- Apple Inc. v. Smith Interface Technologies, LLCInstitution deniedPTAB · Feb 13, 2025 · IPR2024-01118 · APJ Nathan A Engels · IPR · Institution
The Board denied institution of IPR2024-01118, finding seven parallel petitions unjustified and exercising discretion to deny this sixth-ranked petition.
RulingsInstitution decision- Parallel petitionsInstitution denied
“Petitioner’s primary argument is that seven petitions were required because the common sections needed to be repeated in each petition, which left few words for arguments directed to new claims (given word count limits). See Ranking Notice 2–3. But this argument is premised on an assumption that these common sections “require[d] approximately 8,350 words” (id. at 3), and Petitioner has not persuasively shown that so many words were actually required for these sections. Petitioner includes no explanation or justification of the length of the sections, but instead, it simply assumes that the words used were required. Having reviewed the analysis in those sections, we do not agree. In other words, although we agree that the common sections needed to be repeated in each petition (and that this reduced the number of words available for other analysis), we are not persuaded that the common sections required approximately 8,350 words. A petitioner is certainly entitled to allocate its words as it sees fit, and we typically have no reason to evaluate those strategic decisions; however, we agree with Patent Owner (see Ranking Response 3) that Petitioner cannot 12 A petitioner is not entitled to an unlimited number of petitions (see Trial Practice Guide 59–61); instead, we determine whether the circumstances justify additional petitions (see id. at 59–60). This approach conforms with the rationale behind imposing a word count limit on petitions. See id. at 39 (discussing the reasons for establishing word count limits and urging parties to present “concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.”). words for its analysis (given the Board’s word count limits) unless Petitioner’s analysis was concise. As a consequence, we reviewed the content of the common sections— i.e., the analysis of claim 2, the summary of the ’754 patent and prior art, the articulation of the level of skill in the art and claim construction, and the other preliminary comments—and we are not persuaded that they are sufficiently concise to support Petitioner’s argument. Claim 2 is only fifteen lines long, and its technology is relatively simple, yet Petitioner’s analysis of this claim stretches for seventeen pages. See Pet. 26–43. Petitioner provides no general information about the technology and submits that no claims need to be construed (id. at 8–9), yet Petitioner provides a six-page summary of the ’754 patent and its prosecution history (see id. at 3–8). Also, Petitioner provides a twelve-page summary of Ahn and Chaudhri (see id. at 9–21), despite the fact that neither reference is particularly long. Indeed, as Patent Owner notes, Petitioner was able to remove nearly 1,000 words from these common sections in at least one of the petitions. See Ranking Response 3–4. Because Petitioner’s analysis in the common sections does not appear to be concise, we are not persuaded that Petitioner’s use of approximately 8,350 words in those sections justifies the large number of petitions.” slip op. at 12
Discretionary denialPatents in suitUS 10,656,754 - Apple Inc. v. Smith Interface Technologies, LLCInstitution deniedPTAB · Feb 13, 2025 · IPR2024-01117 · APJ Sharon Fenick · IPR · Institution
The Board discretionarily denied institution because this petition ranked fifth among seven parallel petitions challenging the patent.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherInstitution denied
“petition is warranted given the number of claims at issue. See Trial Practice Guide 59 (identifying situations where “two petitions . . . may be needed”). Patent Owner has asserted 166 claims in the co-pending district court litigation, and Petitioner challenges 91 unique claims in these petitions. See Ranking Notice 2; Ranking Response 2. Also, the vast majority of the challenged claims are asserted in litigation. See Ranking Response 2; Ex. 2004, 3. As a result, we agree that this is the type of “rare” situation where multiple parallel petitions are necessary. Petitioner’s primary argument is that seven petitions were required because the common sections needed to be repeated in each petition, which left few words for arguments directed to new claims (given word count limits). See Ranking Notice 2–3. But this argument is premised on an assumption that these common sections “require[d] approximately 8,350 words” (id. at 3), and Petitioner has not persuasively shown that so many words were actually required for these sections. Petitioner includes no explanation or justification of the length of the sections, but instead, it simply assumes that the words used were required. Having reviewed the analysis in those sections, we do not agree. In other words, although we agree that the common sections needed to be repeated in each petition (and that this reduced the number of words available for other analysis), we are not persuaded that the common sections required approximately 8,350 words. A petitioner is certainly entitled to allocate its words as it sees fit, and we typically have no reason to evaluate those strategic decisions; however, we agree with Patent Owner (see Ranking Response 3) that Petitioner cannot justify a large number of petitions by claiming that it needed additional words for its analysis (given the Board’s word count limits) unless Petitioner’s analysis was concise.” slip op. at 11
Discretionary denialPatents in suitUS 10,656,754 - AT&T Services Inc. / T-Mobile USA, Inc. et al. v. Innovative Sonic Ltd.Institution deniedPTAB · Dec 12, 2024 · IPR2024-00991 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any asserted anticipation or obviousness ground for claims 1–11.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may not be instituted unless “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). Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has not shown a reasonable likelihood it will prevail in establishing the unpatentability of any of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner responds that “a person with the 3-year experience proposed by Petitioner would not have the intimate knowledge of the existing standardized cellular system” required to understand “how a proposed change would impact the rest of the system.” Prelim. Resp. 7. But Patent Owner also states that engineers participating in the development of the relevant cellular specifications “would not be expected to be familiar with all relevant aspects of the specifications” given their length and complexity. Id. at 7–8. For purposes of this Decision, we adopt Petitioner’s proposed level of skill, as articulated above, because we are satisfied that it generally comports with the level of skill necessary to understand and implement the teachings of the ’883 patent and the asserted prior art. To the extent Patent Owner disagrees (see Prelim. Resp. 6–8), it fails to sufficiently explain its contrary position by, for example, providing its own proposed level of skill.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that “the Board does not need to expressly construe any terms” in this proceeding because “the prior art in this Petition discloses all limitations under any plausible construction.” Pet. 10–11. Patent Owner similarly states that “all terms are entitled to their plain and ordinary meaning.” Prelim. Resp. 21. We agree with the parties that it is not necessary to construe any claim terms or phrases in this Decision. 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.”) (cleaned up).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“(step 406) discloses the claimed “second request” (Pet. 44–45),9 but Petitioner fails to show that this message discloses a request. See Prelim. Resp. 46–48. Han explains that the dual connection setup response in step 406 is a “dual connection setup request acknowledge (ACK)” message sent in response to “dual connection setup request” received in step 404. Ex. 1007 ¶¶ 40–42; accord Pet. 42–44. An acknowledgement is not a request, and Petitioner fails to sufficiently support its contention to the contrary (see Pet. 44–45). According to Petitioner, the acknowledgement message is “a request to change a data path” because the data path is “change[d] . . . based on this message” (id. at 45 (citing Ex. 1007 ¶¶ 42–47; Ex. 1003 ¶ 202)); however, this is faulty reasoning. At most, Petitioner’s argument shows that the acknowledgement is a message “to change a data 9 We note that this is the same message relied upon by Petitioner to teach the claimed “accept message” recited earlier in claim 1. Compare Pet. 44– 45, with id. at 43–44. We need not (and do not) decide whether Petitioner has sufficiently shown that this message discloses two separate claim elements. path,” not that it is a request to do so. In other words, even if Han’s acknowledgement message (in step 406) is a condition precedent to changing the data path, this does not make the message a “request.” Although Dr. Mahon agrees with Petitioner, his analysis mirrors Petitioner’s arguments and suffers from the same deficiencies. See Ex. 1003 ¶¶ 202– 203; see also Motorola, Inc. v. Interdigital Tech. Corp., 121 F.3d 1461, 1473 (Fed. Cir. 1997) (“An expert’s conclusory testimony, unsupported by the documentary evidence, cannot supplant the requirement of anticipatory disclosure in the prior art reference itself.”).” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,736,883 - Aylo Freesites Ltd v. DISH Technologies L.L.C.Institution deniedPTAB · Nov 21, 2024 · IPR2024-00941 · APJ John A Hudalla · IPR · Institution
