- Smart Microwave Sensors GmbH v. Wavetronix LLCAll claims unpatentablePTAB · Jul 17, 2017 · IPR2016-00488 · APJ Daniel N Fishman · IPR · Final written decision
Claims 9, 10, 12, 13, 22, 23, and 25 are unpatentable, including as anticipated by Boles or Farmer and obvious over combinations including Boles, Farmer, Herman, and others.
RulingsFinal written decision- ExcludeMotion to exclude, grantedGranted
“1. Exhibits 1002, 1008, 1009, and 1012 Patent Owner argues the date printed on each of Exhibits 1002, 1008, 1009, and 1012, is inadmissible hearsay under FRE 801 and 802 as out of court statement offered to prove that truth of the matter asserted—that each document was a printed publication as of the date printed on that document (i.e., that it was sufficiently publicly accessible). Paper 45, 2–3 (citing Standard Innovation Corp. v. Lelo, Inc., Case IPR2014-00148, Paper 41 (PTAB April 23, 2015)). As discussed supra, we agree with Patent Owner that the dates printed on these Exhibits are hearsay with no applicable exception. Thus, we grant Patent Owner’s motion requesting that we exclude the copyright notice date from each of Exhibits 1008, 1009, and 1012, and exclude the date of the EuMC conference on Exhibit 1002. However, we note that the documents per se are not excluded from the record as hearsay—only the date imprinted on each as proof of the printed publication status of each document. The underlying documents of these Exhibits are offered not to prove the publication dates thereof but, instead, are statements offered to demonstrate the knowledge of persons of ordinary skill in the art. Petitioner may rely on other evidence to establish the date of public accessibility of each of these documents, the analysis of which we have set forth supra. See Section II.B.1–4.” slip op. at 54
- Skill levelNot reached
- Expert testimonyPatent owner expert discountedDecided for patent owner
“data about multiple vehicles on a particular section of roadway (PO Resp. 7– 8), Petitioner counters by identifying references in the field of traffic engineering that use mobile sensors (i.e., not at a fixed location) for acquiring “traffic data.” Pet. Reply 2 (citing Ex. 1031 ¶¶ 6, 22, 181–183). Referring to pages 7–13 of Exhibit 1031 (Texas Highway Operations Manual discussing “Vehicle-based Equipment”), Patent Owner’s expert testified, on cross-examination, as follows: Q In view of the paragraph, would it be accurate to note that one of ordinary skill in the art would understand that the equipment located in a vehicle can be used to measure the speed of the traffic stream? A It says that a vehicle-mounted radar unit can be used to measure the timing speed of other vehicles in the traffic stream. It does not say it is used to measure the traffic stream. Q I said measure the speed of the traffic. A Yes. This says it is measuring the speed of vehicles in the traffic stream. Q So one of ordinary skill in the art would understand that the equipment located in a vehicle can be used to measure the speed of vehicles in a traffic stream? A That is how it’s worded, the speed of other vehicles in the traffic stream. Ex. 1036, 98:21–99:13. In light of that testimony, we determine that Patent Owner’s expert testimony in support of their assertion is not credible.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Id. at 49:19–50:10. Given, at best, significant ambiguity as to whether the Specification and other evidence requires that “traffic data” must refer to “all or substantially all vehicles,” we are persuaded that such a requirement would not be proper under a broadest reasonable construction. Regarding Patent Owner’s assertion that “traffic data” is limited to data about multiple vehicles on a particular section of roadway (PO Resp. 7– 8), Petitioner counters by identifying references in the field of traffic engineering that use mobile sensors (i.e., not at a fixed location) for acquiring “traffic data.” Pet. Reply 2 (citing Ex. 1031 ¶¶ 6, 22, 181–183). Referring to pages 7–13 of Exhibit 1031 (Texas Highway Operations Manual discussing “Vehicle-based Equipment”), Patent Owner’s expert testified, on cross-examination, as follows: Q In view of the paragraph, would it be accurate to note that one of ordinary skill in the art would understand that the equipment located in a vehicle can be used to measure the speed of the traffic stream? A It says that a vehicle-mounted radar unit can be used to measure the timing speed of other vehicles in the traffic stream. It does not say it is used to measure the traffic stream. Q I said measure the speed of the traffic. A Yes. This says it is measuring the speed of vehicles in the traffic stream. Q So one of ordinary skill in the art would understand that the equipment located in a vehicle can be used to measure the speed of vehicles in a traffic stream? A That is how it’s worded, the speed of other vehicles in the traffic stream.” slip op. at 14
