- PTAB · Mar 8, 2024 · IPR2023-01271 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR of claims 1 and 2 on all petitioned grounds, finding a reasonable likelihood that Lemay alone or with Alfke renders the claims unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“under 37 C.F.R. § 42.4(a), we may institute an inter partes review when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108(c) (2023). Applying that standard, we institute an inter partes review of all the challenged claims of the ’839 patent for the reasons explained below. This is a preliminary decision, and we will base our final written decision on the full trial record.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party suggests that any claim term departs from its ordinary and customary meaning, and we are aware of no evidence at this stage to suggest otherwise. And for our decision, we do not need to construe any of the terms explicitly. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We discuss the claim terms below in the context of the prior art.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“limitations 1.e(i)–(ix) in view of Alfke. LG sufficiently demonstrates the motivation to combine Lemay with Alfke because Lemay specifically teaches that Alfke’s message-processing disclosures are applicable to the embodiments in Lemay. Ex. 1005, 11:33–41; Pet. 5 n.2; Ex. 1003 ¶ 57. Alfke likewise specifically teaches that its disclosures are applicable to Lemay’s user interface. Ex. 1006, 11:4–12. Pantech also argues that LG’s obviousness arguments based on Lemay are deficient because they are conclusory, provide insufficient rationale, and incorporate material by reference from Dr. Madisetti’s declaration. Prelim. Resp. 28–30. We disagree that LG’s arguments are deficient in this respect because, to the extent (if any) that Alfke is not incorporated by reference into Lemay, the motivation to combine the references appears to be set forth in the references themselves.” slip op. at 19
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,283,839 - Google LLC v. Buffalo Patents, LLCInstitutedPTAB · Mar 7, 2024 · IPR2023-01387 · APJ Mahshid D Saadat · IPR · Institution
The Board instituted IPR on claims 1–16 and 19, finding a reasonable likelihood that Google would prevail on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. Upon consideration of the contentions and the evidence of record before us, we conclude Petitioner has shown a reasonable likelihood that it would prevail in establishing unpatentability of at least one challenged claim of the ’737 patent. Accordingly, we institute an inter partes review of all challenged claims of the ’737 patent on all grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Citing testimony from Christopher Schmandt, Petitioner contends a person of ordinary skill in the art “would have at least a bachelor’s degree in computer engineering, computer science, electrical engineering, or a similar field, and approximately three years of industry or academic experience in a field related to acoustics, speech recognition, speech detection, handwriting recognition, or signal processing.” Pet. 5 (citing Decl. ¶ 35). Petitioner further notes that “[w]ork experience can substitute for formal education and additional formal education can substitute for work experience.” Id. At this preliminary stage and on this record, we adopt Petitioner’s statement of the level of ordinary skill in the art. It is supported by the testimony of Christopher Schmandt and not disputed by Patent Owner. Further, it appears consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner states that “[n]o terms require construction because the claims encompass the prior-art mappings under any reasonable construction consistent with the Phillips standard.” Pet. 5–6 (citing 37 C.F.R. § 42.100(b); Phillips, 415 F.3d 1303). On the current record, we agree with Petitioner’s contention, not disputed by Patent Owner, that it is not necessary to construe any claim term expressly. D.