- PTAB · May 13, 2026 · IPR2025-01444 · APJ George R Hoskins · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment after it disclaimed the entire patent term, entering judgment against claims 1–6.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request entry of adverse judgment against itself at any time during an inter partes review proceeding. See 37 C.F.R. § 42.73(b). In addition, “[a]ctions construed to be a request for adverse judgment include: (1) Disclaimer of the involved application or patent; [and] (2) Cancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” Id. Because Patent Owner has explicitly requested adverse judgment against itself pursuant to Rule 42.73(b), and has disclaimed the entire term of the ’584 patent, Patent Owner’s request for adverse judgment is granted. ORDER In consideration of the foregoing, it is hereby: ORDERED that Patent Owner’s Request for Adverse Judgment is granted; and FURTHER ORDERED that adverse judgment is entered against Patent Owner with respect to claims 1–6 of the ’584 patent.” slip op. at 3
NonePatents in suitUS 7,547,584 - Tableau Software, LLC v. Icharts LLCAll claims unpatentablePTAB · May 7, 2026 · IPR2024-01387 · APJ Iftikhar Ahmed · IPR · Final written decision
Claims 1–16 are unpatentable under the instituted obviousness grounds, including Becerra, the QlikView Manuals, and combinations with other references.
RulingsFinal written decision- ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part
“why it is trustworthy and how it archives dates by which the webpages were accessible, as this is an information resource on which librarians reasonably rely. See FED. R. EVID. 703. We agree with Petitioner that Dr. Hall-Ellis does have personal knowledge of the facts stated in the remaining testimony (e.g., what she actually downloaded from websites), and that FEDERAL RULE OF EVIDENCE 602 is inapplicable to her testimony offered as an expert. See Pet. Opp. 5–6 (citing Ex. 1030 ¶¶ 26, 29–32, 35, 37–39). We find her testimony to be relevant to the issues presented and specifically to whether the QlikView documents were publicly accessible. We also find no danger that the testimony would confuse the issues or mislead the Board or present unfair prejudice to Patent Owner. Accordingly, we deny Patent Owner’s Motion as to the remaining portion of Dr. Hall-Ellis’s declaration.” slip op. at 92
- Strike new argumentNew argument disregardedGranted
“FURTHER ORDERED that Petitioner’s Motion to Strike portions of Patent Owner’s Reply on its Motion to Exclude (Paper 32) is granted; and” slip op. at 102
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“1. Motivation to Combine Becerra and Couckuyt Petitioner argues that a person of ordinary skill in the art would have been motivated to combine the teachings of Becerra and Couckuyt because such a person would have recognized that Couckuyt discloses useful techniques of assigning data to Becerra’s charts, including assigning data to each axis. Pet. 34 (citing Ex. 1005 ¶¶ 19, 52, Fig. 5; Ex. 1003 ¶ 224). Petitioner contends that Couckuyt discloses associating data from a “spreadsheet document” with a chart, such as a “bar graph.” Id. at 35 (citing Ex. 1006, 6:1–37; Figs. 3a, 3c). below. Petitioner’s annotations to Figure 4 identify “Drop Zones” in red and “Data Fields” in Blue. Id. at 36. Petitioner contends Couckuyt discloses a “drag-and-drop user interface (DDUI) . . . associated with a data source, such as the two-dimensional data source 300,” and Figure 4 illustrates the DDUI permitting “value data fields and the characteristic data fields . . . to be dragged and dropped into drop zones.” Id. at 35–36 (citing Ex. 1006, 7:10–13). Petitioner contends that a “primary benefit of the charting DDUI is that the user can quickly change the data that is being presented in the chart,” and using Couckuyt’s techniques, a user can “quickly change the data” and see the desired effects. Id. at 36 (citing Ex. 1006, 1:18–19; Ex. 1003 ¶ 228). Petitioner contends that when Becerra’s control panel includes multiple charts, Couckuyt’s techniques would allow dragging-anddropping data from a data source to multiple charts, and would simplify the process of assigning data to multiple control panel components. Id. at 36–37 skill in the art would have also had a reasonable expectation of success combining Becerra with Couckuyt because the combination would amount to nothing more than incorporating Couckuyt’s well-known drag-and-drop techniques into Becerra’s system. Id. at 37 (citing Ex. 1003 ¶¶ 229–231). Patent Owner responds that Couckuyt focuses on selecting a data icon that corresponds to dragging and dropping data fields, not dragging and