- PPC Broadband, Inc. v. Times Fiber Communications, Inc.Institution deniedPTAB · Oct 24, 2022 · IPR2022-00830 · APJ Frances L Ippolito · IPR · Institution
The Board denied institution of IPR on claims 1–14 and 16–21 because the Patent Owner effectively disclaimed all challenged claims.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDenied
“conclude a disclaimer of claims 1–14 and 16–21 of the ’632 Patent, under 35 U.S.C. § 253(a) has been recorded in the Office as of July 28, 2022. Ex. 2002. Vectra Fitness, Inc., 162 F.3d at 1382. The record shows that a completed Form PTO/SB/43 (“DISCLAIMER IN PATENT UNDER 37 CFR 1.321(a)”) was filed and received by the Office on that date. See Ex. 2002. The disclaimer form was signed by Lance D’Armico, Secretary for Patent Owner Times Fiber Communications, Inc. See Ex. 2002, 3; see also Ex. 2001 (recorded assignment of the challenged patent from Amphenol Corporation to Times Fiber Communications, Inc., executed on December 23, 2021). The form identifies Patent Owner as having a “100% Ownership Interest” in the ’632 Patent, and identifies claims 1–14 and 16– 21 as being disclaimed. See Ex. 2002, 3. The evidence also reflects payment of the required fee. See id. at 1, 4–5. We determine Patent Owner has met the requirements for an effective disclaimer under 35 U.S.C. § 253 and 37 C.F.R. § 1.321(a). In view of this disclaimer, and as consistent with 37 C.F.R. § 42.107(e) and the Board’s precedential General Electric decision, we determine a denial of institution is sufficient to dispose of this case. See Gen. Elec. Co., IPR2017-00491, Paper 9. Thus, we decline to institute an inter partes review.” slip op. at 4
Discretionary denialPatents in suitUS 10,913,632 - 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 - Samsung Electronics America, Inc. v. Uniloc 2017 LLCInstitution deniedPTAB · Apr 1, 2020 · IPR2020-00046 · APJ Kristen L Droesch · IPR · Institution
The Board denied institution of review of claims 1–5 and 9 because the Petition failed to identify required corresponding structure and did not explain how the prior art applied under its asserted construction.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“Thus, if we were to proceed now on allegedly incorrect “assumed” constructions (i.e., corresponding structure is a microprocessor executing software that performs the functions), but ultimately agree with Petitioner’s proposed constructions (i.e., corresponding structure requires special programming or an algorithm for performing the function), we would be put in the position of attempting to apply prior art to claims that might not be amenable to construction, and without Petitioner telling us how the art should be applied in that circumstance. In such an event, “the proper course for the Board to follow, if it cannot ascertain the scope of a claim with reasonable certainty for purposes of assessing patentability, is to decline to institute the IPR or, if the indefiniteness issue affects only certain claims, to conclude that it could not reach a decision on the merits with respect to whether petitioner had established the unpatentability of those claims under sections 102 or 103.” Samsung Elecs. Am., Inc. v. Prisua Eng’g Corp., 948 F.3d 1342, 1353 (Fed. Cir. 2020). Institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). We exercise our discretion and decline Petitioner’s invitation to adopt allegedly incorrect claim constructions and institute an inter partes review on the basis of those constructions.” slip op. at 10
- BurdenDenied
“Although Petitioner asserts that aside from the “transceiver means for . . .” and “antenna means for . . . ,” the corresponding structure for each of the claimed means-plus-function limitations requires special programming (see Pet. 8), Petitioner does not direct us to disclosure of special programming or an algorithm in the ’522 Patent Specification (see Pet. 10). Therefore, with respect to at least the “ranking means for determining a rank representative of the station’s suitability for acting as master in the network using performance characteristics of the antenna means in view of its local environment,” recited in independent claims 1 and 3 and all other challenged claims, which depend therefrom, the Petition fails to comply with 37 C.F.R. § 42.104(b)(3).” slip op. at 7
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Other
“Petitioner asserts that there are several means-plus-function limitations recited in the challenged claims, specifically “transceiver means for . . . ,” “antenna means for . . . ,” “control means for . . . ,” “ranking means . . . ,” comparison means . . . ,” “master transfer means . . . ,” and “inquiry means . . .”. See Pet. 8–11. The use of the word “means” in a claim element creates a rebuttable presumption that 35 U.S.C. § 112 ¶ 64 applies. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part). Accordingly, we presume that each of the aforementioned means-plus-function limitations recited in claims 1–5 and 9 should be construed to cover the corresponding structure described in the specification and equivalents thereof. See 35 U.S.C. § 112 ¶ 6.” slip op. at 5
