- 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 · Apr 12, 2022 · IPR2022-00246 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted review of claims 1, 12–15, and 17–20 on all asserted grounds and granted LG Electronics’ motion to join IPR2021-00985.
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 ’835 patent. We also grant Petitioner’s Motion for Joinder and join Petitioner to IPR2021-00985.” slip op. at 2
- 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 7
NonePatents in suitUS 7,292,835
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.