Patent outcomesUS 6,693,557 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,693,557 - ZTE (USA) Inc. v. Papst Licensing GmbH & Co. KGInstitution deniedPTAB · Jul 12, 2017 · IPR2017-00712 · APJ James B Arpin · IPR · Institution
The Board denied institution because Petitioner did not show the PCT Publication was prior art, so it failed to establish a reasonable likelihood that claims 1, 12, 15, 16, 18, 30, 43, and 45 were …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an 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.” For the reasons set forth below, we determine that, on this record, Petitioner has not established a reasonable likelihood that it would prevail with respect to any of the challenged claims. We hereby decline to institute an inter partes review in this proceeding.” slip op. at 2
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“The Decision (Ex. 2001) granting Patent Owner’s Petition (Ex. 1005) to accept an unintentionally delayed claim for the benefit of the ’002 application clearly states that these requirements set forth in 37 C.F.R. § 1.78(e) have been satisfied, including “a proper reference to the prior-filed application(s) has been included in an application data sheet (or in an amendment to the first sentence of the specification) as required by 37 CFR 1.78(d)(2).” Ex. 2001, 2. Therefore, we decline to revisit the Office’s Decision (Ex. 2001) on Patent Owner’s Petition (Ex. 1005), and we find that the record before us does not support Petitioner’s argument that Patent 3 We note that, here, the Director required no such additional information. Owner failed to submit a proper specific reference under 35 U.S.C. § 120 to the ’002 application in the ’778 application or that Patent Owner expressly abandoned the ’778 application. As a result, Petitioner does not establish a reasonable likelihood of showing that the PCT Publication is prior art under 35 U.S.C. § 102(b) against the challenged claims of the ’437 patent. For the foregoing reasons, we determine that Petitioner fails to establish sufficiently that the challenged claims are not entitled to the benefit of the ’002 application’s filing date. Consequently, Petitioner fails to make a threshold demonstration that the PCT Publication, to which the ’437 patent claims priority, is prior art against the challenged claims of the ’437 patent in this proceeding. 35 U.S.C. § 311(b); 37 C.F.R. § 42.104(b)(2).” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner
“Owner failed to submit a proper specific reference under 35 U.S.C. § 120 to the ’002 application in the ’778 application or that Patent Owner expressly abandoned the ’778 application. As a result, Petitioner does not establish a reasonable likelihood of showing that the PCT Publication is prior art under 35 U.S.C. § 102(b) against the challenged claims of the ’437 patent. For the foregoing reasons, we determine that Petitioner fails to establish sufficiently that the challenged claims are not entitled to the benefit of the ’002 application’s filing date. Consequently, Petitioner fails to make a threshold demonstration that the PCT Publication, to which the ’437 patent claims priority, is prior art against the challenged claims of the ’437 patent in this proceeding. 35 U.S.C. § 311(b); 37 C.F.R. § 42.104(b)(2). Accordingly, we conclude that Petitioner has not established a reasonable likelihood of prevailing on its assertion that claims 1, 12, 15, 16, 18, 30, 43 and 45 of the ’437 patent are unpatentable, as anticipated by the PCT Publication.” slip op. at 10
§ 102 anticipationPatents in suitUS 9,189,437 - ZTE (USA) Inc. v. Papst Licensing GmbH & Co. KGInstitution deniedPTAB · Jul 12, 2017 · IPR2017-00711 · APJ James B Arpin · IPR · Institution
The Board denied institution because Petitioner did not show the PCT Publication was prior art, so it failed to establish a reasonable likelihood of proving claims 1, 2, 16, 26, 28, 31, 41, 72, 80, …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an 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.” For the reasons set forth below, we determine that, on this record, Petitioner has not established a reasonable likelihood that it would prevail with respect to any of the challenged claims. We hereby decline to institute an inter partes review in this proceeding.” slip op. at 2
