- Dolby Laboratories, Inc. v. Intertrust Technologies CorporationInstitution deniedPTAB · Dec 8, 2020 · IPR2020-00663 · APJ Kimberly Mcgraw · IPR · Institution
Institution was denied for claims 1 and 2 because Petitioner did not show a reasonable likelihood that either claim would have been obvious over Griswold or England.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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); see 37 C.F.R. § 42.108. Upon consideration of the submitted evidence and argument, we conclude the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’603 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art at the time the ’603 patent was filed (a “POSITA”) would have had a minimum of a bachelor’s degree in computer science, electrical engineering, mathematics, or a related field, and approximately two years of relevant experience or equivalent study in electronic data protection, electronic content protection, or digital rights management. Pet. 16. Petitioner further states that additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. Id. (citing Ex. 1002 ¶¶ 47–48). Patent Owner sets forth a similar definition, stating that a POSITA would have a Bachelor of Science degree in electrical engineering and/or computer science, and three years of work or research experience in the fields of secure transactions and encryption, or a Master’s degree in electrical engineering and/or computer science and two years of work or research experience in related fields. Prelim. Resp. 19. Patent Owner states that the positions set forth in its Preliminary Response would be the same under either parties’ proposal. Id. The parties’ proposals do not differ in any meaningful way to the issues in dispute. We adopt Petitioner’s definition of a POSITA, except that we delete the qualifier “a minimum” to eliminate vagueness as to the appropriate level of education. The qualifier expands the range without an upper bound, i.e., encompassing a Ph.D. degree and beyond, and thus does not meaningfully indicate the level of ordinary skill in the art. This definition of a person of ordinary skill in the art is supported by the testimony of Dr. Madisetti and is commensurate with the level of ordinary skill as reflected in the prior art and the ’603 patent. We note, however, that our analysis would be the same under either parties’ definition of a POSITA.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“should be construed to mean “conditions or characteristics determined in advance against which to check the structure and/or behavior of one or more software modules.” Pet. 16–18 (citing Ex. 1002 ¶¶ 67–72). To support this proposed construction, Petitioner states that the ’603 patent describes “inspector modules that ‘are operable to check the structure and/or behavior of drivers, software, and/or hardware against predefined criteria.’” Id. at 17 (emphasis omitted) (quoting Ex. 1001, 15:36–62); see also id. (citing Ex. 1001, 16:25–34, 23:63–24:4). Patent Owner contends that the term “predetermined criteria” does not require construction and should be given its plain and ordinary meaning. Prelim. Resp. 21. Patent Owner further asserts that construction of this term is not necessary to resolve the matters presently in dispute. Id. We agree that no explicit construction of this phrase is necessary for our decision on whether to institute. 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 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“With respect to Petitioner’s first argument, Petitioner contends that “a POSITA would have understood that in the embodiment where the software is separate from the content[,] the monitor at the licensee’s site must first identify the software in order for the software to be used together with the content . . . .” Id. at 33 (citing Ex. 1002 ¶ 93), id. at 25 (citing Ex. 1002 ¶ 81). Petitioner, however, does not provide sufficient evidence to support its contention. Although Petitioner cites to the declaration testimony of Dr. Madisetti to support its argument, Dr. Madisetti’s testimony merely repeats verbatim what is stated in the Petition and provides no additional persuasive facts or objective evidence to support his conclusion. See Ex. 1002 ¶ 93; see also id. at ¶¶ 77–82. To satisfy its burden of proving obviousness a petitioner cannot employ mere conclusory statements. In re Magnum Oil Tools Int’l, 829 F.3d at 1380; see also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (explaining that attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value). We are also not persuaded by Petitioner’s second argument that “a POSITA would have understood that in the embodiment where the software is separate from the content[,] the monitor at the licensee’s site must first identify the software . . . so that information identifying the software can be transmitted