dropping data, while Becerra teaches that selecting various data ranges from the spreadsheet is desirable. PO Resp. 36–37 (citing Ex. 1004 7:48–52; Ex. 2001 ¶ 146). According to Patent Owner, a person of ordinary skill in the art would not have been motivated to merely select data fields that do not limit the selected data in any way. Id. Patent Owner further argues Becerra’s method of binding components to a spreadsheet range and extracting formulas from a spreadsheet teaches away from the multiple chart generation scheme of Couckuyt that uses drag and dropping of data fields. Id. at 37. According to Patent Owner, Couckuyt is directed to the need for a charting DDUI that can generate multiple charts at the same time and such a need does not exist in Becerra which in turn is focused on creating a control panel that is an interactive graphics simulation. Id. (citing Ex. 1004, 1:66–67, 2:5–8; Ex. 1005 ¶ 11; Ex. 2001 ¶ 148). Based on our review of the complete record, we determine that” slip op. at 31
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“2. Whether QlikView Manuals Qualify as Prior Art Petitioner argues that “the QlikView Manuals describe a well-known system and are printed publications available to the public at least by July 8, 2008.” Pet. 7–9. Petitioner offers ample evidence to demonstrate the QlikView Manuals were publicly accessible by July 8, 2008. See id. (citing Ex. 1008; Ex. 1009; Ex. 1014–1023; Ex. 1003 ¶ 129–140; Ex. 1030;11 Ex. 1068 ¶¶ 4–7; Ex. 1032; Ex. 1033). Petitioner contends in 2008, QlikView was a well-known software product sold by QlikTech International AB (“QlikTech”). Id. at 8 (citing Ex. 1003 ¶ 129; Ex. 1030 ¶ 23; Ex. 1068 ¶¶ 4–7). Petitioner asserts that QlikTech announced that QlikView version 8.50 was scheduled for release on June 30, 2008, and QlikTech’s website added the “QlikView 8.50” hyperlink by July 8, 2008. Id. (citing Ex. 1003 ¶¶ 129–131; Ex. 1022, 1; Ex. 1068 ¶ 7). Petitioner contends that, as of July 8, 2008, a person of ordinary skill in the art would have understood that they could view the QlikView Manuals in the installation package. Id. (citing Exs. 1014–1017; Ex. 1003 ¶¶ 131–132; Ex. 1068 ¶ 7). Petitioner further contends that the QlikView Manuals were also available on QlikTech’s website as of this 11 As discussed below (see infra § IV.A), we grant Patent Owner’s Motion to Exclude as to certain portions of Exhibit 1030 and do not give them any weight. However, we deny Patent Owner’s Motion as to the remaining portions of Dr. Hall-Ellis’s testimony as well as Ms. Lofton’s testimony and various other exhibits proffered by Petitioner to show public accessibility of the QlikView manuals as of July 8, 2008. QlikView 8.50 was published on July 8, 2008. Id. at 8–9 (citing Exs. 1008, 1009, 1017, 1059, 1060; Ex. 1030 ¶¶ 29, 37). In its Patent Owner Response, Patent Owner does not contest that the QlikView Manuals were published and publicly available by July 8, 2008. PO Resp. 50 n.2 (noting only that Patent Owner intends to move to exclude evidence Petitioner relies on to establish the publication date for QlikView Manuals); Tr. 45:3–19. We are persuaded that Petitioner has shown by a preponderance of the evidence that the QlikView Manuals were publicly available as of July 8, 2008.12” slip op. at 50
Patent outcomesUS 8,271,892 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,271,892 - PTAB · Oct 29, 2025 · IPR2025-00885 · APJ Avelyn M Ross · IPR · Institution
The Board instituted review of claims 1–11 on all petition grounds and granted ADC Solutions Auto LLC’s unopposed motion to join IPR2024-01219 in an understudy role.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We agree with the parties that the Deltran Petition involves the same patent, challenges the same claims, relies on the same expert declaration, and is based on the same grounds and combinations of prior art. Under these circumstances, our reasons for instituting review based on Deltran’s petition apply with equal force to the “substantively identical” Petition filed by ADC Solutions. Id. Accordingly, for the same reasons set forth in the Institution Decision filed in the Deltran IPR, we institute review on all claims and all grounds asserted in the Petition. See generally IPR01219, Paper 8 (Institution Decision in the Deltran IPR).” