- PTAB · Apr 9, 2024 · IPR2023-01272 · APJ Scott B Howard · IPR · Institution
Instituted inter partes review of claims 1–6 on all asserted grounds because the Petition showed a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“d) Conclusion Regarding Claim 3 Based on the current record, there is a reasonable likelihood that Petitioner will prevail in demonstrating that claim 3 is unpatentable as obvious in view of Stewart and 3GPP-Summary 4. Claims 1, 2, and 4–6 Because Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’486 patent is unpatentable, we institute on all grounds and all claims raised in the Petition. See 37 C.F.R. § 42.108(a). Therefore, at this stage of the proceeding, it is not necessary for us to provide an assessment of every challenge raised by Petitioner, especially, as in this case, when Patent Owner does not separately argue” slip op. at 20
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“comments received from stakeholders in response to a Request for Comments. Interim Fintiv Guidance 2. For example, “the PTAB will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Fintiv Guidance 7. Petitioner filed a Sotera-type stipulation. Ex. 1300. Specifically, Petitioner stipulates that if we institute this proceeding, “Petitioner will not pursue in Pantech Corp. v. LG Elecs. Inc., No. 5:22-cv-00113 (E.D. Tex.), the grounds of invalidity asserted in the IPR, or any other ground that was raised or could have reasonably been raised in the IPR.” Id. In view of the Sotera-type stipulation, we decline to exercise our discretion to deny institution. Interim Fintiv Guidance 7–8.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“implementation of incremental redundancy for HSDPA” using a “new ‘ringbuffer’ scheme.” Ex. 1007, §§ 1, 2.4. 3GPP-Summary describes Motorola’s proposed improvement as interleaving separately systematic bits and parity bits and that the separately interleaved bits (systematic bits followed by parity bits) are then stored in a buffer. Id. § 2.4 (“The systematic bits and the parity bits from the R=1/3 mother code are interleaved separately. A transmitter buffer is defined, where the interleaved systematic bits are stored, followed by the interleaved parity bits.”). When combined with Stewart, the output of the different interleavers (which in Stewart are for the systematic bits, first parity bit stream, and the second parity bit stream (Ex. 1005, 4:14–19, 4:25–29, Fig. 4)) are buffered in a single buffer prior to transmission. See Ex. 1003 ¶¶ 175–178.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“3GPP-Summary teaches eight different redundancy versions: “Eight different initial positions are defined in the buffer, giving at maximum eight (non-self-decodable) redundancy versions.” Ex. 1007 § 2.4. The eight different redundancy versions are defined by their different initial positions. Id. 3GPP-Summary further teaches that “at transmission, bits are sequentially transmitted from the buffer, starting at the selected initial position” and that “(wrap around is used at the end of the buffer).” Id. A person having ordinary skill in the art would have understood, based on specific initial positions, that either systematic bits would have been selected the initial starting point (or redundancy version): So, a person of ordinary skill in the art would have understood that if the “starting point” is located in the area of the “transmitter buffer” that stores the “interleaved systematic bits,” systematic bits are read out from the “transmitter buffer” for transmission before the parity bits are read out. If the “starting point,” on the other hand, is located in the area of the “transmitter buffer” that stores the “interleaved parity bits,” the parity bits are read out from the “transmitter buffer,” and then reading wraps around to the systematic bits. Accordingly, 3GPP-Summary teaches reading out for transmission systematic bits followed by interleaved parity bits (i.e., selecting parity bits over systematic bits) and vice versa (reading out for transmission interleaved parity bits and wrapping out to read out interleaved systematic bits, i.e., selecting systematic bits over parity bits). Ex. 1003 ¶ 182 (citing Ex. 1007 § 2.4).” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,065,486 - PTAB · Mar 8, 2024 · IPR2023-01271 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR of claims 1 and 2 on all petitioned grounds, finding a reasonable likelihood that Lemay alone or with Alfke renders the claims unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“under 37 C.F.R. § 42.4(a), we may institute an inter partes review when “the information presented in the petition . . . and any 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); see also 37 C.F.R. § 42.108(c) (2023). Applying that standard, we institute an inter partes review of all the challenged claims of the ’839 patent for the reasons explained below. This is a preliminary decision, and we will base our final written decision on the full trial record.