- PTAB · Jan 10, 2024 · IPR2023-01197 · APJ Jeffrey S Smith · IPR · Institution
Instituted review of claims 1–8 on all petition grounds and joined Amazon to the Apple IPR, finding a reasonable likelihood of unpatentability and no basis for discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied discretionary otherDecided for petitioner
“deny institution in the absence of a Sotera stipulation from Amazon. First, we find no unfairness or prejudice in the fact that Apple has submitted a Sotera stipulation but Amazon has not. In this proceeding, Fintiv factors 1– 5, as a whole, weigh heavily against discretionary denial even without Amazon offering a Sotera stipulation and without any showing of compelling merits. Most significantly, the Board will be deciding the patentability issues raised in the Petition well before the scheduled trial date in the parallel district court proceeding. Thus, even if Amazon had submitted a Sotera stipulation, this would not change our decision to institute an inter partes review and join this case to the Apple IPR. Although a petitioner has the option to submit a Sotera stipulation, no such stipulation is required where the Fintiv factors as a whole do not otherwise weigh in favor of discretionary denial. For the above reasons, we determine that the efficiency and integrity of the patent system are best served by instituting inter partes review, and we decline to deny institution discretionarily under 35 U.S.C. § 314(a).” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Because the issues presented in Amazon’s Petition are identical to those in the Apple IPR, we determine for the same reasons that there is a reasonable likelihood that Amazon would prevail in showing that at least one of claims 1–8 is unpatentable under the grounds of the Petition. Therefore, we institute inter partes review for the same reasons stated in our Decision on Institution in the Apple IPR. See IPR2023-00037, Paper 10.” slip op. at 12
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“discretion, when warranted, to join as a party to an instituted inter partes review any other party who properly files a petition, after the patent owner has had the opportunity to file a preliminary response. 35 U.S.C. § 315(c). As the moving party, Amazon bears the burden of proving that it is entitled to the requested joinder. See 37 C.F.R. § 42.20(c). In deciding whether to join a case, we consider (1) the reasons why joinder is appropriate, (2) whether the petition raises any new grounds of unpatentability, (3) any impact that joinder would have on the cost and trial schedule for the existing review, and (4) whether joinder will add to the complexity of briefing or discovery. Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013); Patent Trial and Appeal Board, Consolidated Trial Practice Guide, 76 (Nov. 2019), https://www.uspto.gov/sites/default/files/ documents/tpgnov.pdf. According to Amazon, its “Petition is intentionally identical in substance to the Apple Petition.” Mot. 2; see also Mot. 4. Amazon also argues that the schedule of the joined cases “would be unaffected, no additional briefing or discovery would be required, and no additional burdens would be placed on [Zentian].” Mot. 3; see also Mot. 4. Further, Amazon “agree[s] to take an ‘understudy’ role as long as Apple remains a party to the Apple IPR,” and that it “will not make any substantive filings and shall be bound by the filings of Apple,” and will not pursue its own arguments, evidence, or discovery unless the matter of termination or settlement arises or there are issues involving only Amazon. Mot. 5–6. Thus, according to Amazon, Zentian would not suffer prejudice if the two proceedings are joined. Mot. 6. Apart from its arguments discussed above in the context of discretionary denial, Zentian does not dispute the above contentions by Amazon and does not point to any particular prejudice relating to joining the two proceedings. In light of these considerations, Amazon has shown that joinder to the Apple IPR is appropriate in this case. Therefore, we grant Amazon’s Motion for Joinder.” slip op. at 12
Discretionary denialPatents in suitUS 10,971,140 - PTAB · Jan 10, 2024 · IPR2023-01194 · APJ Kevin F Turner · IPR · Institution
