- NXP USA, Inc. v. Parkervision, Inc.InstitutedPTAB · Dec 19, 2024 · IPR2024-01068 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on claims 1–5, 8, 9, 11–23, 26, 27, and 29–36 on all petitioned grounds and granted NXP's conditional motion to join the TI IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] 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) (2018). For the reasons given below, we institute inter partes review of the Challenged Claims of the ’528 patent. We also grant Petitioner’s Conditional Motion for Joinder and join Petitioner to IPR2024-00936.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“As set forth in the Director’s Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (dated June 21, 2022), at 7, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf, the [Patent Trial and Appeal Board] will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Petitioner’s stipulation (Ex. 1041) satisfies the language from the Director’s Memorandum quoted above. Additionally, we do not see an issue with ambiguity in Petitioner’s stipulation. Specifically, following joinder, this IPR (i.e., IPR2024-01068), which is based on the Petition at issue here (i.e., the Petition filed by NXP), will still be pending even though Petitioner will be joined to IPR2024-00936. Thus, the “IPR from this [P]etition” will be “pending,” which satisfies the language of Petitioner’s stipulation and precludes the actions stated therein. Further, to the extent there was any potential ambiguity, that ambiguity is resolved by Petitioner’s representations in e-mail correspondence (Exhibit 3001), as noted above. Therefore, we need not analyze each Fintiv factor to reach the determination that we will not exercise our discretion to deny institution in view of the parallel litigation.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“Compare Pet. with TI IPR, Paper 2 (petition); see also Motion 2 (stating that “NXP’s petition challenges the same claims on the same grounds, relies on the same prior art, and includes the exact same substantive arguments as the TI IPR”). Patent Owner raises the same arguments that it presented in the TI IPR. Regarding the first ground, Patent Owner asserts that (1) Petitioner has not shown that one of ordinary skill in the art would have been motivated to combine Tayloe, TI Datasheet, and Macnally (Prelim. Resp. 5– 9) and (2) Petitioner fails to provide a sufficient reasonable expectation of success in combining Macnally and Tayloe (id. at 9–12). Additionally, Patent Owner contends we should exercise our discretion to deny institution” slip op. at 6
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“35 U.S.C. § 315(c). We have explained that a motion for joinder should: (1) set forth reasons why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact, if any, joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified. Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013).” slip op. at 10
§ 103 obviousnessDiscretionary denialPatents in suitUS 9,118,528 - NXP USA, Inc. v. Parkervision, Inc.InstitutedPTAB · Dec 19, 2024 · IPR2024-01066 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on claim 14 under all three obviousness grounds and granted NXP’s conditional motion to join the Texas Instruments IPR.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“the [Patent Trial and Appeal Board] will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Petitioner’s stipulation (Ex. 1041) satisfies the language from the Director’s Memorandum quoted above. Additionally, we do not see an issue with ambiguity in Petitioner’s stipulation. Specifically, following joinder, this IPR (i.e., IPR2024-01066), which is based on the Petition at issue here (i.e., the Petition filed by NXP), will still be pending even though Petitioner will be joined to IPR2024-00935. Thus, the “IPR from this [P]etition” will be “pending,” which satisfies the language of Petitioner’s stipulation and precludes the actions stated therein. Further, to the extent there was any potential ambiguity, that ambiguity is resolved by Petitioner’s representations in e-mail correspondence (Exhibit 3001), as noted above. Therefore, we need not analyze each Fintiv factor to reach the determination that we will not exercise our discretion to deny institution in view of the parallel litigation.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented in the petition . . . and any [preliminary] 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) (2018). For the reasons given below, we institute inter partes review of the Challenged Claim of the ’177 patent. We also grant Petitioner’s Conditional Motion for Joinder and join Petitioner to IPR2024-00935.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“join as a party to [an instituted] inter partes review any person who properly files a petition under section 311 that . . . after receiving a preliminary response under section 313 or the expiration of the time for filing such a response . . . warrants the institution of an inter partes review under section 314. 35 U.S.C. § 315(c). We have explained that a motion for joinder should: (1) set forth reasons why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact, if any, joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified.” slip op. at 7