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“(1) Motivation to Combine Ditzik and Tchorzewski Petitioner explains that a POSITA would have been motivated to combine Ditzik and Tchorzewski because they are in the same field of endeavor as each other and the ’737 patent, directed to improving speech and handwriting recognition accuracy, and would have done so with a reasonable expectation of success. Pet. 21–22. According to Petitioner, one of ordinary skill in the art “would look to Tchorzewski when considering ways to improve Ditzik’s system” when multiple user’s use Ditzik’s tablet, each using a specific stored user message model to improve handwriting and speech recognition. Id. at 21 (citing Ex. 1005, 3:9–48; Ex. 1007, 1:5–19, 1:30–2:22; Decl. ¶¶ 68–69). Petitioner explains that the ordinary skilled artisan would have found the user-specific speech and handwriting recognition compatible with the system disclosed in Tchorzewski, where using different user message models would have “involved combining known elements according to known speech and handwriting recognition methods to yield the predictable result of improving user specificity for accurate recognition.” Id. at 21–22 (citing Decl. ¶ 69). Petitioner’s assertion is supported by the cited evidence and not disputed by Patent Owner. At this stage, and on this record, we determine that Petitioner has cited sufficient evidence and provided sufficient articulated reasoning to explain why, at the time of the filing of the ’737 patent, one of ordinary skill would have been motivated to combine the teachings of Ditzik and Tchorzewski to meet the limitation 1[c] of claim 1 in the manner proposed by Petitioner with a reasonable expectation of success.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,204,737 - Google LLC v. Buffalo Patents, LLCInstitutedPTAB · Mar 7, 2024 · IPR2023-01386 · APJ Jameson Lee · IPR · Institution
The Board instituted IPR on claims 1–12 on all asserted grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. Upon consideration of the contentions and the evidence of record before us, we conclude Petitioner has shown a reasonable likelihood that it would prevail in establishing unpatentability of at least one challenged claim of the ’405 patent. Accordingly, we institute an inter partes review of all challenged claims of the ’405 patent on all grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art “would have at least a bachelor’s degree in computer engineering, computer science, electrical engineering, or a similar field, and approximately three years of industry or academic experience in a field related to acoustics, speech recognition, speech detection, handwriting recognition, or signal processing.” Pet. 22–23 (citing Ex. 1004 ¶¶ 33–37). Petitioner further notes that “[w]ork experience can substitute for formal education and additional formal education can substitute for work experience.” Id. at 23. At this preliminary stage and on this record, we adopt Petitioner’s statement of the level of ordinary skill in the art. It is supported by the 5 The present record does not include any evidence of secondary considerations of nonobviousness. testimony of Christopher Schmandt and not disputed by Patent Owner. Further, it appears consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). C.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner states that “no terms require construction because the claims encompass the prior-art mappings under any reasonable construction consistent with the Phillips standard.” Pet. 23 (citing Ex. 1004 ¶¶ 38–42). On the current record, we agree with Petitioner’s contention, not disputed by Patent Owner, that it is not necessary to conduct express claim construction for any claim term.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,904,405 - PTAB · Mar 4, 2024 · IPR2023-01239 · APJ Michael J Strauss · IPR · Institution
The Board instituted IPR on claims 1, 2, 4, 5, 7, 11, 12, 14–18, 20–23, and 25–29 on all three asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2023). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the arguments and evidence presented, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim, and accordingly, we institute an inter partes review as to all challenged claims of the ’101 patent on the grounds of unpatentability presented. See 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Other 314aDecided for petitioner
“We are not persuaded it would be appropriate to deny institution merely on the basis of alleged trivial errors such as those identified by Patent Owner. See Prelim Resp. 1. To the extent Petitioner “cit[ed] the wrong Wang reference” (id.), this error was addressed in and corrected pursuant to our November 29, 2023, Order Granting Motion to Correct Clerical or Typographical Mistakes (Paper 13), entered prior to Patent Owner’s filing of the Preliminary Response, with Petitioner subsequently filing a corrected Petition and Declaration of Clifford Reader, Ph.D. Moreover, Patent Owner does not cite to any authority in support of discretionary denial of institution based on findings that a petitioner has not given a petition “due attention.” Cf. USPTO Notice of Proposed Rule Making “Changes Under Consideration to Discretionary Institution Practices, Petition Word-Count Limits, and Settlement Practices for America Invents Act Trial Proceedings Before the Patent Trial and Appeal Board”, 88 Fed. Reg. 24,503 (April 21, 2023) available at https://www.govinfo.gov/content/pkg/FR-2023-04-21/pdf/2023- 08239.pdf. Accordingly, we decline to deny institution based on these arguments. 