- Samsung Electronics America, Inc. v. Uniloc 2017 LLCInstitution deniedPTAB · Apr 1, 2020 · IPR2020-00046 · APJ Kristen L Droesch · IPR · Institution
The Board denied institution of review of claims 1–5 and 9 because the Petition failed to identify required corresponding structure and did not explain how the prior art applied under its asserted construction.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“Thus, if we were to proceed now on allegedly incorrect “assumed” constructions (i.e., corresponding structure is a microprocessor executing software that performs the functions), but ultimately agree with Petitioner’s proposed constructions (i.e., corresponding structure requires special programming or an algorithm for performing the function), we would be put in the position of attempting to apply prior art to claims that might not be amenable to construction, and without Petitioner telling us how the art should be applied in that circumstance. In such an event, “the proper course for the Board to follow, if it cannot ascertain the scope of a claim with reasonable certainty for purposes of assessing patentability, is to decline to institute the IPR or, if the indefiniteness issue affects only certain claims, to conclude that it could not reach a decision on the merits with respect to whether petitioner had established the unpatentability of those claims under sections 102 or 103.” Samsung Elecs. Am., Inc. v. Prisua Eng’g Corp., 948 F.3d 1342, 1353 (Fed. Cir. 2020). Institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). We exercise our discretion and decline Petitioner’s invitation to adopt allegedly incorrect claim constructions and institute an inter partes review on the basis of those constructions.” slip op. at 10
- BurdenDenied
“Although Petitioner asserts that aside from the “transceiver means for . . .” and “antenna means for . . . ,” the corresponding structure for each of the claimed means-plus-function limitations requires special programming (see Pet. 8), Petitioner does not direct us to disclosure of special programming or an algorithm in the ’522 Patent Specification (see Pet. 10). Therefore, with respect to at least the “ranking means for determining a rank representative of the station’s suitability for acting as master in the network using performance characteristics of the antenna means in view of its local environment,” recited in independent claims 1 and 3 and all other challenged claims, which depend therefrom, the Petition fails to comply with 37 C.F.R. § 42.104(b)(3).” slip op. at 7
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Other
“Petitioner asserts that there are several means-plus-function limitations recited in the challenged claims, specifically “transceiver means for . . . ,” “antenna means for . . . ,” “control means for . . . ,” “ranking means . . . ,” comparison means . . . ,” “master transfer means . . . ,” and “inquiry means . . .”. See Pet. 8–11. The use of the word “means” in a claim element creates a rebuttable presumption that 35 U.S.C. § 112 ¶ 64 applies. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part). Accordingly, we presume that each of the aforementioned means-plus-function limitations recited in claims 1–5 and 9 should be construed to cover the corresponding structure described in the specification and equivalents thereof. See 35 U.S.C. § 112 ¶ 6.” slip op. at 5
Claim constructionDiscretionary denialcites PhillipsPatents in suitUS 6,980,522 - LG Electronics, Inc. v. Core Wireless Licensing S.A.R.L.Institution deniedPTAB · Mar 24, 2016 · IPR2015-01987 · APJ David C Mckone · IPR · Institution
The Board denied institution for claims 16–28 because the petition did not show a reasonable likelihood of prevailing on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“any explanation as to why a person of ordinary skill in the art would come to the conclusion that the priority field of a Packet Resource Request is a requested quality of service parameter for a TBF.” Prelim. Resp. 12. We agree. Petitioner’s only support for this argument is the testimony of Dr. Fuja who states, in conclusory fashion, and without citation to evidence, that “[a person of ordinary skill in the art] would recognize that in the context of a connection in the form of a TBF the PRIORITY field is a requested quality of service parameter that is part of request messages communicated by a mobile station to a decision making device.” Ex. 1009 ¶ 76. Dr. Fuja’s testimony includes little persuasive evidence or reasoning. Accordingly, we assign it little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). On this record, Petitioner is not reasonably likely to show that GSM 04.60’s description of establishment of a TBF teaches a request message “indicating at least one requested quality of service parameter associated with the requested communication connection,” as recited in claim 16. Each of independent claims 20, 24, and 25 includes a limitation substantially similar to claim 16’s “indicating at least one requested quality of service parameter associated with the requested communication connection.” For the same reasons, GSM 04.06’s disclosure of TBF establishment does not teach these similar limitations of claims 20, 24, and 25.” slip op. at 12
- BurdenNot shown unpatentable
