- Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Cobblestone Wireless LLCInstitutedPTAB · Jun 24, 2024 · IPR2024-00315 · APJ Barbara A Parvis · IPR · Institution
The Board instituted review of claims 9, 10, 12, 20, 21, and 23 on all petition grounds, granted joinder to IPR2024-00137, and authorized withdrawal of Samsung’s Sotera stipulation.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Carriers’ parallel district-court case. The arguments and facts are substantively the same as those presented in the T-Mobile IPR, except Petitioner here is not a defendant in the Carriers’ parallel district-court case. In the T-Mobile IPR, we found that factor 1 is neutral, factors 2, 3, and 5 weigh in favor of exercising discretion to deny institution, and factor 4 weighs marginally against exercising discretion to deny institution. T-Mobile 6 See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). IPR, Paper 15, 10–14. Because Petitioner in the instant proceeding is not a defendant in the Carriers’ parallel district-court case, we find that factor 5 weighs against exercising discretion to deny institution in the instant proceeding. Regarding the other factors, for the same reasons discussed in the decision to institute in the T-Mobile IPR, we find that factor 1 is neutral, factors 2 and 3 weigh in favor of exercising discretion to deny institution, and factor 4 weighs marginally against exercising discretion to deny institution. T-Mobile IPR, Paper 15, 10–14. We turn to Patent Owner’s arguments based on the Petitioner’s parallel district-court case. Our analysis of factors 1 and 4 is the same as that presented in the T-Mobile IPR because no stay has been requested in Petitioner’s parallel district-court case and Petitioner has agreed to be bound by the same stipulation submitted in the T-Mobile IPR. Joinder Mot. 1. Based on the facts presented by the parties, including the May 5, 2025 trial date, we find that factors 2, 3, and 5 weigh marginally in favor of exercising discretion to deny institution. Taking “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review” (Fintiv, Paper 11, 6), we conclude that the evidence of record and our analysis of factors 1–5 relating to both district-court cases favors exercising our discretion to deny institution of an inter partes review. Regarding factor 6, for the reasons discussed in our institution decision in the T-Mobile IPR, we determine, on this preliminary record, that the merits here are compelling. Accordingly, we decline to exercise our discretion to deny institution” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unpatentability as the ones on which we instituted review in the T-Mobile IPR. Compare Pet. 3, 21–56, with T-Mobile IPR, Paper 1, 6, 25–60. Indeed, Petitioner contends that “the grounds of challenge in this Petition are a ‘copycat’ of the Petition filed in” the T-Mobile IPR and the “expert declaration filed in this proceeding is substantively identical to the expert declaration in” the T-Mobile IPR and is “signed by the same expert.” Id. at 1. Patent Owner states that its arguments on the merits in its Preliminary Response “are likewise ‘copycat’ of the merits arguments Patent Owner presented in its preliminary response in IPR2024-00137.” Prelim. Resp. 1 n.1. We instituted inter partes review of claims 9, 10, 12, 20, 21, and 23 of the ’888 Patent on May 22, 2024, based on the petition filed in the T-Mobile IPR after consideration of all arguments and evidence presented by the parties including Patent Owner’s arguments in its Preliminary Response. T- Mobile IPR, Paper 15. For the same reasons discussed in the Decision on Institution in the T-Mobile IPR, we find Petitioner has demonstrated a reasonable likelihood of showing at least one claim of the ’888 patent is unpatentable. See id. Accordingly, we find the Petition warrants institution of inter partes review of all challenged claims on all grounds raised.” slip op. at 12
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Upon consideration of the parties’ arguments and cited supporting evidence, we are persuaded that Petitioner has met its burden to show that it is appropriate under these circumstances to join Petitioner to the T-Mobile IPR. Petitioner timely filed its Motion for Joinder within one month after 7 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. institution of trial in the T-Mobile IPR, as required by 37 C.F.R. § 42.122(b). Petitioner challenges the same claims that are challenged in the T-Mobile IPR on the same grounds using the same prior art and evidence. See, e.g., Joinder Mot. 1, 6–7; compare Pet. 3, 12–39, with T-Mobile IPR, Paper 1, 6, 16–41. Petitioner states it will take an “understudy” role in the T-Mobile IPR and only assume a primary role should all Carriers cease participation in the T-Mobile IPR. See Joinder Mot. 6. Petitioner further asserts that joinder will have little to no impact on the trial schedule for the T-Mobile IPR and will simplify briefing and discovery. See Joinder Mot. 6, 9–11. Accordingly, joinder to the T-Mobile IPR would further the goals of a just, speedy, and inexpensive resolution of Petitioner’s challenge. See 37 C.F.R. § 42.1(b). Therefore, for the reasons given, we grant Petitioner’s Motion for Joinder and join Petitioner to the T-Mobile IPR.” slip op. at 13