in the license datagram for evaluation at the licensor’s site.” Pet. 33 (citing Ex. 1006, 5:44–45, 6:37–51; Ex. 1002 ¶ 93). Petitioner does not provide sufficient evidence or argument either that the license datagram provides information about the software (as opposed to the licensed product itself) or a reason why a POSITA would have understood information about the software would be provided in the datagram for evaluation at the licensor’s site. To support this second argument, Petitioner states Griswold’s license check system involves sending a “request datagram” or a “license datagram” to the licensor’s site in order to obtain approval to use the licensed product. Pet. 24–25 (citing Ex. 1006, 3:62–4:5, 5:44–52). Petitioner contends Griswold’s “license datagram 3 describes information related to the use of licensed product 1, including an identification of product 1 (i.e., the software).” Id. at 25 (citing Ex. 1006, 5:44–45, 6:37–51); see also id. at 33 (citing Ex. 1006, 5:44–45, 6:37–51; Ex. 1002 ¶ 93). Griswold, however, does not state that license datagram 3 identifies the software separately from the product. Rather, Griswold sates that datagram 3 contains a number of fields, including product model number 24 that identifies product 1. Ex. 1006, 6:45–48. Thus, we disagree with Petitioner’s assertion that license datagram 3 identifies the software separately from the product. Petitioner’s contention that a POSITA would have understood that, in the embodiment where the software is separate from the content, the monitor must first identify the software so that information identifying the software can be transmitted in the license datagram for evaluation at the licensors site, is conclusory and unsupported. See Pet. 33 (citing Ex. 1002 ¶ 93). Thus, Petitioner has not sufficiently shown that Griswold teaches the” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,406,603 - ZTE (USA), Inc. / LG Electronics Inc. v. Cywee Group Ltd.Rehearing deniedPTAB · Nov 4, 2020 · IPR2019-01203 · APJ Christopher L Ogden · IPR · Rehearing
The Board denied CyWee’s rehearing request, leaving intact its decision allowing joined petitioner LGE to oppose CyWee’s revised motion to amend.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id.” slip op. at 3
- PTAB / AIA Trials › Motions to amend / substitute claimsDecided for petitioner
“In our Rehearing Decision, we determined that “the adversarial system is better served if we allow a Petitioner to raise [statutory, regulatory, or patentability] issues in response to CyWee’s Revised Motion to Amend.” Reh’g Dec. 8. Therefore, we held that LGE may present arguments and evidence, independently from ZTE, in response to CyWee’s Revised Motion to Amend, and that LGE may request an oral hearing limited solely to the issues raised in the Revised Motion to Amend. Id. at 9.” slip op. at 3
NonePatents in suitUS 8,441,438 - ZTE (USA), Inc. / LG Electronics Inc. v. Cywee Group Ltd.Rehearing deniedPTAB · Nov 4, 2020 · IPR2019-00143 · APJ Christopher L Ogden · IPR · Rehearing
The Board denied CyWee’s rehearing request, leaving in place its decision allowing joined petitioner LGE to oppose the Revised Motion to Amend.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id.” slip op. at 3
NonePatents in suitUS 8,441,438 - PTAB · Sep 15, 2020 · IPR2020-00282 · APJ Christopher L Ogden · IPR · Rehearing
The Board denied Samsung’s rehearing request, leaving in place the denial of institution because the petition did not show a reasonable likelihood of proving any challenged claim unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“a party requests rehearing on a decision on whether to institute inter partes review, we “review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c) (2019). There is an abuse of discretion if we have made “a clear error of judgment in weighing relevant factors or in basing [our] decision on an error of law or on clearly erroneous factual findings.” Bayer CropScience AG v. Dow AgroSciences LLC, 851 F.3d 1302, 1306 (Fed. Cir. 2017) (quoting Mentor Graphics Corp. v. Quickturn Design Sys., Inc., 150 F.3d 1374, 1377 (Fed. Cir. 1998)). In a request for rehearing, “[t]he burden of showing a decision should be modified lies with the party challenging the decision,” and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the record. 37 C.F.R. § 42.71(d).