- T-Mobile USA, Inc. v. Voip-Pal.Com, Inc.Institution deniedPTAB · Jul 28, 2023 · IPR2023-00641 · APJ Mitchell C Weatherly · IPR · Institution
The Board denied institution under General Plastic because the factors, considered holistically, favored discretionary denial of T-Mobile’s second set of petitions.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“II. DISCRETIONARY DENIAL OF INSTITUTION Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 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). Petitioner challenges the same claims on the same grounds based on the same arguments and evidence presented in the petitions in the Target IPRs. Compare IPR2022-” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). Under 35 U.S.C. § 315(c), the discretion of the Director to join a party to an ongoing IPR is premised on the Director’s determination that the petition warrants institution. That determination is not limited to determining whether the merits of the petition meet the reasonable likelihood threshold for at least one challenged claim. Under General Plastic, the Board may deny a petition based on the Director’s discretionary authority under § 314(a). General Plastic, Paper 19 at 15. Thus, before determining whether to join Petitioner as a party to the Target IPRs, even though the petitions are each a “me-too” petition, we first determine whether General Plastic should be applied and, if applied, whether application of the General Plastic factors warrants the exercise of discretion to deny the Petition under § 314(a).” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“institute these Proceedings without first considering whether to exercise discretion under § 314(a). The statutory provision governing joinder in inter partes review proceedings is 35 U.S.C. § 315(c), which reads: If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. Section 315(c) requires “two different decisions,” both of which are discretionary, first “whether the joinder applicant’s petition for IPR ‘warrants’ institution under § 314,” and second whether to “whether to ‘join as a party’ the joinder applicant”). Facebook, Inc. v. Windy City Innov., LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). Under 35 U.S.C. § 315(c), the discretion of the Director to join a party to an ongoing IPR is premised on the Director’s determination that the petition warrants institution. That determination is not limited to determining whether the merits of the petition meet the reasonable likelihood threshold for at least one challenged claim. Under General Plastic, the Board may deny a petition based on the Director’s discretionary authority under § 314(a). General Plastic, Paper 19 at 15. Thus, before determining whether to join Petitioner as a party to the Target IPRs, even though the petitions are each a “me-too” petition, we first determine whether General Plastic should be applied and, if applied, whether application of the General Plastic factors warrants the exercise of discretion to deny the Petition under § 314(a).” slip op. at 4
Discretionary denialPatents in suitUS 10,880,721 - T-Mobile USA, Inc. v. Voip-Pal.Com, Inc.Institution deniedPTAB · Jul 28, 2023 · IPR2023-00640 · APJ Mitchell C Weatherly · IPR · Institution
The Board denied institution of the challenged proceedings under General Plastic and denied T-Mobile’s motions for joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied general plasticInstitution denied
“II. DISCRETIONARY DENIAL OF INSTITUTION Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 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). Petitioner challenges the same claims on the same grounds based on the same arguments and evidence presented in the petitions in the Target IPRs. Compare IPR2022- 2 Petitioner identifies T-Mobile USA, Inc. and T-Mobile US, Inc. as the real parties-in-interest. Pet. 1. 3 We refer to papers and exhibits in IPR2023-00638. Substantially similar documents were filed in IPR2023-00639, IPR2023-00640, and IPR2023- 00641. This Order applies equally to all captioned proceedings. 01231, Paper 3 (Petition), 5–6, 8–73, with Pet. 5, 8–73. In each of the Target IPRs, we determined that “Petitioner . . . demonstrated a reasonable likelihood of establishing that at least [one] claim is unpatentable” and “institute[d] an inter partes review of all challenged claims of the [challenged patents] on all grounds alleged by Petitioner.” IPR2022-01231, Paper 10 (Decision Granting Institution of Inter Partes Review), 3; see also SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). Having already considered the merits of the challenges and evidence presented in these “me too” petitions vis-à-vis the threshold of institution for inter partes review in the Target IPRs, we determine that the Petitions in these proceedings also present a reasonable likelihood of prevailing on the challenge of at least one claim of the challenged patents.