- Apple Inc. v. Proxense, LLCInstitutedPTAB · Jan 16, 2025 · IPR2025-00075 · APJ Thu A Dang · IPR · Institution
The Board instituted IPR of claims 1–20 on all petition grounds and granted Apple’s motion to join the Google IPR, subject to participation limits.
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; see 37 C.F.R. § 42.4. Upon consideration of the Petition and the evidence of record, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to the unpatentability of at least 1 claim of the ’289 patent. Accordingly, we institute inter partes review of claims 1–20 of the ’289 patent. We also grant Petitioner’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition is substantively identical to the petition in the Google IPR, contains the same grounds based on the same evidence, and relies on the same declaration of Dr. Andrew Wolfe. Mot., passim; Ex. 1003.” slip op. at 8
NonePatents in suitUS 9,679,289 - Apple Inc.InstitutedPTAB · Nov 25, 2024 · IPR2024-01399 · APJ Thu A Dang · IPR · Institution
The Board instituted review of claims 1–6, 8–15, and 17–20 on the petition’s grounds and granted Apple’s motion to join IPR2024-00782.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“As we explain above, Petitioner has shown a reasonable likelihood that it would prevail with respect to each of the claims challenged in the petition. Thus, Petitioner has shown that the Petition warrants institution.” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The Petition does not present any new grounds or issues. Joinder Mot. 1, 3–5. Petitioner agrees to the schedule in the Google IPR and, thus, has shown that the trial schedule is not likely to be affected by joinder. Id. at 3, 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. Petitioner has agreed to an “understudy” role, which will simplify matters in the ongoing Google IPR and will be an efficient use of resources. Id. at 3, 5–6. Petitioner will assume a primary role only if Google ceases to participate in the Google IPR. Id. at 6. Accordingly, we determine that Petitioner has met its burden of showing that we should exercise our discretion to join Petitioner to the Google IPR (IPR2024-00782).” slip op. at 8
NonePatents in suitUS 8,646,042 - Apple Inc. v. Proxsense LLCInstitutedPTAB · Oct 8, 2024 · IPR2024-01335 · APJ Kevin F Turner · IPR · Institution
The Board instituted IPR on claims 1–7 and 9–18 under the petition’s § 103 grounds and joined Apple to IPR2024-00234.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In view of these representations by Petitioner, and Patent Owner’s statement that it does not oppose joinder, and having reviewed the Petition, we determine that, under the current circumstances, it is appropriate to exercise our discretion to institute inter partes review of the challenged claims based upon the same grounds authorized and for the same reasons discussed in the Google DI (Google IPR, Paper 10). Petitioner has shown a reasonable likelihood that it would prevail with respect to each of the claims challenged in the Petition for the same reasons given in the Google DI considering the same issues.” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The Petition does not present any new grounds or issues. Joinder Mot. 1, 3–5. Petitioner agrees to the schedule in the Google IPR and, thus, has shown that the trial schedule is not likely to be affected by joinder. Id. at 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. Petitioner has agreed to an “understudy” role, which will simplify matters in the ongoing Google IPR and will be an efficient use of resources.” slip op. at 7
NonePatents in suitUS 9,298,905 - Apple Inc. v. Proxsense LLCInstitutedPTAB · Oct 8, 2024 · IPR2024-01398 · APJ David C Mckone · IPR · Institution
The Board instituted inter partes review of claims 1, 5, 6, 8–11, 13, and 14 on the petitioned grounds and joined Apple Inc. to IPR2024-00573.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“As we explain above, Petitioner has shown a reasonable likelihood that it would prevail with respect to each of the claims challenged in the petition. Thus, Petitioner has shown that the Petition warrants institution.” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The Petition does not present any new grounds or issues. Joinder Mot. 1, 3–5. Petitioner agrees to the schedule in the Microsoft IPR and, thus, has shown that the trial schedule is not likely to be affected by joinder. Id. at 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. Petitioner has agreed to an “understudy” role, which will simplify matters in the ongoing Microsoft IPR and will be an efficient use of resources. Id. at 3, 5–6. Petitioner will assume a primary role only if the Microsoft IPR petitioner ceases to participate in the IPR. Id. at 6. Accordingly, we determine that Petitioner has met its burden of showing that we should exercise our discretion to join Petitioner to the Microsoft IPR (IPR2024-00573).” slip op. at 7
NonePatents in suitUS 8,646,042 - Apple Inc. v. Proxsense LLCInstitutedPTAB · Oct 8, 2024 · IPR2024-01334 · APJ David C Mckone · IPR · Institution
