- Keeper Security, Inc. v. Cumberland Systems LLCInstitution deniedPTAB · Nov 20, 2017 · CBM2017-00057 · APJ Kevin W Cherry · CBM · Institution
The Board denied institution on claims 1–19 because Petitioner did not show that the patent qualified as a covered business method patent.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“We agree with Patent Owner that Petitioner has failed to show adequately that the ’647 patent “claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service,” to qualify as a covered business method patent. As we explained above, Secure Axcess requires a challenged patent to “have a claim that contains . . . a financial activity element.” Secure Axcess, 848 F.3d at 1381 (emphasis added). Petitioner fails to point to any element of claims of the ’647 patent that it contends meets the “financial activity element” required by Secure Axcess. Instead, it merely points to statements in the specification regarding potential applications for the claimed cryptographic algorithm. At best, Petitioner argues that the claimed encryption method can be for financial matters, such as securing e-commerce transactions, but this is not sufficient after the Federal Circuit’s guidance in both Unwired Planet and Secure Axcess. See id. Petitioner has simply failed to identify anything in the claims that are financial in nature.” slip op. at 9
Discretionary denialPatents in suitUS 8,023,647 - Facebook, Inc. / Instagram, LLC v. Skky LLCInstitution deniedPTAB · Jul 13, 2017 · IPR2017-00641 · APJ Christopher G Paulraj · IPR · Institution
The Board denied institution because the patent owner disclaimed all challenged claims.
RulingsInstitution decision- Adverse judgmentInstitution denied discretionary otherInstitution denied
“A patentee may “make disclaimer of any complete claim . . . . Such disclaimer shall be in writing, and recorded in the Patent and Trademark Office; and it shall thereafter be considered as part of the original patent.” 35 U.S.C. § 253(a). When a patent owner files a statutory disclaimer with its preliminary response, “[n]o inter partes review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e).” slip op. at 2
Discretionary denialPatents in suitUS 9,203,956 - Google Inc. v. Alfonso Cioffi, Megan Elizabeth Rozman, Melanie Ann Rozman, And Morgan Lee RozmanInstitution deniedPTAB · May 2, 2017 · CBM2017-00010 · APJ Brian J Mcnamara · CBM · Institution
The Board denied institution because the ’528 Patent does not qualify for covered business method review; its claims are not directed to a financial activity.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We perceive no “issue of material fact” that should be resolved in favor of the Petitioner at the institution stage. Pet. Supp. Brief 3. Although the Petition discusses the construction of several claim terms, none of the proposed interpretations includes any reference to features that are related to internet banking or any other feature that is financial in nature. See Pet. 29 (e.g., proposing that “web browser process” be construed as a “process that can access data on websites” in which “this ‘access’ to website data can be direct or indirect”). In short, none of the claims of the ’528 Patent is “directed to” a financial activity on its face, and we do not read any such financial activity into them based on the Specification’s assertion that malware protection could be useful in internet banking. Thus, we are not persuaded that the ’528 Patent qualifies for covered business method patent review.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther
“We agree that the parties’ proposed constructions are consistent with the Specification of the ’528 Patent and, in that context, are the broadest reasonable interpretations of the terms. Therefore, to the extent that claim constructions are relevant to this Decision, we adopt the proposed constructions. Citing the claim construction order entered by the district court in co- pending litigation, Petitioner proposes we construe the term “system file” in claims 21, 44, and 64 to be synonymous with a “critical file” or “critical system file,” which refers to files required for the proper operation of the computer’s systems. Pet. 27–28 (citing Ex. 1012). Patent Owner does not propose a specific construction. We agree that Petitioner’s proposed construction is broadest reasonable interpretation consistent with the specification of the ’528 Patent and we adopt it in this proceeding to the extent that claim constructions are relevant to this Decision.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingOther
“The parties also agree that the preamble of claim 64 is limiting. Pet. 29–30; Prelim. Resp. 15. The preamble of claim 64 recites specific features of the claimed computer program product, e.g., that the stored code is capable of executing instructions using a common operating system having at least one electronic data processor coupled to other elements in a specific way.” slip op. at 7
Claim constructionDiscretionary denial - Facebook, Inc. / Instagram, LLC v. Skky, LLCInstitution deniedPTAB · Apr 12, 2017 · CBM2017-00002 · APJ William V Saindon · CBM · Institution