Discretionary denialPatents in suitUS 9,094,888 - Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Cobblestone Wireless LLCInstitutedPTAB · Jun 24, 2024 · IPR2024-00317 · APJ Barbara A Parvis · IPR · Institution
The Board instituted review of claims 23–27 on all petition grounds and granted Samsung’s motion to join the T-Mobile IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“B. Institution of Inter Partes Review The Petition in this proceeding asserts the same grounds of unpatentability as the grounds on which we instituted review in the T-Mobile IPR. Compare Pet. 3, 12–39, with T-Mobile IPR, Paper 1, 6, 16–41. Indeed, Petitioner contends that “the grounds of challenge in this Petition are a ‘copycat’ of the Petition filed in T-Mobile USA, Inc. et al. v. Cobblestone Wireless, LLC, IPR2024-00135” and the “expert declaration filed in this proceeding is substantively identical to the expert declaration in IPR2024- 00135 and signed by the same expert.” Id. at 1.” slip op. at 7
- Parallel petitionsDecided for petitioner
“103(a) Chang III. ANALYSIS A. Discretionary Denial Argument Patent Owner asserts “[t]o the extent that the Board institutes review of the First Petition, institution of the Second Petition should be denied as an unnecessary parallel petition.” Prelim. Resp. 3. We denied institution in the first ranked proceeding. See Samsung Electronics America, Inc., v. Cobblestone Wireless LLC, IPR2024-00318, Paper 11 (PTAB June 21, 2024). Accordingly, we decline to exercise our discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Upon consideration of the parties’ arguments and cited supporting evidence, we are persuaded that Petitioner has met its burden to show that it is appropriate under these circumstances to join Petitioner to the T-Mobile IPR. Petitioner timely filed its Motion for Joinder within one month after institution of trial in the T-Mobile IPR, as required by 37 C.F.R. § 42.122(b). Petitioner challenges the same claims that are challenged in the T-Mobile IPR on the same grounds using the same prior art and evidence. See, e.g., Mot. 1, 6–7; compare Pet. 3, 12–39, with T-Mobile IPR, Paper 1, 6, 16–41. Petitioner states it will take an “understudy” role in the T-Mobile IPR and only assume a primary role should all Carriers cease participation in the T- Mobile IPR. See Mot. 6. Petitioner further asserts that joinder will have little to no impact on the trial schedule for the T-Mobile IPR and will simplify briefing and discovery. See Mot. 6, 9–11. Accordingly, joinder to the T-” slip op. at 11
Discretionary denialPatents in suitUS 8,554,196 - PTAB · Mar 26, 2024 · IPR2024-00037 · APJ Brent M Dougal · IPR · Institution
The Board instituted IPR on claims 1–9, 12–24, and 27–31 under the stated grounds and granted Juniper’s motion to join the Cisco IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Patent Owner did not file a Preliminary Response. For the same reasons set forth in our institution decision in the Cisco IPR, we determine that Petitioner has shown a reasonable likelihood that at least one claim is unpatentable. We therefore institute trial as to all challenged claims on all grounds stated in the Petition.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“institution of the Cisco IPR. See 37 C.F.R. § 42.122(b). As noted, the Petition in this case asserts the same unpatentability grounds on which we instituted review in the Cisco IPR. See Mot. 4–5. Petitioner also relies on the same prior art analysis and expert testimony submitted by the Cisco petitioner. See id. at 5. Indeed, the Petition is nearly identical to the petition filed by the Cisco petitioner. See id. Thus, this inter partes review does not present any ground or matter not already at issue in the Cisco IPR. Id. If joinder is granted, Petitioner agrees to assume an “‘understudy’ role” and agrees that this role shall apply unless the Cisco petitioner ceases to participate in the instituted IPR. Id. at 6–7. Petitioner further represents that it will not advance any arguments separate from those advanced by the Cisco petitioner in the consolidated filings. Id. Because Petitioner expects to participate only in a limited capacity, Petitioner submits that joinder will not impact the trial schedule for the Cisco IPR. Id. at 5. Patent Owner did not file an Opposition to the Motion for Joinder. Based on the above, we determine that joinder with the Cisco IPR is appropriate under the circumstances. Accordingly, we grant Petitioner’s Motion for Joinder.” slip op. at 4
NonePatents in suitUS 10,652,111 - PTAB · Feb 27, 2024 · IPR2024-00026 · APJ Kristen L Droesch · IPR · Institution
