- PTAB · Nov 1, 2024 · IPR2024-01010 · APJ Brian D Range · IPR · Institution
The Board instituted inter partes review of claims 1–6 and 8 on all petition grounds and granted Texas Instruments’ motion to join the NXP IPR as an understudy petitioner.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Thus, for the same reasons set forth in our institution decision in the NXP IPR, we determine that the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in showing that claims 1–6 and 8 are unpatentable. See NXP Dec. Accordingly, we institute an inter partes review of the same claims on the same grounds as the ones on which we instituted review in the NXP IPR. 35 U.S.C. § 314(a).” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Petitioner agrees that, if joinder is granted, it will have an “understudy role.” Id. at 2–3, 6–8. Petitioner agrees to various restrictions as an understudy. Id. Along these lines, Petitioner will abide by the following conditions so long as NXP is actively participating in this proceeding: (a) TI shall not make any substantive filing and shall be bound by the filings of Petitioner NXP, unless a filing concerns termination and settlement, or issues solely involving TI; (b) TI shall not present any argument or make any presentation at oral argument unless an issue solely involves TI, or when addressing Board-approved motions that do not affect Petitioner NXP or its respective position; (c) TI shall not seek to cross-examine or defend the cross-examination of any witness, unless the topic of cross-examination concerns issues solely involving TI; (d) TI shall not seek discovery from Patent Owner on issues not solely involving TI; (e) TI will not rely on expert testimony beyond that submitted by Petitioner NXP unless Petitioner NXP is terminated from the case. If Petitioner NXP is not terminated from the case, TI agrees to rely entirely on, and be bound by, the expert declarations and depositions in the NXP IPR. Mot. 6–7. In sum, TI “will not assume an active role unless Petitioner NXP ceases to participate in the proceeding.” Mot. 2.13 The conditions above mean that joinder will have no impact on the NXP IPR trial schedule and will not complicate the NXP IPR briefing or discovery. These understudy provisions are consistent with the provisions imposed by, for example, Ecobee Techs. ULC v. EcoFactor, Inc., IPR 2022-01460, IPR2022-00473, Paper 7 (PTAB Jan. 24, 2023) and Apple Inc. v. INVT SPE LLC, IPR2019-00959, Paper 8 (PTAB May 30, 2019).” slip op. at 6
NonePatents in suitUS 7,345,245 - PTAB · Sep 9, 2022 · IPR2022-00756 · APJ John D Hamann · IPR · Institution
The Board instituted review of claims 1–3, 5–9, 11–13, and 15–19 on all asserted grounds and joined LG Electronics Inc. and LG Electronics U.S.A., Inc. to IPR2021-01454.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “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) (2018); see 37 C.F.R. § 42.108 (2020). For reasons discussed below, we institute an inter partes review of the challenged claims and grant Petitioner’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Petitioner asserts the same unpatentability grounds on which we instituted review in the Google IPR. See Motion 1, 4–5. Petitioner “submits identical arguments and the same grounds introduced in the existing Google IPR, . . . and relies on the same expert declaration submitted in the Google IPR.” Id. at 4. Indeed, the Petition “copies verbatim the challenges set forth in the Google Petition.” Id. Thus, this inter partes review does not present any ground or matter not already at issue in the Google IPR. If joinder is granted, Petitioner anticipates participating in the proceeding in a limited capacity absent termination of the Google IPR petitioner as a party. Motion 1–2; see also id. at 7–9. Petitioner states that it “will act as an ‘understudy’ unless the current petitioner (Google) ceases to actively participate in the instituted IPR.” Id. at 1–2. Because Petitioner expects to participate only in a limited capacity, Petitioner submits that “the proposed joinder will neither unduly complicate the Google IPR nor delay its schedule. As such, joinder will promote judicial efficiency in determining the patentability of the ’014 Patent without prejudice to Patent Owner.” Id. at 2. Petitioner further indicates that Google does not oppose the request joinder. Id. at 1. Patent Owner did not file an opposition to the Motion for Joinder. We agree with Petitioner that joinder with the Google IPR is appropriate under the circumstances. Accordingly, we grant Petitioner’s Motion for Joinder.” slip op. at 7
NonePatents in suitUS 6,874,014 - PTAB · Sep 2, 2022 · IPR2022-00681 · APJ Miriam L Quinn · IPR · Institution