The Board denied institution because claims 8 and 10–14 did not make the patent eligible for CBM review; claims 1–7 and 9 had been disclaimed.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“patent review “shall be regarded as, and shall employ the standards and procedures of, a post-grant review” with certain exceptions not relevant here. Under 35 U.S.C. § 324(a), a post-grant review cannot be “instituted unless the Director determines that the information presented in the petition. . . would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.”” slip op. at 2
- Adverse judgmentAdverse judgmentOther
“Resp. 5 (citing Ex. 2001); Pet. Prelim. Reply (addressing the disclaimer); PO Sur-Reply (replying to Pet. Prelim. Reply). Patent Owner argues that for the purpose of determining whether or not to institute a CBM proceeding, the Board must treat disclaimed claims “as never having existed.” Prelim. Resp. 5–6 (citing Great West Cas. Co. v. Intellectual Ventures II LLC, Case CBM2015-00171, slip op. at 7 (PTAB Feb. 9, 2016) (Paper 10)).” slip op. at 8
Discretionary denialPatents in suitUS 9,203,870 - Cme Group, Inc. v. Volatility Partners, LLCInstitution deniedPTAB · Mar 28, 2017 · CBM2016-00024 · APJ Trenton A Ward · CBM · Institution
The Board denied institution of CBM review of claims 1–50 because CME Group failed to establish standing to file the petition.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied rpiInstitution denied
“In accordance with 37 C.F.R. § 42.302(a), the Petitioner bears the burden of establishing “petitioner has been sued for infringement of the patent or has been charged with infringement under that patent.” Based on the record before us, and for purposes of this Decision, we determine the information presented in the Petition and supporting evidence does not establish that Petitioner had standing to file the Petition.” slip op. at 11
- PTAB / AIA Trials › Real party in interest / privityDenied
“Here, we determine that Petitioner fails to sufficiently establish an “adverse legal interest” by failing to identify an underlying cause of action that Patent Owner could have brought or threatened to bring. First, Petitioner has not sufficiently established that the License Agreement covers the ’RE435 patent. The License Agreement licenses “the inventions claimed in the [’184 patent]” (Ex. 1004, 2). None of the claims in the original ’184 patent was confirmed during the prosecution of the reissue application, as only claim 1 from the ’184 patent was maintained in the reissue application, and this claim was amended during the prosecution of the reissue application. See Ex. 1003, 26–40, 176–182, 189–203. Therefore, Petitioner fails to establish sufficiently how any of “the inventions claimed in the ’184 patent” are currently claimed in the ’RE435 patent.” slip op. at 8
Discretionary denial - Ford Motor Company v. Versata Development Group, Inc.Institution deniedPTAB · Mar 15, 2017 · CBM2016-00101 · APJ Sally C Medley · CBM · Institution
The Board denied institution on claims 1–21 because the patent was not shown to qualify as a covered business method patent.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“For the foregoing reasons, based on the record presented and the particular facts of this proceeding, Petitioner has not established that the ’080 patent claims a method or apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service. Therefore, the ’080 patent does not qualify as a “covered business method patent” under § 18(d)(1) of the AIA, and we do not institute a covered business method patent review on any of the asserted grounds as to any of the challenged claims.” slip op. at 10
Discretionary denialPatents in suitUS 7,739,080 - Twilio Inc. v. Telesign CorporationInstitution deniedPTAB · Feb 27, 2017 · CBM2016-00099 · APJ Justin T Arbes · CBM · Institution
The Board denied institution on all challenged claims because the patent did not qualify as a covered business method patent.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“For the foregoing reasons, based on the record presented and particular facts of this proceeding, Petitioner has not established that the ’792 patent claims a method or apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service. Therefore, the ’792 patent does not qualify as a “covered business method patent” under § 18(d)(1) of the AIA, and we do not institute a covered business method patent review on any of the asserted grounds as to any of the challenged claims. III. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied as to all challenged claims of the ’792 patent.” slip op. at 14
- BurdenDecided for patent owner
“For the foregoing reasons, based on the record presented and particular facts of this proceeding, Petitioner has not established that the ’792 patent claims a method or apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service. Therefore, the ’792 patent does not qualify as a “covered business method patent” under § 18(d)(1) of the AIA, and we do not institute a covered business method patent review on any of the asserted grounds as to any of the challenged claims.” slip op. at 14
Discretionary denialPatents in suitUS 9,300,792
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.