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedNot shown unpatentable
“Notably, 37 C.F.R. § 1.78(e) sets forth the following requirements for submitting an unintentionally delayed benefit claim under 35 U.S.C. §§ 120 and 365(c): (e) Delayed claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional application, international application, or international design application. If the reference required by 35 U.S.C. 120 and paragraph (d)(2) of this section is presented after the time period provided by paragraph (d)(3) of this section, the claim under 35 U.S.C. 120, 121, 365(c),or 386(c) for the benefit of a prior-filed copending nonprovisional application, international application designating the United States, or international design application designating the United States may be accepted if the reference required by paragraph(d)(2) of this section was unintentionally delayed. A petition to accept an unintentionally delayed claim under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed application must be accompanied by: (1) The reference required by 35 U.S.C. 120 and paragraph (d)(2) of this section to the prior-filed application, unless previously submitted; (2) The petition fee as set forth in § 1.17(m); and (3) A statement that the entire delay between the date the benefit claim was due under paragraph (d)(3) of this section and the date the benefit claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.3” slip op. at 8
§ 102 anticipationPatents in suitUS 8,966,144 - Ford Motor Company v. Versata Development Group, Inc.Rehearing deniedPTAB · Jul 6, 2017 · IPR2017-00151 · APJ James B Arpin · IPR · Rehearing
The Board denied Ford’s rehearing requests, leaving in place the denials of institution because the dismissals did not lift the § 315(b) time bar.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“[a] request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. It is not an abuse of discretion to have performed an analysis or reached a conclusion with which Petitioner disagrees, and mere disagreement with the Board’s analysis or conclusion is not a proper basis for rehearing. Sophos, Inc. v. Finjan, Inc., Case IPR2015-01022, slip op. at 3–4 (PTAB Jan. 28, 2016) (Paper 9).” slip op. at 13
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“to pursue courses of action available to them before the action had been brought.” Req. 7–8 (quoting Atlanta Gas, slip op. at 13). Unlike Atlanta Gas and the other cases cited by Petitioner, we are persuaded that, after the dismissal of the Versata action, the parties in the instant proceedings did not enjoy the restored ability to pursue courses of action available to them before the Versata action had been brought. The Ford action would remain the first action filed, so that a new action by Patent Owner filed in the U.S. District Court for the Eastern District of Texas would remain subject to the Eleventh Circuit’s first-to-file rule. See Merrill Lynch, Pierce, Fenner & Smith, Inc. v. Haydu, 675 F.2d 1169, 1174 (11th Cir. 1982) (“In the absence of compelling circumstances, the court initially seized of a controversy should be the one to decide the case.” (Emphasis added.)). Further, although the U.S. District Court for the Eastern District of Texas had asked the parties to provide any “good faith reasons” for maintaining the Versata action, Patent Owner responded that it did not oppose dismissal, and Petitioner chose not to respond. Dec. 7–8. Thus, on this record, we understand that either party could have argued to retain the Versata action, but that, after the dismissal, the parties no longer enjoyed the ability to bring this action in the U.S. District Court for the Eastern District of Texas.” slip op. at 9
- PTAB / AIA Trials › Real party in interest / privityNot reached