2. Identification of Claim Construction, Structure or Acts Corresponding to Means-Plus-Function Limitations Patent Owner asserts that the requested inter partes review should be” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“the ’101 patent, the Examiner cited, inter alia, the Hejna prior art reference but did not apply or reject the claims based on that or any other prior art reference. Ex. 1002, 37, 39. There is no disagreement the Chou reference was never cited or considered by the Examiner. Under Becton, Dickinson factor (a), we consider the similarities and material differences between the asserted Chou and Hejna references. Patent Owner contends “[a]lthough Petitioner argues that Chou discloses or renders obvious element [1d], examination of the actual disclosure of Chou reveals that its disclosure is substantially the same as Hejna, prior art of record.” Prelim. Resp. 46. Patent Owner argues that Chou’s disclosures of (1) selecting a target arrival time for each frame sufficiently in advance of its playback time, (2) controlling an upper bound on the time of arrival of bits into the client buffer, and (3) selection of a code rate such that the frame’s arrival time is as close to the target arrival time as possible, relied upon by Petitioner for teaching limitation [1d], are substantially the same as that of Hejna. Id. at 46–47 (citing Pet. 35; Chou, Ex. 1004 ¶¶ 19, 27; Hejna, Ex. 2011, 4:60–63, 8:50–57, 14:3–7). Addressing Becton, Dickinson factors (a) and (b), Patent Owner fails to persuade us that Chou’s disclosure is substantially the same as or cumulative of Hejna’s. Even if, as alleged by Patent Owner, Hejna discloses subject matter corresponding to that disclosed by Chou, which subject matter is asserted by Petitioner as teaching claim 1’s element [1d], it is not clear why the disclosures are otherwise substantially the same. Although recognizing the Examiner’s reasons for allowance are based on the combination of limitations corresponding to claim 1’s elements [1b], [1d], and [1e], Patent Owner’s argument addresses only Petitioner’s reliance on Chou for teaching claim 1’s element [1d]. See Prelim. Resp. 46. Furthermore, evidence extrinsic to the disclosures themselves does not suggest Chou’s disclosure is likely to be the same or substantially the same as Hejna. For example, the two references list no inventor in common, do not relate back to a common priority document, we ascertain no commonly cited prior art references cited during their respective prosecutions, nor do we find any other indicia that the disclosures are the same or substantially the same. Compare Ex. 1004, code (75), with Ex. 2011, codes (56), (75).” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundInstituted
“(ii) Motivations to Combine Second, at this preliminary stage, we are not persuaded by Petitioner’s contentions that a POSITA would have been motivated to combine the teachings of Chou and Wang. Pet. 74. As argued by Patent Owner, “Wang and Chou are directed to different technologies—active encoding applications and transport-layer protocols,” (see Prelim. Resp. 30, 34–35), and Petitioner does not persuasively explain, for example, why the two methods would be combined into a single method rather than implemented independently in their respective transport and application layers. (iii) Scope of Wang’s Teaching vis-à-vis Limitation [1d] Petitioner states “[i]f [Patent Owner] argues Chou doesn’t teach [1d], Wang does” (Pet. 62), concluding “Wang teaches calculating a change in code rate based on both the remaining time before reproduction start time and an available reproduction time, as required by [1d]” (id. at 63). Apart from a bare cross-reference to Ground 1 (see Pet. 62 (“See Ground 1, [1d]”)), Petitioner does not make any reference to Chou for teaching any aspect of limitation [1d] in connection the combination of Ground 2 (see generally id. at 62–65). Furthermore, although contending that “Chou and Wang both disclose controlling code rate to control buffer duration/fullness to prevent buffer underflow” (id. at 72), Petitioner does not clearly indicate that a POSITA would have had reason to combine Wang’s teaching of criteria used to maintain buffer fullness with Chou’s teaching of determining a code rate where the code rate “represents the data amount (the data size, e.g., the number of bytes) of content data for reproducing content at constant speed (reproducing content at 1x speed) for a unit time (e.g., one second)” (Ex. 1001, 7:7–11). Therefore, at this preliminary stage, we treat Petitioner’s Ground 2 as relying on Wang alone for teaching [1d].” slip op. at 54
