- Ericsson Inc. v. Uniloc 2017, LLCRehearing deniedPTAB · Sep 9, 2020 · IPR2020-00420 · APJ Jameson Lee · IPR · Rehearing
The Board denied Ericsson’s rehearing request and left in place the discretionary denial of institution for claims 1–5, 7, and 17 under General Plastic.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When rehearing a decision on institution, we do not review the merits of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, the 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 in a motion, an opposition, or a reply.” Id.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for patent owner
“considered whether Petitioner knew of prior art which disclosed the same material as what the allegedly recently discovered references disclose. Decision 10–11. The additional consideration was prompted by the Petition’s characterization of Alamouti as merely disclosing an “implementation detail” omitted by the Merakos and Kay. Pet. 28–29. Petitioner argues that the additional consideration of the criticality of the disclosure contained in the allegedly recently discovered prior art applies a new standard that is inconsistent with General Plastic. Reh’g Req. 11. We disagree. First, there is no inconsistency because General Plastic does not prohibit the consideration. Second, the consideration is not a new standard, because, in our view, it already is implicit in General Plastic. Typically, there is nothing to trigger it and an assumption is usually made that absence of the recently discovered reference is what kept Petitioner from filing the petition earlier. Here, the circumstance is different, because Alamouti, and Ling evidently as well, are used by Petitioner only to provide relatively less significant implementation details compared to what Merakos and Kay disclose. Third, Petitioner does not point to anything in General Plastic which approves a hypothetical petitioner’s possibly substituting a reference it has known for a long time with a recently obtained reference that discloses the same, to justify a delay in filing a petition. Thus, it is not” slip op. at 6
- BurdenDecided for patent owner
“every single document in the related litigation. It was incumbent upon Petitioner to submit and identify material to support its assertions. Although we were willing to inspect the Complaint and any Amended Complaint, we were not willing to go further. It matters not whether a plaintiff asserting patent infringement is required to identify all asserted claims in the its assertion, and we need not even have looked in the Complaint.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner’s accounting must begin from when it first learned that Patent Owner had filed suit accusing products designed and manufactured by Petitioner of infringing claims of the ’079 patent.” Decision 12. Rather than accounting for the entire 10 month period from March 26, 2019 to January 17, 2020, the Petition only addressed 4 months. Pet. 73. Now, in the Request for Rehearing, Petitioner provides for consideration an explanation that purportedly covers the entire 10 month period. Reh’g Req. 7–10. The discussion and change of focus from 4 months to 10 months arguments after the original arguments are rejected. Accordingly, we decline to consider the new explanation that purportedly accounts for the full 10 month period. C. slip op. at 5
Discretionary denialPatents in suitUS 6,868,079 - Ericsson Inc. v. Uniloc 2017 LLCInstitution deniedPTAB · Jun 18, 2020 · IPR2020-00420 · APJ Jameson Lee · IPR · Institution
The Board denied institution on all challenged claims because the General Plastic factors and additional circumstances favored discretionary denial under § 314(a).
