- PTAB · Mar 15, 2022 · IPR2021-01158 · APJ Lynne E Pettigrew · IPR · Institution
The Board instituted IPR of claims 1–20 on all asserted grounds, finding a reasonable likelihood that Palo Alto Networks would prevail in showing at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6. We consider each of these factors below.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“35 U.S.C. § 325(d) because every ground asserted in the Petition is based on the same or substantially similar art and arguments already considered during prosecution of the ’899 patent. Prelim. Resp. 13–26. Section 325(d) 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.” The Board uses the following two-part framework in determining whether to exercise discretion under § 325(d) to deny institution: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially and (2) if either condition of the 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, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). In applying the two-part framework, we consider the following non-exclusive factors: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph). Factors (a), (b), and (d) relate to whether the art or arguments presented in the Petition are the same or substantially the same as those previously presented to the Office. Advanced Bionics, Paper 6 at 10. Factors (c), (e), and (f) relate to whether the petitioner has demonstrated a material error by the Office. Id.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review if “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) (2018). After considering the parties’ arguments and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’899 patent. Accordingly, we institute an inter partes review of claims 1–20 of the ’899 patent on the grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had “a bachelor’s degree in computer science, electrical engineering, or a related field, and approximately two years of professional experience or equivalent study in network security and the use of machine-learning algorithms.” Pet. 13 (citing Ex. 1004 ¶ 30). Petitioner further asserts that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. (citing Ex. 1004 ¶ 30). At this stage of the proceeding, Patent Owner does not dispute Petitioner’s assessment of the level of ordinary skill in the art. See generally Prelim. Resp. Based on the information presented in the Petition and Dr. Lee’s testimony, we adopt Petitioner’s assessment for purposes of this Decision.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,503,899 - PTAB · Mar 15, 2022 · IPR2021-01157 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–17, finding a reasonable likelihood that the challenged claims are obvious over four combinations of Jungck, Shah, Ke, and Sarathy.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.”” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6. We consider each of these factors below.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“35 U.S.C. § 325(d). See Prelim. Resp. 19–35. Pursuant to § 325(d), the Director may elect not to institute a proceeding if the challenge to the patent is based on matters previously presented to the Office. Section 325(d) 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.” The Board uses the following two-part framework in determining whether to exercise discretion under § 325(d) to deny institution: (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 the 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, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (footnote omitted).” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“VII. LEVEL OF ORDINARY SKILL IN THE ART Petitioner contends that a person of ordinary skill in the art would have had “a bachelor’s degree in computer science, computer engineering, or an equivalent, and four years of professional experience” and that “[l]ack of work experience can be remedied by additional education, and vice versa.” Pet. 16 (citing Ex. 1004, Decl. of Dr. Vijay Madisetti (“Madisetti Decl.”) ¶¶ 34–36). Patent Owner does not dispute Petitioner’s description of a person of ordinary skill. The level of ordinary skill in the art usually is evidenced by the references themselves. 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). Petitioner’s description of a person of ordinary skill is commensurate with the subject matter of the ’906 patent and we apply it for purposes of this Decision.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,749,906 - PTAB · Feb 18, 2022 · IPR2021-01369 · APJ Jon B Tornquist · IPR · Institution
Instituted IPR of claims 1, 11, and 13 on all asserted grounds; Petitioner showed a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2021). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the Challenged Claims of the ’251 patent. Accordingly, we institute an inter partes review with respect to all Challenged Claims and grounds asserted in the Petition. See SAS Inst. Inc. v. Iancu, 138 S.Ct. 1348, 1355 (2018).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“review, “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.” The following two-part framework is used to determine whether to exercise discretion under § 325(d) to deny institution: (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 the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Petition does not provide proposed constructions for any terms of the ’251 patent. Pet. 11. And although Patent Owner disputes Petitioner’s assertions regarding certain claim terms, it does not contend that any terms of the ’251 require express construction for purposes of this Decision. See, e.g., Prelim. Resp. 23–24, 35. Upon review of the parties’ arguments and supporting evidence, we find that no terms of the ’251 patent require construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 10,492,251 - Unified Patents Inc. v. Ideahub, Inc.All claims unpatentablePTAB · Feb 7, 2022 · IPR2020-01338 · APJ Michael T Cygan · IPR · Final written decision
Claims 1–9 are unpatentable; substitute claims 13–16 are denied as obvious over Chen, OAI, 3GPP, and Brueck, and claims 17–20 are withdrawn.
