- 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 - 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 - Cme Group, Inc. v. Volatility Partners, LLCInstitution deniedPTAB · Mar 28, 2017 · CBM2016-00024 · APJ Trenton A Ward · CBM · Institution
The Board denied institution of CBM review of claims 1–50 because CME Group failed to establish standing to file the petition.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied rpiInstitution denied
“In accordance with 37 C.F.R. § 42.302(a), the Petitioner bears the burden of establishing “petitioner has been sued for infringement of the patent or has been charged with infringement under that patent.” Based on the record before us, and for purposes of this Decision, we determine the information presented in the Petition and supporting evidence does not establish that Petitioner had standing to file the Petition.” slip op. at 11
- PTAB / AIA Trials › Real party in interest / privityDenied
“Here, we determine that Petitioner fails to sufficiently establish an “adverse legal interest” by failing to identify an underlying cause of action that Patent Owner could have brought or threatened to bring. First, Petitioner has not sufficiently established that the License Agreement covers the ’RE435 patent. The License Agreement licenses “the inventions claimed in the [’184 patent]” (Ex. 1004, 2). None of the claims in the original ’184 patent was confirmed during the prosecution of the reissue application, as only claim 1 from the ’184 patent was maintained in the reissue application, and this claim was amended during the prosecution of the reissue application. See Ex. 1003, 26–40, 176–182, 189–203. Therefore, Petitioner fails to establish sufficiently how any of “the inventions claimed in the ’184 patent” are currently claimed in the ’RE435 patent.” slip op. at 8
Discretionary denial - Twilio Inc. v. Telesign CorporationInstitution deniedPTAB · Feb 27, 2017 · CBM2016-00099 · APJ Justin T Arbes · CBM · Institution
The Board denied institution on all challenged claims because the patent did not qualify as a covered business method patent.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“For the foregoing reasons, based on the record presented and particular facts of this proceeding, Petitioner has not established that the ’792 patent claims a method or apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service. Therefore, the ’792 patent does not qualify as a “covered business method patent” under § 18(d)(1) of the AIA, and we do not institute a covered business method patent review on any of the asserted grounds as to any of the challenged claims. III. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied as to all challenged claims of the ’792 patent.” slip op. at 14
- BurdenDecided for patent owner
“For the foregoing reasons, based on the record presented and particular facts of this proceeding, Petitioner has not established that the ’792 patent claims a method or apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service. Therefore, the ’792 patent does not qualify as a “covered business method patent” under § 18(d)(1) of the AIA, and we do not institute a covered business method patent review on any of the asserted grounds as to any of the challenged claims.” slip op. at 14
Discretionary denialPatents in suitUS 9,300,792 - Motorola Mobility LLC v. Intellectual Ventures I LLCInstitution deniedPTAB · Feb 9, 2016 · CBM2015-00174 · APJ Jeffrey W Abraham · CBM · Institution
The Board denied institution because the petitioner did not show that the ’144 patent qualifies as a covered business method patent.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“2. Analysis Under § 18(a)(1)(E) of the AIA, the Board may institute a transitional proceeding only for a patent that is a CBM patent. Section 18(d)(1) of the AIA defines the term “covered business method patent” to mean “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.” For purposes of determining whether a patent is eligible for a covered business method patent review, the focus is on what the patent claims. See 37 C.F.R. § 42.301(a), definition of CBM patent; see also 77 Fed. Reg. 48,734, 48,736 (Aug. 14, 2012), Response to Comments on Notice of Proposed Rulemaking, response to comment 8. A patent need have only one claim directed to a covered business method to be eligible for review. See Transitional Program for Covered Business Method Patents—Definitions of Covered Business Method Patent and Technological Invention; Final Rule, 77 Fed. Reg. at 48,736.” slip op. at 9
- BurdenDecided for patent owner
“To that end, Petitioner does not explain adequately, and we are unable to discern, how any of the independent or dependent claims of the ’144 patent recite a method or apparatus “for performing data processing or other operations used in the practice, administration, or management of a financial product or service.” On their face, the claims of the ’144 patent are directed to a general method or corresponding apparatus for transferring files from a first device to a second device, and we are unable to identify specifically any claim terms that could be considered “financial in nature.” In view of this, we agree with Patent Owner that the claims, at least facially, relate to “technologies common in business environments that have no particular relation to the financial services sector.” Prelim. Resp. 10.” slip op. at 10
Discretionary denialPatents in suitUS 7,810,144
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.