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“relationship” for purposes of analyzing follow-on petitions between different petitioners can be created by a subsequent petitioner who uses the former petitioner’s work as a menu or roadmap to arrive at the follow-on petition, citing Ericsson Inc. v. Uniloc 2017, LLC, IPR2019-01550, Paper 8 at 12 (PTAB Mar. 17, 2020). Prelim. Resp. 10. Based on the record before us, and as explained below, we find that Petitioner did use the Petition in IPR038 as a menu or roadmap in preparing the Petition here, but disagree that that fact creates a “significant relationship.”” slip op. at 8
- Other 314aInstitution denied discretionary otherInstitution denied
“for the third time, particularly on the same ground for which review was instituted for claim 17 in IPR038. Note that “if the PTAB institutes a trial, the PTAB will institute on all challenges raised in the petition.” See USPTO, Guidance on the Impact of SAS on AIA Trial Proceedings (April 26, 2018) (available at https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial) (“USPTO Guidance”). Petitioner has not demonstrated a need for an additional petition which challenges claim 17 for a third time, where both earlier petitions resulted in institution of trial and where the alleged ground of unpatentability for claim 17 here is the same as that raised in one of the two earlier petitions.11 The inclusion of claim 17 in the Petition undermines Petitioner’s argument that it should be entitled to challenge claims 2–5 and 7 which were not challenged in any previous petition. Indeed, the inclusion of claim 17 is unnecessary for any petition challenging claims 1–5 and 7.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“Having considered all of the factors discussed above, we deny institution under 35 U.S.C. § 314(a). III. CONCLUSION For the foregoing reasons, we exercise our delegated discretion not to institute review. IV. ORDER Accordingly, it is: ORDERED that the Petition is denied, and no inter partes review is instituted on any claim over any alleged ground of unpatentability.” slip op. at 16
Discretionary denialPatents in suitUS 6,868,079 - Cisco Systems, Inc. v. Ramot At Tel Aviv University Ltd.Institution deniedPTAB · May 15, 2020 · IPR2020-00122 · APJ Jason M Repko · IPR · Institution
The Board denied institution of review of claims 1, 2, 4, and 5 under § 314(a), finding the Fintiv factors favored denial despite the petition’s merits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“To institute an inter partes review, we must determine “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). But the Board has discretion to deny a petition even when a petitioner meets that threshold. Id.; see, e.g., Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”); Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential as to § II.B.4.i); NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential); Patent Trial and Appeal Board Consolidated Trial Practice Guide 64 (Nov. 20, 2019), http://www.uspto.gov/TrialPracticeGuideConsolidated (identifying considerations that may warrant exercise of this discretion).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Because the trial date is substantially earlier than the projected statutory deadline for the Board’s final decision, this factor weighs in favor of discretionary denial.” slip op. at 8
Discretionary denialPatents in suitUS 10,033,465 - Cisco Systems, Inc. v. Ramot At Tel Aviv University Ltd.Institution deniedPTAB · May 15, 2020 · IPR2020-00123 · APJ Jason M Repko · IPR · Institution
The Board denied institution of review of claims 1 and 2 under § 314(a), finding the Fintiv factors—especially overlapping issues and the earlier trial date—weighed against institution.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“6. Conclusion All Fintiv factors weigh in favor of exercising our discretion to deny institution under § 314(a) except for one, which is neutral. We have reviewed the Petition and determine that its merits do not outweigh the Fintiv factors—especially considering the number of overlapping issues in district court, which strongly favors denial under factor 4, and the trial date, which is substantially earlier than the projected statutory deadline for the Board’s final decision. On balance, instituting would be an inefficient use of Board, party, and judicial resources. See NHK, Paper 8 at 20. Thus, efficiency and integrity of the system are best served by denying review. See Consolidated TPG at 58 (quoting 35 U.S.C. § 316(b)).” slip op. at 11
Discretionary denialPatents in suitUS 10,270,535 - Blackberry Corp. v. Facebook, Inc.Rehearing deniedPTAB · Apr 17, 2020 · IPR2019-01593 · APJ Miriam L Quinn · IPR · Rehearing
