- 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 - Apple Inc. / HTC Corporation et al. v. Invt Spe LLCInstitution deniedPTAB · 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 denialPatents in suitUS 7,339,949 - Alarm.Com Inc. v. Vivint, Inc.Institution deniedPTAB · Jan 20, 2016 · IPR2015-02008 · APJ Michael R Zecher · IPR · Institution
The Board denied institution of inter partes review because the patent owner statutorily disclaimed all challenged claims, 19–21.
RulingsInstitution decision- Adverse judgmentAdverse judgmentOther
“a preliminary response filed in response to a petition. Of particular importance to the circumstances presented here is sub-section (e), which provides that “[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. No inter partes review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e) (emphasis added). As we explained above, Vivint filed a Preliminary Response along with a statutory disclaimer that explicitly disclaims all of the claims challenged in this Preliminary Proceeding. Ex. 2001. We have reviewed this statutory disclaimer, and we are satisfied that it was filed under § 253(a) in compliance with § 1.321(a). Accordingly, because Vivint has disclaimed all of the claims challenged in this proceeding, no inter partes review may be instituted. IV. ORDER In consideration of the foregoing, it is ORDERED that no inter partes review is instituted.” slip op. at 2
Discretionary denialPatents in suitUS 6,924,727
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.