The Board instituted IPR on claims 1–7, 10, 12–19, and 22–27 under the asserted § 103 grounds and granted Apple’s motion to join the Google IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“C. Institution of Inter Partes Review This Petition is substantially identical to the petition in the Google IPR, challenging the same patent and claims, based on the same grounds of unpatentability, and relying upon the same evidence (including the same prior art combinations supported by the same expert declaration). According to Petitioner, “the 1334 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 submitted in the Google Petition.” Joinder Mot. 3; accord id. at 5 (“The Google Petition and 1334 Petition” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The Petition does not present any new grounds or issues. Joinder Mot. 1, 3–5. Petitioner agrees to the schedule in the Google IPR and, thus, has shown that the trial schedule is not likely to be affected by joinder. Id. at 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. Petitioner has agreed to an “understudy” role, which will simplify matters in the ongoing Google IPR and will be an efficient use of resources. Id. at 3, 5–6. Petitioner will assume a primary role only if the Google IPR petitioner ceases to participate in the IPR. Id. at 6. Accordingly, we determine that Petitioner has met its burden of showing that we should exercise our discretion to join Petitioner to the Google IPR (IPR2024-00233).” slip op. at 7
NonePatents in suitUS 8,886,954 - Apple Inc. v. Proxsense LLCInstitutedPTAB · Oct 8, 2024 · IPR2024-01333 · APJ David C Mckone · IPR · Institution
The Board instituted IPR on claims 1–6 and 8–17 under the petition’s § 103 grounds and granted Apple’s motion to join IPR2024-00232.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2019). 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 . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we institute an inter partes review of the ’730 patent. We also join Petitioner as a party to IPR2024-00232.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The Petition does not present any new grounds or issues. Joinder Mot. 1, 3–5. Petitioner agrees to the schedule in the Google IPR and, thus, has shown that the trial schedule is not likely to be affected by joinder. Id. at 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.” slip op. at 7
NonePatents in suitUS 8,352,730 - PTAB · Sep 1, 2023 · IPR2023-00733 · APJ Larry J Hume · IPR · Institution
The Board instituted inter partes review of claims 1–24 on five Heil-based grounds and granted Cisco et al.’s motion to join the Google IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In view of the identity of the issues in the instant Petition and the petition in the Google IPR and the already-considered arguments that Patent Owner made in the Google IPR, we determine that this proceeding warrants institution on the grounds presented in the Petition for the same reasons stated in our Decision on Institution in the Google IPR. See IPR2023- 00120, Paper 7. Accordingly, we proceed with the IPR.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We find that Petitioner timely filed its Joinder Motion in accordance with 37 C.F.R. § 42.122(b). We further determine that Petitioner has met its burden of showing that joinder is appropriate, at least because, as set forth above, the Petition here: (1) is substantively identical to the petition in the Google IPR; (2) contains the same grounds based on the same evidence; and (3) relies on the same declaration of Dr. Paul Franzon, Ph.D. Mot. 1, 3–9; Ex. 1004. Petitioner also represents that it “agrees to take an ‘understudy’ role.” Mot. 8. Petitioner clarifies that, “[o]nly if Google ceases participation in the proceeding . . . Petitioner would assume a primary role, meaning it would take over the role previously filled by Google” Id. at 9.” slip op. at 5
NonePatents in suitUS 10,154,092 - Google LLC v. Spacetime3d, Inc.InstitutedPTAB · Aug 7, 2023 · IPR2023-00577 · APJ Hubert C Lorin · IPR · Institution
The Board instituted review of claims 1–18 on all petition grounds and granted Google’s motion to join the Apple IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution Decision in the Apple IPR, which we incorporate expressly herein, we find Petitioner has demonstrated a reasonable likelihood of showing that at least one challenged claim of the ’048 patent is unpatentable. See Apple IPR, Paper 11. In addition, for substantially the same reasons discussed in our Institution Decision in the Apple IPR, we decline to exercise our discretion to deny the Petition under 35 U.S.C. § 325(d). See id. at 13–18.7 We, therefore, find that the Petition warrants institution of inter partes review of all challenged claims on the grounds asserted in the Petition.” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“same arguments as those included in its preliminary response filed in the Apple IPR. Compare Prelim. Resp., with Apple IPR, Paper 6 at 1–2, 8–59. Although the Preliminary Response additionally incorporates Patent Owner’s arguments regarding discretionary denial under 35 U.S.C. § 325(d) from Patent Owner’s Preliminary Sur-reply in the Apple IPR (compare Prelim. Resp. 2–7, with Apple IPR, Paper 8 at 1–6), no new arguments are presented by Patent Owner’s Preliminary Response in this proceeding with respect to discretionary denial under § 325(d) or the patentability of the challenged claims.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As discussed above, we find that the Petition here: (1) is substantively identical to the petition in the Apple IPR; (2) contains the same grounds based on the same evidence as the Apple petition; and (3) relies on the same declaration of Henry Fuchs, Ph.D., relied upon in the Apple petition. Mot. 2, 5; Ex. 1003. And no new grounds or patentability issues are presented by the Petition. Petitioner also represents that it “will assume an understudy role” in the joined proceeding. Mot. 2. Specifically, Petitioner agrees that: Petitioner will: 1. Adhere to all applicable deadlines in the Apple IPR; 2. Submit “consolidated” filings with the Apple, as set forth above in the statement of precise relief requested; 3. Refrain from requesting or reserving any additional depositions or deposition time; 4. Refrain from requesting or reserving additional oral hearing time; and 5. Assume a second-chair role as long as Apple remains in the proceeding. Id. at 6. In addition, Petitioner asserts that “joinder would not adversely impact the trial schedule, briefing, or discovery in the Apple IPR.” Id. at 8.” slip op. at 7