The Board denied rehearing and left in place its discretionary denial of the petition, finding no misapprehension or oversight in its assessment of the claim 23 challenges.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“According to 37 C.F.R. § 42.71(d), “[t]he burden of showing a decision should be modified lies with the party challenging the decision,” and the “request must specifically identify all matters the party believes the Board misapprehended or overlooked.” The burden here, therefore, lies with Petitioner to show we misapprehended or overlooked the matters it requests” slip op. at 2
- Other 314aInstitution denied discretionary otherDenied
“Partes Review. Paper 7 (“Dec.”). We exercised our discretion under 35 U.S.C. § 314(a) and denied the Petition based on our determination that Petitioner has only demonstrated a reasonable likelihood of prevailing as to three claim challenges (out of 17).1 Dec. 39−40. Petitioner filed a Request for Rehearing challenging several aspects of our Decision. Paper 8 (Req. Reh’g). In particular, Petitioner challenges our determination of the scope of “Global Positioning System data” (hereinafter “GPS Data”) a term recited in independent claim 23. Req. Reh’g 3−6. Petitioner further challenges our determination concerning the term “range of acceptable values,” recited in claim 23. Id. at 10−12. Thus, Petitioner argues, based on the correct interpretation of “GPS data” and “range of acceptable values,” we should have instituted trial because it demonstrated a reasonable likelihood of prevailing as to four or five out of eight challenged claims.2 Req. Reh’g 13.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“types of information that are GPS data, such as idle time. The portions of the Specification that Petitioner now cites, however, do not show that the GPS data is not, at a minimum, location information. As we stated in our Decision, other types of data may be transmitted from the remote unit to the central location, but the GPS data does refer to location information. Dec. 9. Moreover, Petitioner points out that the Specification discusses vehicle speed, idle time, movement, and actual windshield time as examples of calculated values, arguably from GPS location and time information. Req. Reh’g 3. But the Specification actually refers to these values to determine exceptions to be logged and noted (Ex. 1001, 4:41−49, 4:65−67, 6:1−3), which proves only that the system may use non-GPS data, in combination with GPS data, to determine exceptions. We acknowledge that claim 23’s recitation of GPS data could seem, at first blush, to potentially encompass every comparison that the Specification explains. Claim 23, however, must be interpreted in a manner that accounts for the recited two-part structure. In the first part, the claim recites a first comparison that involves the GPS data; and in the second part, the claim recites the second comparison that does not mention GPS data. Our analysis of the term GPS data in our Decision did not assume that the two comparisons involved the same data, e.g., GPS data. This is where Petitioner disagrees with our assessment, because it urges us to construe GPS data as including values and information recited in the second comparison, i.e., the idle time or recited “stationary time.” Petitioner’s position cannot be correct because the claim does not require that the “stationary time” also be GPS data. Further, the comparison that claim 23 recites with respect to GPS data does not mention exceptions at all, so it does not follow that all the Specification’s descriptions of exceptions encompass GPS data. The second comparison recited in claim 23 (comparing the stationary time to a predetermined stationary time), in contrast, is expressly performed for the purpose of noting an exception. Claim 23 (“if the length of time that the remote unit remains in a stationary position is greater than the predetermined stationary time, the system notes an exception.”). Thus, Petitioner, even in arguing for the first time its claim construction position, has not shown that derived data must also be GPS data according to the plain reading of the claim language. Consequently, having reviewed Petitioner’s arguments, we are not persuaded that GPS data means data that is derived from and representative of GPS coordinates and time stamps, as argued for the first time in the Request for Rehearing.3” slip op. at 4
- BurdenDecided for patent owner
