- Cambridge Mobile Telematics, Inc. v. Sfara, Inc.Institution deniedPTAB · Dec 13, 2024 · IPR2024-00966 · APJ John F Horvath · IPR · Institution
The Board denied institution because the Petition did not explain whether the component limitations invoke § 112(f) or identify corresponding structure, as required by Rule 42.104(b)(3).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“The Consolidated Trial Practice Guide[1,2](“CTPG”) . . . instructs that “[w]here claim language may be construed according to 35 U.S.C. § 112(f), a petitioner must provide a construction.” CTPG 45 (emphases added) (citing 37 C.F.R. § 42.104(b)(3)). The CTPG advises that a party “may choose to elaborate why § 112(f) should or should not apply to the limitation at issue.” Id. Notably, the CTPG warns that “[a] petitioner who chooses not to address construction under § 112(f) risks failing to satisfy the requirement of 37 C.F.R. § 42.104(b)(3).” Id.” slip op. at 6
- BurdenDenied
“Given these facts, we determine that rule 104(b)(3) mandates that the Petition either identify “the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function” recited in the “component” term limitations or explain why the “component” term limitations are not subject to a means-plus-function construction. This, it fails to do. To be clear, we note that our rules do not prohibit a petitioner from taking inconsistent claim construction positions before the Board and a district court. See 10x Genomics, Inc. v. Bio-Rad Labs, Inc., IPR2020- 00086, Paper 8 at 18 (PTAB Apr. 27, 2020). However, where, as here, a petitioner has proposed a claim term be construed solely as a means-plus-function limitation in a district court proceeding and emphasized that the issue is not only “most significant” but potentially “case . . . dispositive,” we determine the petition is obliged to either apply that construction in this proceeding or explain why that construction is not applicable. Accordingly, we find the Petition to be deficient under rule 104(b)(3).4” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Other
“connote a definite structure. See Williamson, 792 F.3d at 1350 (identifying words such as “mechanism,” “element,” “device,” and others as verbal constructs that do not connote sufficiently definite structures). Indeed, the Specification discloses all of the “components” recited in claims 1, 8, and 15, including the “comparing component,” can be “implemented as a computer having tangible computer-readable media for carrying or having computer-executable instructions or data structures stored thereon.” Ex. 1001, 5:35–43. Thus, like the word “module,” a recognized nonce word, each of the recited “components” is nothing more than “a generic description for software or hardware that performs a specified function” and their recitation “operate[s] as a substitute for ‘means’ in the context of § 112, para. 6.” Williamson, 792 F.3d at 1350. Accordingly, we construe the “comparing component” limitation recited in claims 1, 8, and 15 as a meansplus-function limitation whose function is “generating a comparison signal.”2” slip op. at 14
- Skill levelNot reached
Claim constructionDiscretionary denialcites MarkmanPatents in suitUS 9,333,946 - Cambridge Mobile Telematics, Inc. v. Sfara, Inc.Institution deniedPTAB · Dec 13, 2024 · IPR2024-00952 · APJ Brent M Dougal · IPR · Institution
The Board denied institution on claims 1–18 because the Petition failed to satisfy 37 C.F.R. § 42.104(b)(3) by omitting required claim-construction analysis.
RulingsInstitution decision- BurdenDenied
“Under these facts we determine that 37 C.F.R. § 42.104(b)(3) mandates that the Petition “identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” The Petition failed to do so. At a minimum, the Petition should have explained why the plain and ordinary meaning of the “component” terms should apply in this proceeding (why the inconsistent positions are warranted) or set forth an alternative means-plus-function claim construction. CTPG 45.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“Under these facts we determine that 37 C.F.R. § 42.104(b)(3) mandates that the Petition “identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” The Petition failed to do so. At a minimum, the Petition should have explained why the plain and ordinary meaning of the “component” terms should apply in this proceeding (why the inconsistent positions are warranted) or set forth an alternative means-plus-function claim construction. CTPG 45.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Under these facts we determine that 37 C.F.R. § 42.104(b)(3) mandates that the Petition “identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” The Petition failed to do so. At a minimum, the Petition should have explained why the plain and ordinary meaning of the “component” terms should apply in this proceeding (why the inconsistent positions are warranted) or set forth an alternative means-plus-function claim construction. CTPG 45.” slip op. at 8
Claim constructionDiscretionary denialcites MarkmanPatents in suitUS 8,989,952 - College Products, Inc. v. Intirion CorporationInstitution deniedPTAB · Dec 7, 2023 · IPR2023-01042 · APJ Matthew S Meyers · IPR · Institution
The Board denied institution of review for claims 1, 21, 26, and 28 of the ’876 patent because the petitioner’s earlier Iowa declaratory judgment action triggered § 315(a)(1).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherDenied
“The plain language of § 315(a)(1) bars institution of the Petitions because Petitioner’s Iowa DJ action was filed before the Petitions. For the reasons discussed above, the Iowa DJ action is not a counterclaim under § 315(a)(3). Specifically, the Iowa DJ action is a civil action that was filed before the petitions and challenged the validity of the ’206, ’876, and ’374 patents. Therefore, the filing of the Iowa DJ action created a bar to institution of the Petitions under the language of § 315(a)(1). For these reasons, after considering the parties’ evidence and arguments, we determine that § 315(a)(1) bars institution of inter partes review for these proceedings.” slip op. at 10
- Other 314aInstitution denied discretionary otherDenied
