- Canon Inc. v. Intellectual Ventures I LLCRehearing deniedPTAB · Nov 5, 2014 · IPR2014-00537 · APJ James A Tartal · IPR · Rehearing
The Board denied Canon’s rehearing requests, finding no overlooked or misapprehended matter in declining to institute review of claims 1–31 in IPR2014-00536 and IPR2014-00537.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request 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, opposition, or a reply.” slip op. at 2
- Other 314aInstitution denied discretionary otherInstitution denied
“and IPR537 we relied on 35 U.S.C. §315(d) and 37 C.F.R. §42.1, but “misapprehended” the applicability of each of those provisions to Petitioner’s multiple Petitions. (Paper 10, 5 in both cases.) Petitioner’s argument is unavailing as we did not base our decision on those cited provisions. Instead, we based our decision on 35 U.S.C. §314(a) and 37 C.F.R. § 42.108(b). Thus, our Decision states: We decline to institute an inter partes review of claims 1–31 on the grounds Petitioner advances based on Kaneko or Chizawa in IPR2014- 00536, and Hayashi in IPR2014-00537. See 35 U.S.C. §314(a); 37 C.F.R. § 42.108(b). Paper 9, 19. Although we also stated that our Decision was “consistent with the authority granted under 35 U.S.C. §315(d),” and with “the objective” of 37 C.F.R. § 42.1, we did not rely upon those provisions.” slip op. at 3
Discretionary denialPatents in suitUS 7,315,406 - Canon Inc. v. Intellectual Ventures I LLCRehearing deniedPTAB · Nov 5, 2014 · IPR2014-00536 · APJ James A Tartal · IPR · Rehearing
The Board denied Canon’s rehearing request, leaving in place the denial of institution on claims 1–31 in IPR2014-00536 and IPR2014-00537 under § 314(a).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The applicable standard for a request for rehearing is set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request 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, opposition, or a reply.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“and IPR537 we relied on 35 U.S.C. §315(d) and 37 C.F.R. §42.1, but “misapprehended” the applicability of each of those provisions to Petitioner’s multiple Petitions. (Paper 10, 5 in both cases.) Petitioner’s argument is unavailing as we did not base our decision on those cited provisions. Instead, we based our decision on 35 U.S.C. §314(a) and 37 C.F.R. § 42.108(b). Thus, our Decision states: We decline to institute an inter partes review of claims 1–31 on the grounds Petitioner advances based on Kaneko or Chizawa in IPR2014- 00536, and Hayashi in IPR2014-00537. See 35 U.S.C. §314(a); 37 C.F.R. § 42.108(b). Paper 9, 19. Although we also stated that our Decision was “consistent with the authority granted under 35 U.S.C. §315(d),” and with “the objective” of 37 C.F.R. § 42.1, we did not rely upon those provisions. Petitioner recognizes that “[c]iting to 35 U.S.C. §314(a), the Board asserted that Congress has ‘given the Office discretion whether to institute a review, or not institute a review.’” (Paper 10, 4 in each case.) Petitioner, however, makes no argument that we misapprehended 35 U.S.C. §314(a), and makes no mention of 37 C.F.R. § 42.108(b). That rule provides that “the Board may deny some or all grounds for unpatentability for some or all of the challenged claims.”” slip op. at 3
NonePatents in suitUS 7,315,406 - PTAB · Sep 2, 2014 · IPR2014-00472 · APJ Glenn J Perry · IPR · Order
The Board granted the parties’ joint motion to terminate the preliminary IPR proceeding and terminated it without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“these circumstances, the Board determines that it is appropriate to enter judgment2 and terminate without rendering a final written decision under 37 C.F.R. § 42.72. ORDER It is, therefore, ORDERED that the joint motion to terminate this proceeding is GRANTED and the proceedings are hereby terminated; and FURTHER ORDERED that the settlement agreement shall be treated as business confidential information.” slip op. at 3
NonePatents in suitUS 7,096,358 - PTAB · Aug 25, 2014 · IPR2014-00582 · APJ Glenn J Perry · IPR · Order
The Board granted the parties’ joint motions and terminated the three proceedings before institution, without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Each of the captioned inter partes review cases is in its preliminary stage. The Petition in each of the captioned cases has not been granted. Under these circumstances, the Board determines that it is appropriate to enter judgment4 and terminate each of the trials without rendering a final written decision under 37 C.F.R. § 42.72.” slip op. at 3
NonePatents in suitUS 8,149,124 - PTAB · Aug 25, 2014 · IPR2014-00588 · APJ Glenn J Perry · IPR · Order
The Board granted the parties’ joint motions and terminated the proceedings before institution, without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Each of the captioned inter partes review cases is in its preliminary stage. The Petition in each of the captioned cases has not been granted. Under these circumstances, the Board determines that it is appropriate to enter judgment4 and terminate each of the trials without rendering a final written decision under 37 C.F.R. § 42.72.” slip op. at 3
NonePatents in suitUS 8,466,795 - ZTE (USA), Inc. v. Pragmatus Mobile LLCAdverse judgmentPTAB · Aug 11, 2014 · IPR2014-00670 · APJ Glenn J Perry · IPR · Adverse judgment
