- 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 - ROKU, Inc. v. Flexiworld Technologies, Inc.Institution deniedPTAB · Mar 14, 2022 · PGR2021-00111 · APJ Bryan F Moore · PGR · Institution
The Board denied institution because the challenged patent was not eligible for post-grant review; it found the priority applications supported claims 6 and 19 and did not reach the § 101 ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the above reasons, we are persuaded that the ’031 patent’s priority applications (pre-AIA applications) provide written description support for the claim limitation that “that the “output system” (claim 6) or “output device” (claim 19) can be an “Internet appliance.” Thus, we are not persuaded by Petitioner that claims 6 and 19 have an effective filing date after March 16, 2013. Accordingly, claims 6 and 19 do not render the ’031 patent eligible for post-grant review under AIA § 6(f)(2)(A). Accordingly, the information presented in the Petition does not establish that the ’031 patent is eligible for post-grant review.” slip op. at 16
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“Finally, the definition of output device in the priority ’765 Application (as in the Specification of the ’031 patent) is that an “[o]utput device [] is an electronic system capable of outputting digital content … Any device capable of playing or reading digital content in voice (e.g., music, speech) or data (e.g., text, document) is also a possible output device.” Prelim. Resp. 15 (alterations in original) (quoting Ex. 1011 (’765 application) ¶ 89, Ex. 1001, 16:29–41). An Internet appliance does fall within that definition. The ’765 Application also contemplates that an output device is a network device accessible through an IP address. See Ex. 1011, 14 (referring to “[i]dentification of an output device” by “IP address”). Put another way, the priority application adequately describes a device fitting the description of” slip op. at 14
§ 112 disclosurePatents in suitUS 10,846,031 - Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Institution deniedPTAB · Feb 22, 2022 · PGR2021-00108 · APJ Aaron W Moore · PGR · Institution
Institution was denied because the petition did not show a reasonable likelihood that claims 1–20 were unpatentable, including because the asserted combination did not link rule generation to the packet correlation.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Obviousness Analysis A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, primarily: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham, 383 U.S. at 17–18.6 Petitioner asserts that claims 1–2, 7–8, 10, 12–13, and 17–18 are unpatentable under § 103 as obvious in view of Paxton and Sutton. See Pet. 6, 18–64. For the reasons described below, we are not persuaded by Petitioner’s argument and evidence.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art “had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and approximately 2-3 years of experience in the design or development of telecommunication systems, or the equivalent” and that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Pet. 13–15 (citing Ex. 1003 ¶¶ 18–20). Patent Owner does not address this issue in the Preliminary Response. As Patent Owner does not dispute Petitioner’s characterization of the level of skill in the art, and because we find it generally consistent with the disclosures of the ’797 patent and the prior art, we adopt it for purposes of this analysis. C.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Patent Owner argues that “[t]he plain and ordinary meaning of the terms “determining . . . a first plurality of log entries” and “determining . . . a second plurality of log entries” is “identifying” or “ascertaining” log entries.” Prelim. Resp. 16. Patent Owner also argues that “[t]he terms “provisioning, . . . based on the determined correlation, . . . rules configured to identify the first plurality of packets received by the network device,” and “provisioning, . . . based on the determined correlation, . . . rules configured to identify the second plurality of packets transmitted by the network device” (“provisioning rules”) . . . should be given their plain and ordinary meaning—rules configured to identify packets.” Prelim. Resp. 20. Neither party, however, argues that the prior art arguments presented in the Petition turn on the construction of these terms. Instead, it appears that they are raised as claim construction issues only because Petitioner is challenging the language under Section 112. We will discuss the Section 112 arguments below, but do not see a dispute about the constructions offered by the parties above the makes a difference in the prior art analysis and, therefore, do not construe these terms at this time. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“respect to this limitation for several reasons, including that Petitioner’s “alleged rule generation and provisioning” is responsive to detecting malicious activity, not “based on the determined correlation.” Prelim. Resp. 38. On this record, we agree with Patent Owner. The claims require “generating, by the computing system and based on the determined correlation, one or more rules configured to identify packets received from the first host.” We do not have sufficient argument or evidence to show that one of ordinary skill in the art would have found it obvious to generate these rules “based on” the determined correlation.” slip op. at 16
Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham · NautilusPatents in suitUS 10,931,797 - PTAB · Feb 16, 2022 · IPR2021-01150 · APJ Bryan F Moore · IPR · Institution