“their declaratory judgment action included counterclaims to infringement allegations under § 315(a)(3) because the declaratory judgment complaint was filed after and in response to infringement allegations. Avigilon, Paper 11, 10. The Board determined that “a counterclaim typically is asserted in an existing civil action, in contrast to a complaint, the filing of which begins a civil action.” Id. (citing Fed. R. Civ. P. 13 (defining counterclaims as distinct from pleadings, including a complaint, set forth in Fed. R. Civ. P. 7); Fed. R. Civ. P. 3 (“A civil action is commenced by filing a complaint with the court.”)). The Board also noted the definition of “counterclaim” as “a defendant’s claim in opposition to or as a setoff against the plaintiff’s claim.” Id. at 11 (citing Black’s Law Dictionary (10th ed. 2014)). Here, there is no evidence that Patent Owner filed a claim as a plaintiff against Petitioner in the Northern District of Iowa and that the Iowa DJ action was a counterclaim in opposition to or against such a claim. Petitioner’s argument that Patent Owner should be precluded from arguing that the Iowa DJ action is not a counterclaim is also not persuasive. Pet. 7. Regardless of whether Patent Owner subsequently argued that the Iowa DJ action was a counterclaim (an argument made in the context of a motion of consolidation), subsequent arguments by Patent Owner would not retroactively transform the Iowa DJ action, which was filed before any claim was filed by Patent Owner against Petitioner in that jurisdiction, into a counterclaim. Thus, we find that Petitioner’s Iowa DJ action was a civil action challenging the validity of a claim of a patent. The plain language of § 315(a)(1) bars institution of the Petitions because Petitioner’s Iowa DJ action was filed before the Petitions. For the reasons discussed above, the Iowa DJ action is not a counterclaim under § 315(a)(3). Specifically, the Iowa DJ action is a civil action that was filed before the petitions and challenged the validity of the ’206, ’876, and ’374 patents. Therefore, the filing of the Iowa DJ action created a bar to institution of the Petitions under the language of § 315(a)(1).” slip op. at 9
Discretionary denialPatents in suitUS 11,274,876 - College Products, Inc. v. Intirion CorporationInstitution deniedPTAB · Dec 7, 2023 · IPR2023-01043 · APJ Matthew S Meyers · IPR · Institution
The Board denied institution because the petitioner’s earlier Iowa declaratory judgment action challenging the patents triggered the § 315(a)(1) bar.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“II. DISCUSSION A. Legal Standards Section 315(a)(1) of 35 U.S.C. states that “[a]n inter partes review may not be instituted if, before the date on which the petition for such a review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.” Section 315(a)(3) states that “[a] counterclaim challenging the validity of a claim of a patent does not constitute a civil action challenging the validity of a claim of a patent for purposes of this subsection [section 315(a)].”” slip op. at 3
- BurdenDecided for patent owner
“their declaratory judgment action included counterclaims to infringement allegations under § 315(a)(3) because the declaratory judgment complaint was filed after and in response to infringement allegations. Avigilon, Paper 11, 10. The Board determined that “a counterclaim typically is asserted in an existing civil action, in contrast to a complaint, the filing of which begins a civil action.” Id. (citing Fed. R. Civ. P. 13 (defining counterclaims as distinct from pleadings, including a complaint, set forth in Fed. R. Civ. P. 7); Fed. R. Civ. P. 3 (“A civil action is commenced by filing a complaint with the court.”)). The Board also noted the definition of “counterclaim” as “a defendant’s claim in opposition to or as a setoff against the plaintiff’s claim.” Id. at 11 (citing Black’s Law Dictionary (10th ed. 2014)).” slip op. at 9
Discretionary denialPatents in suitUS 10,495,374 - 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 - Acxiom Corporation v. Phoenix Licensing, LLCInstitution deniedPTAB · Nov 19, 2015 · CBM2015-00137 · APJ Stacey G White · CBM · Institution
The Board denied the petitions because Acxiom did not establish standing to seek covered business method review; it did not reach the merits of the challenged claims.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityDenied
“authority with respect to the defense, settlement, or compromise of any such claim.” Id. As to the Declaration, Brian Williamson, Senior Account Executive for Acxiom’s Gerber Account, declares that it is his “understanding that Gerber sent Acxiom notice of a demand for indemnification for costs and potential liabilities arising from the [patent infringement suits involving the subject patents] referencing the indemnification provision in the Services and Data Agreement.” Ex. 1128 ¶¶ 2, 6. We do not find this evidence to be sufficient to show that Petitioner has standing to bring this Petition. See 37 C.F.R. § 42.304(a) (stating that 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.”).” slip op. at 5
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“Default Protective Order and moves to seal Exhibits 1128 and 1129, as confidential pursuant to the Default Protective Order. Paper 5, 1. These Exhibits, however, are cited extensively in the Decision. Confidential information relied upon in a decision to grant or deny a request to institute ordinarily will be made public. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). We are not persuaded that there is sufficient reason to depart from that principle. Therefore, Petitioner’s Motion to Seal is denied. Accordingly, we order Exhibits” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied rpiInstitution denied
“their real parties-in-interest or privies that have been sued or charged with infringement of a “covered business method patent,” which does not include patents for “technological inventions.” AIA §§ 18(a)(1)(B), 18(d)(1); see 37 C.F.R. § 42.302. Of key importance in this case is the requirement that “a person may not file a petition for a transitional proceeding with respect to a covered business method patent unless the person or the person’s real party in interest or privy has been sued for infringement of the patent or has been charged with infringement under that patent.” AIA § 18(a)(1)(B) (emphases added); see 37 C.F.R. § 42.302(a). Regarding this requirement, Petitioner does not allege that it has been charged with or sued for infringement, but instead contends that its” slip op. at 3
Discretionary denialPatents in suitUS 7,890,366
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.