“Req. 11. As an initial matter, Section 315(b) requires us to look at both the action, as well as the asserted patent (i.e., “a complaint alleging infringement of the patent”). Petitioner does not contend, for example, that challenged patents (e.g., the ’651 patent) were not asserted in “a complaint alleging infringement” in the Versata action. Regardless, we disagree with Petitioner’s characterization of the Board’s decisions. In discussing the significance of the Versata and Ford actions, our focus clearly was on the actions as well. Dec. 11–12. In particular, we noted that in resolving the forum dispute in favor of the Michigan court, the respective courts treated the cases as if they were a single proceeding at least in terms of ability to assert claims and recognition of timing. Consequently, we agree that the relevant factor in determining whether the earlier complaint in the Versata action is operative for purposes of § 315(b) is the continuous assertion of the patent against Ford, not whether the case was formally consolidated. Id. at 12; see also Ex. 1131 (instructing the parties to provide good faith reasons why the Versata action should not be dismissed, “so that the issues may [be] dealt with in the Michigan court”). Further, regarding Petitioner’s arguments concerning the relative numbers of patents raised in the Versata action as compared to the Ford action and the allegedly differing “Versata parties” in Texas and Michigan, Petitioner did not raise these arguments during the Preliminary Proceedings, and we cannot have overlooked or misapprehended arguments not raised.” slip op. at 11
Discretionary denialPatents in suitUS 7,882,057 - Ford Motor Company v. Versata Development Group, Inc.Rehearing deniedPTAB · Jul 6, 2017 · IPR2017-00150 · APJ James B Arpin · IPR · Rehearing
Denied Ford’s rehearing requests, leaving institution denied because the earlier infringement complaint remained operative under § 315(b).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“[a] request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. It is not an abuse of discretion to have performed an analysis or reached a conclusion with which Petitioner disagrees, and mere disagreement with the Board’s analysis or conclusion is not a proper basis for rehearing.” slip op. at 13
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“to pursue courses of action available to them before the action had been brought.” Req. 7–8 (quoting Atlanta Gas, slip op. at 13). Unlike Atlanta Gas and the other cases cited by Petitioner, we are persuaded that, after the dismissal of the Versata action, the parties in the instant proceedings did not enjoy the restored ability to pursue courses of action available to them before the Versata action had been brought. The Ford action would remain the first action filed, so that a new action by Patent Owner filed in the U.S. District Court for the Eastern District of Texas would remain subject to the Eleventh Circuit’s first-to-file rule. See Merrill Lynch, Pierce, Fenner & Smith, Inc. v. Haydu, 675 F.2d 1169, 1174 (11th Cir. 1982) (“In the absence of compelling circumstances, the court initially seized of a controversy should be the one to decide the case.” (Emphasis added.)). Further, although the U.S. District Court for the Eastern District of Texas had asked the parties to provide any “good faith reasons” for maintaining the Versata action, Patent Owner responded that it did not oppose dismissal, and Petitioner chose not to respond. Dec. 7–8. Thus, on this record, we understand that either party could have argued to retain the Versata action, but that, after the dismissal, the parties no longer enjoyed the ability to bring this action in the U.S. District Court for the Eastern District of Texas.” slip op. at 9
- BurdenDecided for patent owner
“in resolving the forum dispute in favor of the Michigan court, the respective courts treated the cases as if they were a single proceeding at least in terms of ability to assert claims and recognition of timing. Consequently, we agree that the relevant factor in determining whether the earlier complaint in the Versata action is operative for purposes of § 315(b) is the continuous assertion of the patent against Ford, not whether the case was formally consolidated. Id. at 12; see also Ex. 1131 (instructing the parties to provide good faith reasons why the Versata action should not be dismissed, “so that the issues may [be] dealt with in the Michigan court”). Further, regarding Petitioner’s arguments concerning the relative numbers of patents raised in the Versata action as compared to the Ford action and the allegedly differing “Versata parties” in Texas and Michigan, Petitioner did not raise these arguments during the Preliminary Proceedings, and we cannot have overlooked or misapprehended arguments not raised.” slip op. at 12
Discretionary denialPatents in suitUS 7,882,057 - Ford Motor Company v. Versata Development Group, Inc.Rehearing deniedPTAB · Jul 6, 2017 · IPR2017-00147 · APJ James B Arpin · IPR · Rehearing