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,752,101 - PTAB · Feb 7, 2024 · IPR2023-01241 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR on claims 10–13, 19, 21, and 33 on all petition grounds after finding a reasonable likelihood of success on claim 10 under § 103 over Ueda and the SIP and SDP …
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We find Peloton’s argument persuasive that Aarts and Ueda differ materially, at least in that Aarts does not disclose “play-list information.” See Ex. 1002, 533–34. It does not matter whether that limitation is “central” to the challenged claims, because an obviousness determination “requires a suggestion of all limitations in a claim.” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (emphasis added) (citing In re Gulack, 703 F.2d 1381, 1385 n.9 (Fed. Cir. 1983); In re Royka, 490 F.2d 981, 985 (CCPA 1974)).” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“General Plastic applies to the situation where a petitioner filed multiple, staggered petitions “challenging the same patent and same claims.” See Gen. Plastic, IPR2016-01357, Paper 19 at 9–10, 16–17; see also Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, Paper 11 at 9 (PTAB Apr. 2, 2019) (precedential). But here, Peloton initiated this proceeding and IPR2023-01240 on the same day. These circumstances do not implicate the roadmapping concerns that General Plastic seeks to alleviate. See Gen. Plastic, IPR2016-01357, Paper 19 at 16–17. Discretionary denial on the basis that a petitioner has filed multiple concurrent petitions challenging the same patent is addressed in the Consolidated Trial Practice Guide (Nov. 2019) (“Trial Practice Guide”), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf. The Trial Practice Guide states that, “[b]ased on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations,” because too many petitions “may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns.” Id. at 59. But “there may be circumstances in which more than petition may be necessary.” Id.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“A claim is unpatentable under § 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 said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). When a ground in a petition is based on a combination of references, we consider “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We base our obviousness inquiry on factual considerations including (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 skill in the art, and (4) any objective indicia of obviousness or non-obviousness that may be in evidence. See Graham, 383 U.S. at 17–18. Considering these factors,14 we determine that Peloton has shown a reasonable likelihood that claim 10 is unpatentable as obvious over Ueda in view of the SIP and SDP Standards, for the reasons explained below.” slip op. at 24
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Peloton argues that a person of ordinary skill in the art “would have had a bachelor’s degree, or equivalent, in electrical engineering, computer science, or a related field, and 2–3 years of experience researching, designing, or developing content delivery systems and related hardware, software, and firmware, or equivalent experience.” Pet. 4 (citing Ex. 1008 ¶¶ 36–40). NEC agrees. See Prelim. Resp. 4 (citing Ex. 2001 ¶ 22). Because it is presently uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’427 patent, we adopt the above articulation of the level of ordinary skill for this decision.” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,769,427 - PTAB · Feb 7, 2024 · IPR2023-01240 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR on claims 1–9, 14–18, 20, 22, 32, and 34–36, finding a reasonable likelihood that claim 1 is obvious over Ueda, the SIP Standard, and the SDP Standard.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We find Peloton’s argument persuasive that Aarts and Ueda differ materially, at least in that Aarts does not disclose “play-list information.” See Ex. 1002, 533–34. It does not matter whether that limitation is “central” to the challenged claims, because an obviousness determination “requires a suggestion of all limitations in a claim.” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (emphasis added) (citing In re Gulack, 703 F.2d 1381, 1385 n.9 (Fed. Cir. 1983); In re Royka, 490 F.2d 981, 985 (CCPA 1974)).” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“13. Conclusion as to Claim 1 For the above reasons, we determine that Peloton has shown, sufficiently persuasively at this stage, that Ueda in combination with the SIP and SDP Standards teaches all the limitations of claim 1, and that a person of ordinary skill in the art would have had reason to combine the features of each reference as Peloton argues in the Petition. We therefore determine that Peloton is reasonably likely to prevail in showing that claim 1 is unpatentable under § 103(a) as obvious over Ueda in view of the SIP Standard and the SDP Standard.” slip op. at 45