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“Petitions are “me too” petitions and the merits of the challenges in the Target IPRs were formulated and fixed in the record on June 30, 2022, Petitioner did not receive any guidance from Patent Owner or the Board on its first set of petitions in October and December of 2022. Accordingly, any guidance provided by Patent Owner or the Board could not have influenced the content of the Petitions at issue in this proceeding. For this reason, we determine that the third General Plastic factor weighs against discretionarily denying institution.” slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. Section 315(c) requires “two different decisions,” both of which are discretionary, first “whether the joinder applicant’s petition for IPR ‘warrants’ institution under § 314,” and second whether to “whether to ‘join as a party’ the joinder applicant”). Facebook, Inc. v. Windy City Innov., LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). Under 35 U.S.C. § 315(c), the discretion of the Director to join a party to an ongoing IPR is premised on the Director’s determination that the petition warrants institution. That determination is not limited to determining whether the merits of the petition meet the reasonable likelihood threshold for at least one challenged claim. Under General Plastic, the Board may deny a petition based on the Director’s discretionary authority under § 314(a). General Plastic, Paper 19 at 15. Thus, before determining whether to join Petitioner as a party to the Target IPRs, even though the petitions are each a “me-too” petition, we first determine whether General Plastic should be applied and, if applied, whether application of the General Plastic factors warrants the exercise of discretion to deny the Petition under § 314(a).” slip op. at 4
Discretionary denialPatents in suitUS 10,880,721 - T-Mobile USA, Inc. v. Voip-Pal.Com, Inc.Institution deniedPTAB · Jul 28, 2023 · IPR2023-00639 · APJ Mitchell C Weatherly · IPR · Institution
The Board denied institution on all challenged claims under General Plastic and denied T-Mobile’s motions for joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“II. DISCRETIONARY DENIAL OF INSTITUTION Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 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). Petitioner challenges the same claims on the same grounds based on the same arguments and evidence presented in the petitions in the Target IPRs. Compare IPR2022-” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“second set of challenges to the patents, and upon the Target IPRs settling, Petitioner would stand in to continue proceedings that would otherwise be terminated. In effect, it would be as if Petitioner had brought the second set of challenges in the first instance. This effect is especially apparent in these particular circumstances because the original petitioner in the Target IPRs, Meta, has already been dismissed from those proceedings, and the remaining parties have jointly moved to terminate them because they have settled their dispute. The current circumstances, in which a second petition has been filed after the first was denied on the merits, are the particular circumstances that General Plastic was intended to address. General Plastic, Paper 19 at 17 (“Multiple, staggered petitions challenging the same patent and same claims raise the potential for abuse.”).” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“institute these Proceedings without first considering whether to exercise discretion under § 314(a). The statutory provision governing joinder in inter partes review proceedings is 35 U.S.C. § 315(c), which reads: If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. Section 315(c) requires “two different decisions,” both of which are discretionary, first “whether the joinder applicant’s petition for IPR ‘warrants’ institution under § 314,” and second whether to “whether to ‘join as a party’ the joinder applicant”). Facebook, Inc. v. Windy City Innov., LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). Under 35 U.S.C. § 315(c), the discretion of the Director to join a party to an ongoing IPR is premised on the Director’s determination that the petition warrants institution. That determination is not limited to determining whether the merits of the petition meet the reasonable likelihood threshold for at least one challenged claim. Under General Plastic, the Board may deny a petition based on the Director’s discretionary authority under § 314(a). General Plastic, Paper 19 at 15. Thus, before determining whether to join Petitioner as a party to the Target IPRs, even though the petitions are each a “me-too” petition, we first determine whether General Plastic should be applied and, if applied, whether application of the General Plastic factors warrants the exercise of discretion to deny the Petition under § 314(a).” slip op. at 4
Discretionary denialPatents in suitUS 8,630,234 - T-Mobile USA, Inc. v. Voip-Pal.Com, Inc.Institution deniedPTAB · Jul 28, 2023 · IPR2023-00638 · APJ Mitchell C Weatherly · IPR · Institution
