- Wolfspeed, Inc. v. The Trustees Of Purdue UniversityInstitution deniedPTAB · Nov 1, 2022 · IPR2022-00854 · APJ Jeffrey W Abraham · IPR · Institution
The Board denied institution because the Patent Owner disclaimed all challenged claims in compliance with the statutory requirements.
RulingsInstitution decision- Adverse judgmentAdverse judgmentOther
“A disclaimer under 35 U.S.C. § 253(a) is “considered as part of the original patent” as of the date on which it is “recorded” in the U.S. Patent and Trademark Office (“Office”). 35 U.S.C. § 253(a). For a disclaimer to be “recorded” in the Office, the document filed by the patent owner must: (1) Be signed by the patentee, or an attorney or agent of record; (2) Identify the patent and complete claim or claims, or term being disclaimed. A disclaimer which is not a disclaimer of a complete claim or claims, or term will be refused recordation;” slip op. at 7
Discretionary denialPatents in suitUS 8,035,112 - Stmicroelectronics, Inc. v. The Trustees Of Purdue UniversityInstitution deniedPTAB · Nov 1, 2022 · IPR2022-00724 · APJ Jeffrey W Abraham · IPR · Institution
The Board denied institution because Patent Owner disclaimed all challenged claims 2–5, 8, 9, and 13–16 in compliance with the statutory requirements.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDenied
“Here, Patent Owner filed a statutory disclaimer of claims 1–16 of the ’112 patent, which includes the challenged claims. Prelim. Resp. 1; Ex. 2001. Based on our review of Exhibit 2001 and Office public records, we conclude that a disclaimer of claims 1–16 of the ’112 patent under 35 U.S.C. § 253(a) was filed with the Office as of September 29, 2021. Based on the information in the public record, we find that the disclaimer complies with the above-listed requirements of 37 C.F.R. § 1.321(a). Because all challenged claims have been disclaimed under 35 U.S.C. § 253(a), in compliance with 37 C.F.R. § 1.321(a), no inter partes review is instituted in this proceeding. 37 C.F.R. § 42.107(e); General Electric Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential) (declining to institute inter partes review when all challenged claims were disclaimed under 35 U.S.C. § 253(a)). Patent Owner acknowledges that we should deny institution on this threshold procedural ground. Prelim. Resp. 1.” slip op. at 7
Discretionary denialPatents in suitUS 8,035,112 - Trend Micro Inc. v. Cupp Computing AsInstitution deniedPTAB · Jan 19, 2022 · PGR2021-00101 · APJ Garth D Baer · PGR · Institution
The Board denied post-grant review of claims 1, 7, 9, 16, 22, and 24 because the patent is not eligible for PGR as a pre-AIA patent.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Act (“AIA”)5 apply only to AIA patents, which are patents that have an effective filing date on or after March 16, 2013. See AIA §§ 3(n)(1); 6(f)(2)(A). Pre-AIA patents—those with effective filing dates before March 16, 2013—are not eligible for post-grant review.” slip op. at 6
Discretionary denialPatents in suitUS 10,951,632 - Trend Micro Inc. v. Cupp Computing AsInstitution deniedPTAB · Jan 19, 2022 · PGR2021-00100 · APJ Thomas L Giannetti · PGR · Institution
The Board denied post-grant review of claims 1, 9, 16, and 24 because the patent is pre-AIA and ineligible for post-grant review.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“III. ELIGIBILITY FOR POST-GRANT REVIEW The post-grant review provisions of the Leahy-Smith America Invents Act (“AIA”)4 apply only to AIA patents, which are patents that have an effective filing date on or after March 16, 2013. See AIA §§ 3(n)(1); 6(f)(2)(A). Pre-AIA patents—those with effective filing dates before March 16, 2013—are not eligible for post-grant review.” slip op. at 5
Discretionary denialPatents in suitUS 10,951,632 - Sattler Tech Corporation v. Yaqi LyuInstitution deniedPTAB · Dec 9, 2021 · PGR2021-00095 · APJ Scott A Daniels · PGR · Institution
The Board denied institution of PGR challenging the sole claim because Sattler had filed a civil action challenging that claim’s validity before filing the petition.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“Sattler filed this Petition for post grant review of the ’645 patent on June 9, 2021. Approximately two months prior, on April 15, 2021, Sattler filed the Virginia lawsuit seeking a declaratory judgment that the claim of the ’645 patent is invalid based on prior art sales and activity prior to October 18, 2019. See Ex. 3002; see also Ex. 3001 ¶¶ 15, 25(a). Because the Board may not institute a post grant review of a challenged patent when the petitioner filed a civil action challenging the validity of a claim of the patent before the date on which the petition for review is filed, we deny the Petition in all respects. See 35 U.S.C. § 325(a)(1).” slip op. at 3
- BurdenDenied
“Sattler filed this Petition for post grant review of the ’645 patent on June 9, 2021. Approximately two months prior, on April 15, 2021, Sattler filed the Virginia lawsuit seeking a declaratory judgment that the claim of the ’645 patent is invalid based on prior art sales and activity prior to October 18, 2019. See Ex. 3002; see also Ex. 3001 ¶¶ 15, 25(a). Because the Board may not institute a post grant review of a challenged patent when the petitioner filed a civil action challenging the validity of a claim of the patent before the date on which the petition for review is filed, we deny the Petition in all respects. See 35 U.S.C. § 325(a)(1).” slip op. at 3
Discretionary denial - 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 - 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
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.