- PTAB · May 15, 2024 · IPR2023-00268 · APJ Sean P O’Hanlon · IPR · Remand
The Board instituted IPR on claims 1–3, 5–10, 16–18, and 21–25 based on all asserted grounds, finding a reasonable likelihood of success on anticipation and obviousness.
RulingsRemand decision- RehearingOther
“On August 11, 2023, a majority of the panel entered a Decision denying institution of inter partes review. Paper 9 (“Board Decision”). On September 11, 2023, Petitioner timely filed a request for Director Review of the Board Decision. Paper 10. On November 7, 2023, the Director delegated Director Review of the Board Decision to a Delegated Review Panel (“DRP”). Paper 11. On February 21, 2024, the DRP issued a decision granting Petitioner’s request for Director Review rehearing, vacating the Board Decision, and remanding to the original panel to reconsider whether to institute review. Paper 14 (“DRP Dec.”).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“[T]he Board’s cases addressing earlier trial dates as a basis for denial under NHK have sought to balance considerations such as system efficiency, fairness, and patent quality.” Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5 (PTAB Mar. 20, 2020) (designated precedential). Fintiv sets forth six non-exclusive factors for determining “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. at 6. In evaluating the factors, we take a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review. Id. We are also guided by the Director’s Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation, issued June 21, 2022 (“Guidance Memo”),1 which provides several clarifications concerning the application of the Fintiv factors. One such clarification instructs that “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Guidance Memo 3; see also id. at 7–8. Thus, we will not exercise our discretion to deny institution if a petitioner makes a stipulation similar to that provided in Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (designated precedential in relevant part). 1 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_ memo_20220621_.pdf. Petitioner stipulates “not to pursue, in the[Delaware litigation], any argument that the Challenged Claims are invalid on any ground that was raised or could have been reasonably raised in this [inter partes review], should th[e] petition be instituted.” Pet. 86; see also Ex. 1057, 1 (“If the Patent Trial and Appeal Board institutes a proceeding for [this inter partes review], [Petitioner] will not pursue in the [Delaware litigation], any argument that the challenged claims of the patent in [this inter partes review] are invalid on any ground that was raised or could have been reasonably raised in [this inter partes review] proceeding.”). Accordingly, pursuant to the Guidance Memo, we decline to exercise discretion under 35 U.S.C. § 314(a) to deny institution. slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION For the foregoing reasons, we determine that the information presented establishes a reasonable likelihood that Petitioner would prevail in showing that at least one of the challenged claims is unpatentable. At this preliminary stage, we have not made a final determination with respect to the patentability of the challenged claims or any underlying factual and legal issues. See TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016) (noting that “there is a significant difference between a petitioner’s burden to establish a ‘reasonable likelihood of success’ at institution, and actually proving invalidity by a preponderance of the evidence at trial”). Accordingly, inter partes review is instituted as to all challenged claims and all proposed grounds of unpatentability. See 37 C.F.R. § 42.108(a). V. ORDER Accordingly, it is: ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–3, 5–10, 16–18, and 21–25 of the ’779 patent is instituted with respect to all grounds set forth in the Petition; and” slip op. at 33
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not contest Petitioner’s proposed definition of the level of ordinary skill in the art. See generally Prelim. Resp. We note that Patent Owner’s declarant, Dr. Vancura, uses essentially the same definition as Petitioner. See Ex. 2001 ¶ 33. Based on the arguments presented and the cited references, we find Petitioner’s definition of the level of ordinary skill reasonable and for purposes of this Decision, adopt it as our own.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,200,779 - PTAB · Sep 24, 2014 · IPR2014-00969 · APJ Donna M Praiss · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding under the settlement, without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The Board generally expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Under these circumstances, the Board determines that it is appropriate to terminate this proceeding without rendering a final written decision. 37 C.F.R. § 42.72. Therefore, the joint motion to terminate the proceeding is granted.” slip op. at 2
NonePatents in suitUS 7,123,117 - PTAB · Aug 4, 2014 · CBM2014-00089 · APJ Brian J Mcnamara · CBM · Order
The Board granted the parties’ joint motion and terminated the proceeding after settlement, before institution and without a final written decision.
