- Apple Inc. v. Rfcyber Corp.Institution deniedPTAB · Mar 24, 2022 · PGR2022-00003 · APJ Patrick R Scanlon · PGR · Institution
The Board denied Apple’s untimely joinder motion and denied institution because the petition was filed outside the nine-month PGR filing period.
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“motion under§ 42.22, no later than one month after the institution date of any post-grant review for which joinder is requested.” 37 C.F.R. § 42.222(b). Petitioner’s Motion for Joinder was filed October 20, 2021, which is more than one month after the Board instituted post-grant review in the Google PGR on July 23, 2021. Petitioner, however, argues that special circumstances warrant that the Board exercise its discretion under 37 C.F.R. § 42.5 to waive the one-month joinder period. Mot. 3–6.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“B. Eligibility for Post-Grant Review under 35 U.S.C. § 321 Institution of post-grant review is barred when a petition is filed more than 9 months after the challenged patent is granted. 35 U.S.C. § 321(c). The ’046 patent issued on March 24, 2020 (see Ex. 1001, code (45)), and the Petition in this proceeding was accorded a filing date of October 20, 2021 (see Paper 1). Thus, the Petition was filed outside the 9-month statutory period for requesting post-grant review under § 321(c). Accordingly, in view of our decision to deny Petitioner’s Motion for Joinder, we deny the Petition because it was not filed within the time limit imposed under 35 U.S.C. § 321(c).” slip op. at 8
Discretionary denialPatents in suitUS 10,600,046 - Fitbit, Inc. v. Philips North America LLCInstitution deniedPTAB · Oct 30, 2020 · IPR2020-00782 · APJ Frances L Ippolito · IPR · Institution
The Board denied institution because Philips had recorded a statutory disclaimer of all challenged claims 15–17.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDenied
“Pursuant to 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. No inter partes review will be instituted based on disclaimed claims.” (Emphasis added.) A disclaimer under 35 U.S.C. § 253(a) shall be recorded in the Office, and is “considered as part of the original patent.” See 35 U.S.C. § 253(a).” slip op. at 5
Discretionary denialPatents in suitUS 6,976,958 - Apple Inc. / HTC Corporation et al. v. Invt Spe LLCInstitution deniedPTAB · Jan 15, 2020 · IPR2019-01574 · APJ Scott Raevsky · IPR · Institution
The Board denied institution because Patent Owner statutorily disclaimed challenged claims 16 and 19.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDenied
“the ’949 patent. Ex. 2001. Under 37 C.F.R. § 42.107(e), “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 “[n]o inter partes review will be instituted based on disclaimed claims.” A disclaimer under 35 U.S.C. § 253(a) is “considered as part of the original” slip op. at 2
Discretionary denialPatents in suitUS 7,339,949 - PTAB · Jan 31, 2018 · IPR2017-01777 · APJ Patrick R Scanlon · IPR · Adverse judgment
The Board denied institution because Patent Owner recorded a statutory disclaimer of all challenged claims.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentDenied
“Under 37 C.F.R. § 42.107(e), “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 “[n]o inter partes review will be instituted based on disclaimed claims.” A disclaimer under 35 U.S.C. § 253(a) is “considered as part of the original patent” once it is “recorded” in the Office. 35 U.S.C. § 253(a).” slip op. at 3
Discretionary denialPatents in suitUS 8,167,043 - 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 - Emnos USA Corp. v. Dunnhumby LimitedInstitution deniedPTAB · Dec 30, 2015 · CBM2015-00162 · APJ Timothy J Goodson · CBM · Institution
The Board denied institution on all challenged claims because the Petition did not establish that the ’246 patent qualifies as a covered business method patent.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have jurisdiction under 35 U.S.C. § 324. Pursuant to 35 U.S.C. § 324(a), the Director may not authorize a covered business method patent review unless the information in the petition, if unrebutted, “would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” As explained below, we do not institute a covered business method patent review because the Petition does not establish that the ’246 patent qualifies as a covered business method patent.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“remains deficient. The Petition relies on the Oracle Pro*C reference as disclosing the script template limitations of the independent claims, but as Patent Owner points out, the Petition does not present evidence establishing that Oracle Pro*C qualifies as a prior art printed publication. See Pet. 32– 34; Prelim. Resp. 50–53. Petitioner asserts that Oracle Pro*C “was published in 2002” but does not point to any specific evidence of its publication or public availability in 2002. Id. at 33. If Petitioner’s assertion is based on the “March 2002” statement that appears on the cover of the Oracle Pro*C reference, that statement is hearsay, and Petitioner does not argue that any hearsay exception or exclusion applies. See Ex. 1041, 1; see also ServiceNow, Inc. v. Hewlett-Packard Co., Case IPR2015-00716, slip op. at 16 (PTAB Aug. 26, 2015) (Paper 13) (“To the extent that Petitioner relies on the date on the face of each exhibit and the indications of availability of these references for download . . . for the truth of that information, and considering that Petitioner has not established that any hearsay exception or exclusion applies, we agree [that the statements are inadmissible hearsay].”). Petitioner also argues, with citation to the testimony of Dr. Smyth, that Oracle Pro*C is a reference used by programmers who develop applications in Oracle database environments. Pet. 33 (citing Ex. 1030 ¶ 57). However, neither the Petition nor Dr. Smyth explains how or when the specific Programmer’s Guide, Release 9.2 that Petitioner relies on as the Oracle Pro*C reference (Ex. 1041) was made available to skilled artisans. Because the Petition does not establish that Oracle Pro*C qualifies as prior art, Section VIII.B. of the Petition does not remedy the deficient showing in Section III.D. of the Petition on the first consideration of the technological” slip op. at 11
