• Apple Inc. / HTC Corporation et al. v. Invt Spe LLCInstitution denied
  PTAB · Jan 15, 2020 · IPR2019-01574 · APJ Scott Raevsky · IPR · Institution

  The Board denied institution because Patent Owner statutorily disclaimed challenged claims 16 and 19.

  RulingsInstitution decision

  • Adverse judgmentAdverse judgmentDenied

    “the ’949 patent. Ex. 2001. 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” slip op. at 2

  Discretionary denial
  Patents in suitUS 7,339,949
• Avigilon Corporation / Avigilon USA Corporation v. Canon Inc.Rehearing denied
  PTAB · Sep 17, 2019 · IPR2018-01626 · APJ Lynne E Pettigrew · IPR · Rehearing

  The Board denied Avigilon’s rehearing request and maintained denial of institution because § 315(a)(1) barred review after Avigilon’s earlier declaratory judgment action, despite its dismissal without prejudice.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. DISCUSSION The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id.” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied

    “designated as precedential the decision denying institution of inter partes review in Cisco Systems, Inc. v. Chrimar Systems, Inc., IPR2018-01511, Paper 11 (PTAB Jan. 31, 2019) (precedential). In that decision, the Board addressed the § 315(a)(1) bar in light of the Federal Circuit’s discussion of the § 315(b) time bar in Click-to-Call. See Cisco, Paper 11 at 5 n.1. The Board held in Cisco that § 315(a)(1) barred institution of an inter partes review even though an earlier civil action challenging the validity of a claim of the patent at issue had been voluntarily dismissed without prejudice. Id. at 8. Cisco is binding precedent in the present case, which involves the same issue of statutory interpretation applied to similar facts. See Patent Trial and Appeal Board Standard Operating Procedure 2 (rev. 10) § III.D. Thus, pursuant to the ruling in Cisco, § 315(a)(1) bars institution of an inter partes review of the ’864 patent based on the Petition in this case. Petitioner, therefore, has not shown that our Decision should be modified, and accordingly we deny Petitioner’s Request for Rehearing.” slip op. at 3

  Discretionary denial
  Patents in suitUS 7,034,864

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.