The Board granted the parties’ joint motion and terminated the proceeding by settlement before deciding the petition.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“The parties have requested that these trial proceedings be terminated pursuant to a settlement. On August 5, 2014, the Board authorized (Paper 8) the parties to file a Joint Motion to Terminate this proceeding along with a true copy of any and all settlement agreements between them related to the patent at issue. On August 8, 2014, the parties filed a Joint Motion to Terminate (Paper 9) in accordance with 35 U.S.C. § 327(a) and 37 C.F.R. § 42.72. The parties also filed a Joint Motion to Treat the Parties’ Settlement Agreement as Business Confidential pursuant to 35 U.S.C. § 317(b) and Rule 42.74 (Paper 10). The settlement agreement (Paper 11), marked “Confidential,” purports to settle matters between the parties with respect to the patent at issue in this inter partes review. This inter partes review is in its preliminary stage. A decision on the Corrected Petition (Paper 4) has not yet been rendered. The parties have not identified any other USPTO proceedings related to the patent at issue. Under these circumstances, the Board determines that it is appropriate to enter judgment1 and terminate the trial without rendering a final written decision under 37 C.F.R. § 42.72.” slip op. at 2
NonePatents in suitUS 8,466,795 - Samsung Electronics Co. Ltd. v. Fractus, S.A.Rehearing deniedPTAB · Feb 26, 2014 · IPR2014-00008 · APJ Glenn J Perry · IPR · Rehearing
The Board denied Samsung’s rehearing request and maintained denial of institution because the petitions were filed more than one year after service of infringement complaints.
RulingsRehearing decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“(b) PATENT OWNER’S ACTION.—An 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 time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c). (Emphasis added). The USPTO rule implementing section 315(b) is set forth in 37 C.F.R.” slip op. at 3
- RehearingRehearing, deniedDenied
“discretion. The requirements are set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request 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. Each of the four patents is involved in patent litigation captioned Fractus,” slip op. at 2
Discretionary denialPatents in suitUS 7,123,208 - Samsung Electronics Co. Ltd. v. Fractus, S.A.Rehearing deniedPTAB · Feb 26, 2014 · IPR2014-00012 · APJ Glenn J Perry · IPR · Rehearing
The Board denied Samsung’s rehearing request, leaving institution denied for the challenged claims because the petitions were time-barred under § 315(b).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“discretion. The requirements are set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request 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. Each of the four patents is involved in patent litigation captioned Fractus,” slip op. at 2
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“(b) PATENT OWNER’S ACTION.—An 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 time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c). (Emphasis added). The USPTO rule implementing section 315(b) is set forth in 37 C.F.R.” slip op. at 3
Discretionary denialPatents in suitUS 7,394,432 - Samsung Electronics Co. Ltd. v. Fractus, S.A.Rehearing deniedPTAB · Feb 26, 2014 · IPR2014-00013 · APJ Glenn J Perry · IPR · Rehearing
The Board denied Samsung’s rehearing request, leaving in place the denial of institution because the petitions were time-barred under § 315(b).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“III. DECISION ON REHEARING Having fully considered Petitioner’s arguments regarding construction of § 315(b), Petitioner’s sought-after relief is denied.” slip op. at 6
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“(b) PATENT OWNER’S ACTION.—An 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 time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c). (Emphasis added). The USPTO rule implementing section 315(b) is set forth in 37 C.F.R.” slip op. at 3
Discretionary denialPatents in suitUS 7,015,868 - Samsung Electronics Co. Ltd. v. Fractus, S.A.Rehearing deniedPTAB · Feb 26, 2014 · IPR2014-00011 · APJ Glenn J Perry · IPR · Rehearing
The Board denied Samsung’s rehearing request and left institution denied for the challenged claims because the petitions were time-barred under § 315(b).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“discretion. The requirements are set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request 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. Each of the four patents is involved in patent litigation captioned Fractus,” slip op. at 2
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“apply different temporal meanings to “is served” and “is filed” appearing in the same section. We are, however, not presented with the ambiguity that confronted the Carr Court. Petitioner’s argument that “is filed” and “is served” must both be evaluated relative to the enactment date of the America Invents Act is flawed because the two verb phrases are not given parallel grammatical treatment in the statute. Consistent with Carr, “is filed” should be construed relative to the enactment date because it defines the condition for barring institution. But “is served” is part of a prepositional phrase that defines “the date,” and should therefore be construed relative to the date of service, not relative to the statute’s enactment date. Thus, contrary to Petitioner’s assertion (Req. 3), there is no inconsistency with the Dictionary Act because both the present and future of “is served” are evaluated relative to the act of service, not to enactment of the statute. We note that the Carr dissent expressed a preference for use of the present tense in drafting statutes.” slip op. at 5
Discretionary denialPatents in suitUS 7,397,431
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.