“construction issue. Patent Owner explicitly addressed the construction of the term, a fact we acknowledged in our Decision. Dec. 8 (citing Prelim. Resp. 29−30). Petitioner did not address the scope of the term explicitly or implicitly. And it was not apparent from any of the now-cited portions of the Petition that Petitioner contended a scope of the term to include data that is derived from and representative of GPS coordinates and time stamps. Petitioner’s argument attempts to characterize its omission of a contention regarding claim construction as an oversight on our part. The argument is not persuasive as it is Petitioner’s burden to show in the Petition its contentions regarding how the challenged claim is to be construed and how, so construed, the claim is rendered obvious by the asserted references. See 37 C.F.R. § 42.104(b)(3)−(4). Therefore, we could not have either overlooked Petitioner’s position on claim construction, since none was provided, or misapprehended a position of claim scope not made explicit.” slip op. at 3
Claim constructionDiscretionary denialPatents in suitUS 6,356,841 - Blackberry Corp. v. Facebook, Inc.Institution deniedPTAB · Mar 5, 2020 · IPR2019-01596 · APJ Miriam L Quinn · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1 and 3-6 were anticipated by Peinado or obvious over Peinado and McKelvey.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “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.” For the reasons stated below, we determine that Petitioner did not demonstrate a reasonable likelihood of prevailing with respect to at least one challenged claim. We, therefore, do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“of invention of the ’432 patent “would have had a Bachelors of Science degree in computer or electrical engineering, or equivalent, and 2–3 years of relevant experience working with computer security technology.” Pet. 89. Patent Owner states that “[a] person of ordinary skill in the art . . . would have had approximately the level of education and experience identif[ied] by Petitioner, or a similar level of education and/or experience, with somewhat more education substituting for somewhat less work experience and vice versa.” Prelim. Resp. 4 (citing Storer Decl. ¶ 16). Given the lack of dispute, and for purposes of this decision, we adopt Petitioner’s definition of the level of ordinary skill in the art, as it is consistent with the level of skill in 5 the art reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“using the same standard used in federal district court, including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner proposes that the term “dedicated security processor” means “a processor dedicated to providing security functions.” Pet. 910. Patent Owner states that in the copending litigation, the parties have agreed to this construction, and, therefore, Patent Owner does not dispute the proposed construction. Prelim. Resp. 45. For purposes of this decision, we adopt the construction of “dedicated security processor” proposed by Petitioner, as stated above, and agreed to by Patent Owner in the co-pending litigation. The remainder of the claim we interpret in accord with the claim’s ordinary meaning to one skilled in the art at the time of invention, in light of the teachings of the specification and the prosecution history, and do not find it necessary to provide any express claim constructions. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“correctly notes, Peinado’s DRM system and the rendering application are both implemented on a computing device with a single processor. Prelim. Resp. 13. As stated above in the summary of Peinado, security processor 64 runs DRM system 32p in the portable device to authenticate the digital content downloaded from another computer. Ex. 1004, 37:6266. The same DRM system 32p renders the digital content on the portable device. Id. at 36:5362. The claim requires that the “dedicated security processor” validate the file and user access. The claim also requires that the “dedicated security processor” provide the file to “an other processor” that continues processing the file after the user has been validated. There is no “providing” step in Peinado’s security processor 64 embodiment. The same processor performs both the validating and the processing of the file after validation. Petitioner also points to the disclosure of the decrypted content being provided to the rendering application. See Pet. 19. But that “providing” is (1) not shown occur in the embodiment of security processor 64 and (2) not shown to involve “an other processor.” Pointing to another application receiving the content in a completely different embodiment in Peinado is not sufficient to show that Peinado discloses the limitation. Accordingly, we find that the Petition does not show adequately that Peinado anticipates claim 1 of the ’432 patent.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,228,432 - Microsoft Corporation v. Science Applications International CorporationInstitution deniedPTAB · Feb 3, 2020 · IPR2019-01361 · APJ Jason M Repko · IPR · Institution
The Board denied institution because the government was Microsoft's privy and the petitions were time-barred under § 315(b); it also independently denied review under § 314(a).