The Board denied institution in IPR2023-00638 through IPR2023-00641 under General Plastic and denied the motions for joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied general plasticInstitution denied
“01231, Paper 3 (Petition), 5–6, 8–73, with Pet. 5, 8–73. In each of the Target IPRs, we determined that “Petitioner . . . demonstrated a reasonable likelihood of establishing that at least [one] claim is unpatentable” and “institute[d] an inter partes review of all challenged claims of the [challenged patents] on all grounds alleged by Petitioner.” IPR2022-01231, Paper 10 (Decision Granting Institution of Inter Partes Review), 3; see also SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). Having already considered the merits of the challenges and evidence presented in these “me too” petitions vis-à-vis the threshold of institution for inter partes review in the Target IPRs, we determine that the Petitions in these proceedings also present a reasonable likelihood of prevailing on the challenge of at least one claim of the challenged patents. Notwithstanding the merits, however, Patent Owner argues that we” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). Under 35 U.S.C. § 315(c), the discretion of the Director to join a party to an ongoing IPR is premised on the Director’s determination that the petition warrants institution. That determination is not limited to determining whether the merits of the petition meet the reasonable likelihood threshold for at least one challenged claim. Under General Plastic, the Board may deny a petition based on the Director’s discretionary authority under § 314(a). General Plastic, Paper 19 at 15. Thus, before determining whether to join Petitioner as a party to the Target IPRs, even though the petitions are each a “me-too” petition, we first determine whether General Plastic should be applied and, if applied, whether application of the General Plastic factors warrants the exercise of discretion to deny the Petition under § 314(a).” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. Section 315(c) requires “two different decisions,” both of which are discretionary, first “whether the joinder applicant’s petition for IPR ‘warrants’ institution under § 314,” and second whether to “whether to ‘join as a party’ the joinder applicant”). Facebook, Inc. v. Windy City Innov., LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). Under 35 U.S.C. § 315(c), the discretion of the Director to join a party to an ongoing IPR is premised on the Director’s determination that the petition warrants institution. That determination is not limited to determining whether the merits of the petition meet the reasonable likelihood threshold for at least one challenged claim. Under General Plastic, the Board may deny a petition based on the Director’s discretionary authority under § 314(a). General Plastic, Paper 19 at 15. Thus, before determining whether to join Petitioner as a party to the Target IPRs, even though the petitions are each a “me-too” petition, we first determine whether General Plastic should be applied and, if applied, whether application of the General Plastic factors warrants the exercise of discretion to deny the Petition under § 314(a).” slip op. at 4
Discretionary denialPatents in suitUS 8,630,234 - 3M Company v. Bay Materials, LLCInstitution deniedPTAB · Jul 7, 2023 · IPR2023-00243 · APJ Grace Karaffa Obermann · IPR · Institution
The Board denied institution under General Plastic because 3M filed a staggered second petition challenging the same claims without explaining its nearly five-month delay.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“Factors 4 and 5 Petitioner makes no attempt to explain its nearly five-month delay between filing the Petition in IPR215 and filing the instant Petition. Prelim. Resp. 21. As Patent Owner points out, the Petition in IPR215 expressly states Petitioner’s intention to file the instant Petition. Id. at 8, 23; IPR215, Paper 2 at 3. Petitioner provides “no explanation of its decision to wait” nearly five months to carry out that intention. Prelim. Resp. 23. An inadequately explained delay of similar length supported denial of institution in Valve, even where a different petitioner filed the second petition. Id. 21– 22 (citing Valve, Paper 10 at 15). Both the length of the delay (factor 4) and Petitioner’s failure to explain the delay (factor 5) favor denying institution.” slip op. at 10
Discretionary denialPatents in suitUS 10,870,263 - Guardant Health, Inc. v. University Of WashingtonInstitution deniedPTAB · Jan 31, 2023 · IPR2022-01388 · APJ Zhenyu Yang · IPR · Institution