The Board instituted IPR on claims 1–18 under § 103 over Paxton, Sutton, and Ivershen, finding a reasonable likelihood of success on at least claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We concur with Petitioner’s assertions regarding the status of the underlying, related litigation. With respect to Fintiv factor (1), we determine this factor to be neutral. Although the parties stipulated to a trial date, the district court has yet to enter that schedule or hold a scheduling conference. The district court has continued the scheduling conference until after it decides the pending motion to stay. See Ex. 1031, Ex. 1032, 4:11–22. On this record, we are not persuaded that the district court will adhere to the previously agreed upon August 2022 trial date. 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.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Given the facts above, because Ivershen was submitted and discussed during the prosecution of the ’903 patent and in IPR2018-01654 and IPR2018-01655, Ivershen qualifies as art that was “previously presented” to the Office. Thus, we find that Ivershen, the same prior art asserted in the Petition, previously was presented to the Office. Nevertheless, Petitioner asserts that the other prior art references in” slip op. at 19
- Skill levelSkill level petitioner adoptedOther
“Level of Ordinary Skill in the Art Noting that relevant experience and education can substitute for each other, Petitioner states that a person of ordinary skill in the relevant art, at the time the ’903 patent was filed, had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and approximately 2–3 years of experience in the design or development of telecommunication systems, or the equivalent. Additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. Pet. 13 (citing Ex. 1003 [Declaration of Dr. Robert Akl] ¶¶ 18–20). Petitioner’s definition of a person of ordinary skill, which Patent Owner does not dispute at this stage, appears appropriate for the technology addressed by this proceeding.” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts “no terms require construction.” Pet. 13. Patent Owner asserts “no express construction of any term is required to resolve any controversy in this proceeding.” Prelim. Resp. 12. After review of the current record, we conclude that no express claim construction is necessary to determine whether to institute review of the challenged claims. See, e.g., 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)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,530,903 - Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Institution deniedPTAB · Feb 16, 2022 · IPR2021-01151 · APJ Stacey G White · IPR · Institution
The Board denied institution for claims 1–24 because the petition did not show a reasonable likelihood that the challenged claims were obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“respect to this limitation for several reasons including that Petitioner’s “alleged rule generation and provisioning is responsive to detecting malicious activity, not ‘responsive to the correlating.’” Prelim. Resp. 27–28. On this record, we agree with Patent Owner. The claims require that “responsive to the correlating of . . . packets transmitted by the network device with . . . packets received by the network device: generating . . . based on the correlating, one or more rules.” We do not have sufficient argument or evidence to show that one of ordinary skill in the art would have found it obvious to generate these rules “based on” and “responsive to” the correlation of packets.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“respect to this limitation for several reasons including that Petitioner’s “alleged rule generation and provisioning is responsive to detecting malicious activity, not ‘responsive to the correlating.’” Prelim. Resp. 27–28. On this record, we agree with Patent Owner. The claims require that “responsive to the correlating of . . . packets transmitted by the network device with . . . packets received by the network device: generating . . . based on the correlating, one or more rules.” We do not have sufficient argument or evidence to show that one of ordinary skill in the art would have found it obvious to generate these rules “based on” and “responsive to” the correlation of packets.” slip op. at 24
§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,659,573 - Apple Inc. v. Corephotonics Ltd.Adverse judgmentPTAB · Feb 11, 2022 · IPR2018-01146 · APJ Monica S Ullagaddi · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 6 and 14 after their disclaimer, then terminated the proceeding.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“II. ANALYSIS Actions construed as a request for adverse judgment include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” 37 C.F.R. § 42.73(b). Here, Patent Owner has disclaimed claims 6 and 14 (along with unchallenged claims 3–5 and 8–11) of the ’712 patent under 35 U.S.C. § 253 according to the procedures set forth in 37 C.F.R. § 1.321(a). Ex. 3002, 1. We agree with Petitioner that 37 C.F.R. § 42.73(b) provides that the Board should construe Patent Owner’s statutory disclaimer to be a request that the Board enter adverse judgment against it with respect to claims 6 and 14, the only claims at issue, in this proceeding. Ex. 3001; see also Unified Patents, LLC v. Arsus, LLC, IPR2020-00948, Paper 18 at 2 (PTAB Jan. 27, 2021) (construing statutory disclaimer of all challenged claims as request for adverse judgment), aff’d, Case No. 2021- 1648, 2021 WL 5315423 (Fed. Cir. Nov. 16, 2021). Having reviewed the Disclaimer (Ex. 3002), we determine that entry of adverse judgment against Patent Owner with respect to claims 6 and 14 of the ’712 patent is appropriate. Claims 1, 2, 7, 12, 13, 15–17, and 19 are no longer part of this IPR proceeding because we made a final judgment with regard to these claims and that judgment has not been reversed or vacated. See 37 C.F.R. § 42.2 (“A decision is final only if it disposes of all necessary issues with regard to the party seeking judicial review, and does not indicate that further action is required.” (emphasis added)). As such, these claims are not “in the trial” within the meaning of 37 C.F.R. § 42.73(b)(2). The Federal Circuit remanded the Decision as to only claims 6 and 14. As such, our determination of adverse judgment does not apply to claims 1, 2, 7, 12, 13, 15–17, and 19. Patent Owner’s Disclaimer of claims 6 and 14 means that Patent Owner has no claims remaining in the present proceeding.” slip op. at 3
NonePatents in suitUS 9,568,712 - 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
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.