• A123 Systems, LLC v. Long Hua Technology Co., Ltd.Institution denied
  PTAB · Apr 15, 2022 · IPR2022-00026 · APJ Kristina M Kalan · IPR · Institution

  The Board denied institution because the Patent Owner recorded a compliant statutory disclaimer of all challenged claims 1–19.

  RulingsInstitution decision

  • Adverse judgmentAdverse judgmentOther

    “[§] 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) (2019). 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:” slip op. at 5

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “To institute inter partes review, we must determine that the information presented in the Petition shows “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). For the reasons discussed below, we decline to institute inter partes review.” slip op. at 2

  Discretionary denial
  Patents in suitUS 8,034,480
• Ocean Tomo, LLC v. Patent Ratings, LLCInstitution denied
  PTAB · Jan 26, 2016 · CBM2015-00157 · APJ Peter P Chen · CBM · Institution

  The Board denied institution of CBM review of claims 1, 9, 16, 18–25, 34, 49, 50–52, and 57 because Ocean Tomo failed to establish standing.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied rpiInstitution denied

    “must set forth the petitioner’s grounds for standing. 37 C.F.R. § 42.304(a). Rule 42.304(a) states it is Petitioner’s burden to “demonstrate that the patent for which review is sought is a covered business method patent, and that the petitioner meets the eligibility requirements of § 42.302.” Id.” slip op. at 3

  • PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiDenied

    “this issue, and agree with Patent Owner. This case is factually distinguishable from MedImmune for the reasons described by Patent Owner. We are not persuaded any of the evidence herein sufficiently demonstrates a charge by Patent Owner of Petitioner’s infringement of the ’849 patent. For example, the parties’ amended pleadings in the Illinois action total 15 causes of action, spanning 71 pages and 280 paragraphs of allegations, yet there is no mention of the ’849 patent, or patent infringement, or non-infringement of patents, or charges of patent infringement. Exs. 1004, 1005. The parties’ contract, tort, and related causes of action concern and arise from the fractured employment and business relationship between Petitioner and Mr. Barney and Patent Owner, not from charges of infringement of the ’849 patent.” slip op. at 9

  Discretionary denial
  Patents in suitUS 9,075,849

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.