Discretionary denialPatents in suitUS 7,865,177 - PTAB · Jun 24, 2024 · IPR2024-00699 · APJ St John Courtenay III · IPR · Institution
The Board instituted IPR on claims 1–18 based on the § 103(a) grounds instituted in the LG IPR and granted VIZIO’s motion to join that proceeding.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an IPR may not be instituted unless the information presented in the Petition shows “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 we discuss below, we institute an IPR as to claims 1–18 of the ’805 patent, and we grant VIZIO’s Motion for Joinder.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“because this proceeding and the LG IPR are substantively identical (i.e., they involve the same claims, the same patent, the same prior art references, the same expert declaration, and the same arguments and evidence). See Mot. for Joinder 4–6. Stated differently, VIZIO asserts that the Petition and supporting evidence filed in this proceeding do not raise any new substantive or procedural issues. See id. VIZIO further argues that, because it is willing to work with counsel for LG (i.e., as an understudy) to consolidate all filings and discovery, joinder will not impact the schedule of the LG IPR, thereby allowing us to complete a single consolidated proceeding in a timely manner. Id. at 7–9. VIZIO also argues that, if it is joined as a party with the LG IPR, Multimedia will not suffer any prejudice because granting joinder under these circumstances will not add new issues for consideration by or costs to Multimedia above and beyond those already presented in the LG IPR, nor will granting joinder affect the issues, briefing, or discovery in the LG IPR, as they will remain the same. Id. at 9–10. Given that Multimedia did not oppose VIZIO’s Motion for Joinder (Ex. 3002), and VIZIO agrees to consolidate all filings and discovery with LG (Mot. for Joinder 6–7), VIZIO has demonstrated that joinder will not unduly complicate or delay the LG IPR. See 37 C.F.R. § 42.1(b) (providing for “the just, speedy, and inexpensive resolution of every proceeding” (emphases added)). We, therefore, grant VIZIO’s Motion for Joinder and, as a result, join VIZIO as a party with the LG IPR.” slip op. at 5
NonePatents in suitUS 10,419,805 - PTAB · Jun 24, 2024 · IPR2024-00696 · APJ St John Courtenay III · IPR · Institution
The Board instituted review of claims 1–14 on the existing § 103(a) grounds and granted VIZIO’s motion to join the LG IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an IPR may not be instituted unless the information presented in the Petition shows “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 we discuss below, we institute an IPR as to claims 1–14 of the ’174 patent, and we grant VIZIO’s Motion for Joinder.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“14, 2024 (Paper 4 (“Notice of Filing Date Accorded to Petition and Time for Filing Patent Owner Preliminary Response), 1), and the Motion for Joinder was filed on the same day. As such, VIZIO’s Motion for Joinder was timely, because joinder was requested no later than one month after May 21, 2024, the institution date of the LG IPR. See LG IPR Dec. on Inst.” slip op. at 5
NonePatents in suitUS 9,247,174 - PTAB · Jun 24, 2024 · IPR2024-00694 · APJ Michael R Zecher · IPR · Institution