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party suggests that any claim term departs from its ordinary and customary meaning, and we are aware of no evidence at this stage to suggest otherwise. And for our decision, we do not need to construe any of the terms explicitly. 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))). We discuss the claim terms below in the context of the prior art.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“limitations 1.e(i)–(ix) in view of Alfke. LG sufficiently demonstrates the motivation to combine Lemay with Alfke because Lemay specifically teaches that Alfke’s message-processing disclosures are applicable to the embodiments in Lemay. Ex. 1005, 11:33–41; Pet. 5 n.2; Ex. 1003 ¶ 57. Alfke likewise specifically teaches that its disclosures are applicable to Lemay’s user interface. Ex. 1006, 11:4–12. Pantech also argues that LG’s obviousness arguments based on Lemay are deficient because they are conclusory, provide insufficient rationale, and incorporate material by reference from Dr. Madisetti’s declaration. Prelim. Resp. 28–30. We disagree that LG’s arguments are deficient in this respect because, to the extent (if any) that Alfke is not incorporated by reference into Lemay, the motivation to combine the references appears to be set forth in the references themselves.” slip op. at 19
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,283,839 - PTAB · Mar 6, 2024 · IPR2024-00073 · APJ John F Horvath · IPR · Institution
The Board instituted inter partes review of claims 1–22 on all grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Upon consideration of the Petition, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim, and we institute inter partes review of all challenged claims on all grounds raised.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.” Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). At this stage of the proceeding, we find Petitioner’s assessment of the level of skill in the art to be reasonable and commensurate with the problems and solutions disclosed in the prior art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Accordingly, for purposes of this Decision, we adopt Petitioner’s description as our own.3 slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). Under this standard, a claim is construed “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.” Id. Only claim terms which are in controversy need to be construed and only to the extent necessary to resolve the controversy. However, “[t]he 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) (internal citations omitted).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“configured to draw the peak current through its LEDs at a duty cycle substantially corresponding to a duty cycle of the PWM brightness control signal applied to it but out of phase with the other current set circuits. Ex. 1001, 6:48–54. At this stage of the proceeding, Petitioner reasonably demonstrates how Thomas’s current set circuits meet this limitation. Pet. 30–32 (citing Ex. 1005, 3:24–63, 4:66–5:20, Figs. 1, 3). Figure 3 of Thomas illustrates that each of the PWM control signals E–H generated by Thomas’s PWM controller (PWM generator 17 and delay means 16) has the same duty signals E–H is coupled to a different current set circuit (resistor 3) through a respective one of switches 5–8, such that each current set circuit draws current through a respective LED group 9–12 at the same duty cycle, but out of phase with the other current set circuits. Ex. 1005, Figs. 1, 3. At this stage of the proceeding, for the reasons discussed above, we find Petitioner has demonstrated a reasonable likelihood of showing all the limitations of claim 1 are taught by Thomas and that claim 1 is anticipated by Thomas. Claim 14 is substantially similar to claim 1, reciting a method for driving a plurality of LEDs in a plurality of parallel paths that is substantially similar to the method the LED driver of claim 1 is configured to perform. Compare Ex. 1001, 7:51–8:8, with id. at 6:35–54. Petitioner’s analysis of claim 14 refers back to its analysis of claim 1. Accordingly, at this stage of the proceeding, Petitioner demonstrates a reasonable likelihood of showing claim 14 is anticipated by Thomas.” slip op. at 14
Claim construction§ 102 anticipationPatents in suitUS 7,843,148 - Opticis Co., Ltd. v. Inneos LLCInstitutedPTAB · Feb 2, 2024 · IPR2023-01256 · APJ Terry J Owens · IPR · Institution
The Board instituted review of claims 1, 2, 6, 7, and 9 on all five §103 grounds in the petition.