The Board denied institution of review of claims 1–27, exercising § 314(a) discretion under General Plastic because the follow-on petition used lessons from earlier petitions and had weak merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“to study a patent owner’s preliminary response to, or the Board’s institution decision on, a prior petition, such that the petitioner would have been in a position to gain a benefit from having that information before filing another petition. General Plastic, Paper 19 at 17. Under this analysis, we disfavor a follow-on petition that “us[es] our decisions as a roadmap.” Id. Petitioner filed this third Petition on August 10, 2022, after Patent Owner filed its Preliminary Responses in the ’449 and ’450 IPRs on May 6, 2022, and after we issued our decisions denying the petitions in those cases on August 1, 2022. 6 Craig et al., Identification of Genetic Variants Using Bar-Coded Multiplexed Sequencing, 5 NATURE METHODS 887–93 (2008) (Ex. 1036, “Craig”). 7 Shiroguchi et al., Digital RNA Sequencing Minimizes Sequence Dependent Bias and Amplification Noise with Optimized Single-Molecule Barcodes, 109 PROC. NATL. ACAD. SCI. 1347–52 (2012) (Ex. 1010, “Shiroguchi”). Petitioner nevertheless argues that we should institute review of this third Petition because “the Board never reached the merits of patentability under the prior petition[s],” and Petitioner “derived few if any benefits” from seeing Patent Owner’s preliminary responses and our decisions denying institution in those cases. Pet. 62. We disagree. Below, to explain that this third Petition indeed uses our prior decisions as a roadmap, we: (1) summarize Kinde’s teachings; (2) summarize the parties’ arguments and our decision denying institution in the ’450 IPR; and (3) discuss Petitioner’s arguments in this third Petition.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“Petitioner that this factor favors institution, it would not outweigh considerations under the other six factors, all of which favor denying institution. This is so especially in view of the weak merits, as discussed below. H. The Merits of This Third Petition Are Weak In this third Petition, Petitioner relies on an alleged “Craig Variation” of Kinde’s method. See, e.g., Pet. 10, 26, 35–36. According to Petitioner, “all claims encompass the obvious variation of Kinde’s method utilizing barcoded adapters (i.e., the Craig Variation).” Id. at 26. Patent Owner contends the so-called Craig Variation is “imaginary.” Prelim. Resp. 7. Putting aside that issue, we found in at least three related IPR proceedings that Petitioner did not explain sufficiently why an ordinarily skilled artisan would have introduced Craig’s adapters, which comprises exogenous barcodes, to Kinde’s endogenous method. See IPR2022-00816, Paper 16, 13–15; IPR2022-00935, Paper 11, 32–35; IPR2022-01159, Paper 17, 10–14. In the current Petition, Petitioner relies on substantially the same arguments regarding modifying Kinde’s endogenous UIDs with Craig’s adaptors. In other words, the merits of this third Petition are weak. In sum, the weakness in the merits of this third Petition further favors denying institution.” slip op. at 25
Discretionary denialPatents in suitUS 10,689,699 - Apple Inc. v. Alivecor, Inc.Institution deniedPTAB · Nov 15, 2022 · IPR2022-01173 · APJ Jeffrey N Fredman · IPR · Institution
The Board denied institution because AliveCor disclaimed all challenged claims, claims 1–13.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDenied
“37 C.F.R. § 1.321(a); see also Vectra, 162 F.3d at 1382 (holding that a § 253 disclaimer is immediately “recorded” on the date that the Office receives a disclaimer meeting requirements of 37 C.F.R. § 1.321(a) and that no further action is required in the Office). “No inter partes review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e); see also General Electric Co. v. United Techs. Corp., IPR2017-00491, Paper 9 at 3 (PTAB July 6, 2017) (precedential). is, the USPTO Patent Application Information Retrieval (PAIR) database containing the image file wrappers and other information for the ’175 patent), we conclude that a disclaimer of claims 1–13 of the ’175 patent under 35 U.S.C. § 253(a) has been recorded in the Office as of October 11, 2022. Exhibit 2001, a copy of the filed disclaimer, is signed by Patent Owner’s attorney of record, Abhijit P. Adisesh. Ex. 2001, 1. Exhibit 2001 also identifies the ’175 patent; identifies that all of the claims at issue in the petitions (claims 1–13) are disclaimed; and states that AliveCor, Inc. is the owner of 100% of the instant patent by virtue of an assignment recorded at Reel 049503 and Frame 0327. Id. The image file wrapper in PAIR for the ’175 patent includes a fee worksheet and receipt for the requisite fee filed with the disclaimer on October 11, 2022. Because Patent Owner filed a statutory disclaimer in compliance with 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a) disclaiming all the claims of the ’175 patent, no inter partes review is instituted in this proceeding.” slip op. at 3
Discretionary denialPatents in suitUS 11,103,175 - Wolfspeed, Inc. v. The Trustees Of Purdue UniversityInstitution deniedPTAB · Nov 1, 2022 · IPR2022-00854 · APJ Jeffrey W Abraham · IPR · Institution
The Board denied institution because the Patent Owner disclaimed all challenged claims in compliance with the statutory requirements.