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“(1) the Motion for Joinder is timely, having been filed “no later than one month of the institution decision” in the Deltran IPR (Motion 6); (2) the Petition here “is substantially identical to the petition in the Deltran IPR” (id.; see also id. at 7 (“there are no substantive changes to the facts, citations, evidence, or arguments relied upon”); (3) “joinder should have no meaningful impact on the Deltran IPR trial schedule because the present Petition presents no new issues or grounds of unpatentability” (id. at 8); (4) “Petitioner explicitly agrees to take an ‘understudy’ role, which will simplify briefing and discovery” in the joined proceeding, “so long as the current lead petitioner in IPR2024-01219 remains an active party (id. at 9; see also id. at 4, 6);2 and (5) joinder will simplify “briefing and discovery” as all issues will be resolved “in a single proceeding” (id. at 9). Patent Owner does not contest any facts alleged by ADC Solutions in its Motion for Joinder. Having considered Petitioner’s Motion for Joinder, we determine that joinder of the instant proceeding with in the Deltran IPR is appropriate. For the reasons in our Decision Instituting Review in Deltran IPR, we find that the Petition in this proceeding also warrants institution of inter partes review and that joinder is appropriate. Accordingly, we grant Petitioner’s 2 We understand the “understudy role” as including Petitioner not making any oral argument or presentation during telephone conferences with the Board.” slip op. at 4
NonePatents in suitUS 11,667,203 - Luminex International Co., Ltd. / Menard, Inc. v. Signify Holdings B.V.Some claims unpatentablePTAB · Aug 13, 2025 · IPR2024-01469 · APJ Steven M Amundson · IPR · Final written decision
Claims 1–7, 9–15, and 18–20 are unpatentable; claims 8, 16, and 17 are not determined unpatentable under the asserted prior-art grounds.
RulingsFinal written decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“G. Analysis 1. REAL PARTY IN INTEREST Based on the record before us and for the reasons explained below, we disagree with Patent Owner that Menard is a “real party in interest” under § 315(b). See Resp. 77–82; Sur-reply 27–28. First, the circumstances here differ materially from the circumstances in Ventex. There, two agreements defined the relationship between Ventex (the petitioner and manufacturer of Heatwave fabric) and Seirus (the alleged real party in interest and purchaser of Heatwave fabric). Ventex, IPR2017- 00651, Paper 152 at 7 & n.8. First, a 2013 Supplier Agreement “prevented Ventex from selling to Seirus competitors” and included an indemnity provision requiring Ventex to indemnify Seirus for losses arising from Ventex’s failure to perform certain obligations. Id. at 7, 14. Second, a 2016 Exclusive Manufacturing Agreement provided that Ventex would manufacture the Heatwave fabric only for Seirus in exchange for Seirus’s payment of an exclusivity fee. Id. at 7. Columbia (the patent owner) accused Seirus products incorporating the Heatwave fabric of infringing the patent at issue, and Columbia served Seirus with a complaint alleging patent infringement in 2014 more than two years before Ventex filed a petition in 2017. Id. at 5, 7. When determining that Seirus was a “real party in interest” under § 315(b), the Board reasoned that “Ventex and Seirus had a specially structured, preexisting, and well established business relationship with one another, including indemnification and exclusivity arrangements.” Ventex, IPR2017-00651, Paper 152 at 10; see id. at 12. Additionally, the Board noted that certain evidence “suggest[ed] that” slip op. at 32
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“G. Analysis 1. REAL PARTY IN INTEREST Based on the record before us and for the reasons explained below, we disagree with Patent Owner that Menard is a “real party in interest” under § 315(b). See Resp. 77–82; Sur-reply 27–28. First, the circumstances here differ materially from the circumstances in Ventex. There, two agreements defined the relationship between Ventex (the petitioner and manufacturer of Heatwave fabric) and Seirus (the alleged real party in interest and purchaser of Heatwave fabric). Ventex, IPR2017- 00651, Paper 152 at 7 & n.8. First, a 2013 Supplier Agreement “prevented Ventex from selling to Seirus competitors” and included an indemnity provision requiring Ventex to indemnify Seirus for losses arising from Ventex’s failure to perform certain obligations. Id. at 7, 14. Second, a 2016 Exclusive Manufacturing Agreement provided that Ventex would manufacture the Heatwave fabric only for Seirus in exchange for Seirus’s payment of an exclusivity fee. Id. at 7. Columbia (the patent owner) accused Seirus products incorporating the Heatwave fabric of infringing the patent at issue, and Columbia served Seirus with a complaint alleging patent infringement in 2014 more than two years before Ventex filed a petition in 2017. Id. at 5, 7. When determining that Seirus was a “real party in interest” under § 315(b), the Board reasoned that “Ventex and Seirus had a specially structured, preexisting, and well established business relationship with one another, including indemnification and exclusivity arrangements.” Ventex, IPR2017-00651, Paper 152 at 10; see id. at 12. Additionally, the Board noted that certain evidence “suggest[ed] that” slip op. at 32
