- 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 - 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 - 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 - 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.