• Microsoft Corporation v. Litl, LLCInstitution denied
  PTAB · 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 denial
  Patents in suitUS 8,577,957
• Sanofi-Aventis U.S. LLC / Sanofi-Aventis Deutschland GmbH v. Astrazeneca Pharmaceuticals LP And Amylin Pharmaceuticals, LLCInstitution denied
  PTAB · 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 denial
  Patents 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.