Discretionary denialPatents in suitUS 8,881,048 - Google LLC v. Spacetime3d, Inc.InstitutedPTAB · Aug 7, 2023 · IPR2023-00579 · APJ Minn Chung · IPR · Institution
The Board instituted inter partes review of claims 1–19 on all asserted grounds and granted Google’s motion to join the Apple IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Consequently, for substantially the same reasons discussed in our Institution Decision in the Apple IPR, which we incorporate expressly herein, we find Petitioner has demonstrated a reasonable likelihood of showing that at least one challenged claim of the ’654 patent is unpatentable. See Apple IPR, Paper 11. In addition, for substantially the same reasons discussed in our Institution Decision in the Apple IPR, we decline to exercise our discretion to deny the Petition under 35 U.S.C. § 325(d). See id. at 11–18.5 We, therefore, find that the Petition warrants institution of inter partes review of all challenged claims on the grounds asserted in the Petition.” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Consequently, for substantially the same reasons discussed in our Institution Decision in the Apple IPR, which we incorporate expressly herein, we find Petitioner has demonstrated a reasonable likelihood of showing that at least one challenged claim of the ’654 patent is unpatentable. See Apple IPR, Paper 11. In addition, for substantially the same reasons discussed in our Institution Decision in the Apple IPR, we decline to exercise our discretion to deny the Petition under 35 U.S.C. § 325(d). See id. at 11–18.5 We, therefore, find that the Petition warrants institution of inter partes review of all challenged claims on the grounds asserted in the Petition.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As discussed above, we find that the Petition here: (1) is substantively identical to the petition in the Apple IPR; (2) contains the same grounds based on the same evidence as the Apple petition; and (3) relies on the same declaration of Henry Fuchs, Ph.D., relied upon in the Apple petition. Mot. 2, 5; Ex. 1003. And no new grounds or patentability issues are presented by the Petition. Petitioner also represents that it “will assume an understudy role” in the joined proceeding. Mot. 2. Specifically, Petitioner agrees that Petitioner will: (1) assume “a second-chair role as long as Apple remains in the proceeding”; (2) adhere to all applicable deadlines in the Apple IPR; (3) submit “consolidated” filings with Apple for all substantive papers; (4) refrain from requesting or reserving any additional depositions or deposition time; and (5) refrain from requesting or reserving additional oral hearing time. Id. at 6. In addition, Petitioner asserts that “joinder would not adversely impact the trial schedule, briefing, or discovery in the Apple IPR.” Id. at 8.” slip op. at 7
Discretionary denialPatents in suitUS 9,304,654 - Google LLC v. Spacetime3d, Inc.InstitutedPTAB · Aug 7, 2023 · IPR2023-00578 · APJ Minn Chung · IPR · Institution
The Board instituted inter partes review of claims 1–20 on all asserted grounds and granted Google’s motion to join the Apple IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Consequently, for substantially the same reasons discussed in our Institution Decision in the Apple IPR, which we incorporate expressly herein, we find Petitioner has demonstrated a reasonable likelihood of showing that at least one challenged claim of the ’868 patent is unpatentable. See Apple IPR, Paper 11. In addition, for substantially the same reasons discussed in our Institution Decision in the Apple IPR, we decline to exercise our discretion to deny the Petition under 35 U.S.C. § 325(d). See id. at 12–19.6 We, therefore, find that the Petition warrants institution of inter partes review of all challenged claims on the grounds asserted in the Petition.” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Consequently, for substantially the same reasons discussed in our Institution Decision in the Apple IPR, which we incorporate expressly herein, we find Petitioner has demonstrated a reasonable likelihood of showing that at least one challenged claim of the ’868 patent is unpatentable. See Apple IPR, Paper 11. In addition, for substantially the same reasons discussed in our Institution Decision in the Apple IPR, we decline to exercise our discretion to deny the Petition under 35 U.S.C. § 325(d). See id. at 12–19.6 We, therefore, find that the Petition warrants institution of inter partes review of all challenged claims on the grounds asserted in the Petition.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As discussed above, we find that the Petition here: (1) is substantively identical to the petition in the Apple IPR; (2) contains the same grounds based on the same evidence as the Apple petition; and (3) relies on the same declaration of Henry Fuchs, Ph.D., relied upon in the Apple petition. Mot. 2, 5; Ex. 1003. And no new grounds or patentability issues are presented by the Petition. Petitioner also represents that it “will assume an understudy role” in the joined proceeding. Mot. 2. Specifically, Petitioner agrees that Petitioner will: (1) assume “a second-chair role as long as Apple remains in the proceeding”; (2) adhere to all applicable deadlines in the Apple IPR; (3) submit “consolidated” filings with Apple for all substantive papers; (4) refrain from requesting or reserving any additional depositions or deposition time; and (5) refrain from requesting or reserving additional oral hearing time. Id. at 6. In addition, Petitioner asserts that “joinder would not adversely impact the trial schedule, briefing, or discovery in the Apple IPR.” Id. at 8.” slip op. at 7
Discretionary denialPatents in suitUS 9,696,868
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.