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We disagree. Nowhere in the cited passages in the Petition does Samsung argue that we should construe the term “row wrap-around connections” according to the explicit construction that Samsung now suggests for the plain and ordinary meaning. See Pet. 10–11, 25–30. Rather, Samsung argued that “Petitioners do not believe any term requires explicit construction.” Pet. 10–11. In the Reply, Samsung argued that all of the terms in the challenged claims should be construed according to their plain and ordinary meaning. See Reply 1, 4–5. However, apart from arguing that Samsung had proposed construing limitation 1C in the co-pending district court proceeding according to its plain and ordinary meaning,3 Samsung did not propose any specific construction for the phrase “row wrap-around connection,” or point to any evidence as to what the ordinary and customary meaning of that phrase was to a person of ordinary skill in the art. Therefore, we decline to adopt Samsung’s new proposed construction on rehearing.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We determined that Samsung had not provided sufficient evidence of its proposed motivation to combine the two references. See Dec. 16 (“[N]either Samsung nor Dr. Wolfe supports this conclusion with any evidence on the preliminary record.” (citing In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016); 35 U.S.C. § 322(a)(3))). In particular, we found that “Dr. Wolfe does not explain how or why the combination of Barkan and Tagg would minimize RC delay or allow for the use of lengthier columns and rows of electrodes, or cite to any facts, data, or authorities to support that opinion.” Dec. 17. We stated that “there is no evidence in the record suggesting that RC delay was a recognized problem . . . or that a person of ordinary skill in the art would have understood that a connection to both sides of a row of electrodes would be a solution to that problem.” Id. We also stated that Dr. Wolfe does not “provide any detail as to how a person of ordinary skill in the art would have modified Barkan’s leads 160 to incorporate external connections such as those in Tagg.” Id. (citing Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017)).” slip op. at 13
Claim construction§ 103 obviousnessPatents in suitUS 7,821,502 - Comcast Cable Communications, LLC v. Rovi Guides, Inc.Rehearing deniedPTAB · May 29, 2020 · IPR2019-01413 · APJ Karl D Easthom · IPR · Rehearing
The Board denied Rovi Guides’ rehearing request, leaving institution of inter partes review of claims 1–22 in place because the request showed no matters misapprehended or overlooked.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“institute an inter partes review, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d)” slip op. at 2
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), did not warrant terminating or staying this case. Dec. 26–27. Specifically, we explained that, according to Arthrex, “no constitutional infirmity [exists] in an institution decision.” Id. at 27 (quoting Arthrex, 941 F.3d at 1340) (alteration in Decision). We also explained that we generally do not stay cases pending an appeal to the Federal Circuit or the Supreme Court. Id.” slip op. at 2
NonePatents in suitUS 9,232,254 - Microsoft Corporation v. Uniloc 2017 LLCInstitution deniedPTAB · May 6, 2020 · IPR2020-00101 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution because Microsoft did not show a reasonable likelihood that claims 1–15 were obvious over Olkin and Kim, particularly as to the required confirmation step.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the above reasons, we determine that Microsoft has not adequately shown that Olkin teaches or suggests limitation 1.6 of claim 1. Microsoft does not point to any passage in Kim that would supply the missing teaching. See Pet. 26–29. Nor do Microsoft’s arguments regarding limitations 1.1–1.5 demonstrate that the combination of Olkin and Kim teaches limitation 1.6. See id. at 11–26. Thus, we determine that Microsoft has not demonstrated a reasonable likelihood of prevailing in showing that claim 1 would have been obvious over Olkin in combination with Kim.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Citing testimony of Dr. Houh, Microsoft argues that a person of ordinary skill in the art “would have a bachelor’s degree in computer science, electrical and/or computer engineering, or equivalent training, and two years of experience in computer networking and information security.” Pet. 9 (citing Ex. 1008 ¶ 43 (Dr. Houh’s testimony to that effect)). For the purpose of its Preliminary Response, Uniloc does not dispute Microsoft’s assertion. See Prelim. Resp. 10–11. We find that Microsoft’s proposed level of ordinary skill is consistent with the teachings of the ’359 patent and the cited prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself may provide evidence as to the appropriate level of ordinary skill). Therefore, we adopt Microsoft’s uncontested formulation as the level of ordinary skill for this decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Microsoft contends that the claims of the ’359 patent “do not require proposed constructions that differ from the claim language in order for the Board to compare the prior art to the claims.” Pet. 9. Likewise, Uniloc “contends that no claim terms require specific construction to resolve the unpatentability issues presented” in the Petition. Prelim. Resp. 10. In light of the parties’ arguments and evidence, we agree with the parties that it is unnecessary to expressly construe any claim terms for our determination of whether to institute an inter partes review. 