The Board denied Ford’s rehearing requests, leaving in place the denial of institution because § 315(b)’s time bar applied after the dismissal without prejudice.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“For these reasons, we were persuaded that, because the facts of the instant proceedings, namely, that the dismissal “was not pursuant to Rule 41(a), was not ‘voluntary,’ and, most importantly, did not leave the parties as though the action had never been brought,” are not sufficiently similar to the facts present in the precedential decisions, we are not bound to find that 5 As we noted in our decisions denying institution, in holding that the dismissal put the appellant in the position in which it would have been, had it never filed a notice of appeal, the Federal Circuit in Graves compared those circumstances with the voluntary dismissal in Bonneville, in which the “nullifying effect of a voluntary dismissal in accordance with Fed. R. Civ. P. 41(a)(1) was applied.” Dec. 6 (quoting Graves, 294 F.3d at 1356). the dismissal of the Versata action “without prejudice” necessarily lifted the Section 315(b) bar. 2. Creation of “Continuous Chain of Assertion” Exception” slip op. at 10
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“to pursue courses of action available to them before the action had been brought.” Req. 7–8 (quoting Atlanta Gas, slip op. at 13). Unlike Atlanta Gas and the other cases cited by Petitioner, we are persuaded that, after the dismissal of the Versata action, the parties in the instant proceedings did not enjoy the restored ability to pursue courses of action available to them before the Versata action had been brought. The Ford action would remain the first action filed, so that a new action by Patent Owner filed in the U.S. District Court for the Eastern District of Texas would remain subject to the Eleventh Circuit’s first-to-file rule. See Merrill Lynch, Pierce, Fenner & Smith, Inc. v. Haydu, 675 F.2d 1169, 1174 (11th Cir. 1982) (“In the absence of compelling circumstances, the court initially seized of a controversy should be the one to decide the case.” (Emphasis added.)). Further, although the U.S. District Court for the Eastern District of Texas had asked the parties to provide any “good faith reasons” for maintaining the Versata action, Patent Owner responded that it did not oppose dismissal, and Petitioner chose not to respond. Dec. 7–8. Thus, on this record, we understand that either party could have argued to retain the Versata action, but that, after the dismissal, the parties no longer enjoyed the ability to bring this action in the U.S. District Court for the Eastern District of Texas.” slip op. at 9
- BurdenDecided for patent owner
“We understand that Petitioner would weigh the relevant facts differently than we do. Nevertheless, [a] request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. It is not an abuse of discretion to have performed an analysis or reached a conclusion with which Petitioner disagrees, and mere disagreement with the Board’s analysis or conclusion is not a proper basis for rehearing. Sophos, Inc. v. Finjan, Inc., Case IPR2015-01022, slip op. at 3–4 (PTAB Jan. 28, 2016) (Paper 9).” slip op. at 13
Discretionary denialPatents in suitUS 7,464,064 - Ford Motor Company v. Versata Development Group, Inc.Rehearing deniedPTAB · Jul 6, 2017 · IPR2017-00146 · APJ James B Arpin · IPR · Rehearing
The Board denied Ford’s rehearing requests, leaving in place the denial of institution because the § 315(b) time bar applied after the Versata action was dismissed without prejudice.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“[a] request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. It is not an abuse of discretion to have performed an analysis or reached a conclusion with which Petitioner disagrees, and mere disagreement with the Board’s analysis or conclusion is not a proper basis for rehearing. Sophos, Inc. v. Finjan, Inc., Case IPR2015-01022, slip op. at 3–4 (PTAB Jan. 28, 2016) (Paper 9).” slip op. at 13