The Board instituted IPR on claims 1–6, 11–16, 21, and 22 based on the same § 103(a) grounds as the LG IPR, and joined VIZIO to that proceeding.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an IPR may not be instituted unless the information presented in the Petition shows “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 we discuss below, we institute an IPR as to claims 1–6, 11–16, 21, and 22 of the ’040 patent, and we grant VIZIO’s Motion for Joinder.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“In its Motion for Joinder, VIZIO contends that joinder is appropriate because this proceeding and the LG IPR are substantively identical (i.e., they involve the same claims, the same patent, the same prior art references, the same expert declaration, and the same arguments and evidence). See Mot. for Joinder 4–6. Stated differently, VIZIO asserts that the Petition and supporting evidence filed in this proceeding do not raise any new substantive or procedural issues. See id. VIZIO further argues that, because it is willing to work with counsel for LG (i.e., as an understudy) to consolidate all filings and discovery, joinder will not impact the schedule of the LG IPR, thereby allowing us to complete a single consolidated proceeding in a timely manner. Id. at 6–9. VIZIO also argues that, if it is joined as a party with the LG IPR, Multimedia will not suffer any prejudice because granting joinder under these circumstances will not add new issues for consideration by or costs to Multimedia above and beyond those already presented in the LG IPR, nor will granting joinder affect the issues, briefing, or discovery in the LG IPR, as they will remain the same. Id. at 9–10. Given that Multimedia did not oppose VIZIO’s Motion for Joinder (Ex. 3002), and VIZIO agrees to consolidate all filings and discovery with LG (Mot. for Joinder 6–9), VIZIO has demonstrated that joinder will not unduly complicate or delay the LG IPR. See 37 C.F.R. § 42.1(b) (providing for “the just, speedy, and inexpensive resolution of every proceeding” (emphases added)). We, therefore, grant VIZIO’s Motion for Joinder and, as a result, join VIZIO as a party with the LG IPR.” slip op. at 5
NonePatents in suitUS 9,510,040 - PTAB · Jan 10, 2024 · IPR2023-01197 · APJ Jeffrey S Smith · IPR · Institution
Instituted review of claims 1–8 on all petition grounds and joined Amazon to the Apple IPR, finding a reasonable likelihood of unpatentability and no basis for discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied discretionary otherDecided for petitioner
“deny institution in the absence of a Sotera stipulation from Amazon. First, we find no unfairness or prejudice in the fact that Apple has submitted a Sotera stipulation but Amazon has not. In this proceeding, Fintiv factors 1– 5, as a whole, weigh heavily against discretionary denial even without Amazon offering a Sotera stipulation and without any showing of compelling merits. Most significantly, the Board will be deciding the patentability issues raised in the Petition well before the scheduled trial date in the parallel district court proceeding. Thus, even if Amazon had submitted a Sotera stipulation, this would not change our decision to institute an inter partes review and join this case to the Apple IPR. Although a petitioner has the option to submit a Sotera stipulation, no such stipulation is required where the Fintiv factors as a whole do not otherwise weigh in favor of discretionary denial. For the above reasons, we determine that the efficiency and integrity of the patent system are best served by instituting inter partes review, and we decline to deny institution discretionarily under 35 U.S.C. § 314(a).” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Because the issues presented in Amazon’s Petition are identical to those in the Apple IPR, we determine for the same reasons that there is a reasonable likelihood that Amazon would prevail in showing that at least one of claims 1–8 is unpatentable under the grounds of the Petition. Therefore, we institute inter partes review for the same reasons stated in our Decision on Institution in the Apple IPR. See IPR2023-00037, Paper 10.” slip op. at 12
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“discretion, when warranted, to join as a party to an instituted inter partes review any other party who properly files a petition, after the patent owner has had the opportunity to file a preliminary response. 35 U.S.C. § 315(c). As the moving party, Amazon bears the burden of proving that it is entitled to the requested joinder. See 37 C.F.R. § 42.20(c). In deciding whether to join a case, we consider (1) the reasons why joinder is appropriate, (2) whether the petition raises any new grounds of unpatentability, (3) any impact that joinder would have on the cost and trial schedule for the existing review, and (4) whether joinder will add to the complexity of briefing or discovery. Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013); Patent Trial and Appeal Board, Consolidated Trial Practice Guide, 76 (Nov. 2019), https://www.uspto.gov/sites/default/files/ documents/tpgnov.pdf. According to Amazon, its “Petition is intentionally identical in substance to the Apple Petition.” Mot. 2; see also Mot. 4. Amazon also argues that the schedule of the joined cases “would be unaffected, no additional briefing or discovery would be required, and no additional burdens would be placed on [Zentian].” Mot. 3; see also Mot. 4. Further, Amazon “agree[s] to take an ‘understudy’ role as long as Apple remains a party to the Apple IPR,” and that it “will not make any substantive filings and shall be bound by the filings of Apple,” and will not pursue its own arguments, evidence, or discovery unless the matter of termination or settlement arises or there are issues involving only Amazon. Mot. 5–6. Thus, according to Amazon, Zentian would not suffer prejudice if the two proceedings are joined. Mot. 6. Apart from its arguments discussed above in the context of discretionary denial, Zentian does not dispute the above contentions by Amazon and does not point to any particular prejudice relating to joining the two proceedings. In light of these considerations, Amazon has shown that joinder to the Apple IPR is appropriate in this case. Therefore, we grant Amazon’s Motion for Joinder.” slip op. at 12
Discretionary denialPatents in suitUS 10,971,140 - PTAB · Jan 10, 2024 · IPR2023-01194 · APJ Kevin F Turner · IPR · Institution
The Board instituted review of claims 1–6 on all petition grounds and granted Amazon Web Services, Inc. and Amazon.com Services LLC’s motion to join the Apple IPR.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“to Patent Owner, trial is scheduled for September 23, 2024. Opp. 1. However, a final written decision in the instituted Apple IPR (and in the combined proceeding after joinder) will be due on June 12, 2024, more than three months before the trial date in district court. Thus, factor 2 weighs heavily against discretionary denial. The other factors do not outweigh factor 2. As to factor 1, there is no evidence as to whether there will be a stay in the parallel case, so we regard this factor as neutral. As to factor 3, there has been some preliminary activity in the parallel case, but overall, the proceeding is in its early stages, so we do not regard this factor as weighing substantially in favor of discretionary denial. As to factor 4, the district court may ultimately consider Jiang, Nguyen, and Smyth, cited in the invalidity contentions (Ex. 2001, 24), but not Boike and Baumgartner, and not necessarily in the same combinations as asserted in the Petition. See Ex. 2001, 20–26. As such, factor 4 weighs somewhat but not heavily in favor of discretionary denial. As to factor 5, the parties in the parallel proceeding are not different from the parties here, so we regard this factor as neutral.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Because the issues presented in the instant Petition are identical to those in the Apple IPR, we determine for the same reasons that there is a reasonable likelihood that Petitioner would prevail in showing that at least one of claims 1–6 of the ’377 Patent is unpatentable under the grounds of the Petition. Therefore, we institute inter partes review for the same reasons stated in our Decision on Institution in the Apple IPR. See IPR2023-00035, Paper 10.” slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified. See Kyocera Corp. v. Softview LLC, Case IPR2013-00004, 4 (PTAB Apr. 24, 2013) (Paper 15); Patent Trial and Appeal Board, Consolidated Trial Practice Guide, 76 (Nov. 2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf. Petitioner’s Motion addresses each of these considerations. Mot. 1–6.” slip op. at 10
Discretionary denialPatents in suitUS 10,062,377 - PTAB · Jan 10, 2024 · IPR2023-01195 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted review of claims 1, 2, 4, 6–14, 16–18, 20–29, 35, 37–39, and 42–45 on all petition grounds and granted Amazon’s motion for joinder.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“in the parallel case) most significant under these circumstances. According to Zentian, trial is scheduled for September 23, 2024. Prelim. Resp. 1. However, a final written decision in the instituted Apple IPR (and in the combined proceeding after joinder) will be due on June 12, 2024, more than three months before the trial date in district court. Thus, factor 2 weighs heavily against discretionary denial.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Director of the USPTO, we may institute an inter partes review when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108(c) (2023). Applying that standard, we institute an inter partes review of all the challenged claims of the ’789 patent for the reasons explained below. This is a preliminary decision, and we will base our final written decision on the full trial record. We also grant Amazon’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As the moving party, Amazon bears the burden of proving that it is entitled to the requested joinder. See 37 C.F.R. § 42.20(c). In deciding whether to join a case, we consider (1) the reasons why joinder is appropriate, (2) whether the petition raises any new grounds of unpatentability, (3) any impact that joinder would have on the cost and trial schedule for the existing review, and (4) whether joinder will add to the complexity of briefing or discovery. Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013); Patent Trial and Appeal Board, Consolidated Trial Practice Guide, 76 (Nov. 2019), https://www.uspto.gov/sites/default/files/ documents/tpgnov.pdf.” slip op. at 13
