- Apple Inc. v. Rfcyber Corp.Institution deniedPTAB · Mar 24, 2022 · PGR2022-00003 · APJ Patrick R Scanlon · PGR · Institution
The Board denied Apple’s untimely joinder motion and denied institution because the petition was filed outside the nine-month PGR filing period.
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“motion under§ 42.22, no later than one month after the institution date of any post-grant review for which joinder is requested.” 37 C.F.R. § 42.222(b). Petitioner’s Motion for Joinder was filed October 20, 2021, which is more than one month after the Board instituted post-grant review in the Google PGR on July 23, 2021. Petitioner, however, argues that special circumstances warrant that the Board exercise its discretion under 37 C.F.R. § 42.5 to waive the one-month joinder period. Mot. 3–6.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“B. Eligibility for Post-Grant Review under 35 U.S.C. § 321 Institution of post-grant review is barred when a petition is filed more than 9 months after the challenged patent is granted. 35 U.S.C. § 321(c). The ’046 patent issued on March 24, 2020 (see Ex. 1001, code (45)), and the Petition in this proceeding was accorded a filing date of October 20, 2021 (see Paper 1). Thus, the Petition was filed outside the 9-month statutory period for requesting post-grant review under § 321(c). Accordingly, in view of our decision to deny Petitioner’s Motion for Joinder, we deny the Petition because it was not filed within the time limit imposed under 35 U.S.C. § 321(c).” slip op. at 8
Discretionary denialPatents in suitUS 10,600,046 - Fitbit, Inc. v. Philips North America LLCInstitution deniedPTAB · Oct 30, 2020 · IPR2020-00782 · APJ Frances L Ippolito · IPR · Institution
The Board denied institution because Philips had recorded a statutory disclaimer of all challenged claims 15–17.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDenied
“Pursuant to 37 C.F.R. § 42.107(e), “[t]he patent owner may file a statutory disclaimer under 35 U.S.C. [§] 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent. No inter partes review will be instituted based on disclaimed claims.” (Emphasis added.) A disclaimer under 35 U.S.C. § 253(a) shall be recorded in the Office, and is “considered as part of the original patent.” See 35 U.S.C. § 253(a).” slip op. at 5
Discretionary denialPatents in suitUS 6,976,958 - PTAB · Jan 31, 2018 · IPR2017-01777 · APJ Patrick R Scanlon · IPR · Adverse judgment
The Board denied institution because Patent Owner recorded a statutory disclaimer of all challenged claims.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentDenied
“Under 37 C.F.R. § 42.107(e), “patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent” and “[n]o inter partes review will be instituted based on disclaimed claims.” A disclaimer under 35 U.S.C. § 253(a) is “considered as part of the original patent” once it is “recorded” in the Office. 35 U.S.C. § 253(a).” slip op. at 3
Discretionary denialPatents in suitUS 8,167,043 - Sega Of America, Inc. v. Uniloc USA, Inc. And Uniloc Luxembourg S.A.Institution deniedPTAB · Jun 2, 2016 · IPR2016-00427 · APJ Donna M Praiss · IPR · Institution
The Board denied joinder and denied institution on all challenged claims and grounds because § 315(b) barred the time-barred petition without joinder.