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“to pursue courses of action available to them before the action had been brought.” Req. 7–8 (quoting Atlanta Gas, slip op. at 13). Unlike Atlanta Gas and the other cases cited by Petitioner, we are persuaded that, after the dismissal of the Versata action, the parties in the instant proceedings did not enjoy the restored ability to pursue courses of action available to them before the Versata action had been brought. The Ford action would remain the first action filed, so that a new action by Patent Owner filed in the U.S. District Court for the Eastern District of Texas would remain subject to the Eleventh Circuit’s first-to-file rule. See Merrill Lynch, Pierce, Fenner & Smith, Inc. v. Haydu, 675 F.2d 1169, 1174 (11th Cir. 1982) (“In the absence of compelling circumstances, the court initially seized of a controversy should be the one to decide the case.” (Emphasis added.)). Further, although the U.S. District Court for the Eastern District of Texas had asked the parties to provide any “good faith reasons” for maintaining the Versata action, Patent Owner responded that it did not oppose dismissal, and Petitioner chose not to respond. Dec. 7–8. Thus, on this record, we understand that either party could have argued to retain the Versata action, but that, after the dismissal, the parties no longer enjoyed the ability to bring this action in the U.S. District Court for the Eastern District of Texas.” slip op. at 9
Discretionary denialPatents in suitUS 5,825,651 - Ford Motor Company v. Versata Development Group, Inc.Rehearing deniedPTAB · Jul 6, 2017 · IPR2017-00144 · APJ James B Arpin · IPR · Rehearing
The Board denied Ford’s rehearing requests and left in place the denial of institution because the § 315(b) time bar was not lifted by the dismissal without prejudice.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“B. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The request must identify, with specificity, all matters that the moving party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“to pursue courses of action available to them before the action had been brought.” Req. 7–8 (quoting Atlanta Gas, slip op. at 13). Unlike Atlanta Gas and the other cases cited by Petitioner, we are persuaded that, after the dismissal of the Versata action, the parties in the instant proceedings did not enjoy the restored ability to pursue courses of action available to them before the Versata action had been brought. The Ford action would remain the first action filed, so that a new action by Patent Owner filed in the U.S. District Court for the Eastern District of Texas would remain subject to the Eleventh Circuit’s first-to-file rule. See Merrill Lynch, Pierce, Fenner & Smith, Inc. v. Haydu, 675 F.2d 1169, 1174 (11th Cir. 1982) (“In the absence of compelling circumstances, the court initially seized of a controversy should be the one to decide the case.” (Emphasis added.)). Further, although the U.S. District Court for the Eastern District of Texas had asked the parties to provide any “good faith reasons” for maintaining the Versata action, Patent Owner responded that it did not oppose dismissal, and Petitioner chose not to respond. Dec. 7–8. Thus, on this record, we understand that either party could have argued to retain the Versata action, but that, after the dismissal, the parties no longer enjoyed the ability to bring this action in the U.S. District Court for the Eastern District of Texas.” slip op. at 9
Discretionary denialPatents in suitUS 7,200,582 - Ford Motor Company v. Versata Development Group, Inc.Rehearing deniedPTAB · Jul 6, 2017 · IPR2017-00149 · APJ James B Arpin · IPR · Rehearing
The Board denied Ford’s rehearing requests, leaving intact the denials of institution because the § 315(b) time bar applied.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“B. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The request must identify, with specificity, all matters that the moving party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“Petitioner would have us apply the words “without prejudice” to talismanic effect, by which the consequence of the service of an infringement complaint that occurred more than one year prior to the filing of a petition is magically erased from every case in which those words appear and the bar of Section 315(b) disappears. This is simply not how precedent is applied. Rather, as we noted in our decisions denying institution, the Board consistently has looked to the underlying facts to determine what effect should be given to a dismissal without prejudice. Dec. 10–11; see Apple, Inc. v. Rensselaer Polytechnic Inst., Case IPR2014- 00319, slip op. 6–7 (PTAB June 12, 2014) (Paper 12) (“Apple I”), reh’g denied (Paper 14) (“Apple II”)4 (collectively, “Apple”); Gordon Howard Assocs., Inc. v. Lunareye, Inc., Case IPR2014-01213, slip op. at 13–15 (PTAB Feb. 3, 2015) (Paper 11) (“Lunareye”); Nautique Boats Co. v. Malibu Boats, LLC, Case IPR2014-01045, slip op. at 10 (PTAB Nov. 26, 2014) (Paper 13); Histologics, LLC v. CDx Diagnostics, Inc., Case IPR2014- 00779, slip op. at 5 (PTAB Sept. 12, 2014) (Paper 6); eBay, Inc. v. Adv. Auctions LLC, Case IPR2014-00806, slip op. at 6–8 (PTAB Sept. 25, 2014) (Paper 14). The Board, however, has not made the decisions in any of these cases precedential. Therefore, although we considered the reasoning of the” slip op. at 7
