- Microsoft Corporation v. Ipa Technologies Inc.Rehearing deniedPTAB · Nov 8, 2018 · IPR2018-00793 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, finding no abuse of discretion in timely issuing the institution decisions before resolving the § 315(b) time-bar contention.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“III. STANDARD OF REVIEW Pursuant to 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d).” slip op. at 5
- PTAB / AIA Trials › §315(b) time barNot reached
“telephone conference call with the Board, “put at issue” the question whether an inter partes review may not be instituted under 35 U.S.C. § 315(b) because Petitioner, a real party in interest, or a privy of Petitioner was served with a complaint alleging infringement of the ’021 patent more than one year prior to the filing of the Petition. See, e.g., Req. Reh’g 10 (contending that Patent Owner put § 315(b) at issue). Patent Owner has not. During the September 17th conference call, Patent Owner mentioned several documents, including indemnification policies, license agreements, and correspondence as materials that Patent Owner is either aware of or seeking from Petitioner. See, e.g., Ex. 2001, 6:24–8:3 (discussing these documents), 10:19–11:14 (same). Neither party, however, has placed those documents in evidence, nor has Patent Owner advanced its argument regarding § 315(b) in any briefing. See World Inc. v. Bungie, Inc., 903 F.3d 1237, 1244 (Fed. Cir. 2018) (“We agree, however, that a patent owner must produce some evidence that tends to show that a particular third party should be named a real party in interest. A mere assertion that a third party is an unnamed real party in interest, without any support for that assertion, is insufficient to put the issue into dispute.” (footnote omitted)). Thus, at this time, Patent Owner has not “put at issue” whether Petitioner is barred under § 315(b). Additionally, Patent Owner’s Rehearing Request fails to identify where it previously raised the question of § 315(b) in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d). As explained above, Patent Owner has not. Thus, we could not have misapprehended or overlooked an issue not raised previously.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“V. CONCLUSION For the foregoing reasons, Patent Owner has not shown that we abused our discretion by timely issuing institution decisions in the five cases captioned above. Nothing in this Decision precludes Patent Owner from advancing its § 315(b) contention in its post-institution submissions.” slip op. at 7
NonePatents in suitUS 6,742,021 - Microsoft Corporation v. Ipa Technologies Inc.Rehearing deniedPTAB · Nov 8, 2018 · IPR2018-00791 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, finding no abuse of discretion in issuing the institution decisions before resolving the § 315(b) time-bar contention.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“deadline set forth in 35 U.S.C. § 314(b). Req. Reh’g 10 n.2. Patent Owner contends that “[t]he deadline under 35 U.S.C. § 314(b) should not be an obstacle because Congress has recognized that there should be some flexibility with respect to deadlines.” Id. (citing 35 U.S.C. § 316(a)(11)). Section 316(a)(11) provides up to six additional months to issue a final written decision when good cause is shown. Section 316(a)(11) does not, however, address extending the three-month time period after a preliminary response is filed to issue an institution decision. That three-month time period is governed by § 314(b), and Patent Owner fails to offer any support for its argument that we can extend the deadline under § 314(b). Accordingly, we are unaware of any statutory authority by which we may extend the deadline to determine whether to institute an inter partes review under § 314(b), even with a showing of good cause.” slip op. at 6
- PTAB / AIA Trials › §315(b) time barNot reached
“than one year prior to the filing of the Petition. See, e.g., Req. Reh’g 10 (contending that Patent Owner put § 315(b) at issue). Patent Owner has not. During the September 17th conference call, Patent Owner mentioned several documents, including indemnification policies, license agreements, and correspondence as materials that Patent Owner is either aware of or seeking from Petitioner. See, e.g., Ex. 2001, 6:24–8:3 (discussing these documents), 10:19–11:14 (same). Neither party, however, has placed those documents in evidence, nor has Patent Owner advanced its argument regarding § 315(b) in any briefing. See World Inc. v. Bungie, Inc., 903 F.3d 1237, 1244 (Fed. Cir. 2018) (“We agree, however, that a patent owner must produce some evidence that tends to show that a particular third party should be named a real party in interest. A mere assertion that a third party is an unnamed real party in interest, without any support for that assertion, is insufficient to put the issue into dispute.” (footnote omitted)). Thus, at this time, Patent Owner has not “put at issue” whether Petitioner is barred under § 315(b). Additionally, Patent Owner’s Rehearing Request fails to identify where it previously raised the question of § 315(b) in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d). As explained above, Patent Owner has not. Thus, we could not have misapprehended or overlooked an issue not raised previously.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Owner”) filed a Request for Rehearing and Reconsideration (“Rehearing Request” or “Req. Reh’g”)2 of our Decision instituting inter partes review (“Decision” or “Dec.”).3 In instituting the inter partes reviews, we determined that Petitioner established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims of each challenged patent. See, e.g., Dec. 2, 22.” slip op. at 2
NonePatents in suitUS 6,742,021
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.