Claim constructionDiscretionary denialcites PhillipsPatents in suitUS 6,980,522 - 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 - LG Electronics, Inc. v. Core Wireless Licensing S.A.R.L.Institution deniedPTAB · Mar 24, 2016 · IPR2015-01987 · APJ David C Mckone · IPR · Institution
The Board denied institution for claims 16–28 because the petition did not show a reasonable likelihood of prevailing on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“any explanation as to why a person of ordinary skill in the art would come to the conclusion that the priority field of a Packet Resource Request is a requested quality of service parameter for a TBF.” Prelim. Resp. 12. We agree. Petitioner’s only support for this argument is the testimony of Dr. Fuja who states, in conclusory fashion, and without citation to evidence, that “[a person of ordinary skill in the art] would recognize that in the context of a connection in the form of a TBF the PRIORITY field is a requested quality of service parameter that is part of request messages communicated by a mobile station to a decision making device.” Ex. 1009 ¶ 76. Dr. Fuja’s testimony includes little persuasive evidence or reasoning. Accordingly, we assign it little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). On this record, Petitioner is not reasonably likely to show that GSM 04.60’s description of establishment of a TBF teaches a request message “indicating at least one requested quality of service parameter associated with the requested communication connection,” as recited in claim 16. Each of independent claims 20, 24, and 25 includes a limitation substantially similar to claim 16’s “indicating at least one requested quality of service parameter associated with the requested communication connection.” For the same reasons, GSM 04.06’s disclosure of TBF establishment does not teach these similar limitations of claims 20, 24, and 25.” slip op. at 12
- BurdenNot shown unpatentable
“We agree with Patent Owner. Claim 16 requires that the apparatus be encoded to receive from a decision making device “a channel coding scheme corresponding to said at least one quality of service parameter.” Thus, Petitioner must show that the Channel Coding Command corresponds to the QoS Information Element, or its sub-fields, identified as the at least one quality of service parameter. Petitioner’s only identified evidence of such a correspondence is Dr. Fuja’s testimony that: A POSITA would understand that the channel coding scheme that is included in the CHANNEL_CODING_COMMAND as part of the PACKET UPLINK ASSIGNMENT and the Packet Uplink Ack/Nack message is selected by the network to satisfy the QoS Profile that was negotiated during the PDP context activation procedure under the existing channel conditions. Ex. 1009 ¶ 81. As Patent Owner argues (Prelim. Resp. 9), this testimony is conclusory and lacks any explanation as to why the Channel Coding Command is selected to satisfy the QoS profile. Prelim. Resp. 9. Aside from this conclusory statement, neither Petitioner nor Dr. Fuja points to any evidence that the selection of the Channel Coding Command of GSM 04.60 has any relationship to the QoS Information Element of GSM 03.60. Petitioner’s evidence and argument is insufficient to show that the Prior GSM/GPRS Specifications or Olofsson teach this limitation. Moreover, as explained above, Petitioner has not shown sufficiently that the Channel Coding Command is received from the SGSN, which Petitioner identifies as the “decision making device” of claim 16.” slip op. at 16
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Patent Owner responds that “neither Petitioner nor its declarant offer any explanation as to why a person of ordinary skill in the art would come to the conclusion that the priority field of a Packet Resource Request is a requested quality of service parameter for a TBF.” Prelim. Resp. 12. We agree. Petitioner’s only support for this argument is the testimony of Dr. Fuja who states, in conclusory fashion, and without citation to evidence, that “[a person of ordinary skill in the art] would recognize that in the context of a connection in the form of a TBF the PRIORITY field is a requested quality of service parameter that is part of request messages communicated by a mobile station to a decision making device.” Ex. 1009 ¶ 76. Dr. Fuja’s testimony includes little persuasive evidence or reasoning. Accordingly, we assign it little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“encoded to receive from a decision making device “a channel coding scheme corresponding to said at least one quality of service parameter.” Thus, Petitioner must show that the Channel Coding Command corresponds to the QoS Information Element, or its sub-fields, identified as the at least one quality of service parameter. Petitioner’s only identified evidence of such a correspondence is Dr. Fuja’s testimony that: A POSITA would understand that the channel coding scheme that is included in the CHANNEL_CODING_COMMAND as part of the PACKET UPLINK ASSIGNMENT and the Packet Uplink Ack/Nack message is selected by the network to satisfy the QoS Profile that was negotiated during the PDP context activation procedure under the existing channel conditions. Ex. 