The Board instituted review of claims 1–6 on all petition grounds and granted Amazon Web Services, Inc. and Amazon.com Services LLC’s motion to join the Apple IPR.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“to Patent Owner, trial is scheduled for September 23, 2024. Opp. 1. However, a final written decision in the instituted Apple IPR (and in the combined proceeding after joinder) will be due on June 12, 2024, more than three months before the trial date in district court. Thus, factor 2 weighs heavily against discretionary denial. The other factors do not outweigh factor 2. As to factor 1, there is no evidence as to whether there will be a stay in the parallel case, so we regard this factor as neutral. As to factor 3, there has been some preliminary activity in the parallel case, but overall, the proceeding is in its early stages, so we do not regard this factor as weighing substantially in favor of discretionary denial. As to factor 4, the district court may ultimately consider Jiang, Nguyen, and Smyth, cited in the invalidity contentions (Ex. 2001, 24), but not Boike and Baumgartner, and not necessarily in the same combinations as asserted in the Petition. See Ex. 2001, 20–26. As such, factor 4 weighs somewhat but not heavily in favor of discretionary denial. As to factor 5, the parties in the parallel proceeding are not different from the parties here, so we regard this factor as neutral.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Because the issues presented in the instant Petition are identical to those in the Apple IPR, we determine for the same reasons that there is a reasonable likelihood that Petitioner would prevail in showing that at least one of claims 1–6 of the ’377 Patent is unpatentable under the grounds of the Petition. Therefore, we institute inter partes review for the same reasons stated in our Decision on Institution in the Apple IPR. See IPR2023-00035, Paper 10.” slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“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. See Kyocera Corp. v. Softview LLC, Case IPR2013-00004, 4 (PTAB Apr. 24, 2013) (Paper 15); Patent Trial and Appeal Board, Consolidated Trial Practice Guide, 76 (Nov. 2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf. Petitioner’s Motion addresses each of these considerations. Mot. 1–6.” slip op. at 10
Discretionary denialPatents in suitUS 10,062,377 - PTAB · Jan 10, 2024 · IPR2023-01195 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted review of claims 1, 2, 4, 6–14, 16–18, 20–29, 35, 37–39, and 42–45 on all petition grounds and granted Amazon’s motion for joinder.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“in the parallel case) most significant under these circumstances. According to Zentian, trial is scheduled for September 23, 2024. Prelim. Resp. 1. However, a final written decision in the instituted Apple IPR (and in the combined proceeding after joinder) will be due on June 12, 2024, more than three months before the trial date in district court. Thus, factor 2 weighs heavily against discretionary denial.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Director of the USPTO, we may institute an inter partes review 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); see also 37 C.F.R. § 42.108(c) (2023). Applying that standard, we institute an inter partes review of all the challenged claims of the ’789 patent for the reasons explained below. This is a preliminary decision, and we will base our final written decision on the full trial record. We also grant Amazon’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As the moving party, Amazon bears the burden of proving that it is entitled to the requested joinder. See 37 C.F.R. § 42.20(c). In deciding whether to join a case, we consider (1) the reasons why joinder is appropriate, (2) whether the petition raises any new grounds of unpatentability, (3) any impact that joinder would have on the cost and trial schedule for the existing review, and (4) whether joinder will add to the complexity of briefing or discovery. Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013); Patent Trial and Appeal Board, Consolidated Trial Practice Guide, 76 (Nov. 2019), https://www.uspto.gov/sites/default/files/ documents/tpgnov.pdf.” slip op. at 13
Discretionary denialPatents in suitUS 10,839,789 - PTAB · Jan 10, 2024 · IPR2023-01193 · APJ Christopher L Ogden · IPR · Institution
The Board instituted review of claims 1, 4, 5, 7, 9, 10, 12, and 14–16 on all petition grounds and joined Amazon to the Apple IPR.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“in the parallel case) most significant under these circumstances. According to Zentian, trial is scheduled for September 23, 2024. Prelim. Resp. 1. However, a final written decision in the instituted Apple IPR (and in the combined proceeding after joinder) will be due on June 12, 2024, more than three months before the trial date in district court. Thus, factor 2 weighs heavily against discretionary denial. The other factors do not outweigh the second factor. As to factor 1, there is no evidence as to whether there will be a stay in the parallel case, so we regard this factor as neutral. As to factor 3, there has been some preliminary activity in the parallel case, but overall, the proceeding is in its early stages, so we do not regard this factor as weighing substantially in favor of discretionary denial. As to factor 4, the district court may ultimately consider Jiang, Baumgartner, Smyth, and Brown, but not necessarily in the same combinations as asserted in the Petition. See Ex. 2001, 8–10. So factor 4 weighs in favor of discretionary denial, but not so much as to outweigh factor 2. As to factor 5, the parties in the parallel proceeding are not different from the parties here, so we regard this factor as neutral.