- Skill levelOther
“C. Level of Ordinary Skill in the Art Factors pertinent to determining the level of ordinary skill in the art include (1) the educational level of the inventor; (2) the type of problems encountered in the art; (3) prior-art solutions to those problems; (4) the rapidity with which innovations are made; (5) the sophistication of the technology; and (6) the educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983). Not all factors may exist in every case, and one or more of these or other factors may predominate in a particular case. Id. These factors are not exhaustive, but merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). Moreover, the prior art itself may reflect an appropriate skill level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner asserts that a person of ordinary skill in the art at the ’336 patent’s effective filing date would have had “a bachelor’s degree in mechanical engineering, electrical engineering, optics, or physics with at least three years of experience working in the design of LED lights or lighting fixtures; a master’s degree in one of the above disciplines with at least two years of experience; or equivalent experience.” Pet. 14 (citing Ex. 1004 ¶¶ 26–29). Dr. Eden’s testimony supports Petitioner’s assertion. See Ex. 1004 ¶¶ 27–28. Patent Owner “adopts for purposes of this proceeding only” Petitioner’s description of an ordinarily skilled artisan. Resp. 10 (citing Pet. 14). We adopt Petitioner’s description of an ordinarily skilled artisan because it comports with the technology and claims of the ’336 patent as” slip op. at 40
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“Alleged Objective Indicia of Nonobviousness (i) General Principles Before reaching a conclusion about obviousness, we consider evidence concerning objective indicia of nonobviousness. See Apple, 839 F.3d at 1048. For such evidence to have substantial weight, “its proponent must establish a nexus between the evidence and the merits of the claimed invention.” ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1220 (Fed. Cir. 2016); see Ancora Techs., Inc. v. Roku, Inc., 140 F.4th 1351, 1361 (Fed. Cir. 2025) (noting that the Board did not err by requiring “a nexus to the challenged claims as opposed to the patent as a whole”). “[T]here is no nexus unless the evidence presented is ‘reasonably commensurate with the scope of the claims.’” ClassCo, 838 F.3d at 1220 (quoting Rambus Inc. v. Rea, 731 F.3d 1248, 1257 (Fed. Cir. 2013)). The patentee “bears the burden of showing that a nexus exists.” WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999). A rebuttable presumption of nexus arises “when the patentee shows that the asserted objective evidence is tied to a specific product and that product ‘embodies the claimed features, and is coextensive with them.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)). Whether a rebuttable presumption of nexus arises “turns on the nature of the claims and the specific facts.” Teva Pharms. Int’l GmbH v. Eli Lilly & Co., 8 F.4th 1349, 1362 (Fed. Cir. 2021). The presumption analysis should consider the unclaimed features in the product tied to the objective evidence to assess their significance and impact on the correspondence between the patented invention and the product. Quanergy Sys., Inc. v. Velodyne Lidar USA, Inc., 24 F.4th 1406, 1418 (Fed. Cir. 2022). When, “for example, the patented invention is only a small component of the product tied to the objective evidence, there is no presumption of nexus.” Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1333 (Fed. Cir. 2019). Absent a presumption of nexus, the patentee may prove nexus by” slip op. at 76
Patent outcomesUS 10,299,336 mixed§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,299,336 - Qualcomm Incorporated v. Network System Technologies, LLCAll claims unpatentablePTAB · Jun 13, 2025 · IPR2024-01081 · APJ Steven M Amundson · IPR · Final written decision
Claims 2, 6, and 9–16 are unpatentable as obvious over Goossens2003 and Drake; the Board did not reach the Goossens2002 and Drake challenge.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“3. WHETHER AN ORDINARILY SKILLED ARTISAN WOULD HAVE BEEN MOTIVATED TO COMBINE THE TEACHINGS OF” slip op. at 54