§ 102 anticipationDiscretionary denialPatents in suitUS 8,214,246 - Apple Inc. v. Contentguard Holdings, LLCInstitution deniedPTAB · Jul 10, 2015 · IPR2015-00446 · APJ Karl D Easthom · IPR · Institution
The Board denied institution because Apple did not show a reasonable likelihood that claims 1–18 were obvious over ABYSS and Denning, with or without Hartrick.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“C. Procedural Defects As a threshold matter, the Petition has several significant procedural defects. For instance, a petition for inter partes review must “identif[y], in writing and 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). According to 37 C.F.R. § 42.104(b)(4), a petition for inter partes review “must identify . . . [h]ow the construed claim is unpatentable under the statutory grounds” on which the petitioner challenges the claims, and “must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” Rule 42.104(b)(5) requires a petition to “identify[] specific portions of the evidence that support the challenge.” Similarly, 37 C.F.R. § 42.22(a)(2) states that each petition must include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” The Office Patent Trial Practice Guide suggests that parties requesting inter partes review should “avoid submitting a repository of all the information that a judge could possibly consider, and instead focus 12 on concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.” 77 Fed. Reg. 48,756, 48,763 (Aug. 14, 2012). We agree with the Patent Owner that the Petition fails to satisfy at least the rule requirements. See Prelim. Resp. 4–10. The Petition contains vague, nested string citations to broad swaths of the references, the Sherman Declaration, and internal cross-references to whole sections of the Petition. See, e.g., Pet. 48–49 (discussing the preamble of claim 1, and citing inter alia, “[Pet.] § IV.A.1, A.3; Ex. 1016 at 38–40, 43–45; Ex. 1013 at ¶ C18–22 and “Ex. 1016 at 38–40, 42, 49, 50; [Pet.] § IV.A.3–4; Ex. 1013 at ¶ C106– 26”).” slip op. at 12
- BurdenDenied
“defects. For instance, a petition for inter partes review must “identif[y], in writing and 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). According to 37 C.F.R. § 42.104(b)(4), a petition for inter partes review “must identify . . . [h]ow the construed claim is unpatentable under the statutory grounds” on which the petitioner challenges the claims, and “must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” Rule 42.104(b)(5) requires a petition to “identify[] specific portions of the evidence that support the challenge.” Similarly, 37 C.F.R. § 42.22(a)(2) states that each petition must include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” The Office Patent Trial Practice Guide suggests that parties requesting inter partes review should “avoid submitting a repository of all the information that a judge could possibly consider, and instead focus 12 on concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.” 77 Fed. Reg. 48,756, 48,763 (Aug. 14, 2012). We agree with the Patent Owner that the Petition fails to satisfy at least the rule requirements. See Prelim. Resp. 4–10. The Petition contains vague, nested string citations to broad swaths of the references, the Sherman Declaration, and internal cross-references to whole sections of the Petition. See, e.g., Pet. 48–49 (discussing the preamble of claim 1, and citing inter alia, “[Pet.] § IV.A.1, A.3; Ex. 1016 at 38–40, 43–45; Ex. 1013 at ¶ C18–22 and “Ex. 1016 at 38–40, 42, 49, 50; [Pet.] § IV.A.3–4; Ex. 1013 at ¶ C106– 26”).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“1. Insufficient Information for Graham Analysis A patent claim is unpatentable as obvious under 35 U.S.C. § 103(a) if “the differences between” the claimed subject matter and the prior art “are such that the subject matter, as a whole, would have been obvious at the time 17 the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).3 The legal conclusion of obviousness is resolved on the basis of underlying factual determinations, including (1) “the scope and content of the prior art,” (2) “differences between the prior art and the claims at issue,” (3) “the level of ordinary skill in the pertinent art,” and (4) any “secondary considerations,” or objective indicia, of nonobviousness. Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17–18 (1966). These underlying factual determinations “must be considered by the trier of fact” in an obviousness analysis. ATD Corp. v. Lydall, Inc., 159 F.3d 534, 546 (Fed. Cir. 1998). As Patent Owner points out, the Petition fails to identify sufficiently the differences between any claim of the ’956 patent and the asserted prior art references, ABYSS, Denning, and Hartrick. See Prelim. Resp. 6–7, 42–44; Pet. 22–60. Rather than address these differences, the Petition creates a hypothetical ABYSS-Denning system—based on how a person of ordinary skill in the art allegedly “would” or “could” do––in an “Operation of the Implemented System” analysis divorced from the language of the ’956 patent claims. See Pet. 39–42 (emphasis omitted). The Petition then argues, 3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), revised 35 U.S.C. § 103, effective March 16, 2013. Because the ’956 patent was filed before March 16, 2013, references and citations to § 103 in this Decision are to the pre-AIA version. 