- Wiz, Inc. v. Orca Security Ltd.Institution deniedPTAB · May 5, 2025 · IPR2025-00092 · APJ Garth D Baer · IPR · Institution
The Board denied institution because Orca disclaimed all challenged claims 1–19 before institution.
RulingsInstitution decision- Adverse judgmentAdverse judgmentOther
“Under 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” and, if the statutory disclaimer is filed properly, “[n]o [IPR] will be instituted based on disclaimed claims.” A statutory disclaimer is “considered as part of the original patent” as of the date on which it is “recorded” in the USPTO. 35 U.S.C. § 253(a). “A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.” Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996); see also Raytheon Techs. Corp. v. General Elec. Co., 993 F.3d 1374, n.4 (Fed. Cir. 2021) (“Disclaimed claims are treated as if they never existed.”)” slip op. at 2
Discretionary denialPatents in suitUS 11,516,231 - Trend Micro Inc. v. Cupp Computing AsInstitution deniedPTAB · Jan 19, 2022 · PGR2021-00101 · APJ Garth D Baer · PGR · Institution
The Board denied post-grant review of claims 1, 7, 9, 16, 22, and 24 because the patent is not eligible for PGR as a pre-AIA patent.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Act (“AIA”)5 apply only to AIA patents, which are patents that have an effective filing date on or after March 16, 2013. See AIA §§ 3(n)(1); 6(f)(2)(A). Pre-AIA patents—those with effective filing dates before March 16, 2013—are not eligible for post-grant review.” slip op. at 6
Discretionary denialPatents in suitUS 10,951,632 - Trend Micro Inc. v. Cupp Computing AsInstitution deniedPTAB · Jan 19, 2022 · PGR2021-00100 · APJ Thomas L Giannetti · PGR · Institution
The Board denied post-grant review of claims 1, 9, 16, and 24 because the patent is pre-AIA and ineligible for post-grant review.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“III. ELIGIBILITY FOR POST-GRANT REVIEW The post-grant review provisions of the Leahy-Smith America Invents Act (“AIA”)4 apply only to AIA patents, which are patents that have an effective filing date on or after March 16, 2013. See AIA §§ 3(n)(1); 6(f)(2)(A). Pre-AIA patents—those with effective filing dates before March 16, 2013—are not eligible for post-grant review.” slip op. at 5
Discretionary denialPatents in suitUS 10,951,632 - Microsoft Corporation v. Litl, LLCInstitution deniedPTAB · Nov 29, 2021 · IPR2021-01011 · APJ Garth D Baer · IPR · Institution
The Board denied institution because Patent Owner disclaimed all challenged claims 1–36, and the Board’s rules bar institution on disclaimed claims.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDenied
“November 22, 2021, after Petitioner filed its Petition, Patent Owner filed a statutory disclaimer, disclaiming claims 1–36 of the ’957 patent. Ex. 2008. Under our rules, “[n]o inter partes review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e); see Gen. Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (explaining how Rule 42.107(e) operates in the case of a pre-institution disclaimer of all claims) (precedential). Because we cannot institute trial on disclaimed claims and Patent Owner has disclaimed all of the challenged claims, we do not institute an inter partes review of claims 1–36. III. ORDER Accordingly, it is: ORDERED that the Petition is denied as to the challenged claims of the ʼ957 patent; and FURTHER ORDERED that no inter partes review is instituted.” slip op. at 2
Discretionary denialPatents in suitUS 8,577,957 - Google LLC v. Soverign Peak Ventures, LLCInstitution deniedPTAB · Oct 1, 2021 · IPR2021-00806 · APJ Garth D Baer · IPR · Institution
The Board denied institution on claims 1–3 because Patent Owner disclaimed all claims of the ’903 patent.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDenied
“We agree with Patent Owner. Under our rules, “[n]o inter partes review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e). Because we cannot institute trial on disclaimed claims, we do not institute an inter partes review of claims 1–3.” slip op. at 2
Discretionary denialPatents in suitUS 9,747,903
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.