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b). A motion for joinder should: (1) set forth the 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) specifically address how briefing and discovery may be simplified. See, e.g., Kyocera Corp. v. Softview LLC, Case IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15).” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsOther
“weigh in favor of denying Petitioner’s Motion for Joinder. Petitioner previously filed a petition for inter partes review of the ’216 patent in IPR2014-01453 and a petition for a covered business patent review of the ’216 patent in CBM2014-00183. Sega of America, Inc. v. Uniloc USA, Inc., IPR2014-01453 (Paper 6); Sega of America, Inc. v. Uniloc USA, Inc., CBM2014-00183 (Paper 6). The earlier petitions were filed within one year of the date on which Petitioner was served with a complaint alleging infringement of the ’216 patent. Id. The grounds and arguments now asserted by Petitioner are substantially identical to the grounds presented in CBM2014-00183, which was denied, and could have been brought in IPR2014-01453, which was instituted. Petitioner did not include the asserted grounds in a petition for inter partes review until now. Nor has Petitioner explained sufficiently why the petition in IPR2014-01453 did not contain the grounds and arguments set forth in the Petition in this proceeding. Joinder may be authorized when warranted, but the decision to grant joinder is discretionary. 35 U.S.C. § 315(c). When exercising that discretion, the Board is mindful that patent trial regulations, including the rules of joinder, must be construed to secure the just, speedy, and inexpensive resolution of every proceeding. See 37 C.F.R. § 42.1 (b). In view of the facts and circumstances of this case, we determine that Petitioner has not met its burden to show that joinder would be appropriate, even if IPR2015-01207 had not been terminated.” slip op. at 5
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“is filed more than one year after the petitioner (or the petitioner’s real partyin-interest or privy) is served with a complaint alleging infringement of the patent, see 37 C.F.R. § 42.101(b), the one-year time bar does not apply to a request for joinder. 35 U.S.C. § 315(b) (stating that “[t]he time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c)” of 35 U.S.C. § 315); 37 C.F.R. § 42.122(b). In the present case, Petitioner was served with a complaint alleging infringement of the ’216 patent more than one year prior to filing the Petition in this proceeding. See Pet. 51; Ex. 1025. Thus, absent joinder of this proceeding with IPR2015-01207, institution of inter partes review is barred.” slip op. at 4
Discretionary denialPatents in suitUS 5,490,216 - Ubisoft, Inc. / Zebra Technologies Corporation et al. v. Uniloc USA, Inc. And Uniloc Luxembourg S.A.Institution deniedPTAB · Jun 2, 2016 · IPR2016-00414 · APJ Donna M Praiss · IPR · Institution
The Board denied joinder and denied institution on all challenged claims and grounds because the petition was time-barred under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“As a moving party, Petitioner has the burden of proof in establishing entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b). A motion for joinder should: (1) set forth the 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) specifically address how briefing and discovery may be simplified. See, e.g., Kyocera Corp. v. Softview LLC, Case IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15).” slip op. at 4
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“is filed more than one year after the petitioner (or the petitioner’s real partyin-interest or privy) is served with a complaint alleging infringement of the patent, see 37 C.F.R. § 42.101(b), the one-year time bar does not apply to a request for joinder. 35 U.S.C. § 315(b) (stating that “[t]he time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c)” of 35 U.S.C. § 315); 37 C.F.R. § 42.122(b). In the present case, Petitioner was served with a complaint alleging infringement of the ’216 patent more than one year prior to filing the Petition in this proceeding. See Pet. 52; Exs. 1025–27. Thus, absent joinder of this proceeding with IPR2015-01207, institution of inter partes review is barred.” slip op. at 4
Discretionary denialPatents in suitUS 5,490,216 - Corelogic, Inc. v. Boundary Solutions, Inc.Institution deniedPTAB · May 24, 2016 · CBM2016-00017 · APJ Richard H Marschall · CBM · Institution
The Board denied institution of CBM review because CoreLogic did not show that the patent claims a method or apparatus for a financial product or service.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with BSI. CoreLogic does not explain adequately how any of the claims of the ’946 patent recite a method or apparatus “for performing data processing or other operations used in the practice, administration, or management of a financial product or service.” AIA § 18(d)(1). CoreLogic focuses on claim 1, but fails to identify any limitation in claim 1 or any other claim that relates to a financial activity in any way. Claim 1 claims a “method for retrieving and displaying geographic parcel boundary polygon maps,” which has applicability to retrieving and displaying map data, not financial products and services. CoreLogic suggests that the method of claim 1 “can be used” by various entities in a business context, but does not argue, let alone establish, that the claim terms on their face are financial in nature. See Pet. 11. CoreLogic asserts that the specification of the ’946 patent describes several methods of