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“claims and all asserted grounds of unpatentability. IPR2023-00034, Paper 10. Amazon’s Petition challenges the same claims and asserts the same grounds of unpatentability as those on which we instituted the Apple IPR, relying on substantially the same testimonial evidence. See Mot. 2 (“The Instant Petition is intentionally identical in substance to the Apple Petition.”); Ex. 1062 ¶ 26 (adopting the opinions set forth in the declaration of Christopher Schmandt (Ex. 1003) that Apple relied on in Apple IPR). Because the issues presented in Amazon’s Petition are identical to those in the Apple IPR, we determine for the same reasons that there is a reasonable likelihood that Amazon would prevail in showing that at least one of claims 1, 4, 5, 7, 9, 10, 12, and 14–16 is unpatentable under the grounds of the Petition. Therefore, we institute inter partes review for the same reasons stated in our Decision on Institution in the Apple IPR. See IPR2023- 00034, Paper 10.” slip op. at 13
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“discretion, when warranted, to join as a party to an instituted inter partes review any other party who properly files a petition, after the patent owner has had the opportunity to file a preliminary response. 35 U.S.C. § 315(c). As the moving party, Amazon bears the burden of proving that it is entitled to the requested joinder. See 37 C.F.R. § 42.20(c). In deciding whether to join a case, we consider (1) the reasons why joinder is appropriate, (2) whether the petition raises any new grounds of unpatentability, (3) any impact that joinder would have on the cost and trial schedule for the existing review, and (4) whether joinder will add to the complexity of briefing or discovery. Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013); Patent Trial and Appeal Board, Consolidated Trial Practice Guide, 76 (Nov. 2019), https://www.uspto.gov/sites/default/files/ documents/tpgnov.pdf.” slip op. at 14
Discretionary denialPatents in suitUS 7,979,277 - PTAB · Jan 10, 2024 · IPR2023-01192 · APJ Christopher L Ogden · IPR · Institution
The Board instituted review of claims 46–51, 53, 54, 58, 59, 64, and 67 on all petition grounds and joined Amazon to the Apple IPR.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)InstitutedDecided for petitioner
“Of the first five Fintiv factors, we consider factor 2 (proximity to trial in the parallel case) most significant under these circumstances. According to Zentian, trial is scheduled for September 23, 2024. Prelim. Resp. 1. However, a final written decision in the instituted Apple IPR (and in the combined proceeding after joinder) will be due on June 12, 2024, more than three months before the trial date in district court. Thus, factor 2 weighs heavily against discretionary denial. The other factors do not outweigh the second factor. As to factor 1, there is no evidence as to whether there will be a stay in the parallel case, so we regard this factor as neutral. As to factor 3, there has been some preliminary activity in the parallel case, but overall, the proceeding is in its early stages, so we do not regard this factor as weighing substantially in favor of discretionary denial. As to factor 4, the district court may ultimately consider Thelen, Bailey, and Jiang (the latter being asserted solely for claims 53, 58, and 59), but not Chen or the other references, and not necessarily in the same combinations as asserted in the Petition. See Ex. 2001, 8–10, 38. So factor 4 weighs somewhat but not heavily in favor of discretionary denial. As to factor 5, the parties in the parallel proceeding are not different from the parties here, so we regard this factor as neutral.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“claims and all asserted grounds of unpatentability. IPR2023-00033, Paper 10. Amazon’s Petition challenges the same claims and asserts the same grounds of unpatentability as those on which we instituted the Apple IPR, relying on substantially the same testimonial evidence. See Mot. 2 (“The Instant Petition is intentionally identical in substance to the Apple Petition.”); Ex. 1043 ¶ 26 (adopting the opinions set forth in the declaration of Christopher Schmandt (Ex. 1003) that Apple relied on in Apple IPR). Because the issues presented in Amazon’s Petition are identical to those in the Apple IPR, we determine for the same reasons that there is a reasonable likelihood that Amazon would prevail in showing that at least one of claims 46–51, 53, 54, 58, 59, 64, and 67 is unpatentable under the grounds of the Petition. Therefore, we institute inter partes review for the same reasons stated in our Decision on Institution in the Apple IPR. See IPR2023-00033, Paper 10.” slip op. at 11