RulingsFinal written decision- Expert testimonyPatent owner expert discountedDenied
“B. Patent Owner’s Motion under § 42.64(c) is denied as based on untimely objections to testimony. Patent Owner styled its Motion as a “Motion to Exclude Petitioner’s” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner offers an assessment as to the level of skill in the art as of” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“9. Rationale to combine Chen and OAI” slip op. at 39
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“8. Whether OAI is Analogous Prior Art Petitioner set forth reasons why OAI is analogous art in its Petition.” slip op. at 34
Patent outcomesUS 8,645,562 unpatentable§ 103 obviousnesscites Phillips · KSR · Graham · NautilusPatents in suitUS 8,645,562 - Apple Inc. v. Gui Global Products, Ltd., D/B/A GweeInstitution deniedPTAB · Feb 4, 2022 · IPR2021-01289 · APJ Bryan F Moore · IPR · Institution
The Board denied institution of IPR on claims 1–19 under General Plastic, finding the second petition unnecessary and inefficient; it also denied Apple’s conditional motion for joinder.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“In none of its briefs does Petitioner explain “why the Board should exercise its discretion to institute additional petitions if it [the Board] identifies one petition that satisfies petitioner’s burden under 35 U.S.C. § 314(a),” short of saying that “Bohbot-Gundlach (470 IPR) and Kim (this Petition) offer very different disclosures.” Explanation 3; TPG 60.8 However, Petitioner does not identify any circumstances identified in the Trial Practice Guide supporting a need for a second petition, such as a large number of claims in litigation or a potential dispute about priority date. TPG 59. Accordingly, based on the record before us, we agree with Patent Owner (Prelim. Resp. 6) that this General Plastic factor weighs in favor of denying institution of the proceeding.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied general plasticInstitution denied
“Conclusion In light of the General Plastic factors, the Uniloc decision, the guidance in the TPG, and the arguments presented for and against the exercise of discretionary denial, we conclude that it is appropriate here to exercise our discretion under 35 U.S.C. § 314(a). 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 exercise discretion to deny institution under § 314, we deny Petitioner’s Conditional Motion for Joinder. V. ORDER Accordingly, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), the Petition is denied; and” slip op. at 11
- 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 exercise discretion to deny institution under § 314, we deny Petitioner’s Conditional Motion for Joinder. V. ORDER Accordingly, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), the Petition is denied; and FURTHER ORDERED that the Conditional Motion for Joinder is denied.” slip op. at 11
Discretionary denialPatents in suitUS 10,259,020 - Apple Inc. v. Gui Global Products, Ltd., D/B/A GweeInstitution deniedPTAB · Feb 3, 2022 · IPR2021-01292 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution of IPR on claims 1–13 under § 314(a), applying General Plastic to Apple's follow-on petition, and denied Apple's conditional motion for joinder.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“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.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“requires two different decisions.” Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). First, we “determine whether the joinder applicant’s petition for IPR ‘warrants’ institution under § 314.” Id. Second, if the petition warrants institution, we then “decide whether to ‘join as a party’ the joinder applicant.” Id. Thus, before determining whether to join Petitioner as a party to the 338 IPR, we first determine whether the petition warrants institution under § 314(a).” slip op. at 4
Discretionary denialPatents in suitUS 10,589,320 - Apple Inc. v. Gui Global Products, Ltd., D/B/A GweeInstitution deniedPTAB · Feb 1, 2022 · IPR2021-01291 · APJ Sally C Medley · IPR · Institution
The Board denied institution of IPR on claims 1–13 under § 314(a), finding the General Plastic factors favored denying Apple’s second petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“Factor 1: “whether the same petitioner previously filed a petition directed to the same claims of the same patent” As explained above, before us is Petitioner’s second petition challenging the claims of the ’077 patent. Pet. 74; Prelim. Resp. 6. We understand that Petitioner filed this Petition in case we did not institute review in the 472 IPR. Pet. 74; Explanation 4–5 (Petitioner “respectfully requests that the Board institute” review in the 472 IPR, but if the Board does not “the next-most efficient course of action would be for the Board to institute” in this proceeding). As stated above, we instituted inter partes review in the 472 IPR. The 472 IPR involves claims 1–5 and 7–13 of the ’077 patent and the 337 IPR involves claims 1–13. Thus, one more claim is challenged here than in the 472 IPR. Nonetheless, Petitioner provides no explanation why it is again challenging claims 1–5 and 7–13 here or why Petitioner needs two instituted inter partes reviews on the common claims. Pet. 74–75. In none