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Qualcomm”) filed a petition in IPR2024-01081 challenging claims 2, 6, and 9–16 in the ’449 patent on substantively identical grounds to those asserted in Samsung’s Petition. Qualcomm Incorporated v. Network System Technologies, LLC, IPR2024-01081, Paper 1 (“Pet.”).2 Concurrently with filing the petition in IPR2024-01081, Petitioner filed a motion for joinder, seeking joinder as a party in this proceeding under 35 U.S.C. § 315(c). IPR2024-01081, Paper 3. slip op. at 3
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“IV. JOINDER AND THE ONE-YEAR TIME BAR IN § 315(b) Regarding joinder, § 315(c) permits joinder as a party and states:” slip op. at 157
- ExcludeOther
“In our analyses above, we do not rely on any of the evidence that Petitioner seeks to exclude. See, e.g., supra §§ III.C–III.E. Hence, we dismiss Petitioner’s motion to exclude evidence as moot. See, e.g., Netflix, Inc. v. GoTV Streaming, LLC, IPR2023-00757, Paper 39 at 135 (PTAB Nov. 5, 2024) (dismissing motion to exclude evidence as moot); Volkswagen Grp. of Am., Inc. v. Spero, IPR2023-00335, Paper 40 at 24 (PTAB July 15, 2024) (dismissing motion to exclude evidence as moot).” slip op. at 159
Patent outcomesUS 7,373,449 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,373,449 - Samsung Electronics Co., Ltd. / Qualcomm Incorporated v. Network System Technologies, LLCAll claims unpatentablePTAB · Jun 13, 2025 · IPR2024-00338 · APJ Steven M Amundson · IPR · Final written decision
Claims 2, 6, and 9–16 are unpatentable under § 103(a) as obvious over Goossens2003 and Drake.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“Accordingly, “the teachings of Drake apply directly to systems on” slip op. at 82
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“In October 2024, the Board (1) instituted an inter partes review in IPR2024-01081, (2) granted Petitioner’s motion for joinder in IPR2024- 01081, and (3) joined Petitioner as a party in this proceeding. Paper 16 (“Qualcomm Inst. Dec.”), 50–51; IPR2024-01081, Paper 14 at 50–51. The next day, based on a settlement between Samsung and Patent Owner, the Board granted in part a joint motion to terminate filed by Samsung and Patent Owner and terminated Samsung as a petitioner in this proceeding. See Paper 14 (Joint Motion); Paper 17 (Order).” slip op. at 3
- ExcludeOther
“In our analyses above, we do not rely on any of the evidence that Petitioner seeks to exclude. See, e.g., supra §§ III.C–III.E. Hence, we dismiss Petitioner’s motion to exclude evidence as moot. See, e.g., Netflix, Inc. v. GoTV Streaming, LLC, IPR2023-00757, Paper 39 at 135 (PTAB Nov. 5, 2024) (dismissing motion to exclude evidence as moot); Volkswagen Grp. of Am., Inc. v. Spero, IPR2023-00335, Paper 40 at 24 (PTAB July 15, 2024) (dismissing motion to exclude evidence as moot).” slip op. at 159
Patent outcomesUS 7,373,449 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,373,449 - Menard, Inc. v. Signify Holdings B.V.InstitutedPTAB · Feb 14, 2025 · IPR2024-01469 · APJ Steven M Amundson · IPR · Institution
The Board instituted review of claims 1–20 on all petitioned challenges and granted Menard’s motion to join the Luminex IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Here, Petitioner presents substantively identical challenges to claims 1–20 in the ’336 patent based on the same prior art, the same evidence, and the same unpatentability theories as Luminex presents in the Luminex IPR. Compare Pet. 15–89, with IPR2024-00101, Paper 1 (“Luminex Pet.”) at 15–89. According to Petitioner, the Petition differs from Luminex’s petition only because of different party names and updated sections concerning standing, related matters, real parties in interest, and counsel. Mot. 4. Because Petitioner presents substantively identical challenges to claims 1–20 in the ’336 patent based on the same prior art, the same evidence, and the same unpatentability theories as Luminex presents in the Luminex IPR, Petitioner satisfies the “reasonable likelihood” standard for instituting trial for the same reasons Luminex satisfied the “reasonable likelihood” standard for instituting trial. See Luminex Pet. 15–89; Luminex Inst. Dec. 19–64; Pet. 15–89.” slip op. at 14
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“Consistent with § 315(b) and § 315(c), the Board’s rules provide that “[a]ny request for joinder must be filed, as a motion under § 42.22, no later than one month after the institution date of any inter partes review for which joinder is requested.” 37 C.F.R. § 42.122(b). The Board’s rules also provide that § 42.101(b)’s one-year time bar “shall not apply when the petition is accompanied by a request for joinder.” Id. We instituted an inter partes review in the Luminex IPR on September 9, 2024. Luminex Inst. Dec. 1. On September 23, 2024, Petitioner filed the Petition and the Motion for Joinder. Pet. 91; Mot. 7. Under § 42.122(b), Petitioner timely filed the Petition and the Motion for Joinder. See 37 C.F.R. § 42.122(b).” slip op. at 15