The Board instituted review of claims 1–22 under § 103(a) over Schulze and Gupta and granted STMicroelectronics’ motion to join IPR2021-01342.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have reviewed the Preliminary Response. It does not substantively address the merits of the Petition. In view of the identicalness of the issues in the instant Petition and the Applied Materials IPR and the previously-considered arguments from Patent Owner proffered in the Applied Materials IPR, we conclude that the Petitioner presents a reasonable likelihood that the Petitioner would prevail with respect to at least one challenged claim for the same reasons as indicated in our Decision Granting Institution of Inter Partes Review in IPR2021-01342.” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As to Petitioner’s showing for the remaining requirement for joinder, Petitioner has shown that the trial schedule will not be affected by joinder. Joinder Motion 5–6. No changes in the schedule are anticipated or necessary, and the limited participation, if at all, of Petitioner will not impact the timeline of the ongoing trial. Id. Petitioner shall adhere to the existing schedule of IPR2021-01342 and the “understudy” role it has agreed to assume. Id. at 1. More specifically, so long as any Applied Materials IPR Petitioner entity is a party to the Applied Materials IPR, all filings of Petitioner in the Applied Materials IPR shall be consolidated with the filings of the Applied Materials IPR Petitioner. The page limits set forth in 37 C.F.R. § 42.24 will apply to all consolidated filings. Petitioner is bound by any discovery agreements between Patent Owner and the Applied Materials IPR Petitioner in the Applied Materials IPR, and shall not seek any additional discovery. Patent Owner shall not be required to provide any additional discovery or deposition time as a result of joinder. In addition, if an oral hearing is requested and scheduled, Petitioners in IPR2021-01342 shall collectively designate attorneys to present at the oral hearing in a consolidated argument.” slip op. at 11
NonePatents in suitUS 6,968,248 - PTAB · Sep 2, 2022 · IPR2022-00680 · APJ Miriam L Quinn · IPR · Institution
Instituted review of claims 1–25 and 33–53 on the Schulze and Gupta obviousness ground and granted STMicroelectronics’ motion to join IPR2021-01344.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have reviewed the Preliminary Response. It does not substantively address the merits of the Petition. In view of the identicalness of the issues in the instant Petition and the Applied Materials IPR and the previously-considered arguments from Patent Owner proffered in the Applied Materials IPR, we conclude that the Petitioner presents a reasonable likelihood that the Petitioner would prevail with respect to at least one challenged claim for the same reasons as indicated in our Decision Granting Institution of Inter Partes Review in IPR2021-01344.” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Petitioner does not include any new arguments in its Petition. Prelim. Resp. 3. Therefore, we find that, for the challenged claims, the Petition here is substantively identical to the Petition in the Applied Materials IPR. Joinder Motion 3. We also find that the Joinder Motion is timely. The evidence is also identical, including reliance on the same Shanfield Declaration. Id. As the issues presented in the Petition do not add anything new to the ongoing IPR, we, therefore, determine that Patent Owner’s first condition is either irrelevant or moot in light of the current circumstances.” slip op. at 9
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“We are unpersuaded by Patent Owner’s arguments. 35 U.S.C. § 315 provides that joinder is discretionary and explicitly allows for joinder of a time-barred Petitioner. 35 U.S.C. § 315(b)-(c)(“The time limitation set forth . . . shall not apply to a request for joinder.”) Therefore, the fact that STMicroelectronics may be time-barred is irrelevant to its joinder as a Petitioner in IPR2021-01344, even should Applied Materials later withdraw. Id.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“Furthermore, we find unpersuasive Patent Owner’s argument that, based on Apple, Petitioner cannot continue the proceeding if Applied Materials withdraws because it would “continue a proceeding that would petitioner who had a first petition denied on the merits would be allowed to join an already-instituted IPR through a second petition. See Apple, 4. Such a situation is “the kind of serial attack that General Plastic was intended to address” and the remedy is to discretionarily deny institution. Id. The situation in Apple is not analogous to the instant case. Unlike the petitioner in Apple, Petitioner STMicroelectronics has not previously filed a petition that was denied on the merits, and properly filed its Petition and Joinder Motion within one month of the institution date of the Applied Materials IPR. Therefore, neither the rationale nor the outcome of Apple applies here.” slip op. at 10
Discretionary denialPatents in suitUS 6,907,305
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.