The Board denied institution on claims 1–20 under § 314(a), finding a second review would impose unnecessary burden without sufficient efficiency or fairness justification.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherInstitution denied
“We agree with Patent Owner that Petitioner fails to explain why the Leaning grounds in IPR2024-00940 are not sufficient for challenging claims 1–20 of the ’234 patent. Indeed, “both petitions contain strong invalidating prior art” by Petitioner’s own reckoning (Pet. Ranking 2), and Petitioner characterizes Leaning as “undoubtably very strong invalidating prior art” (id. at 4). We further note that both petitions challenge all 20 claims of the ’234 patent, so the scope of the challenges is exactly the same in both cases. As a result, we are not persuaded that the differences between the petitions militate in favor of instituting both proceedings.” slip op. at 10
Discretionary denialPatents in suitUS 11,991,234 - Aylo Freesites Ltd. v. DISH Technologies L.L.C.Institution deniedPTAB · Aug 13, 2024 · IPR2024-00519 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution of IPR challenging claims 1–21 under § 314(a), finding the General Plastic factors favored or were neutral toward discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“We agree with Patent Owner (Prelim. Resp. 7) that Petitioner fails to provide any evidence or testimony to substantiate the manner and timing of its search efforts. All we can glean from Petitioner’s attorney argument is that Petitioner discovered Leaning almost three months after it filed the petition in IPR2024-00048. See Pet. 63–64. Petitioner makes no attempt to 10 On this basis, Patent Owner also argues that we should exercise our discretion to deny institution under 35 U.S.C. § 325(d). Prelim. Resp. 14– 21. We need not reach this issue. petition or that it could not have found Leaning by exercising reasonable diligence at that time. Furthermore, Petitioner’s allusion to the allegedly fruitless search efforts of USPTO examiners and other litigants (see Pet. 64) does not justify Petitioner’s actions. Thus, we find that Petitioner has not sufficiently explained why it could not have found Leaning in earlier searches through the exercise of reasonable diligence before it filed the petition in IPR2024-00048. See General Plastic at 20.” slip op. at 12
Discretionary denialPatents in suitUS 8,868,772 - Aylo Freesites Ltd. v. DISH Technologies L.L.C.Institution deniedPTAB · Aug 13, 2024 · IPR2024-00518 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution of IPR on claims 1–16 under § 314(a), exercising discretion based on the General Plastic factors.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“We agree with Patent Owner (Prelim. Resp. 7) that Petitioner fails to provide any evidence or testimony to substantiate the manner and timing of its search efforts. All we can glean from Petitioner’s attorney argument is 9 On this basis, Patent Owner also argues that we should exercise our discretion to deny institution under 35 U.S.C. § 325(d). Prelim. Resp. 14– 21. We need not reach this issue. petition in IPR2024-00047. See Pet. 62. Petitioner makes no attempt to establish that it could not have known of Leaning at the time of the earlier petition or that it could not have found Leaning by exercising reasonable diligence at that time. Furthermore, Petitioner’s allusion to the allegedly fruitless search efforts of USPTO examiners and other litigants (see Pet. 62) does not justify Petitioner’s actions. Thus, we find that Petitioner has not sufficiently explained why it could not have found Leaning in earlier searches through the exercise of reasonable diligence before it filed the petition in IPR2024-00047. See General Plastic at 20.” slip op. at 12
Discretionary denialPatents in suitUS 9,407,564 - Aylo Freesites Ltd. v. DISH Technologies L.L.C.Institution deniedPTAB · Aug 13, 2024 · IPR2024-00513 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution of review of claims 1–18, finding the General Plastic factors favored or were neutral to discretionary denial under § 314(a).