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. 37 C.F.R. § 42.4(a) (2023). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” A decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. 37 C.F.R. § 42.108(a) (implemented as a result of SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018)). Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim. See 35 U.S.C. § 314(a). For the reasons explained below, we institute an inter partes review of all challenged claims.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Ground 1 is based upon obviousness, not anticipation. Patent Owner’s argument is not well taken because it does not address what fixing Kurita’s single optical fiber (40) in place.” slip op. at 13
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedInstituted
“The purpose of requiring reasonable diligence by the first to conceive the invention but second to reduce to practice is to assure that the invention was not abandoned or unreasonably delayed by the first inventor during the period after the second inventor entered the field.” Brown v. Barbacid, 436 F.3d 1376, 1379 (Fed. Cir. 2006). “A patent owner need not prove the inventor continuously exercised reasonable diligence throughout the critical period; it must show there was reasonably continuous diligence.” Perfect Surgical Techniques, Inc. v. Olympus Am., Inc., 841 F.3d 1004, 1009 (Fed. Cir. 2016). “[T]here need not necessarily be evidence of activity on every single day if a satisfactory explanation is evidenced.” Monsanto Co. v. Mycogen Plant Sci., Inc., 261 F.3d 1356, 1369 (Fed. Cir. 2001). Thus, Patent Owner must provide an explanation that is satisfactory to indicate that the relied-upon computer modeling and prior art search update show reasonably continuous diligence from November 10, 2003 to January 15, 2004. Patent Owner has provided some evidence to show diligence from November 10, 2003 to January 15, 2004, but Patent Owner has not explained why, under the facts of this case, the evidence is sufficient to establish reasonably continuous diligence for the period before Bhandarkar’s effective filing date to the date of constructive reduction to practice. We have reviewed Petitioner’s contentions as to how Bhandarkar teaches the subject matter of the claims, and we find them sufficiently persuasive at this stage. Based upon the above-discussed evidence and that the optical combiner claimed in claims 1, 2, 6, 7, and 9 would have been obvious to one of ordinary skill in the art over Bhandarkar. slip op. at 26
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“institution under 35 U.S.C. § 314(a) because the factors identified in Apple, Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”), weigh in favor of denying institution in view of the district court litigation (Prelim. Resp. 68–69). A Memorandum from Director Vidal titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (USPTO June 21, 2022) (“Interim Procedure”)2 provides that “the PTAB will not deny institution of an IPR or PGR under Fintiv . . . where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition” (Interim Procedure 9). Petitioner has submitted such a stipulation (Paper 11). Thus, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 27
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 7,198,416 - PTAB · Jan 3, 2024 · IPR2023-01142 · APJ Daniel J Galligan · IPR · Institution
The Board instituted review on all challenges to claims 1–29 and granted Micron’s motion to join IPR2023-00455 as a petitioner.
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
“The statute governing inter partes review joinder states the following: JOINDER.—If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter parties review under section 314. 35 U.S.C. § 315(c).” slip op. at 2
NonePatents in suitUS 9,858,215 - PTAB · Jan 3, 2024 · IPR2023-01141 · APJ Daniel J Galligan · IPR · Institution
The Board instituted review of claims 1–15 on the asserted grounds and granted Micron’s motion to join IPR2023-00454 as a petitioner.
