- 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 · Oct 19, 2022 · IPR2022-01513 · APJ Tina E Hulse · IPR · Institution
The Board instituted IPR on claims 1–8 on all five grounds previously instituted in IPR2022-00517 and granted Teva’s motion to join that proceeding.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Teva’s Petition here is substantively identical to Mylan’s Petition in the -517 IPR, challenging the same claims based on the same art and the same grounds. Compare IPR2022-00517, Paper 1 with IPR2022-01513, Paper 2. For the same 1 European Medicines Agency, Assessment Report, Xarelto, EMA/CHMP/794349/2012 (2013). Ex. 1005 (“EMA”). 2 Foley et al., Antithrombotic therapy in peripheral artery disease, 21 VASCULAR MED. 156–69 (2016). Ex. 1006 (“Foley”). 3 Plosker, Rivaroxaban: A Review of Its Use in Acute Coronary Syndromes, 74 DRUGS 451–64 (2014). Ex 1007 (“Plosker”). reasons stated in our Decision Granting Institution of Inter Partes Review in IPR2022-00517, we institute trial in this proceeding on the same five grounds. See IPR2022-00517, Paper 15.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Motion for Joinder. Based on authority delegated to us by the Director, we have discretion to join an inter partes review to a previously instituted inter partes review. 35 U.S.C. § 315(c). Section 315(c) provides, in relevant part, that “[i]f 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.” Id. When determining whether to grant a motion for joinder, we consider factors such as timing and impact of joinder on the trial schedule, cost, discovery, and potential simplification of briefing. Kyocera Corp. v. SoftView, LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013).” slip op. at 4
NonePatents in suitUS 10,828,310
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.