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“discretion, when warranted, to join as a party to an instituted inter partes review any other party who properly files a petition, after the patent owner has had the opportunity to file a preliminary response. 35 U.S.C. § 315(c). As the moving party, Amazon bears the burden of proving that it is entitled to the requested joinder. See 37 C.F.R. § 42.20(c). In deciding whether to join a case, we consider (1) the reasons why joinder is appropriate, (2) whether the petition raises any new grounds of unpatentability, (3) any impact that joinder would have on the cost and trial schedule for the existing review, and (4) whether joinder will add to the complexity of briefing or discovery. Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013); Patent Trial and Appeal Board, Consolidated Trial Practice Guide, 76 (Nov. 2019), https://www.uspto.gov/sites/default/files/ documents/tpgnov.pdf. Amazon’s Motion addresses each of these considerations. Mot. 1–6. According to Amazon, its “Petition is intentionally identical in substance to the Apple Petition.” Mot. 2; see also Mot. 4. Amazon also argues that the schedule of the joined cases “would be unaffected, no additional briefing or discovery would be required, and no additional burdens would be placed on [Zentian].” Mot. 3; see also Mot. 4. Further, Amazon “agree[s] to take an ‘understudy’ role as long as Apple remains a party to the Apple IPR,” and that it “will not make any substantive filings and shall be bound by the filings of Apple,” and will not pursue its own arguments, evidence, or discovery unless the matter of termination or settlement arises or there are issues involving only Amazon. Mot. 5–6. Thus, according to Amazon, Zentian would not suffer prejudice if the two proceedings are joined. Mot. 6. Apart from its arguments discussed above in the context of discretionary denial, Zentian does not dispute the above contentions by Amazon and does not point to any particular prejudice relating to joining the two proceedings. In light of these considerations, Amazon has shown that joinder to the Apple IPR is appropriate in this case. Therefore, we grant Amazon’s Motion for Joinder.” slip op. at 12
Discretionary denialPatents in suitUS 7,587,319 - PTAB · Mar 16, 2023 · IPR2022-01391 · APJ Mitchell G Weatherly · IPR · Institution
The Board instituted IPR on claims 30–33, 35, 37–40, 43, 45–48, 51, 53, 54, 61, 62, 64, 65, 67, 69, 70, 72, and 75 on all petitioned grounds, and joined Samsung to IPR2022-01232.
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 filed under section 311 and any response filed under section 313 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). For the reasons expressed below, we (1) institute inter partes review on the same grounds instituted in the Meta IPR, and (2) grant the Motion, subject to the conditions set forth below. B. Related Proceedings” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We decline to exercise our discretion under Fintiv to deny institution of inter partes review. On June 21, 2022, the Director of the USPTO issued an Interim Procedure for Discretionary Denials in AIA Postgrant Proceedings with Parallel District Court Litigation, available at: https://www.uspto.gov/sites/default/files/documents/interim_proc_ discretionary_denials_aia_parallel_district_court_litigation_memo_ 20220621_.pdf (the “Interim Procedure”). The Interim Procedure provides that “the PTAB will not discretionarily deny institution of an IPR or PGR 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.” Interim Procedure 7. Here, Petitioner stipulates that it “will not pursue the grounds raised, or that reasonably could have been raised, in this IPR in the parallel litigation if IPR is instituted.” Pet. 9; Reply 1. We therefore adhere to the Interim Procedure in this Decision and decline to exercise our discretion to deny institution of inter partes review upon this basis.” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Based on our review of the before us, we find that Petitioner demonstrates that allowing it to join the Meta IPR as a party will not materially lengthen the schedule, increase cost, or add to the complexity of briefing or discovery in the Meta IPR. Accordingly, we grant Petitioner’s Motion and add it as a party to the Meta IPR.” slip op. at 8
Discretionary denialPatents in suitUS 8,630,234 - PTAB · Mar 16, 2023 · IPR2022-01393 · APJ Terrence W Mcmillin · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, and granted Samsung’s motion to join the Meta IPR as a petitioner.