of its briefs does Petitioner explain “why the Board should exercise its discretion to institute additional petitions if it [the Board] identifies one petition that satisfies petitioner’s burden under 35 U.S.C. § 314(a),” short of saying that “(Gundlach (472 IPR) and Kim (this Petition) offer very different disclosures.” Explanation 3; TPG 60.7 However, Petitioner does not identify any circumstances identified in the Trial Practice Guide supporting a need for a second petition, such as a large number of claims in litigation or a potential dispute about priority date. TPG 59. Accordingly, based on the record before us, we agree with Patent Owner (Prelim. Resp. 6) that this General Plastic factor weighs in favor of denying institution of the proceeding. Factor 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” Petitioner argues that it “learned of the prior art in the Samsung Petition [in the 337 IPR] around the time that petition was filed.” Pet. 75. Petitioner argues that because it filed its petition in the 472 IPR five weeks after the petition was filed in the 337 IPR, it “could not have reasonably leveraged its knowledge” of the prior art involved in the 337 IPR against Patent Owner. Id. Patent Owner argues that because Petitioner admitted that it knew of the prior art asserted in the 337 IPR prior to Petitioner filing the petition in the 472 IPR, General Plastic factor two weighs in favor of 7 As discussed above, in the Explanation, Petitioner requests that we should institute inter partes review in the 472 IPR, and if we do not, then we should institute here. Explanation 3–5. In the Reply, however, Petitioner requests that we institute here, despite having instituted the 472 IPR, without explaining why we should do so. Reply 2–3. denying institution of the proceeding. Prelim. Resp. 7. We agree that this factor weighs in favor of denying institution of the proceeding because Petitioner does not explain sufficiently why it had to file the petition in the 472 IPR five weeks after the petition was filed in the 337 IPR such that Petitioner could not have “leveraged its knowledge” of the prior art involved in the 337 IPR against Patent Owner. In other words, Petitioner fails to explain sufficiently why it could not have included the claims or prior art it asserts here in the 472 IPR. Accordingly, we determine that this second General Plastic factor weighs in favor of denying institution of the proceeding.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“claims 1–13 of U.S. Patent No. 10,562,077 B2 (Ex. 1001, “the ’077 patent”). Paper 3 (“Pet.”). Petitioner also filed a Conditional Motion for Joinder with Samsung et al. v. GUI Global Products, Ltd., IPR2021-00337 (“the 337 IPR” or “the Samsung 337 IPR”). Paper 4 (“Mot.”). GUI Global Products, Ltd., d/b/a Gwee (“Patent Owner”) filed a Preliminary Response to the Petition. Paper 10 (“Prelim. Resp.”). Patent Owner also filed an Opposition to the Conditional Motion for Joinder. Paper 8 (“Opp.”). Petitioner filed a Reply to Patent Owner’s Opposition. Paper 9 (“Reply”). We have authority under 35 U.S.C. § 314(a), which provides that 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.” For the reasons described below, we do not institute an inter partes review of the challenged claims and deny Petitioner’s Conditional Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“To join a party to an instituted IPR, the plain language of § 315(c) requires two different decisions.” Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). First, we “determine whether the joinder applicant’s petition for IPR ‘warrants’ institution under § 314.” Id. Second, if the petition warrants institution, we then “decide whether to ‘join as a party’ the joinder applicant.” Id. Thus, before determining whether to join Petitioner as a party to the 337 IPR, we first determine whether the petition warrants institution under § 314(a). slip op. at 4
Discretionary denialPatents in suitUS 10,562,077 - Apple Inc. v. Gui Global Products, Ltd., D/B/A GweeInstitution deniedPTAB · Feb 1, 2022 · IPR2021-01290 · APJ Sally C Medley · IPR · Institution
The Board denied institution of review of claims 1–19 under § 314(a), applying the General Plastic factors, and denied Apple’s conditional motion for joinder.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“patent and the Petition here involves claims 1–19. Thus, more claims are challenged here than in the 471 IPR. Nonetheless, Petitioner provides no explanation why it is again challenging claims 1, 2, 4–10, 12, 14–17, and 19 here or why Petitioner needs two instituted inter partes reviews on the common claims. Pet. 73–74. In none of its briefs does Petitioner explain “why the Board should exercise its discretion to institute additional petitions if it [the Board] identifies one petition that satisfies petitioner’s burden under 35 U.S.C. § 314(a),” short of saying that “Gundlach (471 IPR) and Kim (this Petition) offer very different disclosures.” Explanation 3; TPG 60.8 However, Petitioner does not identify any circumstances identified in the Trial Practice Guide supporting a need for a second petition, such as a large number of claims in litigation or a potential dispute about priority date. TPG 59. Accordingly, based on the record before us, we agree with Patent Owner (Prelim. Resp. 6) that this General Plastic factor weighs in favor of denying institution of the proceeding.” slip op. at 6