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1317 (Fed. Cir. 2018). Rather, “privity” has a common-law meaning. Id. “Privity is essentially a shorthand statement that collateral estoppel is to be applied in a given case.” Id. at 1318 (quoting Trial Practice Guide, 77 Fed. Reg. at 48,759). The privity “analysis seeks to determine whether the relationship between the purported ‘privy’ and the relevant other party is sufficiently close such that both should be bound by the trial outcome and related estoppels.” TPG 14–15. “[T]he standards for the privity inquiry must be grounded in due process.” WesternGeco, 889 F.3d. at 1319. For example, it is important whether the petitioner and a prior litigant’s relationship is sufficiently close that it can be fairly said that the petitioner had a full and fair opportunity to litigate the patent’s validity in the corresponding lawsuit. See id. “Due process also prohibits a litigant from taking a second bite at the apple by relitigating the same case through the persona of another, its privy.” AIT, 897 F.3d at 1359 (Reyna, J., concurring).” slip op. at 6
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1317 (Fed. Cir. 2018). Rather, “privity” has a common-law meaning. Id. “Privity is essentially a shorthand statement that collateral estoppel is to be applied in a given case.” Id. at 1318 (quoting Trial Practice Guide, 77 Fed. Reg. at 48,759). The privity “analysis seeks to determine whether the relationship between the purported ‘privy’ and the relevant other party is sufficiently close such that both should be bound by the trial outcome and related estoppels.” TPG 14–15. “[T]he standards for the privity inquiry must be grounded in due process.” WesternGeco, 889 F.3d. at 1319. For example, it is important whether the petitioner and a prior litigant’s relationship is sufficiently close that it can be fairly said that the petitioner had a full and fair opportunity to litigate the patent’s validity in the corresponding lawsuit. See id. “Due process also prohibits a litigant from taking a second bite at the apple by relitigating the same case through the persona of another, its privy.” AIT, 897 F.3d at 1359 (Reyna, J., concurring). In Taylor v. Sturgell, 553 U.S. 880 (2008), the Supreme Court identified a non-exhaustive list of six considerations under which nonparty preclusion would be justified: (1) an agreement between the parties to be bound; (2) pre-existing substantive legal relationships between the parties; (3) adequate representation by the named party; (4) the nonparty’s control of the prior litigation; (5) where the nonparty acts as a proxy for the named party to re-litigate the same issues; and (6) where special statutory schemes foreclose successive litigation by the nonparty (e.g., bankruptcy or probate). WesternGeco, 889 F.3d. at 1319−20 (citing Taylor, 553 U.S. at 894–95). The presence of one of these is sufficient to establish privity. See id.” slip op. at 6
- Other 314aInstitution denied discretionary otherInstitution denied
“D. DISCRETIONARY DENIAL UNDER SECTION 314(A) Institution of inter partes review is discretionary. 35 U.S.C. § 314(a); SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with discretion on the question whether to institute review . . . .” (emphasis omitted)); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”); see also 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). “[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016). Even if Petitioner and the government were not in privity, we would exercise our discretion to deny review to avoid any concerns that the government is obtaining a benefit to which it is not permitted under Return Mail.” slip op. at 13
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“All papers are available for public access by default. See 35 U.S.C. § 316(a)(1). A party may file a concurrent motion to seal, and the information at issue is sealed pending the motion’s outcome. 37 C.F.R. § 42.54. The standard for granting a motion to seal is “for good cause.” 37 C.F.R. § 42.54(a). For instance, we consider whether the movant has adequately shown that (1) the information sought to be sealed is truly confidential, (2) a concrete harm would result upon public disclosure, (3) there exists a genuine need to rely in the trial on the specific information sought to be sealed, and (4) on balance, an interest in maintaining confidentiality outweighs the strong public interest in having an open record. Argentum Pharms. LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 at 4 (PTAB Jan. 19, 2018) (Denying Motion to Seal) (informative). Confidential information includes, but is not limited to, commercial information. 37 C.F.R. § 42.54(7). Here, the information to be sealed includes a discussion of and direct quotations from the contract filed as Exhibit 2006. See Pet. Mot. to Seal 3–5; PO Mot. to Seal 1–2. The contract is not publicly available, it has been sealed in this proceeding, and it contains the details and financial terms of an agreement between Petitioner and the government. We are persuaded that the Motions demonstrate that the information sought to be sealed reflects Petitioner’s confidential business information and that “an interest in maintaining confidentiality outweighs the strong public interest in having an open record” here. See Argentum, Paper 27 at 4. Also, Patent Owner asserts that the United States is a real party in interest and privy in this proceeding. The information to be sealed is the basis for Patent Owner’s argument that Petitioner is time-barred under 35 U.S.C. § 315(b). Pet. Mot. to Seal 3–5; PO Mot. to Seal 1–2. Because Patent Owner’s argument and Petitioner’s rebuttal depend on the information to be sealed, the parties have adequately shown that there exists a genuine need to rely on that information. See Argentum, Paper 27 at 4. For these reasons, we determine that good cause exists for sealing part of Petitioner’s Reply, part of Patent Owner’s Sur-Reply, and the concurrently filed exhibits (Exs. 1027, 2006). Thus, we grant the Motions to Seal in each case.” slip op. at 14