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))). Nevertheless, our interpretation of the ’359 patent claims is informed by the disclosure and prosecution history, and we will discuss our interpretation of pertinent claim terms in the context of our analysis in the section below.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Finally, Microsoft has not sufficiently explained why a person of ordinary skill in the art would have modified Olkin’s system by adding an independent verification step. Olkin uses “conversation keys,” which are associated with a flow of messages “from a single source to one or more destinations.” Ex. 1003, 21:48–50. In Olkin’s system, the originator sends the messages to members of a recipient list, but the intended recipients on that list need not be authenticated before, or even after, the originator sends the message. See Ex. 1003, 9:55–60 (an intended recipient need not be registered with the system when the originator requests the key); id. at 10:3– 7 (alternatively, the security server “need not be concerned with whether the receivers . . are registered”). Microsoft has not adequately explained why, in Olkin’s system, where messages may be broadcast to multiple recipients before those recipients are even registered, a person of ordinary skill in the art would have had reason to independently verify to the recipients that the originator asked for, and was sent, an encryption key. For the above reasons, we determine that Microsoft has not adequately shown that Olkin teaches or suggests limitation 1.6 of claim 1. Microsoft does not point to any passage in Kim that would supply the missing teaching. See Pet. 26–29. Nor do Microsoft’s arguments regarding limitations 1.1–1.5 demonstrate that the combination of Olkin and Kim teaches limitation 1.6. See id. at 11–26. Thus, we determine that Microsoft has not demonstrated a reasonable likelihood of prevailing in showing that claim 1 would have been obvious over Olkin in combination with Kim.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,495,359 - Google LLC / ZTE (USA), Inc. et al. v. Cywee Group Ltd.All claims unpatentablePTAB · Feb 12, 2020 · IPR2018-01257 · APJ Patrick M Boucher · IPR · Final written decision
Claims 10 and 12 are unpatentable as obvious over Zhang and Bachmann and over Liberty and Bachmann; the motion to amend and both motions to terminate are denied.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“B. Analysis Under 35 U.S.C. § 315(b), we may not institute an inter partes review” slip op. at 15
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“B. Analysis Under 35 U.S.C. § 315(b), we may not institute an inter partes review” slip op. at 15
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Denied
“addition, Patent Owner filed a First Motion to Terminate this proceeding based on Petitioner’s alleged failure to identify all real parties in interest and/or privies. Paper 40 (“Mot. Term.”). Petitioner opposed Patent Owner’s Motion to Terminate (Paper 51, “Opp. Term.”), Patent Owner replied (Paper 65, “Reply Term.”), and Petitioner sur-replied (Paper 72, “Sur-reply Term.”).2 Subsequent to the Federal Circuit’s decision in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), we authorized Patent Owner’s request to file a Second Motion to Terminate to preserve Patent Owner’s positions related to the Constitutional concerns raised by that decision. Paper 823 (Second Mot. Term.). To this, Petitioner filed an opposition. Paper 86. An oral hearing was held with the parties, and a copy of the transcript was entered into the record. Paper 73 (“Tr.”).” slip op. at 3
- Skill levelOther
“B. Level of Skill in the Art In determining whether an invention would have been obvious at the” slip op. at 42
Patent outcomesUS 8,552,978 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,552,978 - Comcast Cable Communications, LLC v. Rovi Guides, Inc.Institution deniedPTAB · Jan 30, 2020 · IPR2019-01423 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution on all challenged claims because the petitions did not show sufficiently material differences to justify additional reviews.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“[b]ased on the Board’s prior experience, one petition should be sufficient to challenge the claims of a patent in most situations. Two or more petitions filed against the same patent at or about the same time . . . may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns. Trial Practice Guide Update, 26 (July 2019), https://www.uspto.gov/sites/ default/files/documents/trial-practice-guide-update3.pdf. However, more than one petition may be necessary when, for example, “there is a dispute about priority date requiring arguments under multiple prior art references.” Id.” slip op. at 6