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 filed under section 311 and any response filed under section 313 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). For the reasons expressed below, we (1) institute inter partes review on the same grounds instituted in the Meta IPR, and (2) grant the Motion, subject to the conditions set forth below. B.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Here, Petitioner’s Motion requests no more than the statute allows. Petitioner represents that the current “Petition and the . . . Petition [in the Meta IPR] challenge the same claims, on the same grounds, and rely on the same prior art and evidence, including an identical declaration from the same expert.” Mot. 1. Furthermore, Petitioner agrees that, if joined as a party to the Meta IPR, “Petitioner will act as ‘understudy’ and will not assume an active role unless Meta ceases to participate” in the Meta IPR, “Meta will maintain the lead role in the proceeding so long as it is a party to the proceeding,” and “Petitioner will not seek additional depositions or deposition time.” Mot. 2.” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We decline to exercise our discretion under Fintiv to deny institution of inter partes review. On June 21, 2022, the Director of the USPTO issued an Interim Procedure for Discretionary Denials in AIA Postgrant Proceedings with Parallel District Court Litigation, available at: https://www.uspto.gov/sites/default/files/documents/interim_proc_ discretionary_denials_aia_parallel_district_court_litigation_memo_ 20220621_.pdf (the “Interim Procedure”). The Interim Procedure provides that “the PTAB will not discretionarily deny institution of an IPR or PGR 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.” Interim Procedure 7. Here, Petitioner stipulates that it will not pursue the grounds raised, or that reasonably could have been raised, in this IPR in the parallel litigation if IPR is instituted. Pet. 9; Reply 1. We therefore adhere to the Interim Procedure in this Decision and decline to exercise our discretion to deny institution of inter partes review upon this basis.” slip op. at 7
- Other 314aDecided for petitioner
“Patent Owner argues by implication that the Petition must set forth “compelling evidence of unpatentability” to avoid analysis of the Fintiv factors for deciding whether to exercise discretion to deny a petition. Opp. 13. Patent Owner’s argument is flawed for two reasons. First, as we discuss immediately above, even applying the Fintiv framework for deciding whether to discretionarily deny the Petition, we decline to exercise such discretion. Second, the Interim Procedure does not impose a requirement that a petition must always present compelling evidence of unpatentability to warrant institution. Rather, the Interim Procedure merely indicates that whenever a petitioner adduces compelling evidence of unpatentability, panels will not discretionarily deny the petition under Fintiv. Interim Procedure 2. D. Whether a Potential Denial of the Petition in the Meta IPR Justifies” slip op. at 8
Discretionary denialPatents in suitUS 10,880,721 - PTAB · Mar 16, 2023 · IPR2022-01392 · APJ Terrence W Mcmillin · IPR · Institution
The Board instituted IPR on claims 1, 2, 6, 9, 14, 15, 16, 20, 25, 34, 38, 39, 43, 45, 46, 49, 50, 135, 136, and 140 on all petitioned grounds, and granted joinder.
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 filed under section 311 and any response filed under section 313 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). For the reasons expressed below, we (1) institute inter partes review on the same grounds instituted in the Meta IPR, and (2) grant the Motion, subject to the conditions set forth below. B.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“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. Section 315(c) “authorizes joinder of a person as a party, not ‘joinder’ of two proceedings” and “does not authorize the joined party to bring new issues from its new proceeding into the existing proceeding.” Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1335 (Fed. Cir. 2020). Here, Petitioner’s Motion requests no more than the statute allows. Petitioner represents that the current “Petition and the . . . Petition [in the Meta IPR] challenge the same claims, on the same grounds, and rely on the same prior art and evidence, including an identical declaration from the same expert.” Mot. 1. Furthermore, Petitioner agrees that, if joined as a party to the Meta IPR, “Petitioner will act as ‘understudy’ and will not assume an active role unless Meta ceases to participate” in the Meta IPR, “Meta will maintain the lead role in the proceeding so long as it is a party to the proceeding,” and “Petitioner will not seek additional depositions or deposition time.” Mot. 2.” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We decline to exercise our discretion under Fintiv to deny institution of inter partes review. On June 21, 2022, the Director of the USPTO issued an Interim Procedure for Discretionary Denials in AIA Postgrant Proceedings with Parallel District Court Litigation, available at: https://www.uspto.gov/sites/default/files/documents/interim_proc_ discretionary_denials_aia_parallel_district_court_litigation_memo_ 20220621_.pdf (the “Interim Procedure”). The Interim Procedure provides that “the PTAB will not discretionarily deny institution of an IPR or PGR 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.” Interim Procedure 7. Here, Petitioner stipulates that it will not pursue the grounds raised, or that reasonably could have been raised, in this IPR in the parallel litigation if IPR is instituted. Pet. 9; Reply 1. We therefore adhere to the Interim Procedure in this Decision and decline to exercise our discretion to deny institution of inter partes review upon this basis.” slip op. at 7