Discretionary denialPatents in suitUS 9,618,752 - Microsoft Corporation v. Science Applications International CorporationInstitution deniedPTAB · Feb 3, 2020 · IPR2019-01360 · APJ Jason M Repko · IPR · Institution
The Board denied the petitions because the government was Microsoft’s privy, making the petitions time-barred under § 315(b); it also exercised § 314(a) discretion to deny review.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“pre-existing substantive legal relationships between the parties” Under the second Taylor factor, the evidence shows a “pre-existing substantive legal relationship between” the government and Petitioner. “Qualifying relationships include, but are not limited to, preceding and succeeding owners of property, bailee and bailor, and assignee and assignor.” See Taylor, 553 U.S. at 894. “A common character of these relationships is that the two parties share a high degree of commonality of proprietary or financial interest.” AIT, 897 F.3d at 1352 (Reyna, J., concurring). The evidence here shows that the government and Petitioner share such interests. Before requesting inter partes review, the government had a preexisting, established relationship with Petitioner. In particular, Patent Owner has an ongoing infringement lawsuit against the government in the Court of Federal Claims. Pet. 3 (citing Ex. 1025, (“the Complaint”)). Petitioner entered into the Contract with the government to develop a system incorporating the allegedly infringing feature. Id. slip op. at 7
- PTAB / AIA Trials › §315(b) time barDenied
“C. SECTION 315(B) BARS INSTITUTION We have found that the government, a nonparty to the instant proceedings, is a privy of Petitioner. Under 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” The government was served with a complaint alleging infringement of the patents-at-issue in 2017. The instant Petitions were filed in July 2019, more than 1 year from the service of the complaint on the government. Accordingly, inter partes review may not be instituted under § 315(b).” slip op. at 13
- Other 314aInstitution denied discretionary otherDenied
“D. DISCRETIONARY DENIAL UNDER SECTION 314(A) Institution of inter partes review is discretionary. 35 U.S.C. § 314(a); SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with discretion on the question whether to institute review . . . .” (emphasis omitted)); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”); see also 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). “[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016). Even if Petitioner and the government were not in privity, we would exercise our discretion to deny review to avoid any concerns that the government is obtaining a benefit to which it is not permitted under Return Mail.” slip op. at 13
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“All papers are available for public access by default. See 35 U.S.C. § 316(a)(1). A party may file a concurrent motion to seal, and the information at issue is sealed pending the motion’s outcome. 37 C.F.R. § 42.54. The standard for granting a motion to seal is “for good cause.” 37 C.F.R. § 42.54(a). For instance, we consider whether the movant has adequately shown that (1) the information sought to be sealed is truly confidential, (2) a concrete harm would result upon public disclosure, (3) there exists a genuine need to rely in the trial on the specific information sought to be sealed, and (4) on balance, an interest in maintaining confidentiality outweighs the strong public interest in having an open record. Argentum Pharms. LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 at 4 (PTAB Jan. 19, 2018) (Denying Motion to Seal) (informative). Confidential information includes, but is not limited to, commercial information. 37 C.F.R. § 42.54(7). Here, the information to be sealed includes a discussion of and direct quotations from the contract filed as Exhibit 2006. See Pet. Mot. to Seal 3–5; PO Mot. to Seal 1–2. The contract is not publicly available, it has been sealed in this proceeding, and it contains the details and financial terms of an agreement between Petitioner and the government. We are persuaded that the Motions demonstrate that the information sought to be sealed reflects Petitioner’s confidential business information and that “an interest in maintaining confidentiality outweighs the strong public interest in having an open record” here. See Argentum, Paper 27 at 4.” slip op. at 14
Discretionary denialPatents in suitUS 9,229,230 - Microsoft Corporation v. Science Applications International CorporationInstitution deniedPTAB · Feb 3, 2020 · IPR2019-01359 · APJ Jason M Repko · IPR · Institution
The Board denied institution because the government was Microsoft’s privy and was served with an infringement complaint more than one year before the petitions; it also denied review under § 314(a).