RulingsOther- Adverse judgmentAdverse judgmentGranted
“The parties have moved to terminate this proceeding in view of their settlement of their underlying litigation. A decision by the Board to institute a trial has not yet been entered. Thus, this matter was in the preliminary stages at the time the parties moved to terminate. U.S. Patent 8,346,894 B2, which is the subject of this proceeding, is also the subject of CBM2014-00097, CBM2014- 00101, IPR2014-00413 and IPR2014-00414. Those proceedings will not be affected by the termination of this covered business method patent review. Under these circumstances, the Board determines that it is appropriate to enter judgment1 and terminate the trial without rendering a final written decision. 37 C.F.R. § 42.72. It is, therefore, ORDERED that the joint motion to terminate the proceeding is GRANTED and the proceeding is hereby terminated;” slip op. at 2
NonePatents in suitUS 8,346,894 - PTAB · Jun 30, 2014 · IPR2014-00354 · APJ William V Saindon · IPR · Order
The Board granted the joint motion to join IPR2014-00354 to IPR2013-00629, terminated IPR2014-00354, and set consolidated filing, schedule, reply, and deposition procedures.
RulingsOther- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“considers many factors, including: (1) the differences in the grounds asserted in the proceedings; (2) time and cost considerations, including the impact joinder would have on the trial schedule; and (3) how briefing and discovery may be simplified. See Order Authorizing Motion for Joinder (Paper 15) at 4, Kyocera Corp. v. SoftView, LLC., IPR2013-00004 (PTAB Apr. 24, 2013).” slip op. at 4
NonePatents in suitUS 7,806,896 - PTAB · Jan 28, 2014 · IPR2013-00588 · APJ Josiah C Cocks · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding before instituting trial or issuing a final written decision.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Other
“This case is in the preliminary proceeding1 stage. The Board has not instituted a trial. Under the circumstances, the Board determines that it is appropriate to terminate this proceeding without rendering either a decision to institute or a final written decision. See 37 C.F.R. § 42.72.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“ORDER In consideration of the foregoing, it is hereby: ORDERED that the parties’ joint request that the settlement agreement (Exhibit 1029) be treated as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is GRANTED; and FURTHER ORDERED that the joint motion to terminate the proceeding is GRANTED and this proceeding is terminated.” slip op. at 3
NonePatents in suitUS 8,135,250 - PTAB · Jan 17, 2014 · IPR2013-00603 · APJ Michael R Zecher · IPR · Order
The Board granted the joint motion to terminate the proceeding before institution and ordered the duplicate filings expunged.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“On January 9, 2014, the parties filed two joint motions (Papers 10 and 12) to terminate this proceeding. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. The parties also filed a copy of their written settlement agreement (Exhibit 2001), as well as two requests (Papers 11 and 13) to treat the settlement agreement as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). The two joint motions to terminate this proceeding, as well as the two requests to treat the settlement agreement as business confidential information, are identical copies of each other. For purposes of providing a clear record in this proceeding, the Board will expunge the second joint motion (Paper 12) to terminate this proceeding, along with the second request (Paper 13) to treat the settlement agreement as business confidential information, because these documents are duplicates. This proceeding is still in the preliminary stages. Patent Owner has not yet filed its preliminary response and the Board has not instituted a trial. The parties further represent that the related litigation between the parties involving U.S. Patent No. 5,980,559 (“the ’559 patent”) has been dismissed without prejudice. Paper 10 at 2-3. The parties identify three related matters, two of which involve independent claim 24 of the ’559 patent, the only claim challenged in this proceeding. Id. at 3-4. With respect to the two related matters involving independent claim 24, the parties stipulate that it has been more than one year since Patent Owner has served each defendant with a complaint alleging infringement of the ’559 patent. Id. Under the circumstances, the Board determines that it is appropriate to terminate this proceeding without rendering either a decision to institute or a final written decision. See 37 C.F.R. § 42.72.” slip op. at 2
NonePatents in suitUS 5,980,559
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.