- Skill levelSkill level board ownOther
“had a bachelor’s degree, or equivalent, in electrical engineering, computer science, or a related field, and 2–3 years of experience researching, designing, or developing content delivery systems and related hardware, software, and firmware, or equivalent experience.” Pet. 4 (citing Ex. 1008 ¶¶ 36–40). NEC agrees. See Prelim. Resp. 4 (citing Ex. 2001 ¶ 22). Because it is presently uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’427 patent, we adopt the above articulation of the level of ordinary skill for this decision.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1. “equipment specification information” First, Peloton contends that we should interpret the term equipment specification information to mean “an identifier for identifying the user equipment” because in several figures of the ’427 patent, SIP messages include SIP URIs (Uniform Resource Identifiers) associated with the user requesting the content. See Pet. 9 (emphasis omitted). NEC disagrees with Peloton’s proposed construction and argues that “this term should be given its plain and ordinary meaning.” Prelim. Resp. 12. NEC contends that no particular construction is necessary because the term is not relevant to the contested issues in the Petition. See id. Based on the preliminary evidence, we agree with NEC that the term has its ordinary and customary meaning, but we need not construe the term explicitly at this stage. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,769,427 - PTAB · Jan 31, 2024 · IPR2024-00298 · APJ Ryan H Flax · IPR · Institution
Instituted IPR on claims 1–30 of the ’572 patent on all asserted grounds and granted Biocon’s motion to join IPR2023-00884.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We explained in our Institution Decision in IPR’884 why we conclude that Samsung demonstrated a reasonable likelihood of prevailing at trial in showing that the challenged claims are unpatentable. See generally IPR’884 DI. The present Petition advances identical arguments, challenging the same claims over the same combinations of prior art. We consequently adopt the same reasoning here as in our IPR’884 Institution Decision, and conclude that Petitioner is likely to prevail in demonstrating the unpatentability of the same challenged claims. Id. We incorporate our previous analysis regarding the asserted grounds of unpatentability and conclude that Petitioner demonstrates a reasonable likelihood of prevailing at trial with respect to at least one claim of the ’572 patent challenged in the Petition for the same reasons as in IPR’884. See id. Therefore, we determine that the Petition warrants institution of inter partes review on all claims and all grounds asserted in the Petition. 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”); see also SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“joinder is discretionary. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. We determine whether to grant joinder on a case-by-case basis, taking into account the particular facts of each case, substantive and procedural issues, and other considerations. When exercising that discretion, we are mindful that patent trial regulations, including the rules for joinder, must be construed to secure the just, speedy, and inexpensive resolution of every proceeding. See 35 U.S.C. § 316(b); 37 C.F.R. § 42.1(b). As the moving party, Petitioner bears the burden of proving that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder should: (1) set forth the reasons joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; and (3) explain what impact (if any) joinder would have on the trial schedule for the existing review. See Kyocera Corp. v. Softview, LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013); see also, USPTO, America Invents Act (AIA) Frequently Asked Questions,” available at: uspto.gov/patents/laws/americainvents-act-aia/america-invents-act-aia-frequently-asked#type-inter-partesreview_3244 (last visited February 2, 2022). B.” slip op. at 10
NonePatents in suitUS 11,253,572 - PTAB · Jan 30, 2024 · IPR2024-00260 · APJ Ryan H Flax · IPR · Institution