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1317 (Fed. Cir. 2018). Rather, “privity” has a common-law meaning. Id. “Privity is essentially a shorthand statement that collateral estoppel is to be applied in a given case.” Id. at 1318 (quoting Trial Practice Guide, 77 Fed. Reg. at 48,759). The privity “analysis seeks to determine whether the relationship between the purported ‘privy’ and the relevant other party is sufficiently close such that both should be bound by the trial outcome and related estoppels.” TPG 14–15. “[T]he standards for the privity inquiry must be grounded in due process.” WesternGeco, 889 F.3d. at 1319. For example, it is important whether the petitioner and a prior litigant’s relationship is sufficiently close that it can be fairly said that the petitioner had a full and fair opportunity to litigate the patent’s validity in the corresponding lawsuit. See id. “Due process also prohibits a litigant from taking a second bite at the apple by relitigating the same case through the persona of another, its privy.” AIT, 897 F.3d at 1359 (Reyna, J., concurring). In Taylor v. Sturgell, 553 U.S. 880 (2008), the Supreme Court identified a non-exhaustive list of six considerations under which nonparty preclusion would be justified: (1) an agreement between the parties to be bound; (2) pre-existing substantive legal relationships between the parties; (3) adequate representation by the named party; (4) the nonparty’s control of the prior litigation; (5) where the nonparty acts as a proxy for the named party to re-litigate the same issues; and (6) where special statutory schemes foreclose successive litigation by the nonparty (e.g., bankruptcy or probate). WesternGeco, 889 F.3d. at 1319−20 (citing Taylor, 553 U.S. at 894–95). The presence of one of these is sufficient to establish privity. See id.” slip op. at 6
- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“nonparty” A special statutory scheme applies here under 35 U.S.C. § 315(b), which bars institution of an IPR if a “privy of the petitioner is served with a complaint alleging infringement of the patent” more than one year before the petition was filed. Moreover, we note that the government, according to a recent Supreme Court case, is not a “person” that can file a Petition for inter partes review under 35 U.S.C. § 311. Return Mail, Inc. v. United States Postal Service, 139 S. Ct. 1853 (2019). Thus, Petitioner’s filings are the only filed Petitions from which the government could benefit, because the government could not file its own petition in light of the June 10, 2019, Return Mail decision.” slip op. at 11
- Other 314aInstitution denied discretionary otherInstitution denied
“D. DISCRETIONARY DENIAL UNDER SECTION 314(A) Institution of inter partes review is discretionary. 35 U.S.C. § 314(a); SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with discretion on the question whether to institute review . . . .” (emphasis omitted)); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”); see also 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). “[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016). Even if Petitioner and the government were not in privity, we would exercise our discretion to deny review to avoid any concerns that the government is obtaining a benefit to which it is not permitted under Return Mail.” slip op. at 13
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“All papers are available for public access by default. See 35 U.S.C. § 316(a)(1). A party may file a concurrent motion to seal, and the information at issue is sealed pending the motion’s outcome. 37 C.F.R. § 42.54. The standard for granting a motion to seal is “for good cause.” 37 C.F.R. § 42.54(a). For instance, we consider whether the movant has adequately shown that (1) the information sought to be sealed is truly confidential, (2) a concrete harm would result upon public disclosure, (3) there exists a genuine need to rely in the trial on the specific information sought to be sealed, and (4) on balance, an interest in maintaining confidentiality outweighs the strong public interest in having an open record. Argentum Pharms. LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 at 4 (PTAB Jan. 19, 2018) (Denying Motion to Seal) (informative). Confidential information includes, but is not limited to, commercial information. 