• Ubisoft, Inc. v. Uniloc USA, Inc. And Uniloc Luxembourg S.A.Institution denied
  PTAB · Jan 22, 2018 · IPR2017-01828 · APJ Sally C Medley · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 4, 8, 12, 13, 15, and 19 were anticipated by Inside Macintosh.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “2. Discussion To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Although the elements must be arranged or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); accord In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “2. Discussion To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Although the elements must be arranged or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); accord In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).” slip op. at 9

  • BurdenNot shown unpatentable

    “2. Discussion To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Although the elements must be arranged or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); accord In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).” slip op. at 9

  § 102 anticipationcites Phillips
  Patents in suitUS 6,489,974
• Ubisoft Entertainment S.A. / Square Enix v. Uniloc USA, Inc. And Uniloc Luxembourg S.A.Institution denied
  PTAB · Jan 18, 2018 · IPR2017-01827 · APJ Jessica C Kaiser · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 12, and 17 were anticipated by TME Cookbook.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “2. Analysis of Petitioner’s Challenge To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Although the elements must be arranged or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); accord In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).” slip op. at 6

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “2. Analysis of Petitioner’s Challenge To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Although the elements must be arranged or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); accord In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).” slip op. at 6

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityNot reached

    “E. Asserted Ground Petitioner relies on The TME Deployment Cookbook (“TME Cookbook”) dated April 1997 as anticipating claims 1, 12, and 17 of the ʼ293 patent under 35 U.S.C. § 102(b). Petitioner further relies on testimony from Mark C. Lang, an attorney with Erise IP, P.A., as establishing that TME Cookbook qualifies as a printed publication. Pet. 10–11 (citing Ex. 1004). Patent Owner does not challenge the printed publication status of TME Cookbook at this stage of the proceeding. See Prelim. Resp. For purposes of this decision, we assume without deciding that Petitioner has sufficiently shown TME Cookbook qualifies as a printed publication under 35 U.S.C. § 102(b).” slip op. at 5

  § 102 anticipation
  Patents in suitUS 7,069,293

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.