- 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 - 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
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.