Instituted review of claims 1–30 on all asserted grounds and granted Celltrion’s motion to join IPR2023-00884.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We explained in our Institution Decision in IPR’884 why we conclude that Samsung demonstrated a reasonable likelihood of prevailing at trial in showing that the challenged claims are unpatentable. See generally IPR’884 DI. The present Petition advances identical arguments, challenging the same claims over the same combinations of prior art. We consequently adopt the same reasoning here as in our IPR’884 Institution Decision, and conclude that Petitioner is similarly likely to prevail in demonstrating the unpatentability of the same challenged claims. Id. We incorporate our previous analysis regarding the asserted grounds of unpatentability and conclude that Petitioner demonstrates a reasonable likelihood of prevailing at trial with respect to at least one claim of the ’572 patent challenged in the Petition for the same reasons as in IPR’884. See id. Based on the record before us, we determine that the Petition warrants institution of inter partes review on all claims and all grounds asserted in the Petition. 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”); see also SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 11
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Petitioner certifies and we agree that the Petition is substantively identical to that of IPR’884, where we found Samsung had met its burden to show a reasonable likelihood it would prevail at trial in establishing at least one challenged claim unpatentable under the asserted grounds. Mot. 5; see generally IPR’884 DI. Petitioner also certifies, and we agree, that it relies on the same evidence here as in IPR’884. Mot. 5. Patent Owner waives its right to file a preliminary response in this proceeding, for the sake of efficiency. See Paper 7, 2. Petitioner also certifies that it will be a “silent understudy” to Samsung in IPR’884 if the proceedings are joined, thus, there will be no impact to the schedule of that instituted trial. Mot. 5–6. Moreover, Petitioner asserts that, structured in this way, the joined proceeding will simplify briefing and discovery (i.e., they will be singular, rather than occurring in two proceedings). Id. at 6–7.” slip op. at 12
NonePatents in suitUS 11,253,572 - PTAB · Jan 16, 2024 · IPR2024-00201 · APJ John G New · IPR · Institution
The Board instituted review of claims 10–12, 17–19, 21, 25–28, and 33 on three §103 grounds, and granted Biocon’s motion to join IPR2023-00739.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“concluded that Samsung had demonstrated a reasonable likelihood of prevailing at trial in showing that the challenged claims are unpatentable. See, generally, -00739 IPR, Paper 9 (“Inst. Dec.”). The present Petition advances essentially identical arguments, challenging the same claims over the same combinations of prior art. We consequently adopt the same reasoning as in our -00739 Institution Decision, and conclude that Petitioner is similarly likely to prevail in demonstrating the unpatentability of the same challenged claims.” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“(c) JOINDER. — If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. As the moving party, Petitioner bears the burden of proving that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder should: (1) set forth the reasons joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; and (3) explain what impact (if any) joinder would have on the trial schedule for the existing review. See Kyocera Corp. v. Softview, LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013); see also, USPTO, America Invents Act (AIA) Frequently Asked Questions,” available at: uspto.gov/patents/laws/americainvents-act-aia/america-invents-act-aia-frequently-asked#type-inter-partes-review_3244 (last visited February 2, 2022). We are persuaded by Petitioner’s arguments that joinder in these circumstances is appropriate. Petitioner undertakes to act as a “silent understudy” in the joined inter partes reviews and to take no active role in the joined inter partes reviews, unless Samsung ceases to act as a party. Mot. 6–7. The challenged claims and grounds of the Petition are identical to those of the -00739 IPR. Id. at 7. Petitioner’s Motion is timely and should have no effect upon the trial schedule established for the -00739 IPR. Id. at 8.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“As for the Fintiv factors, we considered Patent Owner’s arguments in the Institution Decision of the -00739 IPR, and we find the substantially same arguments in Patent Owner’s Opposition no more persuasive upon repetition. See Inst. Dec. 55–61. Again, we emphasize that although trial may have concluded in the district court litigation, as well as in the -01226 IPR, there nevertheless remains a substantial number of ’601 patent claims that have been challenged only in the -00739 IPR. We conclude that this fact warrants exercise of our discretion to institute inter partes review and to grant Petitioner’s Motion for Joinder of the present inter partes review with the -00739 IPR.” slip op. at 9
