- PTAB · Sep 7, 2021 · IPR2021-00542 · APJ Kristen L Droesch · IPR · Institution
Instituted review of claims 11, 12, 14, 22, and 24 on the § 103 ground over Khandekar, Le, and Matthews, despite insufficient preliminary showing for claims 11 and 14.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“the fact that the Petition in this proceeding is Petitioner’s second petition to challenge claims of the ’138 Patent. Paper 1; see also Consolidated Trial Practice Guide (Nov. 2019) (“Consolidated Practice Guide”),1 59–60. Petitioner asserts that this second-filed Petition challenges a new set of claims that Patent Owner asserted in the parties’ district-court litigation after Petitioner filed its petition in IPR2020-01582. Paper 1, 1–2. Petitioner contends that two petitions are necessary given the number of claims and the length of the claims challenged across the two petitions. See id. at 2; see also Consolidated Practice Guide, 59 (explaining that there may be circumstances in which more than one petition may be necessary, including when patent owner has asserted a large number of claims in litigation). Petitioner also asserts the factors relevant to multiple petitions set forth in General Plastic Industrial Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential as to § II.B.4.ii), favors institution on both the first-filed petition and this second-filed Petition. See id. at 4–5. Patent Owner does not address Petitioner’s arguments regarding multiple petitions (see generally Prelim. Resp.), and we agree with Petitioner that the circumstances before us warrant this second-filed Petition.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“based on the record before us, we determine there is a reasonable likelihood Petitioner would prevail in showing that claims 12, 22, and 24 are unpatentable under 35 U.S.C. § 103(a) over Khandekar, Le, and Matthews. We also determine, however, for the purpose of institution and based on the record before us, there is not a reasonable likelihood Petitioner would prevail in showing that claims 11 and 14 are unpatentable under 35 U.S.C. § 103(a) over Khandekar, Le, and Matthews. Notwithstanding the foregoing comments addressing Petitioner’s patentability challenge to claim 11 and 14, we include Petitioner’s patentability challenges to these claims within this inter partes review proceeding. In accordance with 37 C.F.R. § 42.108(a) (2021)12, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and all grounds of unpatentability asserted for each claim.”” slip op. at 44
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s assertions addressing the skill level of a person of ordinary skill in the art. See generally Prelim. Resp. For the purpose of institution, we adopt Petitioner’s definition of a person of ordinary skill in the art because it appears to be consistent with the level of skill reflected by the ’138 Patent Specification and the asserted prior art.” slip op. at 13
- BurdenMixed
“On the current record, we agree with Patent Owner’s arguments. Petitioner does not adequately explain how the Khandekar-Le-Matthews combination teachings of monitoring information, updating information in a database or repository, and obtaining updated information from the repository or database teaches or suggests updating a rules engine, instead of updating the information that is input to the rules engine. At this stage of the proceeding and based on the record before us, we determine Petitioner does not show sufficiently that the subject matter of claims 11 and 14 would have been obvious over Khandekar, Le, and Matthews.” slip op. at 32
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,572,138
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.