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
“The statute governing inter partes review joinder states the following: JOINDER.—If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter parties review under section 314. 35 U.S.C. § 315(c).” slip op. at 2
NonePatents in suitUS 11,093,417 - Intel Corporation v. Masahiro IidaInstitutedPTAB · Nov 22, 2023 · IPR2023-00864 · APJ Jean R Homere · IPR · Institution
The Board instituted IPR of claims 1–16 on all proposed grounds, finding a reasonable likelihood of unpatentability over Fujii and Betz and over Fujii, Betz, and Chow.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on the current record, and for the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not contest Petitioner’s proffered definition of the level of ordinary skill in the art or offer a definition of its own. See PO Prelim. Resp. 18 (“For purposes of this preliminary response only, the Patent Owner applies Petitioner’s definition.”). We find Petitioner’s proposal is consistent with the problems and solutions disclosed in the ’737 patent and prior art of record, and adopt it as our own for purposes of this Decision. See, e.g., In re GPAC Inc., 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record).” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“In a programmable logic circuit device, the number of bits M of input signal for the logic circuit that can be implemented corresponds to the number of bits of the address of memory composing the LUT, and the number of bits N of output signal corresponds to the number of output bits of the memory. Thus, a logic circuit that can be implemented in one LUT is an arbitrary logic circuit of M inputs and N outputs. Such a LUT is denoted in the present specification as M-input N-output LUT. Ex. 1001, 1:46–54. As shown in FIG. 6, the 6-input 3-output LUT 7 (121) is comprised of a mode changing memory 71, selectors 721-726, and [eight] 3-input 1-output LUT units (memory array) 731-738. The mode changing memory 71 stores 3 bits [of] data X, Y, Z designated by a user so as to set the relation between 6 bit input A-F and 3 bit output Q, V, W in accordance with [a] user’s request. Ex. 1001, 5:26–33. For purposes of this Decision, consistent with the ’737 patent, we determine that the plain and ordinary meaning of “look up table of M inputs and N outputs” refers to “a memory having 2M entries (addressable locations), each of which stores an N-bit word, wherein the memory is capable of implementing an arbitrary logic circuit of M inputs and N outputs.” We likewise determine that the plain and ordinary meaning of “LUT unit” refers to a “unit of an LUT, wherein the unit constitutes a memory.” Id.” slip op. at 17
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Analogous artInstituted
“We disagree with Patent Owner’s arguments. As set forth in our claim construction section above, an “LUT unit” refers to a unit (e.g., memory) in an LUT of M inputs and N outputs. Accordingly, the disputed claim limitation “a look up table of M inputs and N outputs, comprising: a plurality of LUT units” requires, inter alia, an arbitrary logic circuit including a memory array (a plurality of LUT units) of M inputs and N outputs. We thus agree with Petitioner that Fujii’s disclosure of PL1 including three memory circuit groups each composed of 8, 4, and 4 memory circuits having respectively 3 input signals, 2 input signals, and 2 input signals, and sharing three outputs constitute an arbitrary logic circuit with M inputs and N outputs including memory arrays, and thereby teaches a lookup table with M inputs and N outputs including a plurality of LUT units.” slip op. at 29
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,812,737 - PTAB · Oct 31, 2023 · IPR2023-00792 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1, 2, 6, 11, 12, and 16 because Roku showed a reasonable likelihood of prevailing on the petition’s obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine “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 discussed below, Petitioner has shown a reasonable likelihood that it would prevail with respect to all claims challenged in the Petition. Thus, we institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityOther
“B. Real Party in Interest Patent Owner’s Mandatory Notices do not identify any real party in interest, as required by 37 C.F.R. § 42.8(b)(1). See Paper 4. Patent Owner must provide this information by filing a paper with updated mandatory notices within one month of this decision’s entry.” slip op. at 2
- Expert testimonyPetitioner expert creditedDecided for petitioner
“person of ordinary skill in the art requires knowledge in “the field of home and business security,” Petitioner’s expert, Bruce McNair, testifies that he has designed and installed home security, sensor, and alarm systems. Ex. 1003 ¶ 12. Also, Mr. McNair’s experience with wireless communication and cryptographic security systems is also relevant (see, e.g., id. ¶ 10) even if it involved more complex systems because, “to be qualified to offer expert testimony on issues from the vantage point of an ordinarily skilled artisan in a patent case, an expert must at a minimum possess ordinary skill in the art.” Kyocera, 22 F.4th at 1377–78 (emphasis added). Thus, on this record, we disagree with Patent Owner’s argument Petitioner has failed to support its Petition with the testimony of someone who possesses the knowledge and skill at least of an ordinarily skilled artisan—even under Patent Owner’s definition. See Prelim. Resp. 49.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage, we determine that the differences between the two definitions do not affect our decision to institute. That is, in our analysis below, we apply Petitioner’s proposed definition, but our decision would be the same under Patent Owner’s. If the parties continue to disagree about the level of ordinary skill in the art during trial, they are encouraged to explain how the differences affect the Board’s assessment of Petitioner’s obviousness analysis.” slip op. at 5
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,692,340 - 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.