Discretionary denialPatents in suitUS 9,118,948 - Comcast Cable Communications, LLC v. Rovi Guides, Inc.Institution deniedPTAB · Jan 30, 2020 · IPR2019-01422 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution on all challenged claims because the second and third petitions did not differ materially enough to justify additional reviews after instituting on claims 1–26 in IPR2019-01421.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“In the Notice, Petitioner requests that we first consider the petition in IPR2019-01421. Notice, 2. For the reasons provided in our concurrent decision on institution in IPR2019-01421, we conclude that Petitioner establishes a reasonable likelihood of prevailing in showing that at least one of the challenged claims of the ’948 patent is unpatentable, and, thus, we institute on all the challenged claims in that case. Therefore, all of the claims challenged in these proceedings are subject to inter partes review in IPR2019-01421. Here, Petitioner contends that multiple proceedings are necessary because Patent Owner may attempt to antedate the asserted references. Notice, 3–4. However, Patent Owner stipulates it will not attempt to antedate any of the references in the three proceedings. Response, 3. Thus, the possibility of Patent Owner antedating the asserted references does not warrant instituting multiple inter partes reviews of the ’948 patent. Petitioner also argues that multiple inter partes reviews are necessary because each petition relies on different references to disclose claim elements. Notice, 2, 5. Specifically, the challenged claims require user equipment and simultaneous recording of programs. Id. As Petitioner indicates, the three petitions rely on different references to teach the user equipment and simultaneously recording limitations. Id. Yet Petitioner does not sufficiently clarify why these differences warrant three proceedings. See id. For instance, Petitioner lists the different combinations of user equipment taught by the references but does not explain why this distinction among the petitions is important. Id. at 2. Therefore, although there may be differences among the petitions, Petitioner does not show that the distinctions are sufficiently material to warrant institution in multiple proceedings. Petitioner further asserts that multiple proceedings are warranted because each petition cites new prior art, i.e., references that were either not cited or not applied by the Examiner during prosecution. Id. at 3–4. We are unpersuaded, though, that simply relying on prior art that was not considered during examination justifies instituting multiple inter partes reviews of the same claims of the ’948 patent. In sum, per Petitioner’s request, we first considered Petitioner’s arguments and Patent Owner’s responses in IPR2019-01421. As set forth in the decision on institution in IPR2019-01421, we instituted, on all grounds set forth in that petition, inter partes review of claims 1–26 of the ’948 patent. We subsequently reviewed the parties’ submissions in IPR2019- 01422 and IPR2019-01423. The Petitions addressed here do not contain sufficiently material differences to support instituting any additional inter partes reviews of the ’948 patent. Accordingly, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of review in IPR2019-01422 and IPR2019-01423.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“In sum, per Petitioner’s request, we first considered Petitioner’s arguments and Patent Owner’s responses in IPR2019-01421. As set forth in the decision on institution in IPR2019-01421, we instituted, on all grounds set forth in that petition, inter partes review of claims 1–26 of the ’948 patent. We subsequently reviewed the parties’ submissions in IPR2019- 01422 and IPR2019-01423. The Petitions addressed here do not contain sufficiently material differences to support instituting any additional inter partes reviews of the ’948 patent. Accordingly, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of review in IPR2019-01422 and IPR2019-01423. III. CONCLUSION For the reasons provided above, considering all the circumstances in this case, we exercise our discretion under § 314(a) and deny the Petitions requesting inter partes review of the ’948 patent in IPR2019-01422 and IPR2019-01423. IV. ORDER It is hereby ORDERED that the Petitions are denied as to all challenged claims of the ’948 patent in IPR2019-01422 and IPR2019-01423, and no trial is instituted in those cases.” slip op. at 8
Discretionary denialPatents in suitUS 9,118,948
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.