Discretionary denialPatents in suitUS 10,839,789 - PTAB · Jan 10, 2024 · IPR2023-01193 · APJ Christopher L Ogden · IPR · Institution
The Board instituted review of claims 1, 4, 5, 7, 9, 10, 12, and 14–16 on all petition grounds and joined Amazon to the Apple IPR.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“in the parallel case) most significant under these circumstances. According to Zentian, trial is scheduled for September 23, 2024. Prelim. Resp. 1. However, a final written decision in the instituted Apple IPR (and in the combined proceeding after joinder) will be due on June 12, 2024, more than three months before the trial date in district court. Thus, factor 2 weighs heavily against discretionary denial. The other factors do not outweigh the second factor. As to factor 1, there is no evidence as to whether there will be a stay in the parallel case, so we regard this factor as neutral. As to factor 3, there has been some preliminary activity in the parallel case, but overall, the proceeding is in its early stages, so we do not regard this factor as weighing substantially in favor of discretionary denial. As to factor 4, the district court may ultimately consider Jiang, Baumgartner, Smyth, and Brown, but not necessarily in the same combinations as asserted in the Petition. See Ex. 2001, 8–10. So factor 4 weighs in favor of discretionary denial, but not so much as to outweigh factor 2. As to factor 5, the parties in the parallel proceeding are not different from the parties here, so we regard this factor as neutral.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“claims and all asserted grounds of unpatentability. IPR2023-00034, Paper 10. Amazon’s Petition challenges the same claims and asserts the same grounds of unpatentability as those on which we instituted the Apple IPR, relying on substantially the same testimonial evidence. See Mot. 2 (“The Instant Petition is intentionally identical in substance to the Apple Petition.”); Ex. 1062 ¶ 26 (adopting the opinions set forth in the declaration of Christopher Schmandt (Ex. 1003) that Apple relied on in Apple IPR). Because the issues presented in Amazon’s Petition are identical to those in the Apple IPR, we determine for the same reasons that there is a reasonable likelihood that Amazon would prevail in showing that at least one of claims 1, 4, 5, 7, 9, 10, 12, and 14–16 is unpatentable under the grounds of the Petition. Therefore, we institute inter partes review for the same reasons stated in our Decision on Institution in the Apple IPR. See IPR2023- 00034, Paper 10.” slip op. at 13
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“discretion, when warranted, to join as a party to an instituted inter partes review any other party who properly files a petition, after the patent owner has had the opportunity to file a preliminary response. 35 U.S.C. § 315(c). As the moving party, Amazon bears the burden of proving that it is entitled to the requested joinder. See 37 C.F.R. § 42.20(c). In deciding whether to join a case, we consider (1) the reasons why joinder is appropriate, (2) whether the petition raises any new grounds of unpatentability, (3) any impact that joinder would have on the cost and trial schedule for the existing review, and (4) whether joinder will add to the complexity of briefing or discovery. Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013); Patent Trial and Appeal Board, Consolidated Trial Practice Guide, 76 (Nov. 2019), https://www.uspto.gov/sites/default/files/ documents/tpgnov.pdf.” slip op. at 14
Discretionary denialPatents in suitUS 7,979,277 - PTAB · Jan 10, 2024 · IPR2023-01192 · APJ Christopher L Ogden · IPR · Institution
The Board instituted review of claims 46–51, 53, 54, 58, 59, 64, and 67 on all petition grounds and joined Amazon to the Apple IPR.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)InstitutedDecided for petitioner
