- Arun Agarwal v. Sachin JhunjhunwalaInstitution deniedPTAB · Sep 17, 2021 · PGR2021-00071 · APJ Wesley B Derrick · PGR · Institution
The Board denied institution of PGR on claims 1–2 because the Petition did not identify its grounds and supporting evidence with the required particularity.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 322(a)(3); 37 C.F.R. § 42.204(b). Our reviewing court, in the context of inter partes review, describes this particularity requirement as “of the utmost importance.” Intelligent Bio- Sys., 821 F.3d at 1369. Further, our rules require that each petition include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” 37 C.F.R. § 42.22(a)(2).” slip op. at 13
Discretionary denialPatents in suitUS 10,689,782 - Facebook, Inc. / Instagram, LLC v. Skky LLCInstitution deniedPTAB · Jul 13, 2017 · IPR2017-00641 · APJ Christopher G Paulraj · IPR · Institution
The Board denied institution because the patent owner disclaimed all challenged claims.
RulingsInstitution decision- Adverse judgmentInstitution denied discretionary otherInstitution denied
“A patentee may “make disclaimer of any complete claim . . . . Such disclaimer shall be in writing, and recorded in the Patent and Trademark Office; and it shall thereafter be considered as part of the original patent.” 35 U.S.C. § 253(a). When a patent owner files a statutory disclaimer with its preliminary response, “[n]o inter partes review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e).” slip op. at 2
Discretionary denialPatents in suitUS 9,203,956 - Google Inc. v. Alfonso Cioffi, Megan Elizabeth Rozman, Melanie Ann Rozman, And Morgan Lee RozmanInstitution deniedPTAB · May 2, 2017 · CBM2017-00010 · APJ Brian J Mcnamara · CBM · Institution
The Board denied institution because the ’528 Patent does not qualify for covered business method review; its claims are not directed to a financial activity.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We perceive no “issue of material fact” that should be resolved in favor of the Petitioner at the institution stage. Pet. Supp. Brief 3. Although the Petition discusses the construction of several claim terms, none of the proposed interpretations includes any reference to features that are related to internet banking or any other feature that is financial in nature. See Pet. 29 (e.g., proposing that “web browser process” be construed as a “process that can access data on websites” in which “this ‘access’ to website data can be direct or indirect”). In short, none of the claims of the ’528 Patent is “directed to” a financial activity on its face, and we do not read any such financial activity into them based on the Specification’s assertion that malware protection could be useful in internet banking. Thus, we are not persuaded that the ’528 Patent qualifies for covered business method patent review.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther
“We agree that the parties’ proposed constructions are consistent with the Specification of the ’528 Patent and, in that context, are the broadest reasonable interpretations of the terms. Therefore, to the extent that claim constructions are relevant to this Decision, we adopt the proposed constructions. Citing the claim construction order entered by the district court in co- pending litigation, Petitioner proposes we construe the term “system file” in claims 21, 44, and 64 to be synonymous with a “critical file” or “critical system file,” which refers to files required for the proper operation of the computer’s systems. Pet. 27–28 (citing Ex. 1012). Patent Owner does not propose a specific construction. We agree that Petitioner’s proposed construction is broadest reasonable interpretation consistent with the specification of the ’528 Patent and we adopt it in this proceeding to the extent that claim constructions are relevant to this Decision.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingOther
“The parties also agree that the preamble of claim 64 is limiting. Pet. 29–30; Prelim. Resp. 15. The preamble of claim 64 recites specific features of the claimed computer program product, e.g., that the stored code is capable of executing instructions using a common operating system having at least one electronic data processor coupled to other elements in a specific way.” slip op. at 7
Claim constructionDiscretionary denial - Facebook, Inc. / Instagram, LLC v. Skky, LLCInstitution deniedPTAB · Apr 12, 2017 · CBM2017-00002 · APJ William V Saindon · CBM · Institution
The Board denied institution because claims 8 and 10–14 did not make the patent eligible for CBM review; claims 1–7 and 9 had been disclaimed.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“patent review “shall be regarded as, and shall employ the standards and procedures of, a post-grant review” with certain exceptions not relevant here. Under 35 U.S.C. § 324(a), a post-grant review cannot be “instituted unless the Director determines that the information presented in the petition. . . would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.”” slip op. at 2
- Adverse judgmentAdverse judgmentOther
“Resp. 5 (citing Ex. 2001); Pet. Prelim. Reply (addressing the disclaimer); PO Sur-Reply (replying to Pet. Prelim. Reply). Patent Owner argues that for the purpose of determining whether or not to institute a CBM proceeding, the Board must treat disclaimed claims “as never having existed.” Prelim. Resp. 5–6 (citing Great West Cas. Co. v. Intellectual Ventures II LLC, Case CBM2015-00171, slip op. at 7 (PTAB Feb. 9, 2016) (Paper 10)).” slip op. at 8
Discretionary denialPatents in suitUS 9,203,870
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.