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“If joined to the Luminex IPR, Petitioner agrees to take an “understudy” role and only “substantively participate” if Luminex is terminated from the Luminex IPR. Mot. 1, 5–6. Further Petitioner agrees that the following conditions will apply to it in its “understudy” role “so long as Luminex remains an active party”: (1) “all filings by [Petitioner] in the joined proceeding be consolidated with the filings of Luminex, unless a filing solely concerns issues that do not involve Luminex”; (2) Petitioner “shall not be permitted to raise any new grounds not instituted by the Board in the Luminex IPR, or introduce any argument not already introduced by Luminex”; and (3) “with regard to taking of testimony, [Petitioner] will abide by 37 C.F.R. § 42.53 or any agreement between the Patent Owner and Luminex.”” slip op. at 17
- PTAB / AIA Trials › §315(e) estoppelEstoppel appliesOther
“5. CONCLUSION For the reasons discussed above, we determine that it is appropriate under the circumstances here to join Petitioner as a party to the Luminex IPR. See §§ III.D.2–III.D.4. The estoppel provisions of 35 U.S.C. § 315(e) will apply to Petitioner.” slip op. at 18
NonePatents in suitUS 10,299,336 - PTAB · Jan 15, 2025 · IPR2024-01108 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR on claims 1, 2, 5–8, 10–15, 17, 18, 20, and 21 under § 103 and granted BRP’s motion to join the Foil Boarding IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this stage of the proceeding and based on our preliminary review, we find Petitioner has demonstrated a reasonable likelihood of showing the unpatentability of the Challenged Claims for the same reasons discussed in our Decision on Institution in the Foil Boarding IPR. Granting the Petition and joining Petitioner to the Foil Boarding IPR will provide us with the opportunity to more fully consider Patent Owner’s arguments—first raised in response to the petition in the Foil Boarding IPR—in the context in which they were first raised. Those common arguments will be fully considered in the Foil Boarding IPR, with the benefit of a complete record.8 Accordingly, for the reasons discussed above, we are persuaded Petitioner has demonstrated a reasonable likelihood of showing the unpatentability of the Challenged Claims of the ’044 patent. We therefore grant the Petition, and institute inter partes review of the Challenged Claims.” slip op. at 6
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“challenges the same claims on the same grounds using the same prior art, Kyocera factor (2) favors joinder. See Kyocera, IPR2013-00004, Paper 15 at 4. Indeed, the Board “routinely grants motions for joinder where the party seeking joinder introduces identical arguments and the same grounds raised in the existing proceeding.” Samsung Elecs. Co. v. Raytheon Co., IPR2016- 00962, Paper 12 at 9 (PTAB Aug. 24, 2016). Moreover, because the issues to be decided are the same and Petitioner avers that it will take an “understudy” role to Foil Boarding in the Foil Boarding IPR by consolidating all filings, refraining from advancing new arguments, binding itself to any discovery agreements, and limiting its deposition time to the time already allotted, Kyocera factors (3) and (4) also favor joinder. See Mot. 4–6; Kyocera, IPR2013-00004, Paper 15 at 4. For the reasons explained above, we find that joining Petitioner to the Foil Boarding IPR is appropriate under the present circumstances. We, therefore, grant Petitioner’s Motion.” slip op. at 8
NonePatents in suitUS 9,359,044 - PTAB · Jan 15, 2025 · IPR2024-01107 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR on claims 1, 2, 4, 5, 7–11, 13, and 15 under § 103 and granted BRP’s motion to join IPR2024-00085.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this stage of the proceeding and based on our preliminary review, we find Petitioner has demonstrated a reasonable likelihood of showing the unpatentability of the Challenged Claims for the same reasons discussed in our Decision on Institution in the Foil Boarding IPR. Granting the Petition and joining Petitioner to the Foil Boarding IPR will provide us with the opportunity to more fully consider Patent Owner’s arguments—first raised in response to the petition in the Foil Boarding IPR—in the context in which they were first raised. Those common arguments will be fully considered in the Foil Boarding IPR, with the benefit of a complete record.8 Accordingly, for the reasons discussed above, we are persuaded Petitioner has demonstrated a reasonable likelihood of showing the unpatentability of the Challenged Claims of the ’659 patent. We therefore grant the Petition, and institute inter partes review of the Challenged Claims.” slip op. at 6