Discretionary denialPatents in suitUS 10,888,601 - PTAB · Jan 10, 2024 · IPR2023-01197 · APJ Jeffrey S Smith · IPR · Institution
Instituted review of claims 1–8 on all petition grounds and joined Amazon to the Apple IPR, finding a reasonable likelihood of unpatentability and no basis for discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied discretionary otherDecided for petitioner
“deny institution in the absence of a Sotera stipulation from Amazon. First, we find no unfairness or prejudice in the fact that Apple has submitted a Sotera stipulation but Amazon has not. In this proceeding, Fintiv factors 1– 5, as a whole, weigh heavily against discretionary denial even without Amazon offering a Sotera stipulation and without any showing of compelling merits. Most significantly, the Board will be deciding the patentability issues raised in the Petition well before the scheduled trial date in the parallel district court proceeding. Thus, even if Amazon had submitted a Sotera stipulation, this would not change our decision to institute an inter partes review and join this case to the Apple IPR. Although a petitioner has the option to submit a Sotera stipulation, no such stipulation is required where the Fintiv factors as a whole do not otherwise weigh in favor of discretionary denial. For the above reasons, we determine that the efficiency and integrity of the patent system are best served by instituting inter partes review, and we decline to deny institution discretionarily under 35 U.S.C. § 314(a).” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Because the issues presented in Amazon’s Petition are identical to those in the Apple IPR, we determine for the same reasons that there is a reasonable likelihood that Amazon would prevail in showing that at least one of claims 1–8 is unpatentable under the grounds of the Petition. Therefore, we institute inter partes review for the same reasons stated in our Decision on Institution in the Apple IPR. See IPR2023-00037, Paper 10.” slip op. at 12
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“discretion, when warranted, to join as a party to an instituted inter partes review any other party who properly files a petition, after the patent owner has had the opportunity to file a preliminary response. 35 U.S.C. § 315(c). As the moving party, Amazon bears the burden of proving that it is entitled to the requested joinder. See 37 C.F.R. § 42.20(c). In deciding whether to join a case, we consider (1) the reasons why joinder is appropriate, (2) whether the petition raises any new grounds of unpatentability, (3) any impact that joinder would have on the cost and trial schedule for the existing review, and (4) whether joinder will add to the complexity of briefing or discovery. Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013); Patent Trial and Appeal Board, Consolidated Trial Practice Guide, 76 (Nov. 2019), https://www.uspto.gov/sites/default/files/ documents/tpgnov.pdf. According to Amazon, its “Petition is intentionally identical in substance to the Apple Petition.” Mot. 2; see also Mot. 4. Amazon also argues that the schedule of the joined cases “would be unaffected, no additional briefing or discovery would be required, and no additional burdens would be placed on [Zentian].” Mot. 3; see also Mot. 4. Further, Amazon “agree[s] to take an ‘understudy’ role as long as Apple remains a party to the Apple IPR,” and that it “will not make any substantive filings and shall be bound by the filings of Apple,” and will not pursue its own arguments, evidence, or discovery unless the matter of termination or settlement arises or there are issues involving only Amazon. Mot. 5–6. Thus, according to Amazon, Zentian would not suffer prejudice if the two proceedings are joined. Mot. 6. Apart from its arguments discussed above in the context of discretionary denial, Zentian does not dispute the above contentions by Amazon and does not point to any particular prejudice relating to joining the two proceedings. In light of these considerations, Amazon has shown that joinder to the Apple IPR is appropriate in this case. Therefore, we grant Amazon’s Motion for Joinder.” slip op. at 12
Discretionary denialPatents in suitUS 10,971,140
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.