18 in conclusory fashion, that this hypothetical system meets each of the limitations of the claims. See id. at 48–60. This analysis—which compares the challenged claims to a hypothetical integrated system that allegedly implements elements of both ABYSS and Denning as well as the knowledge of one of ordinary skill in the art—obscures any comparison of the individual prior art references to the claim limitations. It does not explain with any particularity which claim limitations are absent from ABYSS or Denning. See Prelim. Resp. 6–7, 42–44. Therefore, the Petition fails to provide sufficient information regarding its proffered ground of unpatentability, and fails to present a proper Graham analysis as required to show that the challenged claims are unpatentable. Accordingly, we determine that the Petition does not show a reasonable likelihood that Petitioner would prevail in showing that the challenged claims would have been obvious over ABYSS and Denning. See Apple Inc. v. SmartFlash LLC, Case CBM2015-00029, slip op. at 16–18 (PTAB May 28, 2015) (denying institution of an asserted obviousness ground based on Petitioner’s failure to explain adequately any differences between the asserted prior art and the claimed invention); Liberty Mut. Ins. Co. v. Progressive Casualty Ins. Co., Case CBM2012-00003, slip op. at 3 (PTAB Oct. 25, 2012) (Paper 7) (representative) (“A petitioner who does not state the differences between a challenged claim and the prior art, and relies instead on the Patent Owner and the Board to determine those differences . .” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“2. Lack of Rationale to Combine and Improper Hindsight “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The reason for this is that “[w]hile the Supreme Court made clear that a mechanical application of the teaching-suggestion-motivation test, requiring an explicit teaching in the prior art, is inappropriate, ‘[w]e must still be careful not to allow hindsight reconstruction of references to reach the claimed invention without any explanation as to how or why the references would be combined to produce the claimed invention.’” Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368 (Fed. Cir. 2012) (quoting Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3 (Fed. Cir. 2008)); see also KSR , 550 U.S. at 421 (“A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”); Graham, 383 U.S. at 36 (warning against a “temptation to read into the prior art the teachings of the invention in issue” and instructing courts to “‘guard against slipping into use of hindsight’” (citation omitted)). Thus, “[c]are must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to 20 achieve the result of the claims in suit.’” Grain Processing Corp. v. Am. Maize–Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (quoting Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983)). As discussed above, Petitioner reads the claims onto a proposed hypothetical ABYSS-Denning system. See Pet. 38–60. Although Petitioner frames the hypothetical ABYSS-Denning system as created by four main modifications, each of these modifications includes what appear to be additional modifications about what the hypothetical system “could” do, which neither reference discloses, and which the Petition does not support with sufficient reasoning or citation. See Pet. 36–39 (modifications); see, e.g., Pet. 40–41 (reasoning that a “vendor could restrict distribution to processors that had a digital certificate issued by a particular authority,” and “[t]he vendor also could specify as a condition” further changes) (citing Pet. “§ IV.D.1; Ex. 1013 at ¶ C83–89, C113”). Considering the proposed changes together, which are devoid of a clear reference to claim limitations, the Petition lacks adequate reasoning, with rational underpinning, to show sufficiently that a person of ordinary skill would have combined the teachings of ABYSS and Denning to reach the hypothetical ABYSS- Denning system and render the claims obvious. In other words, the Petition fails to explain sufficiently why a person of ordinary skill would simultaneously make all of the particular proposed changes and implementation choices. Moreover, the mere fact that individual changes might have been obvious does not make doing all of the changes at once 21 obvious. See In re Irani, 427 F.2d 806, 809 (CCPA 1970) (“Obviousness, however, must not be judged by hindsight, and a ‘little modification’ can be a most unobvious one.”). The extent of the proposed modifications and the thin reasoning proffered for each modification suggests that the Petition improperly uses Patent Owner’s claims as a guide in constructing a system loosely based on ABYSS and Denning. See Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1355 (Fed. Cir. 2013) (“Where, as here, the necessary reasoning is absent, we cannot simply assume that ‘an ordinary artisan would be awakened to modify prior art in such a way as to lead to an obviousness rejection.’ It is in such circumstances, moreover, that it is especially important to guard against the dangers of hindsight bias.” (citation omitted)); see also W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1552 (Fed. Cir. 1983) (“The result is that the claims were used as a frame, and individual, naked parts of separate prior art references were employed as a mosaic to recreate a facsimile of the claimed invention. At no point did the district court, nor does Garlock, explain why that mosaic would have been obvious to one skilled in the art . . . .”). The Petition’s analysis, infected with impermissible hindsight, cannot form the basis of a proper obviousness finding. See KSR , 550 U.S. at 421 (“A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”); Graham, 383 U.S. at 36 (warning against a “temptation to 22 read into the prior art the teachings of the invention in issue” and instructing courts to “‘guard against slipping into use of hindsight’” (citation omitted)).” slip op. at 20
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,370,956
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.