The Board instituted IPR on claims 1–31 on all petition grounds and granted Juniper’s motion to join the Cisco IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“language of § 315(c) requires two different decisions.” Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). “First, the statute requires that the Director (or the Board acting through a delegation of authority . . . ) determine whether the joinder applicant’s petition for IPR ‘warrants’ institution under § 314.” Id. “Second, to effect joinder, § 315(c) requires the Director to exercise [her] discretion to decide whether to ‘join as a party’ the joinder applicant.” Id. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the petition and any preliminary response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The patentability challenges in the Cisco IPR met the “reasonable likelihood” standard of § 314(a). IPR2023-00401, Paper 10, 30–31. The Petition here presents the same patentability challenges as those for which a trial was instituted in the Cisco IPR. See Mot. 4 (“[This] Petition is substantively identical to the Cisco IPR and relies on identical exhibits.”); compare Pet. 1–74, with IPR2023-00401, Paper 2, 9–79. According to Petitioner, the “[t]he same claims of the same patent are challenged under the same unpatentability grounds as the Cisco IPR.” Mot. 4. In the present proceeding, Patent Owner did not file a preliminary response to dispute the merits of Petitioner’s patentability challenges. For the reasons set forth in the Cisco IPR, we conclude that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to the We accordingly determine that the Petition warrants institution under § 314, and turn to Petitioner’s request for joinder.” slip op. at 8
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As the moving party, Petitioner has the burden of proof in establishing entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b). Petitioner filed the Motion on October 10, 2023, within one month of institution of the Cisco IPR. See 37 C.F.R. § 42.122(b). Petitioner asserts that the Motion should be granted because the joinder “won’t impact the Cisco IPR trial schedule in any meaningful way.” Mot. 5. Petitioner also agrees to take an “understudy” role in the Cisco IPR. See Mot. 5–7. Specifically, Petitioner agrees to the following: (1) Petitioner “won’t make any substantive filings, and . . . agrees that Cisco alone will be responsible for all substantive petitioner filings in the joined proceeding;” (2) “to be bound by all filings by Cisco in the joined proceeding, except for filings regarding termination and settlement;” (3) Petitioner “must obtain prior Board authorization to file any paper or to take any action on its own in the joined proceeding;” (4) Petitioner “shall not be permitted to raise any new grounds not already instituted by the Board in the Cisco IPR, or introduce any argument or discovery not already introduced by Cisco;” (5) Petitioner “shall be bound by any agreement between Patent Owner and Cisco concerning discovery and depositions;” (6) Petitioner “will not cross-examine or defend any witness at deposition;” (7) “Cisco will be responsible for any oral hearing presentation, including the preparation of demonstrative exhibits”; and (8) “Should Cisco cease participation in the proceeding[, Petitioner] would assume a primary role, meaning it would take over the role previously filled by Cisco.” Mot. 6. As mentioned before, Patent Owner did not file an opposition to the Motion. the Cisco IPR which was instituted on identical grounds, we determine that it is appropriate under these circumstances to join Petitioner as a party to the Cisco IPR.” slip op. at 9
NonePatents in suitUS 7,545,740 - PTAB · Feb 27, 2024 · IPR2024-00034 · APJ Kristen L Droesch · IPR · Institution
The Board instituted IPR on claims 1–20 on all petition grounds and granted Juniper’s motion to join the Cisco IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The patentability challenges in the Cisco IPR met the “reasonable likelihood” standard of § 314(a). IPR2023-00402, Paper 11, 30. The Petition here presents the same patentability challenges as those for which a trial was instituted in the Cisco IPR. See Mot. 4 (“[This] Petition is substantively identical to the Cisco IPR and relies on identical exhibits.”); compare Pet. 1–80, with IPR2023-00402, Paper 2, 9–85. According to Petitioner, the “[t]he same claims of the same patent are challenged under the same unpatentability grounds as the Cisco IPR.” Mot. 4. In the present proceeding, Patent Owner did not file a preliminary response to dispute the merits of Petitioner’s patentability challenges. For the reasons set forth in the Cisco IPR, we conclude that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to the challenged claims of the ’821 Patent. See IPR2023-00402, Paper 11, 14–39. We accordingly determine that the Petition warrants institution under § 314, and turn to Petitioner’s request for joinder.” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Because Petitioner will take an understudy role that will not impact the Cisco IPR which was instituted on identical grounds, we determine that it is appropriate under these circumstances to join Petitioner as a party to the Cisco IPR.” slip op. at 9
NonePatents in suitUS 8,830,821
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.