- Other 314aDecided for petitioner
“Patent Owner argues by implication that the Petition must set forth “compelling evidence of unpatentability” to avoid analysis of the Fintiv factors for deciding whether to exercise discretion to deny a petition. Opp. 13. Patent Owner’s argument is flawed for two reasons. First, as we discuss immediately above, even applying the Fintiv framework for deciding whether to discretionarily deny the Petition, we decline to exercise such discretion. Second, the Interim Procedure does not impose a requirement that a petition must always present compelling evidence of unpatentability to warrant institution. Rather, the Interim Procedure merely indicates that whenever a petitioner adduces compelling evidence of unpatentability, panels will not discretionarily deny the petition under Fintiv. Interim Procedure 2. D. Whether a Potential Denial of the Petition in the Meta IPR Justifies” slip op. at 8
Discretionary denialPatents in suitUS 10,880,721 - PTAB · Mar 16, 2023 · IPR2022-01390 · APJ Mitchell G Weatherly · IPR · Institution
The Board instituted inter partes review of claims 1–3, 6, 10, 11, 19–22, 24, 25, 28, and 29 on all petitioned grounds and granted Samsung’s motion to join the Meta IPR.
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 filed under section 311 and any 1 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35 U.S.C. §§ 102 and 103 that became effective March 16, 2013. Because the application for the ’234 patent was filed on July 28, 2009, we apply the pre-AIA versions of §§ 102, 103. 2 U.S. Patent No. 7,668,159 B2 (Ex. 1005, “Buckley”). 3 U.S. Patent No. 8,731,163 B1 (Ex. 1009, “Bates”). response filed under section 313 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). For the reasons expressed below, we (1) institute inter partes review on the same grounds instituted in the Meta IPR, and (2) grant the Motion, subject to the conditions set forth below. B. Related Proceedings” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Patent Owner argues that we should deny the Petition under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 2–3 (PTAB Mar. 20, 2020) (precedential). Opp. 7–12. Patent Owner points to the Litigation. See supra Part I.B. We decline to exercise our discretion under Fintiv to deny institution of inter partes review. On June 21, 2022, the Director of the USPTO issued an Interim Procedure for Discretionary Denials in AIA Postgrant Proceedings with Parallel District Court Litigation, available at: https://www.uspto.gov/sites/default/files/documents/interim_proc_ discretionary_denials_aia_parallel_district_court_litigation_memo_ 20220621_.pdf (the “Interim Procedure”). The Interim Procedure provides that “the PTAB will not discretionarily deny institution of an IPR or PGR 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.” Interim Procedure 7. Here, Petitioner stipulates that it “will not pursue the grounds raised, or that reasonably could have been raised, in this IPR in the parallel litigation if IPR is instituted.” Pet. 9; Reply 1. We therefore adhere to the Interim Procedure in this Decision and decline to exercise our discretion to deny institution of inter partes review upon this basis.” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Section 315(c) “authorizes joinder of a person as a party, not ‘joinder’ of two proceedings” and “does not authorize the joined party to bring new issues from its new proceeding into the existing proceeding.” Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1335 (Fed. Cir. 2020). Here, Petitioner’s Motion requests no more than the statute allows. Petitioner represents that the current “Petition and the . . . Petition [in the Meta IPR] challenge the same claims, on the same grounds, and rely on the same prior art and evidence, including an identical declaration from the same expert.” Mot. 1. Furthermore, Petitioner agrees that, if joined as a party to the Meta IPR, “Petitioner will act as ‘understudy’ and will not assume an active role unless Meta ceases to participate” in the Meta IPR, “Meta will maintain the lead role in the proceeding so long as it is a party to the proceeding,” and “Petitioner will not seek additional depositions or deposition time.” Mot. 2.” slip op. at 5
- Other 314aDecided for petitioner