“Of the first five Fintiv factors, we consider factor 2 (proximity to trial in the parallel case) most significant under these circumstances. According to Zentian, trial is scheduled for September 23, 2024. Prelim. Resp. 1. However, a final written decision in the instituted Apple IPR (and in the combined proceeding after joinder) will be due on June 12, 2024, more than three months before the trial date in district court. Thus, factor 2 weighs heavily against discretionary denial. The other factors do not outweigh the second factor. As to factor 1, there is no evidence as to whether there will be a stay in the parallel case, so we regard this factor as neutral. As to factor 3, there has been some preliminary activity in the parallel case, but overall, the proceeding is in its early stages, so we do not regard this factor as weighing substantially in favor of discretionary denial. As to factor 4, the district court may ultimately consider Thelen, Bailey, and Jiang (the latter being asserted solely for claims 53, 58, and 59), but not Chen or the other references, and not necessarily in the same combinations as asserted in the Petition. See Ex. 2001, 8–10, 38. So factor 4 weighs somewhat but not heavily in favor of discretionary denial. As to factor 5, the parties in the parallel proceeding are not different from the parties here, so we regard this factor as neutral.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“claims and all asserted grounds of unpatentability. IPR2023-00033, Paper 10. Amazon’s Petition challenges the same claims and asserts the same grounds of unpatentability as those on which we instituted the Apple IPR, relying on substantially the same testimonial evidence. See Mot. 2 (“The Instant Petition is intentionally identical in substance to the Apple Petition.”); Ex. 1043 ¶ 26 (adopting the opinions set forth in the declaration of Christopher Schmandt (Ex. 1003) that Apple relied on in Apple IPR). Because the issues presented in Amazon’s Petition are identical to those in the Apple IPR, we determine for the same reasons that there is a reasonable likelihood that Amazon would prevail in showing that at least one of claims 46–51, 53, 54, 58, 59, 64, and 67 is unpatentable under the grounds of the Petition. Therefore, we institute inter partes review for the same reasons stated in our Decision on Institution in the Apple IPR. See IPR2023-00033, Paper 10.” slip op. at 11
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“discretion, when warranted, to join as a party to an instituted inter partes review any other party who properly files a petition, after the patent owner has had the opportunity to file a preliminary response. 35 U.S.C. § 315(c). As the moving party, Amazon bears the burden of proving that it is entitled to the requested joinder. See 37 C.F.R. § 42.20(c). In deciding whether to join a case, we consider (1) the reasons why joinder is appropriate, (2) whether the petition raises any new grounds of unpatentability, (3) any impact that joinder would have on the cost and trial schedule for the existing review, and (4) whether joinder will add to the complexity of briefing or discovery. Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013); Patent Trial and Appeal Board, Consolidated Trial Practice Guide, 76 (Nov. 2019), https://www.uspto.gov/sites/default/files/ documents/tpgnov.pdf. Amazon’s Motion addresses each of these considerations. Mot. 1–6. According to Amazon, its “Petition is intentionally identical in substance to the Apple Petition.” Mot. 2; see also Mot. 4. Amazon also argues that the schedule of the joined cases “would be unaffected, no additional briefing or discovery would be required, and no additional burdens would be placed on [Zentian].” Mot. 3; see also Mot. 4. Further, Amazon “agree[s] to take an ‘understudy’ role as long as Apple remains a party to the Apple IPR,” and that it “will not make any substantive filings and shall be bound by the filings of Apple,” and will not pursue its own arguments, evidence, or discovery unless the matter of termination or settlement arises or there are issues involving only Amazon. Mot. 5–6. Thus, according to Amazon, Zentian would not suffer prejudice if the two proceedings are joined. Mot. 6. Apart from its arguments discussed above in the context of discretionary denial, Zentian does not dispute the above contentions by Amazon and does not point to any particular prejudice relating to joining the two proceedings. In light of these considerations, Amazon has shown that joinder to the Apple IPR is appropriate in this case. Therefore, we grant Amazon’s Motion for Joinder.” slip op. at 12
Discretionary denialPatents in suitUS 7,587,319
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.