generating revenue using the claimed methods, and that numerous businesses may pay for access to map data generated using the claimed method. Pet. 10–16. CoreLogic’s reliance on these portions of the specification is unavailing. First, CoreLogic fails to address how these disclosures relate directly to, or meaningfully informs our analysis of, the language of the claims. For example, CoreLogic does not direct us to any claims or claim limitations that require users to pay for access to the map database or use of the claimed methods. Second, CoreLogic fails to address portions of the specification that indicate the claimed invention can be used “for free,” i.e., without any generation of revenue or financial aspect at all. See Ex. 1001, 2:59 (“These end users may access for free . . . .”), 13:54–56 (“Another public-private alliance option is to offer the free use of the NPDP server to such data sponsors in addition to or in lieu of their revenue share.”), 14:20–21 (“[C]ommodity service subscriber end users (customers) can have access to the NPDP at no charge.”), 15:51–55 (“It is also contemplated that other independent public and private data sponsors could be provided with links as part of the NPDP display which end users could access on a free or fee basis.”). Given that the specification contemplates use of the claimed inventions for free, it is not apparent that the “purpose of the claimed method is to provide data in exchange for money,” as CoreLogic suggests. Pet. 11. At most, CoreLogic has established that the claimed methods could be used to generate revenue in a number of ways, even though the language of the claims does not require any exchange of money or other financially related step. Under these circumstances, we conclude that the “financial prong” has not been met. Numerous Board decisions have taken a similar approach in situations where the specification refers to potential financial applications for the claimed inventions but the claim language does not expressly indicate a financial context.3 In Qualtrics, LLC v. OpinionLab, Inc., CBM2015-00164 (Feb. 3, 2016) (Paper 8), for example, the claims were “devoid of any terms that reasonably could be argued as having any particular relation to a financial product or service,” but the specification” slip op. at 10
Discretionary denialPatents in suitUS 7,499,946 - Corelogic, Inc. v. Boundary Solutions, Inc.Institution deniedPTAB · May 24, 2016 · CBM2016-00018 · APJ Richard H Marschall · CBM · Institution
The Board denied institution for claims 1–23 because the petition did not establish that the ’352 patent qualifies as a covered business method patent.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“method patent,” as defined by the AIA. CoreLogic bears the burden of persuasion that the ’352 patent is a covered business method patent. See 37 C.F.R. § 42.304(a). For the reasons discussed below, we determine CoreLogic has made an insufficient showing that the ’352 patent is a “covered business method patent.” The AIA defines “covered business method patent” as “a patent that 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, except that the term does not include patents for technological inventions.” AIA § 18(d)(1); see also 37 C.F.R. § 42.301(a). The legislative history of the AIA “explains that the definition of covered business method patent was drafted to encompass patents ‘claiming activities that are financial in nature, incidental to a financial activity or complementary to a financial activity.’” Transitional Program for Covered Business Method Patents—Definitions of Covered Business Method Patent and Technological Invention; Final Rule, 77 Fed. Reg. 48,374, 48,735 (Aug. 14, 2012) (“CBM Final Rules”) (quoting 157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011)); see also Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1338 (Fed. Cir. 2016). To determine whether a patent is eligible for a covered business method patent review, the focus is on the claims. AIA § 18(d)(1) (“a patent that claims . . .” (emphasis added)); 37 C.F.R. § 42.301(a) (same); CBM Final Rules, 77 Fed. Reg. at 48,736 (comment 4) (“[T]he definition set forth in § 42.301(a) . . . is based on what the patent claims.”). A patent need have only one claim directed to a covered business method to be eligible for review. CBM Final Rules, 77 Fed. Reg. at 48,736 (comment 8) (“A patent having one or more claims directed to a covered business method is a covered business method patent for purposes of the review, even if the patent includes additional claims.”).” slip op. at 5
Discretionary denialPatents in suitUS 8,065,352 - Motorola Mobility LLC v. Intellectual Ventures I LLCInstitution deniedPTAB · Feb 9, 2016 · CBM2015-00174 · APJ Jeffrey W Abraham · CBM · Institution
The Board denied institution because the petitioner did not show that the ’144 patent qualifies as a covered business method patent.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“2. Analysis Under § 18(a)(1)(E) of the AIA, the Board may institute a transitional proceeding only for a patent that is a CBM patent. Section 18(d)(1) of the AIA defines the term “covered business method patent” to mean “a patent that 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, except that the term does not include patents for technological inventions.” For purposes of determining whether a patent is eligible for a covered business method patent review, the focus is on what the patent claims. See 37 C.F.R. § 42.301(a), definition of CBM patent; see also 77 Fed. Reg. 48,734, 48,736 (Aug. 14, 2012), Response to Comments on Notice of Proposed Rulemaking, response to comment 8. A patent need have only one claim directed to a covered business method to be eligible for review. See Transitional Program for Covered Business Method Patents—Definitions of Covered Business Method Patent and Technological Invention; Final Rule, 77 Fed. Reg. at 48,736.” slip op. at 9