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“claims, including all of the independent claims of the ’156 patent. Only one of the 18 claims challenged in the instant Petition is not included in the earlier petition, and Petitioner’s treatment of this claim comprises about one page of analysis. Given that the two petitions challenge nearly all of the same claims of the ’156 patent, we find that this factor weighs in favor of exercising discretion to deny institution.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“35 U.S.C. § 314(a) provides that the Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 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. Section 314(a) does not require the Director to institute a review. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). Rather, a decision whether to institute is within the” slip op. at 9
Discretionary denialPatents in suitUS 10,757,156 - Aylo Freesites Ltd v. DISH Technologies L.L.C.Institution deniedPTAB · Aug 13, 2024 · IPR2024-00512 · APJ John A Hudalla · IPR · Institution
The Board denied institution for all challenged claims under § 314(a), exercising discretion based on the General Plastic factors.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“In General Plastic, the Board set forth a non-exhaustive list of factors to consider in evaluating whether to exercise discretion, under § 314(a), to deny a petition challenging a patent previously challenged before the Board. Those factors include: 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. General Plastic at 16 (citing NVIDIA Corp. v. Samsung Elecs. Co., IPR2016-00134, Paper 9 at 6–7 (PTAB May 4, 2016)). These factors are “a non-exhaustive list” and “additional factors may arise in other cases for consideration, where appropriate.” Id. at 16, 18.” slip op. at 9
Discretionary denialPatents in suitUS 11,470,138 - Aylo Freesites Ltd v. DISH Technologies L.L.C.Institution deniedPTAB · Aug 7, 2024 · IPR2024-00516 · APJ Thu A Dang · IPR · Institution
The Board denied institution on all challenged claims under § 314(a), finding that the General Plastic factors, particularly factors 1–3, 5, and 6, favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“evidence or testimony to substantiate the manner and timing of its search efforts. See Prelim. Resp. 6–9. Here, Petitioner merely provides an attorney argument that Petitioner discovered Leaning on January 5, 2024 (see Pet. 58), which is almost three months after Petitioner filed the petition in IPR2024-00046. Petitioner makes no attempt to establish that it could not have known of Leaning at the time of the IPR2024-00046 petition or that it could not have found Leaning by exercising reasonable diligence at that time. Furthermore, although Petitioner contends that Leaning was not discovered or relied upon by USPTO examiners, ITC respondents, or other litigants (see Pet. 58), allegedly fruitless search efforts of others do not justify Petitioner’s actions. On this record, we find that Petitioner has not sufficiently explained why it could not have found Leaning in earlier searches through the exercise of reasonable diligence before it filed the petition in IPR2024-00046. See General Plastic at 20.” slip op. at 15
Discretionary denialPatents in suitUS 10,951,680 - Aylo Freesites Ltd v. DISH Technologies L.L.C.Institution deniedPTAB · Aug 7, 2024 · IPR2024-00517 · APJ Thu A Dang · IPR · Institution
The Board denied institution on all challenged claims, exercising § 314(a) discretion based on its balanced assessment of the General Plastic factors.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“evidence or testimony to substantiate the manner and timing of its search efforts. See Prelim. Resp. 6–9. Here, Petitioner merely provides an attorney argument that Petitioner discovered Leaning on January 5, 2024 (see Pet. 61), which is almost three months after Petitioner filed the petition in IPR2024-00043. Petitioner makes no attempt to establish that it could not have known of Leaning at the time of the IPR2024-00043 petition or that it could not have found Leaning by exercising reasonable diligence at that time. Furthermore, although Petitioner contends that Leaning was not discovered or relied upon by USPTO examiners, ITC respondents, or other litigants (see Pet. 61), allegedly fruitless search efforts of others do not justify Petitioner’s actions. On this record, we find that Petitioner has not sufficiently explained why it could not have found Leaning in earlier searches through the exercise of reasonable diligence before it filed the petition in IPR2024-00043. See General Plastic at 20.” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“our discretion to deny institution, factor 2 strongly favors exercising the discretion, and factors 4 and 7 are neutral. Therefore, based on a balanced assessment of these factors, we exercise our discretion to deny institution of an inter partes review. III. CONCLUSION For the reasons above, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review. IV. ORDER Accordingly, it is ORDERED that the Petition is denied as to all challenged claims, and no inter partes review is instituted.” slip op. at 24
Discretionary denialPatents in suitUS 11,677,798
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.