37 C.F.R. § 42.54(7). Here, the information to be sealed includes a discussion of and direct quotations from the contract filed as Exhibit 2006. See Pet. Mot. to Seal 3–5; PO Mot. to Seal 1–2. The contract is not publicly available, it has been sealed in this proceeding, and it contains the details and financial terms of an agreement between Petitioner and the government. We are persuaded that the Motions demonstrate that the information sought to be sealed reflects Petitioner’s confidential business information and that “an interest in maintaining confidentiality outweighs the strong public interest in having an open record” here. See Argentum, Paper 27 at 4. Also, Patent Owner asserts that the United States is a real party in interest and privy in this proceeding. The information to be sealed is the basis for Patent Owner’s argument that Petitioner is time-barred under 35 U.S.C. § 315(b). Pet. Mot. to Seal 3–5; PO Mot. to Seal 1–2. Because Patent Owner’s argument and Petitioner’s rebuttal depend on the information to be sealed, the parties have adequately shown that there exists a genuine need to rely on that information. See Argentum, Paper 27 at 4. For these reasons, we determine that good cause exists for sealing part of Petitioner’s Reply, part of Patent Owner’s Sur-Reply, and the concurrently filed exhibits (Exs. 1027, 2006). Thus, we grant the Motions to Seal in each case.” slip op. at 14
Discretionary denialPatents in suitUS 9,229,230 - Microsoft Corporation v. Science Applications International CorporationInstitution deniedPTAB · Feb 3, 2020 · IPR2019-01311 · APJ Jason M Repko · IPR · Institution
The Board denied the petitions because the government was Microsoft's privy and had been served with infringement complaints more than one year before filing; it also denied review under § 314(a).
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“The evidence here shows that the government and Petitioner share such interests. Before requesting inter partes review, the government had a preexisting, established relationship with Petitioner. In particular, Patent Owner has an ongoing infringement lawsuit against the government in the Court of Federal Claims. Pet. 3 (citing Ex. 1025, (“the Complaint”)). Petitioner entered into the Contract with the government to develop a system incorporating the allegedly infringing feature. Id. Therefore, both Petitioner and the government share a common interest in canceling the allegedly infringed claims.” slip op. at 7
- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“existing substantive legal relationship. This provides at least one ground of nonparty preclusion under Taylor. We further determine, as discussed below, that two other Taylor factors support our privity determination. 2. “where special statutory schemes foreclose successive litigation by the nonparty” A special statutory scheme applies here under 35 U.S.C. § 315(b), which bars institution of an IPR if a “privy of the petitioner is served with a complaint alleging infringement of the patent” more than one year before the petition was filed. Moreover, we note that the government, according to a recent Supreme Court case, is not a “person” that can file a Petition for inter partes review under 35 U.S.C. § 311. Return Mail, Inc. v. United States Postal Service, 139 S. Ct. 1853 (2019). Thus, Petitioner’s filings are the only filed Petitions from which the government could benefit, because the government could not file its own petition in light of the June 10, 2019, Return Mail decision.” slip op. at 11
- Other 314aInstitution denied discretionary otherDenied
“D. DISCRETIONARY DENIAL UNDER SECTION 314(A) Institution of inter partes review is discretionary. 35 U.S.C. § 314(a); SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with discretion on the question whether to institute review . . . .” (emphasis omitted)); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”); see also 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). “[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016). Even if Petitioner and the government were not in privity, we would exercise our discretion to deny review to avoid any concerns that the government is obtaining a benefit to which it is not permitted under Return Mail.” slip op. at 13
- ExcludeGranted
“All papers are available for public access by default. See 35 U.S.C. § 316(a)(1). A party may file a concurrent motion to seal, and the information at issue is sealed pending the motion’s outcome. 37 C.F.R. § 42.54. The standard for granting a motion to seal is “for good cause.” 37 C.F.R. § 42.54(a). For instance, we consider whether the movant has adequately shown that (1) the information sought to be sealed is truly confidential, (2) a concrete harm would result upon public disclosure, (3) there exists a genuine need to rely in the trial on the specific information sought to be sealed, and (4) on balance, an interest in maintaining confidentiality outweighs the strong public interest in having an open record.” slip op. at 14
Discretionary denialPatents in suitUS 7,787,012
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.