“Patent Owner argues by implication that the Petition must set forth “compelling evidence of unpatentability” to avoid analysis of the Fintiv factors for deciding whether to exercise discretion to deny a petition. Opp. 13. Patent Owner’s argument is flawed for two reasons. First, as we discuss immediately above, even applying the Fintiv framework for deciding whether to discretionarily deny the Petition, we decline to exercise such discretion. Second, the Interim Procedure does not impose a requirement that a petition must always present compelling evidence of unpatentability to warrant institution. Rather, the Interim Procedure merely indicates that whenever a petitioner adduces compelling evidence of unpatentability, panels will not discretionarily deny the petition under Fintiv. Interim Procedure 2. D. Whether a Potential Denial of the Petition in the Meta IPR Justifies Denying the Petition in this Proceeding” slip op. at 8
Discretionary denialPatents in suitUS 8,630,234 - PTAB · Mar 15, 2022 · IPR2021-01398 · APJ Karl D Easthom · IPR · Institution
The Board instituted IPR on claims 1–18 because the petition showed a reasonable likelihood of prevailing on at least one claim under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review is under 35 U.S.C. § 314. See also 37 C.F.R. § 42.4(a) (2020). To institute an inter partes review, the information presented in the Petition must show “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).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art at the time of the ’475 patent (December 2002) “would at minimum have a bachelor’s in software, computer, or electrical engineering or computer science with at least two years’ experience in software development, including with respect to web data analysis, or the equivalent.” Pet. 11 (citing Ex. 1003 ¶ 24). Patent Owner presents no proposed qualifications. See generally Prelim. Resp.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes any explicit claim constructions. Pet. 10; see generally Prelim. Resp. At this stage, no need exists to construe a claim term expressly to resolve the parties’ disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“none of the combinations in the Petition were previously presented. Further, there is no overlap between the arguments made during examination and the representations of the prior art in this proceeding. Therefore, with respect to Chen and Cook, the same or substantially the same art or arguments were not previously presented. Further, even if Chen is cumulative to Heer as alleged by Patent Owner, Petitioner demonstrates that the Examiner materially erred for the reasons explained below. As the parties indicate, the Examiner stated as reasons for allowance for the “independent claims,” that “the prior art of record does not teach: combining the multi-modal information for content portions associated and the proximal information for content portions associated with the user path to form a user profile having a unified representation.” See Pet. 85; Prelim. Resp. 26; Ex. 1002, 123. Patent Owner now argues that the primary difference between Heer (or Chen, if, as Patent Owner alleges, it is “cumulative” to Heer) and independent claims 1 and 10 is that the claims require using proximal information in the user profile. See Prelim. Resp. 26. But as discussed above (§ I.E.5), Patent Owner also admits that the asserted prior art at least separately teaches using proximal information and multi-modal information. See Prelim. Resp. 36–37 (arguing that “each” of the prior art references relied upon by Petitioner “relates to using either multi-modal information or proximal information, but not both”). Nevertheless, nothing in the prosecution history, including the Examiner’s reasons for allowance or citation and limited discussion of Heer with respect to dependent claims (Ex. 1002, 78–79, 123), shows that the Examiner was aware that Heer (even if it is cumulative to Chen) taught everything in the independent claims except for combining proximal information as part of the user profile. Also, the prosecution history does not show that Patent Owner informed the Examiner, or that the Examiner was aware, of Patent Owner’s current admission that the prior art “relates to using either multi-modal information or proximal information, but not both.” See Prelim. Resp. 36–37. Petitioner shows that the Examiner did not apply Heer as the primary basis for rejecting independent claims 1 and 10, which Petitioner essentially does here with respect to Chen. See Pet. 84 (arguing that “Heer was relied on, but only for dependent claims 9 and 18”) citing Ex. 1002, 78–79); see Advanced Bionics, Paper 6 at 10–11 & n.10 (reasoning that Becton Dickinson factor c, “the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection,” is a material error factor). And Petitioner sufficiently shows that “Chen and Cooke were not previously presented” during prosecution. Pet. 84. As summarized above, Petitioner sufficiently shows that Chen, with Chi and other secondary references, suggests combining multi-modal information with proximal information such as surrounding text associated with links and images wherein Chen specifically teaches flexibly employing all manner of such multi-modal information to aid in assigning users to clusters. See supra § II.E.; Ex. 1004 ¶¶ 16, 18, 22; Advanced Bionics, Paper 6 at 9–11 & n.10 (reasoning that Becton Dickinson factor f, “additional evidence and facts presented in the petition warrant reconsideration of the prior art or arguments,” and Becton Dickinson factor e, the extent the Petition shows error, are a material error factors).” slip op. at 36
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,043,475
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.