- Wiz, Inc. v. Orca Security Ltd.Institution deniedPTAB · May 5, 2025 · IPR2025-00092 · APJ Garth D Baer · IPR · Institution
The Board denied institution because Orca disclaimed all challenged claims 1–19 before institution.
RulingsInstitution decision- Adverse judgmentAdverse judgmentOther
“Under 37 C.F.R. § 42.107(e), “[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” and, if the statutory disclaimer is filed properly, “[n]o [IPR] will be instituted based on disclaimed claims.” A statutory disclaimer is “considered as part of the original patent” as of the date on which it is “recorded” in the USPTO. 35 U.S.C. § 253(a). “A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.” Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996); see also Raytheon Techs. Corp. v. General Elec. Co., 993 F.3d 1374, n.4 (Fed. Cir. 2021) (“Disclaimed claims are treated as if they never existed.”)” slip op. at 2
Discretionary denialPatents in suitUS 11,516,231 - PPC Broadband, Inc. v. Times Fiber Communications, Inc.Institution deniedPTAB · Oct 24, 2022 · IPR2022-00830 · APJ Frances L Ippolito · IPR · Institution
The Board denied institution of IPR on claims 1–14 and 16–21 because the Patent Owner effectively disclaimed all challenged claims.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDenied
“conclude a disclaimer of claims 1–14 and 16–21 of the ’632 Patent, under 35 U.S.C. § 253(a) has been recorded in the Office as of July 28, 2022. Ex. 2002. Vectra Fitness, Inc., 162 F.3d at 1382. The record shows that a completed Form PTO/SB/43 (“DISCLAIMER IN PATENT UNDER 37 CFR 1.321(a)”) was filed and received by the Office on that date. See Ex. 2002. The disclaimer form was signed by Lance D’Armico, Secretary for Patent Owner Times Fiber Communications, Inc. See Ex. 2002, 3; see also Ex. 2001 (recorded assignment of the challenged patent from Amphenol Corporation to Times Fiber Communications, Inc., executed on December 23, 2021). The form identifies Patent Owner as having a “100% Ownership Interest” in the ’632 Patent, and identifies claims 1–14 and 16– 21 as being disclaimed. See Ex. 2002, 3. The evidence also reflects payment of the required fee. See id. at 1, 4–5. We determine Patent Owner has met the requirements for an effective disclaimer under 35 U.S.C. § 253 and 37 C.F.R. § 1.321(a). In view of this disclaimer, and as consistent with 37 C.F.R. § 42.107(e) and the Board’s precedential General Electric decision, we determine a denial of institution is sufficient to dispose of this case. See Gen. Elec. Co., IPR2017-00491, Paper 9. Thus, we decline to institute an inter partes review.” slip op. at 4
Discretionary denialPatents in suitUS 10,913,632 - Google LLC v. Videoshare LLCInstitution deniedPTAB · Mar 24, 2021 · CBM2020-00027 · APJ Thomas L Giannetti · CBM · Institution
The Board denied institution of CBM review for claims 1–7 because the patent did not qualify as a covered business method patent; it did not reach the § 101 challenge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“covered business method patent review, the focus is on the claims. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1340 (Fed. Cir. 2016) (challenged patent eligible for review because the claims recited “an express financial component in the form of a subsidy” that was “central to the operation of the claimed invention”). Thus, “§ 18 (d)(1) directs us to examine the claims when deciding whether a patent is a CBM patent.” Blue Calypso, 815 F.3d at 1340. More specifically, the focus is on the claims to determine whether there is anything “explicitly or inherently financial in the construed claim language.” Id. The claims of the ’341 patent are directed to “[a] method for sharing video over a structured hierarchical network.” Ex. 1001, 25:14–15. We are not persuaded that this a financial activity. We agree with Patent Owner that the focus of the claims is video sharing technology. Prelim. Resp. 21. The claims describe a series of method steps for sharing video content involving servers and video files. Nowhere do the claims discuss or suggest obtaining payment or remuneration. Thus, the claims are unlike those in Blue Calypso, 815 F.3d 1331. In Blue Calypso, the claims expressly recited the term “subsidy,” which the Board construed as “financial assistance given by one to another.” Id. at 1339–40. The Federal Circuit explained that based on this understanding, the Board had concluded that the claims “were financial in nature” and instituted CBM review. Id. at 1340. The Federal Circuit agreed with the Board’s analysis and affirmed its decision to institute CBM patent review: “Significantly, Blue Calypso has not challenged the Board’s interpretation of subsidy as ‘financial assistance given by one to another.’” Id.” slip op. at 6