- 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 exercise discretion to deny institution under § 314, we deny Petitioner’s Conditional Motion for Joinder. V. ORDER Accordingly, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), the Petition is denied; and FURTHER ORDERED that the Conditional Motion for Joinder is denied.” slip op. at 11
Discretionary denialPatents in suitUS 10,259,021 - PTAB · Jan 26, 2022 · IPR2021-01152 · APJ Kevin F Turner · IPR · Institution
The Board instituted IPR on claims 1–20 based on three § 103 grounds: Jungck and Bhatia; Jungck, Bhatia, and RFC2003; and Jungck, Bhatia, and Turner.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“has yet to enter a case schedule. Even with the arguments and evidence presented, we determine it to be speculative as to whether a stay may be granted if a proceeding is instituted. We reach the same conclusion with respect to Fintiv factor (2), given the speculative nature of the “trial date.” With respect to Fintiv factor (3), we determine that this weighs against discretionary denial; although some discovery has occurred, the parties have not invested significant resources in the district court proceeding. With respect to Fintiv factor (4), the existence of Petitioner’s stipulation regarding the full scope of estoppel is sufficient to suggest that overlap between the proceedings will be minimized. See Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, paper 12 (PTAB Dec. 1, 2020) 18 (precedential) (“Petitioner’s stipulation here mitigates any concerns of duplicative efforts between the district court and the Board, as well as concerns of potentially conflicting decisions. See Sand Revolution 12. Importantly, Petitioner broadly stipulates to not pursue ‘any ground raised or that could have been reasonably raised.’ Reply 6. As noted in Sand Revolution, such a broad stipulation better addresses concerns of duplicative efforts and potentially conflicting decisions in a much more substantial way. Sand Revolution 12 n.5. Accordingly, Petitioner’s broad stipulation ensures that an inter partes review is a ‘true alternative’ to the district court proceeding. Thus, we find that this factor weighs strongly in favor of not exercising discretion to deny institution under 35 U.S.C. § 314(a).”) (underlining added). Although Patent Owner asserts that there are deficiencies in Petitioner’s stipulation, those can be addressed through additional stipulations. We determine that Fintiv factor (4) weighs against discretionary denial.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“2. Discretion Under § 325(d) With respect to 35 U.S.C. § 325(d), Petitioner asserts that “[n]one of the art relied upon herein was cited, discussed, or applied in the ’246’s prosecution,” and that the art cited therein is not “the same or substantially the same.” Pet. 7. Patent Owner does not argue that we should deny the Petition under this statutory basis. See Prelim. Resp. As such, we decline to exercise our discretion to deny institution of review under 35 U.S.C. § 325(d).” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION For the foregoing reasons, Petitioner has demonstrated a reasonable likelihood that it would prevail in showing that at least one claim of the ’246 Patent is unpatentable. IV. ORDER Accordingly, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review is hereby instituted as to claims 1–20 of the ’246 Patent on the following asserted grounds:” slip op. at 34
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage of the proceeding, we find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, 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), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this decision.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,091,246 - Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Institution deniedPTAB · Jan 24, 2022 · IPR2021-01270 · APJ Lynne E Pettigrew · IPR · Institution
The Board denied institution of review of claims 2–5, 11–14, 22, 23, and 26–28 under § 325(d) because substantially the same prior art was previously presented and material Office error was not shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“applicant, such as on an [IDS].” Advanced Bionics, Paper 6 at 7–8. Because it was submitted in an IDS during prosecution of the ’380 patent, Sourcefire qualifies as art that was “previously presented” to the Office.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“Bionics framework, and based on the particular circumstances here, we conclude that the same or substantially the same prior art as in the Petition was presented previously to the Office, and Petitioner has not demonstrated that the Office erred in a manner material to patentability of the challenged claims. Accordingly, we determine that discretionary denial of the Petition under 35 U.S.C. § 325(d) is appropriate. IV. CONCLUSION For the foregoing reasons, we exercise our discretion to deny institution under 35 U.S.C. § 325(d). V. ORDER Accordingly, it is ORDERED that the Petition is denied, and no inter partes review is instituted.” slip op. at 18
Discretionary denialPatents in suitUS 10,735,380
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.