Discretionary denialPatents in suitUS 6,675,294 - Ford Motor Company v. Versata Development Group, Inc.Rehearing deniedPTAB · Jul 6, 2017 · IPR2017-00148 · APJ James B Arpin · IPR · Rehearing
The Board denied Ford’s rehearing requests, leaving institution denied because the voluntary-dismissal exception did not lift the § 315(b) time bar on these facts.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“[a] request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. It is not an abuse of discretion to have performed an analysis or reached a conclusion with which Petitioner disagrees, and mere disagreement with the Board’s analysis or conclusion is not a proper basis for rehearing. Sophos, Inc. v. Finjan, Inc., Case IPR2015-01022, slip op. at 3–4 (PTAB Jan. 28, 2016) (Paper 9). Contrary to Petitioner’s contention, we do not create a further exception to the precedential exception created by Oracle in view of Bonneville and Graves, but, instead, merely find that the facts of the instant proceedings are sufficiently different from those present in the precedential decisions that we are not bound to expand the exception to Section 315(b) that they created regarding the effects of a dismissal “without prejudice” to the facts of the instant proceedings. Therefore, as stated in the decisions denying institution, we maintain that “the circumstances here do not warrant a departure from the statutory language of § 315(b) in favor of extending the exception for voluntary dismissals without prejudice to a case where the dismissal without prejudice was not voluntary and did not leave the parties in the position they were in had the action never been filed.” Dec. 12.” slip op. at 13
- PTAB / AIA Trials › §315(b) time barInstitution denied time barDecided for patent owner
“to pursue courses of action available to them before the action had been brought.” Req. 7–8 (quoting Atlanta Gas, slip op. at 13). Unlike Atlanta Gas and the other cases cited by Petitioner, we are persuaded that, after the dismissal of the Versata action, the parties in the instant proceedings did not enjoy the restored ability to pursue courses of action available to them before the Versata action had been brought. The Ford action would remain the first action filed, so that a new action by Patent Owner filed in the U.S. District Court for the Eastern District of Texas would remain subject to the Eleventh Circuit’s first-to-file rule. See Merrill Lynch, Pierce, Fenner & Smith, Inc. v. Haydu, 675 F.2d 1169, 1174 (11th Cir. 1982) (“In the absence of compelling circumstances, the court initially seized of a controversy should be the one to decide the case.” (Emphasis added.)). Further, although the U.S. District Court for the Eastern District of Texas had asked the parties to provide any “good faith reasons” for maintaining the Versata action, Patent Owner responded that it did not oppose dismissal, and Petitioner chose not to respond. Dec. 7–8. Thus, on this record, we understand that either party could have argued to retain the Versata action, but that, after the dismissal, the parties no longer enjoyed the ability to bring this action in the U.S. District Court for the Eastern District of Texas.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied time barInstitution denied
“For these reasons, we were persuaded that, because the facts of the instant proceedings, namely, that the dismissal “was not pursuant to Rule 41(a), was not ‘voluntary,’ and, most importantly, did not leave the parties as though the action had never been brought,” are not sufficiently similar to the facts present in the precedential decisions, we are not bound to find that 5 As we noted in our decisions denying institution, in holding that the dismissal put the appellant in the position in which it would have been, had it never filed a notice of appeal, the Federal Circuit in Graves compared those circumstances with the voluntary dismissal in Bonneville, in which the “nullifying effect of a voluntary dismissal in accordance with Fed. R. Civ. P. 41(a)(1) was applied.” Dec. 6 (quoting Graves, 294 F.3d at 1356). the dismissal of the Versata action “without prejudice” necessarily lifted the Section 315(b) bar. 2. Creation of “Continuous Chain of Assertion” Exception” slip op. at 10
Discretionary denialPatents in suitUS 6,405,308
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.