- BurdenDecided for patent owner
“covered business method patent review, the focus is on the claims. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1340 (Fed. Cir. 2016) (challenged patent eligible for review because the claims recited “an express financial component in the form of a subsidy” that was “central to the operation of the claimed invention”). Thus, “§ 18 (d)(1) directs us to examine the claims when deciding whether a patent is a CBM patent.” Blue Calypso, 815 F.3d at 1340. More specifically, the focus is on the claims to determine whether there is anything “explicitly or inherently financial in the construed claim language.” Id. The claims of the ’341 patent are directed to “[a] method for sharing video over a structured hierarchical network.” Ex. 1001, 25:14–15. We are not persuaded that this a financial activity. We agree with Patent Owner that the focus of the claims is video sharing technology. Prelim. Resp. 21. The claims describe a series of method steps for sharing video content involving servers and video files. Nowhere do the claims discuss or suggest obtaining payment or remuneration. Thus, the claims are unlike those in Blue Calypso, 815 F.3d 1331. In Blue Calypso, the claims expressly recited the term “subsidy,” which the Board construed as “financial assistance given by one to another.” Id. at 1339–40. The Federal Circuit explained that based on this understanding, the Board had concluded that the claims “were financial in nature” and instituted CBM review. Id. at 1340. The Federal Circuit agreed with the Board’s analysis and affirmed its decision to institute CBM patent review: “Significantly, Blue Calypso has not challenged the Board’s interpretation of subsidy as ‘financial assistance given by one to another.’” Id.” slip op. at 6
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Not reached
“E. Subject Matter Eligibility Under 35 U.S.C. § 101 Petitioner contends that the challenged claims are directed to an abstract idea that is not eligible subject matter for a patent under 35 U.S.C. § 101. Pet. 77. According to Petitioner, “[t]he claims recite the abstract idea of including advertising with appropriately formatted video.” Id. at 80. Patent Owner responds that Petitioner has failed to show that the claims recite ineligible subject matter. Prelim. Resp. 64. According to Patent Owner, “[t]he ’341 Patent claims recite specific steps that improve the functioning of a video server providing shared video files.” Id. Because we have determined that the ’341 patent does not qualify for covered business method patent review, we do not address whether the claims recite eligible subject matter under 35 U.S.C. § 101.” slip op. at 11
§ 101 eligibilityDiscretionary denialPatents in suitUS 10,362,341 - PTAB · Mar 4, 2021 · IPR2020-00344 · APJ Barry L Grossman · IPR · Rehearing
The Board denied rehearing and upheld denial of institution because Grounds 7, 8, 11, and 12 lacked particularity, justifying denial of the entire petition.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. REQUEST FOR REHEARING When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of 1 The PTAB E2E docket system correctly identifies the denial of POP review as Paper “11,” dated “October 26, 2020.” This document itself, however, incorrectly states that it is “Paper 10.” In fact, “Paper 10” in the PTAB E2E docket system for this IPR proceeding is Patent Owner’s “RESPONSE TO PETITIONER’S REQUEST FOR REHEARING,” filed on August 21, 2020 See Paper 10. We note that Patent Owner was not authorized to file this response. See Consolidated Office Patent Trial Practice Guide (“Consolidated Practice Guide”), November 2019, 90 (“The opposing party should not file a response to a request for rehearing absent a request from the Board.”). No such request was made by the Board. Accordingly, Paper 10 will be expunged from this record and will not be considered in deciding Petitioner’s Request for Rehearing. discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): (d) Rehearing. . . . The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). If an inter partes review is instituted, a final written decision under 35 U.S.C. § 318(a) must decide the patentability of all claims, and all grounds, asserted in the petition. SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Petition fails to identify with particularity what disclosure is relied on from each of the references in Grounds 7, 8, 11, and 12, how it would be combined with the other disclosures, and why the proposed combination would have been obvious to a person of ordinary skill in the relevant technology. Without any explanation as to what, how, and why the references would have been combined in Grounds 7, 8, 11, and 12, we, and the Patent Owner, are left to speculate as to the specific details of asserted unpatentability based on combining the references to arrive at the claimed invention. See Paper 7 (“Decision” or “Dec.”), 14 (citation omitted). We determined that “[t]he lack of particularity [in Grounds 7, 8, 11, and 12] infects the proceeding sufficiently that we do not institute an inter partes review.” Id. at 16–17.