- Zimvie, Inc. / Zimmer Biomet Spine, Inc. v. Roger P. JacksonInstitution deniedPTAB · Feb 26, 2024 · IPR2023-01430 · APJ Ulrike W Jenks · IPR · Institution
The Board denied institution because Patent Owner statutorily disclaimed all challenged claims 1–22.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDenied
“Patent Owner has disclaimed all claims of the ’479 patent and paid the requisite fees. See Ex. 2001; see also 37 C.F.R. § 1.321 (setting forth requirements for statutory disclaimer). Accordingly, we deny institution of the requested inter partes review. See 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based on disclaimed claims.”); see also General Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential) (denying institution of inter partes review under rule 37 C.F.R. § 42.107(e) based on disclaimer) (“General Electric”). In the present instance, and consistent with Rule 42.107(e) and the Board’s precedential General Electric decision, we determine that a denial of 1 Petitioner has filed three additional inter partes review petitions against three related patents assigned to Patent Owner: IPR2023-01431 (U.S. Patent No. 10,548,641 B2), IPR2023-01432 (U.S. Patent No. 10,898,233 B2), and IPR2023-01433 (U.S. Patent No. 11,129,646 B2). Pet. 1. Petitioner additionally acknowledges that the’479 patent is subject to a pending lawsuit entitled Jackson v. ZimVie Inc., No. 1:22-cv-00891-RGA (D. Del. Filed June 30, 2022). Pet. 1. institution is sufficient to dispose of this case. Because the Board cannot institute trial on disclaimed claims and all the challenged claims have been disclaimed here, no inter partes review will be instituted.” slip op. at 2
Discretionary denialPatents in suitUS 8,911,479 - Apple Inc. v. Alivecor, Inc.Institution deniedPTAB · Nov 15, 2022 · IPR2022-01173 · APJ Jeffrey N Fredman · IPR · Institution
The Board denied institution because AliveCor disclaimed all challenged claims, claims 1–13.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDenied
“37 C.F.R. § 1.321(a); see also Vectra, 162 F.3d at 1382 (holding that a § 253 disclaimer is immediately “recorded” on the date that the Office receives a disclaimer meeting requirements of 37 C.F.R. § 1.321(a) and that no further action is required in the Office). “No inter partes review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e); see also General Electric Co. v. United Techs. Corp., IPR2017-00491, Paper 9 at 3 (PTAB July 6, 2017) (precedential). is, the USPTO Patent Application Information Retrieval (PAIR) database containing the image file wrappers and other information for the ’175 patent), we conclude that a disclaimer of claims 1–13 of the ’175 patent under 35 U.S.C. § 253(a) has been recorded in the Office as of October 11, 2022. Exhibit 2001, a copy of the filed disclaimer, is signed by Patent Owner’s attorney of record, Abhijit P. Adisesh. Ex. 2001, 1. Exhibit 2001 also identifies the ’175 patent; identifies that all of the claims at issue in the petitions (claims 1–13) are disclaimed; and states that AliveCor, Inc. is the owner of 100% of the instant patent by virtue of an assignment recorded at Reel 049503 and Frame 0327. Id. The image file wrapper in PAIR for the ’175 patent includes a fee worksheet and receipt for the requisite fee filed with the disclaimer on October 11, 2022. Because Patent Owner filed a statutory disclaimer in compliance with 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a) disclaiming all the claims of the ’175 patent, no inter partes review is instituted in this proceeding.” slip op. at 3
Discretionary denialPatents in suitUS 11,103,175 - Sanofi-Aventis U.S. LLC / Sanofi-Aventis Deutschland GmbH v. Astrazeneca Pharmaceuticals LP And Amylin Pharmaceuticals, LLCInstitution deniedPTAB · Jun 28, 2016 · IPR2016-00348 · APJ Sheridan K Snedden · IPR · Institution
The Board denied institution on all challenged claims because the Petition did not identify a sufficiently clear combination of references or explain how they rendered the claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Section 312 requires that a petition for inter partes review “identif[y], . . . with 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. § 312 (a)(3). Furthermore, our rules require a petition for inter partes review to (i) identify “[t]he specific statutory grounds under 35 U.S.C. [§] 102 or 103 on which the challenge to the claim is based and the patents or printed publications relied upon for each ground”; (ii) identify “[h]ow [each] construed claim is unpatentable under the statutory grounds identified”; (iii) “specify where each element of the claim is found in the prior art patents or printed publications relied upon”; and (iv) identify “the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(2), (4)–(5). Here, the Petition fails to explain sufficiently the specific combination of references it relies upon to satisfy these requirements.” slip op. at 5
- BurdenDenied
“Section 312 requires that a petition for inter partes review “identif[y], . . . with 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. § 312 (a)(3). Furthermore, our rules require a petition for inter partes review to (i) identify “[t]he specific statutory grounds under 35 U.S.C. [§] 102 or 103 on which the challenge to the claim is based and the patents or printed publications relied upon for each ground”; (ii) identify “[h]ow [each] construed claim is unpatentable under the statutory grounds identified”; (iii) “specify where each element of the claim is found in the prior art patents or printed publications relied upon”; and (iv) identify “the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(2), (4)–(5). Here, the Petition fails to explain sufficiently the specific combination of references it relies upon to satisfy these requirements.” slip op. at 5
Discretionary denialPatents in suitUS 7,297,761
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.