1009 ¶ 81. As Patent Owner argues (Prelim. Resp. 9), this testimony is conclusory and lacks any explanation as to why the Channel Coding Command is selected to satisfy the QoS profile. Prelim. Resp. 9. Aside from this conclusory statement, neither Petitioner nor Dr. Fuja points to any evidence that the selection of the Channel Coding Command of GSM 04.60 has any relationship to the QoS Information Element of GSM 03.60. Petitioner’s evidence and argument is insufficient to show that the Prior GSM/GPRS Specifications or Olofsson teach this limitation. Moreover, as explained above, Petitioner has not shown sufficiently that the Channel Coding Command is received from the SGSN, which Petitioner identifies as the “decision making device” of claim 16. We cannot conclude, on this record, that Petitioner is likely to show that the GSM/GPRS Specifications or Olofsson teach an apparatus encoded to “receive from said decision making device a channel coding scheme corresponding to said at least one quality of service parameter,” as recited in claim 16. The remaining independent claims have analogous limitations that Petitioner, for the same reasons, has failed to show in the Prior GSM/GPRS Specifications or Olofsson. Specifically, independent claim 20 recites “a receiver configured to receive from the network element, a channel coding scheme corresponding to said at least one quality of service parameter”; independent claim 24 recites “receive from said decision making device at least one of a channel coding and interleaving scheme corresponding to said at least one quality of service parameter”; and independent claim 25 recites “receiving from said decision making device a channel coding scheme corresponding to said at least one quality of service parameter.”” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · Graham - 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 - PNC Bank, Na / Suntrust Bank v. Parus Holdings, Inc.Institution deniedPTAB · Nov 9, 2015 · CBM2015-00150 · APJ Bart A Gerstenblith · CBM · Institution
The Board denied institution for claims 1–18 because Petitioner did not show that the patent was eligible for covered business method review.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“for the creation of a transitional program for reviewing covered business method patents. “The Director may institute a transitional proceeding only for a patent that is a covered business method patent.” Pub. L. No. 112-29, § 18(a)(1)(E), 125 Stat. 284, 330 (Sept. 16, 2011). A “covered business method patent” is 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.” Id. § 18(d)(1), 125 Stat. at 331; accord 37 C.F.R. § 42.301(a) (providing the same definition of “covered business method patent”). “The petitioner must demonstrate that the patent for which review is sought is a covered business method patent.” 37 C.F.R. § 42.304(a).” slip op. at 9
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“discussed above, a teleconference was held with the parties on November 5, 2015. Petitioner and Patent Owner jointly request authorization to file a motion for termination under 35 U.S.C. § 327, the statute governing termination of instituted post-grant reviews due to settlement, but confirmed during the call that no written settlement agreement currently exists. The parties request that the proceedings terminate without estoppel, such that Petitioner can re-file the petitions upon completion of Federal Circuit review of the District Court’s ineligibility determination, if necessary. Patent Owner limits its agreement to Petitioner re-filing the same petitions. Effectively, the parties request that we stay these proceedings pending Federal Circuit review of the District Court’s decision. We deny the parties’ request. As explained below, the ’120 patent is not eligible for covered business method patent review. Deferring entering such a decision is inconsistent with our policy objective of “secur[ing] the just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1. We do not reach, and, thus, express no opinion on, eligibility of the claims of the ’120 patent under 35 U.S.C. § 101.” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“II. CLAIM CONSTRUCTION Although Petitioner presents constructions for several claim terms, no terms require express construction for purposes of this Decision.” slip op. at 9
Claim constructionDiscretionary denialPatents in suitUS 8,843,120 - PNC Bank, Na / Suntrust Bank v. Parus Holdings, Inc.Institution deniedPTAB · Nov 9, 2015 · CBM2015-00110 · APJ Bart A Gerstenblith · CBM · Institution
The Board denied both petitions and did not institute CBM review of claims 1–18 because Petitioner did not show the patent was eligible for CBM review.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“On this record, Petitioner has not introduced persuasive evidence to show that at least one claim of the ’120 patent 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. Accordingly, Petitioner has not met its burden of demonstrating that the ’120 patent is eligible for covered business method patent review.” slip op. at 19
Discretionary denialPatents in suitUS 8,843,120
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.