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“asserted unpatentability of the claims challenged in Grounds 7 and 8, and why it would have been obvious to combine selected disclosures from each of the three references. We have not been directed to any persuasive evidence that the Petition met this burden.” slip op. at 10
- Other 314aInstitution denied discretionary otherDenied
“Petition, “the Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” See, e.g., Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11, 6 (PTAB Mar. 20, 2020) (Precedential). Apple v. Fintiv was decided in the context of evaluating the factors related to a co-pending parallel district court proceeding. The same holistic view applies equally to situations where some claims meet the requirements for instituting a trial and some do not. While we consider the number of claims that fail to meet the statutory and other requirements to institute an inter partes review, as well as the number of claims that meet these requirements, there is no fixed threshold or ratio of claims that meet the requirements compared to those that do not meet the requirements that controls our determination, as suggested by Petitioner (see Req. Reh’g 2. The Patent and Trademark Office addressed this issue in its “SAS Q&As”, which stated: D3. Q: Will the Board institute a petition based on the percentage of claims and grounds that meet the reasonable likelihood standard, e.g., 50%? A: No. The Board does not contemplate a fixed threshold for a sufficient number of challenges for which it will institute. Instead, the panel will evaluate the challenges and determine whether, in the interests of efficient administration of the Office and integrity of the patent system (see 35 USC § 316(b)), the entire petition should be denied under 35 USC § 314(a). Ex. 3003, 8. As explained in our TPG, If a panel determines that a petition meets the standards for institution in relation to fewer than all the challenges presented, or where deficiencies in the petition (such as a failure to provide a construction under 35 U.S.C. § 112(f)) affect only a portion of the challenges presented, the panel will evaluate all the challenges and determine whether, in the interests of efficient administration of the Office and integrity of the patent system, the entire petition should be denied. TPG, 64. Where no trial is instituted, a decision to that effect will be provided, as was done in this proceeding. “The Board expects that the decision will contain a short statement as to why the standards were not met, although this may not be necessary in all cases.” Id. at 64–65.” slip op. at 20
§ 103 obviousnessDiscretionary denialPatents in suitUS 6,918,801 - Keeper Security, Inc. v. Cumberland Systems LLCInstitution deniedPTAB · Nov 20, 2017 · CBM2017-00057 · APJ Kevin W Cherry · CBM · Institution
The Board denied institution on claims 1–19 because Petitioner did not show that the patent qualified as a covered business method patent.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“We agree with Patent Owner that Petitioner has failed to show adequately that the ’647 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,” to qualify as a covered business method patent. As we explained above, Secure Axcess requires a challenged patent to “have a claim that contains . . . a financial activity element.” Secure Axcess, 848 F.3d at 1381 (emphasis added). Petitioner fails to point to any element of claims of the ’647 patent that it contends meets the “financial activity element” required by Secure Axcess. Instead, it merely points to statements in the specification regarding potential applications for the claimed cryptographic algorithm. At best, Petitioner argues that the claimed encryption method can be for financial matters, such as securing e-commerce transactions, but this is not sufficient after the Federal Circuit’s guidance in both Unwired Planet and Secure Axcess. See id. Petitioner has simply failed to identify anything in the claims that are financial in nature.” slip op. at 9
Discretionary denialPatents in suitUS 8,023,647 - 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 - 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
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.