“We agree with Patent Owner. Claim 16 requires that the apparatus be encoded to receive from a decision making device “a channel coding scheme corresponding to said at least one quality of service parameter.” Thus, Petitioner must show that the Channel Coding Command corresponds to the QoS Information Element, or its sub-fields, identified as the at least one quality of service parameter. Petitioner’s only identified evidence of such a correspondence is Dr. Fuja’s testimony that: A POSITA would understand that the channel coding scheme that is included in the CHANNEL_CODING_COMMAND as part of the PACKET UPLINK ASSIGNMENT and the Packet Uplink Ack/Nack message is selected by the network to satisfy the QoS Profile that was negotiated during the PDP context activation procedure under the existing channel conditions. Ex. 1009 ¶ 81. As Patent Owner argues (Prelim. Resp. 9), this testimony is conclusory and lacks any explanation as to why the Channel Coding Command is selected to satisfy the QoS profile. Prelim. Resp. 9. Aside from this conclusory statement, neither Petitioner nor Dr. Fuja points to any evidence that the selection of the Channel Coding Command of GSM 04.60 has any relationship to the QoS Information Element of GSM 03.60. Petitioner’s evidence and argument is insufficient to show that the Prior GSM/GPRS Specifications or Olofsson teach this limitation. Moreover, as explained above, Petitioner has not shown sufficiently that the Channel Coding Command is received from the SGSN, which Petitioner identifies as the “decision making device” of claim 16.” slip op. at 16
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Patent Owner responds that “neither Petitioner nor its declarant offer any explanation as to why a person of ordinary skill in the art would come to the conclusion that the priority field of a Packet Resource Request is a requested quality of service parameter for a TBF.” Prelim. Resp. 12. We agree. Petitioner’s only support for this argument is the testimony of Dr. Fuja who states, in conclusory fashion, and without citation to evidence, that “[a person of ordinary skill in the art] would recognize that in the context of a connection in the form of a TBF the PRIORITY field is a requested quality of service parameter that is part of request messages communicated by a mobile station to a decision making device.” Ex. 1009 ¶ 76. Dr. Fuja’s testimony includes little persuasive evidence or reasoning. Accordingly, we assign it little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“encoded to receive from a decision making device “a channel coding scheme corresponding to said at least one quality of service parameter.” Thus, Petitioner must show that the Channel Coding Command corresponds to the QoS Information Element, or its sub-fields, identified as the at least one quality of service parameter. Petitioner’s only identified evidence of such a correspondence is Dr. Fuja’s testimony that: A POSITA would understand that the channel coding scheme that is included in the CHANNEL_CODING_COMMAND as part of the PACKET UPLINK ASSIGNMENT and the Packet Uplink Ack/Nack message is selected by the network to satisfy the QoS Profile that was negotiated during the PDP context activation procedure under the existing channel conditions. Ex. 1009 ¶ 81. As Patent Owner argues (Prelim. Resp. 9), this testimony is conclusory and lacks any explanation as to why the Channel Coding Command is selected to satisfy the QoS profile. Prelim. Resp. 9. Aside from this conclusory statement, neither Petitioner nor Dr. Fuja points to any evidence that the selection of the Channel Coding Command of GSM 04.60 has any relationship to the QoS Information Element of GSM 03.60. Petitioner’s evidence and argument is insufficient to show that the Prior GSM/GPRS Specifications or Olofsson teach this limitation. Moreover, as explained above, Petitioner has not shown sufficiently that the Channel Coding Command is received from the SGSN, which Petitioner identifies as the “decision making device” of claim 16. We cannot conclude, on this record, that Petitioner is likely to show that the GSM/GPRS Specifications or Olofsson teach an apparatus encoded to “receive from said decision making device a channel coding scheme corresponding to said at least one quality of service parameter,” as recited in claim 16. The remaining independent claims have analogous limitations that Petitioner, for the same reasons, has failed to show in the Prior GSM/GPRS Specifications or Olofsson. Specifically, independent claim 20 recites “a receiver configured to receive from the network element, a channel coding scheme corresponding to said at least one quality of service parameter”; independent claim 24 recites “receive from said decision making device at least one of a channel coding and interleaving scheme corresponding to said at least one quality of service parameter”; and independent claim 25 recites “receiving from said decision making device a channel coding scheme corresponding to said at least one quality of service parameter.”” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · Graham - American Express Company / American Express Travel Related Services Company, Inc. v. Signature Systems, LLCInstitution deniedPTAB · Dec 28, 2015 · CBM2015-00153 · APJ Michael P Tierney · CBM · Institution
The Board denied institution for claims 1–16 because those originally issued claims had been cancelled or amended during reexamination; it did not reach the merits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We are persuaded that the particular facts of this proceeding counsel against institution. Our decision whether to institute a covered business method patent review must be based on the claims of the ’402 patent as it exists today. See 35 U.S.C. § 324(a). Petitioner challenged original claims 1–16, which Patent Owner has either cancelled or amended during ex parte reexamination. See Ex. 3001. Original claims 1–16, as challenged by Petitioner, no longer exist, and any decision as to the patentability of original claims 1–16 we might reach in this proceeding would be moot and purely advisory. We do not see how the efficient administration of the Office, or the just, speedy, and inexpensive resolution of every proceeding, would be secured by instituting a covered business method patent review in this proceeding. 37 C.F.R. § 42.1(b). In denying institution, we do not reach the merits of the unpatentability arguments in the Petition, and express no opinion on those arguments at this time. Furthermore, based on the current record, we agree with Patent Owner that Petitioner is not prejudiced as they may elect to file a new Petition directed to the amended claims.3” slip op. at 8
