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“court has stayed or may stay the proceeding pending inter partes review. “A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” See Fintiv, Paper 11 at 6.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). Section 314(a) of Title 35 of the United States Code provides that inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the evidence and arguments in the Petition as well as the evidence and arguments in the Preliminary Response, for the reasons below and based on the particular facts of this case, we exercise our discretion under 35 U.S.C. § 314(a) and decline to institute inter partes review of the ’040 patent.” slip op. at 2
Discretionary denialPatents in suitUS 7,464,040 - Apple Inc. v. Koss CorporationInstitution deniedPTAB · Apr 4, 2022 · IPR2022-00053 · APJ Norman H Beamer · IPR · Institution
The Board denied institution under § 314(a) based on the General Plastic factors and denied Apple’s motion to join IPR2021-00612.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“C. Conclusion After a holistic review of the General Plastic factors and the arguments presented for and against the exercise of discretionary denial, we conclude that the factors weigh in favor of denying institution of the proceeding. On balance and in view of the policy goals articulated in General Plastic, we conclude that it is appropriate here to exercise our discretion under 35 U.S.C. § 314(a) to deny the Petition.” slip op. at 14
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“IV. DENIAL OF MOTION FOR JOINDER As stated above, the Director may join a party to an ongoing IPR only if the filed petition warrants institution under § 314. 35 U.S.C. § 315(c). Because we are exercising discretion to deny institution under Section 314, we deny Petitioner’s Motion for Joinder.” slip op. at 14
Discretionary denialPatents in suitUS 10,206,025 - Apple Inc. v. Rfcyber Corp.Institution deniedPTAB · Mar 24, 2022 · PGR2022-00003 · APJ Patrick R Scanlon · PGR · Institution
The Board denied Apple’s untimely joinder motion and denied institution because the petition was filed outside the nine-month PGR filing period.
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“motion under§ 42.22, no later than one month after the institution date of any post-grant review for which joinder is requested.” 37 C.F.R. § 42.222(b). Petitioner’s Motion for Joinder was filed October 20, 2021, which is more than one month after the Board instituted post-grant review in the Google PGR on July 23, 2021. Petitioner, however, argues that special circumstances warrant that the Board exercise its discretion under 37 C.F.R. § 42.5 to waive the one-month joinder period. Mot. 3–6.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“B. Eligibility for Post-Grant Review under 35 U.S.C. § 321 Institution of post-grant review is barred when a petition is filed more than 9 months after the challenged patent is granted. 35 U.S.C. § 321(c). The ’046 patent issued on March 24, 2020 (see Ex. 1001, code (45)), and the Petition in this proceeding was accorded a filing date of October 20, 2021 (see Paper 1). Thus, the Petition was filed outside the 9-month statutory period for requesting post-grant review under § 321(c). Accordingly, in view of our decision to deny Petitioner’s Motion for Joinder, we deny the Petition because it was not filed within the time limit imposed under 35 U.S.C. § 321(c).” slip op. at 8
Discretionary denialPatents in suitUS 10,600,046
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.