RulingsInstitution decision- Adverse judgmentAdverse judgmentOther
“A disclaimer under 35 U.S.C. § 253(a) is “considered as part of the original patent” as of the date on which it is “recorded” in the U.S. Patent and Trademark Office (“Office”). 35 U.S.C. § 253(a). For a disclaimer to be “recorded” in the Office, the document filed by the patent owner must: (1) Be signed by the patentee, or an attorney or agent of record; (2) Identify the patent and complete claim or claims, or term being disclaimed. A disclaimer which is not a disclaimer of a complete claim or claims, or term will be refused recordation;” slip op. at 7
Discretionary denialPatents in suitUS 8,035,112 - Stmicroelectronics, Inc. v. The Trustees Of Purdue UniversityInstitution deniedPTAB · Nov 1, 2022 · IPR2022-00724 · APJ Jeffrey W Abraham · IPR · Institution
The Board denied institution because Patent Owner disclaimed all challenged claims 2–5, 8, 9, and 13–16 in compliance with the statutory requirements.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDenied
“Here, Patent Owner filed a statutory disclaimer of claims 1–16 of the ’112 patent, which includes the challenged claims. Prelim. Resp. 1; Ex. 2001. Based on our review of Exhibit 2001 and Office public records, we conclude that a disclaimer of claims 1–16 of the ’112 patent under 35 U.S.C. § 253(a) was filed with the Office as of September 29, 2021. Based on the information in the public record, we find that the disclaimer complies with the above-listed requirements of 37 C.F.R. § 1.321(a). Because all challenged claims have been disclaimed under 35 U.S.C. § 253(a), in compliance with 37 C.F.R. § 1.321(a), no inter partes review is instituted in this proceeding. 37 C.F.R. § 42.107(e); General Electric Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential) (declining to institute inter partes review when all challenged claims were disclaimed under 35 U.S.C. § 253(a)). Patent Owner acknowledges that we should deny institution on this threshold procedural ground. Prelim. Resp. 1.” slip op. at 7
Discretionary denialPatents in suitUS 8,035,112 - PPC Broadband, Inc. v. Times Fiber Communications, Inc.Institution deniedPTAB · Oct 24, 2022 · IPR2022-00830 · APJ Frances L Ippolito · IPR · Institution
The Board denied institution of IPR on claims 1–14 and 16–21 because the Patent Owner effectively disclaimed all challenged claims.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDenied
“conclude a disclaimer of claims 1–14 and 16–21 of the ’632 Patent, under 35 U.S.C. § 253(a) has been recorded in the Office as of July 28, 2022. Ex. 2002. Vectra Fitness, Inc., 162 F.3d at 1382. The record shows that a completed Form PTO/SB/43 (“DISCLAIMER IN PATENT UNDER 37 CFR 1.321(a)”) was filed and received by the Office on that date. See Ex. 2002. The disclaimer form was signed by Lance D’Armico, Secretary for Patent Owner Times Fiber Communications, Inc. See Ex. 2002, 3; see also Ex. 2001 (recorded assignment of the challenged patent from Amphenol Corporation to Times Fiber Communications, Inc., executed on December 23, 2021). The form identifies Patent Owner as having a “100% Ownership Interest” in the ’632 Patent, and identifies claims 1–14 and 16– 21 as being disclaimed. See Ex. 2002, 3. The evidence also reflects payment of the required fee. See id. at 1, 4–5. We determine Patent Owner has met the requirements for an effective disclaimer under 35 U.S.C. § 253 and 37 C.F.R. § 1.321(a). In view of this disclaimer, and as consistent with 37 C.F.R. § 42.107(e) and the Board’s precedential General Electric decision, we determine a denial of institution is sufficient to dispose of this case. See Gen. Elec. Co., IPR2017-00491, Paper 9. Thus, we decline to institute an inter partes review.” slip op. at 4
Discretionary denialPatents in suitUS 10,913,632
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.