Discretionary denialPatents in suitUS 8,423,402 - PNC Bank, Na / Suntrust Bank v. Parus Holdings, Inc.Institution deniedPTAB · Nov 9, 2015 · CBM2015-00150 · APJ Bart A Gerstenblith · CBM · Institution
The Board denied institution for claims 1–18 because Petitioner did not show that the patent was eligible for covered business method review.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“for the creation of a transitional program for reviewing covered business method patents. “The Director may institute a transitional proceeding only for a patent that is a covered business method patent.” Pub. L. No. 112-29, § 18(a)(1)(E), 125 Stat. 284, 330 (Sept. 16, 2011). A “covered business method patent” is 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.” Id. § 18(d)(1), 125 Stat. at 331; accord 37 C.F.R. § 42.301(a) (providing the same definition of “covered business method patent”). “The petitioner must demonstrate that the patent for which review is sought is a covered business method patent.” 37 C.F.R. § 42.304(a).” slip op. at 9
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“discussed above, a teleconference was held with the parties on November 5, 2015. Petitioner and Patent Owner jointly request authorization to file a motion for termination under 35 U.S.C. § 327, the statute governing termination of instituted post-grant reviews due to settlement, but confirmed during the call that no written settlement agreement currently exists. The parties request that the proceedings terminate without estoppel, such that Petitioner can re-file the petitions upon completion of Federal Circuit review of the District Court’s ineligibility determination, if necessary. Patent Owner limits its agreement to Petitioner re-filing the same petitions. Effectively, the parties request that we stay these proceedings pending Federal Circuit review of the District Court’s decision. We deny the parties’ request. As explained below, the ’120 patent is not eligible for covered business method patent review. Deferring entering such a decision is inconsistent with our policy objective of “secur[ing] the just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1. We do not reach, and, thus, express no opinion on, eligibility of the claims of the ’120 patent under 35 U.S.C. § 101.” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“II. CLAIM CONSTRUCTION Although Petitioner presents constructions for several claim terms, no terms require express construction for purposes of this Decision.” slip op. at 9
Claim constructionDiscretionary denialPatents in suitUS 8,843,120 - PNC Bank, Na / Suntrust Bank v. Parus Holdings, Inc.Institution deniedPTAB · Nov 9, 2015 · CBM2015-00110 · APJ Bart A Gerstenblith · CBM · Institution
The Board denied both petitions and did not institute CBM review of claims 1–18 because Petitioner did not show the patent was eligible for CBM review.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“On this record, Petitioner has not introduced persuasive evidence to show that at least one claim of the ’120 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. Accordingly, Petitioner has not met its burden of demonstrating that the ’120 patent is eligible for covered business method patent review.” slip op. at 19
Discretionary denialPatents in suitUS 8,843,120 - Carfax, Inc. v. Red Mountain Technologies, LLCInstitution deniedPTAB · Oct 21, 2015 · CBM2015-00115 · APJ James A Worth · CBM · Institution
The Board denied institution of CBM review of claims 1–19 because Carfax lacked standing after the covenants not to sue eliminated a real and substantial controversy.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityInstitution denied
“We have examined the covenants-not-to-sue issued by Red Mountain to Progressive and Carfax on April 9 and 22, 2015, respectively. Ex. 1005; Ex. 2002. The language of the covenants-not-to-sue is broad. For example, the covenant to Carfax states that: Red Mountain, including any of its successors, predecessors, affiliates, subsidiaries, assigns, officers, directors and agents, hereby unconditionally and irrevocably promises and covenants that it will never assert the ’977 Patent against Carfax or any of Carfax’s customers, successors, predecessors, affiliates, subsidiaries, assigns, officers, and directors. This covenant not to sue shall forever serve as a bar to any attempt by Red Mountain (or anyone else) to assert the ’977 Patent against Carfax or any Carfax customer. Ex. 1005 ¶ 1. Based on this language and the timing of Red Mountain’s grants of the covenants-not-to-sue to Carfax and Progressive, we agree with Red Mountain that there was no “real and substantial controversy” regarding infringement when the Petition was filed on April 25, 2015. Accordingly, based on the record before us, we determine that Carfax had not been “charged with infringement” under 37 C.F.R. § 42.302(a), and therefore does not have standing to file the Petition.” slip op. at 6
Discretionary denialPatents in suitUS 8,731,977
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.