- BurdenDecided for patent owner
“To that end, Petitioner does not explain adequately, and we are unable to discern, how any of the independent or dependent claims of the ’144 patent recite a method or apparatus “for performing data processing or other operations used in the practice, administration, or management of a financial product or service.” On their face, the claims of the ’144 patent are directed to a general method or corresponding apparatus for transferring files from a first device to a second device, and we are unable to identify specifically any claim terms that could be considered “financial in nature.” In view of this, we agree with Patent Owner that the claims, at least facially, relate to “technologies common in business environments that have no particular relation to the financial services sector.” Prelim. Resp. 10.” slip op. at 10
Discretionary denialPatents in suitUS 7,810,144 - Ocean Tomo, LLC v. Patent Ratings, LLCInstitution deniedPTAB · Jan 26, 2016 · CBM2015-00157 · APJ Peter P Chen · CBM · Institution
The Board denied institution of CBM review of claims 1, 9, 16, 18–25, 34, 49, 50–52, and 57 because Ocean Tomo failed to establish standing.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied rpiInstitution denied
“must set forth the petitioner’s grounds for standing. 37 C.F.R. § 42.304(a). Rule 42.304(a) states it is Petitioner’s burden to “demonstrate that the patent for which review is sought is a covered business method patent, and that the petitioner meets the eligibility requirements of § 42.302.” Id.” slip op. at 3
- PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiDenied
“this issue, and agree with Patent Owner. This case is factually distinguishable from MedImmune for the reasons described by Patent Owner. We are not persuaded any of the evidence herein sufficiently demonstrates a charge by Patent Owner of Petitioner’s infringement of the ’849 patent. For example, the parties’ amended pleadings in the Illinois action total 15 causes of action, spanning 71 pages and 280 paragraphs of allegations, yet there is no mention of the ’849 patent, or patent infringement, or non-infringement of patents, or charges of patent infringement. Exs. 1004, 1005. The parties’ contract, tort, and related causes of action concern and arise from the fractured employment and business relationship between Petitioner and Mr. Barney and Patent Owner, not from charges of infringement of the ’849 patent.” slip op. at 9
Discretionary denialPatents in suitUS 9,075,849 - Emnos USA Corp. v. Dunnhumby LimitedInstitution deniedPTAB · Dec 30, 2015 · CBM2015-00162 · APJ Timothy J Goodson · CBM · Institution
The Board denied institution on all challenged claims because the Petition did not establish that the ’246 patent qualifies as a covered business method patent.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have jurisdiction under 35 U.S.C. § 324. Pursuant to 35 U.S.C. § 324(a), the Director may not authorize a covered business method patent review unless the information in the petition, if unrebutted, “would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” As explained below, we do not institute a covered business method patent review because the Petition does not establish that the ’246 patent qualifies as a covered business method patent.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“remains deficient. The Petition relies on the Oracle Pro*C reference as disclosing the script template limitations of the independent claims, but as Patent Owner points out, the Petition does not present evidence establishing that Oracle Pro*C qualifies as a prior art printed publication. See Pet. 32– 34; Prelim. Resp. 50–53. Petitioner asserts that Oracle Pro*C “was published in 2002” but does not point to any specific evidence of its publication or public availability in 2002. Id. at 33. If Petitioner’s assertion is based on the “March 2002” statement that appears on the cover of the Oracle Pro*C reference, that statement is hearsay, and Petitioner does not argue that any hearsay exception or exclusion applies. See Ex. 1041, 1; see also ServiceNow, Inc. v. Hewlett-Packard Co., Case IPR2015-00716, slip op. at 16 (PTAB Aug. 26, 2015) (Paper 13) (“To the extent that Petitioner relies on the date on the face of each exhibit and the indications of availability of these references for download . . . for the truth of that information, and considering that Petitioner has not established that any hearsay exception or exclusion applies, we agree [that the statements are inadmissible hearsay].”). Petitioner also argues, with citation to the testimony of Dr. Smyth, that Oracle Pro*C is a reference used by programmers who develop applications in Oracle database environments. Pet. 33 (citing Ex. 1030 ¶ 57). However, neither the Petition nor Dr. Smyth explains how or when the specific Programmer’s Guide, Release 9.2 that Petitioner relies on as the Oracle Pro*C reference (Ex. 1041) was made available to skilled artisans. Because the Petition does not establish that Oracle Pro*C qualifies as prior art, Section VIII.B. of the Petition does not remedy the deficient showing in Section III.D. of the Petition on the first consideration of the technological” slip op. at 11
§ 102 anticipationDiscretionary denialPatents in suitUS 8,214,246
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.