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Patent Owner does not oppose Petitioner’s Motion. We are persuaded by Petitioner’s arguments. Because the Petition challenges the same claims on the same grounds using the same prior art, Kyocera factor (2) favors joinder. See Kyocera, IPR2013-00004, Paper 15 at 4. Indeed, the Board “routinely grants motions for joinder where the party seeking joinder introduces identical arguments and the same grounds raised in the existing proceeding.” Samsung Elecs. Co. v. Raytheon Co., IPR2016- 00962, Paper 12 at 9 (PTAB Aug. 24, 2016). Moreover, because the issues to be decided are the same and Petitioner avers that it will take an “understudy” role to Foil Boarding in the Foil Boarding IPR by consolidating all filings, refraining from advancing new arguments, binding itself to any discovery agreements, and limiting its deposition time to the time already allotted, Kyocera factors (3) and (4) also favor joinder. See Mot. 4–6; Kyocera, IPR2013-00004, Paper 15 at 4. For the reasons explained above, we find that joining Petitioner to the Foil Boarding IPR is appropriate under the present circumstances. We, therefore, grant Petitioner’s Motion.” slip op. at 8
NonePatents in suitUS 9,586,659 - NXP USA, Inc. v. Parkervision, Inc.InstitutedPTAB · Dec 19, 2024 · IPR2024-01068 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on claims 1–5, 8, 9, 11–23, 26, 27, and 29–36 on all petitioned grounds and granted NXP's conditional motion to join the TI IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] 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) (2018). For the reasons given below, we institute inter partes review of the Challenged Claims of the ’528 patent. We also grant Petitioner’s Conditional Motion for Joinder and join Petitioner to IPR2024-00936.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“As set forth in the Director’s Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (dated June 21, 2022), at 7, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf, the [Patent Trial and Appeal Board] will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Petitioner’s stipulation (Ex. 1041) satisfies the language from the Director’s Memorandum quoted above. Additionally, we do not see an issue with ambiguity in Petitioner’s stipulation. Specifically, following joinder, this IPR (i.e., IPR2024-01068), which is based on the Petition at issue here (i.e., the Petition filed by NXP), will still be pending even though Petitioner will be joined to IPR2024-00936. Thus, the “IPR from this [P]etition” will be “pending,” which satisfies the language of Petitioner’s stipulation and precludes the actions stated therein. Further, to the extent there was any potential ambiguity, that ambiguity is resolved by Petitioner’s representations in e-mail correspondence (Exhibit 3001), as noted above. Therefore, we need not analyze each Fintiv factor to reach the determination that we will not exercise our discretion to deny institution in view of the parallel litigation.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“Compare Pet. with TI IPR, Paper 2 (petition); see also Motion 2 (stating that “NXP’s petition challenges the same claims on the same grounds, relies on the same prior art, and includes the exact same substantive arguments as the TI IPR”). Patent Owner raises the same arguments that it presented in the TI IPR. Regarding the first ground, Patent Owner asserts that (1) Petitioner has not shown that one of ordinary skill in the art would have been motivated to combine Tayloe, TI Datasheet, and Macnally (Prelim. Resp. 5– 9) and (2) Petitioner fails to provide a sufficient reasonable expectation of success in combining Macnally and Tayloe (id. at 9–12). Additionally, Patent Owner contends we should exercise our discretion to deny institution” slip op. at 6
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“35 U.S.C. § 315(c). We have explained that a motion for joinder should: (1) set forth reasons why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact, if any, joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified. Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013).” slip op. at 10
§ 103 obviousnessDiscretionary denialPatents in suitUS 9,118,528
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.