- Arun Agarwal v. Sachin JhunjhunwalaInstitution deniedPTAB · Sep 17, 2021 · PGR2021-00071 · APJ Wesley B Derrick · PGR · Institution
The Board denied institution of PGR on claims 1–2 because the Petition did not identify its grounds and supporting evidence with the required particularity.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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. § 322(a)(3); 37 C.F.R. § 42.204(b). Our reviewing court, in the context of inter partes review, describes this particularity requirement as “of the utmost importance.” Intelligent Bio- Sys., 821 F.3d at 1369. Further, our rules require that each petition 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.” 37 C.F.R. § 42.22(a)(2).” slip op. at 13
Discretionary denialPatents in suitUS 10,689,782 - Google Inc. v. Alfonso Cioffi, Megan Elizabeth Rozman, Melanie Ann Rozman, And Morgan Lee RozmanInstitution deniedPTAB · May 2, 2017 · CBM2017-00010 · APJ Brian J Mcnamara · CBM · Institution
The Board denied institution because the ’528 Patent does not qualify for covered business method review; its claims are not directed to a financial activity.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We perceive no “issue of material fact” that should be resolved in favor of the Petitioner at the institution stage. Pet. Supp. Brief 3. Although the Petition discusses the construction of several claim terms, none of the proposed interpretations includes any reference to features that are related to internet banking or any other feature that is financial in nature. See Pet. 29 (e.g., proposing that “web browser process” be construed as a “process that can access data on websites” in which “this ‘access’ to website data can be direct or indirect”). In short, none of the claims of the ’528 Patent is “directed to” a financial activity on its face, and we do not read any such financial activity into them based on the Specification’s assertion that malware protection could be useful in internet banking. Thus, we are not persuaded that the ’528 Patent qualifies for covered business method patent review.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther
“We agree that the parties’ proposed constructions are consistent with the Specification of the ’528 Patent and, in that context, are the broadest reasonable interpretations of the terms. Therefore, to the extent that claim constructions are relevant to this Decision, we adopt the proposed constructions. Citing the claim construction order entered by the district court in co- pending litigation, Petitioner proposes we construe the term “system file” in claims 21, 44, and 64 to be synonymous with a “critical file” or “critical system file,” which refers to files required for the proper operation of the computer’s systems. Pet. 27–28 (citing Ex. 1012). Patent Owner does not propose a specific construction. We agree that Petitioner’s proposed construction is broadest reasonable interpretation consistent with the specification of the ’528 Patent and we adopt it in this proceeding to the extent that claim constructions are relevant to this Decision.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingOther
“The parties also agree that the preamble of claim 64 is limiting. Pet. 29–30; Prelim. Resp. 15. The preamble of claim 64 recites specific features of the claimed computer program product, e.g., that the stored code is capable of executing instructions using a common operating system having at least one electronic data processor coupled to other elements in a specific way.” slip op. at 7
Claim constructionDiscretionary denial - Apple Inc. v. Ameranth, Inc.Institution deniedPTAB · Sep 28, 2016 · CBM2016-00053 · APJ Kevin W Cherry · CBM · Institution
The Board denied Apple’s petition and did not institute CBM review because Apple failed to establish standing, including a real and immediate controversy concerning the ’060 patent.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“3. Analysis We agree with Patent Owner that Petitioner has failed to show sufficiently that it has standing to bring this covered business method patent review. Specifically, we agree with Patent Owner that Petitioner has not established sufficiently, at this time, that there is a real and immediate 8 controversy regarding the ’060 patent. An essential link in the logical chain of Petitioner’s allegations that it has standing is that the scope of the claims of the ’060 patent and the asserted claims of ’850 patent in the district court lawsuit are “substantially similar.” See Pet. 7–10. We agree, however, with Patent Owner that Petitioner has not shown adequately that the claims of the two patents are sufficiently similar. Although Petitioner contends that claim 13 of the challenged patent is similar in scope to claim 12 of the already asserted ’850 patent, it fails to provide any meaningful analysis to support its contention. Instead, it merely summarizes and lists certain similar claim limitations in the two claims without providing any discussion of the actual language of the identified limitations, the other limitations in the claims, and the claims as a whole.” slip op. at 8
- PTAB / AIA Trials › Real party in interest / privityDenied
“petitioner’s grounds for standing. 37 C.F.R. § 42.304(a). Rule 42.304(a) states it is Petitioner’s burden to “demonstrate that the patent for which review is sought is a covered business method patent, and that the petitioner meets the eligibility requirements of § 42.302.” Id. One of those eligibility requirements is that only persons (or their privies) who have been sued or charged with infringement under a patent are permitted to file a petition seeking a covered business method patent review of that patent. AIA § 18(a)(1)(B); 37 C.F.R. § 42.302(a). Under our rules, “[c]harged with infringement means a real and substantial controversy regarding infringement of a covered business method patent exists such that the petitioner would have standing to bring a declaratory judgment action in Federal court.” 37 C.F.R. § 42.302(a).” slip op. at 5
Discretionary denialPatents in suitUS 9,009,060 - Old Republic General Insurance Group, Inc. / Old Republic Insurance Company et al. v. Intellectual Ventures II LLCInstitution deniedPTAB · Apr 15, 2016 · CBM2015-00184 · APJ Jon B Tornquist · CBM · Institution
The Board denied institution for claims 1-49 because Petitioner did not establish 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
“We apply 35 U.S.C. § 324(a), which provides that a post-grant review may not be instituted “unless . . . the information presented in the petition . . . would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” For the reasons that follow, we do not institute a covered business method patent review.” slip op. at 2
Discretionary denialPatents in suitUS 6,546,002 - Acxiom Corporation v. Phoenix Licensing, LLCInstitution deniedPTAB · Nov 19, 2015 · CBM2015-00137 · APJ Stacey G White · CBM · Institution
The Board denied the petitions because Acxiom did not establish standing to seek covered business method review; it did not reach the merits of the challenged claims.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityDenied
“authority with respect to the defense, settlement, or compromise of any such claim.” Id. As to the Declaration, Brian Williamson, Senior Account Executive for Acxiom’s Gerber Account, declares that it is his “understanding that Gerber sent Acxiom notice of a demand for indemnification for costs and potential liabilities arising from the [patent infringement suits involving the subject patents] referencing the indemnification provision in the Services and Data Agreement.” Ex. 1128 ¶¶ 2, 6. We do not find this evidence to be sufficient to show that Petitioner has standing to bring this Petition. See 37 C.F.R. § 42.304(a) (stating that it is Petitioner’s burden to “demonstrate that the patent for which review is sought is a covered business method patent, and that the petitioner meets the eligibility requirements of § 42.302.”).” slip op. at 5
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“Default Protective Order and moves to seal Exhibits 1128 and 1129, as confidential pursuant to the Default Protective Order. Paper 5, 1. These Exhibits, however, are cited extensively in the Decision. Confidential information relied upon in a decision to grant or deny a request to institute ordinarily will be made public. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). We are not persuaded that there is sufficient reason to depart from that principle. Therefore, Petitioner’s Motion to Seal is denied. Accordingly, we order Exhibits” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied rpiInstitution denied
“their real parties-in-interest or privies that have been sued or charged with infringement of a “covered business method patent,” which does not include patents for “technological inventions.” AIA §§ 18(a)(1)(B), 18(d)(1); see 37 C.F.R. § 42.302. Of key importance in this case is the requirement that “a person may not file a petition for a transitional proceeding with respect to a covered business method patent unless the person or the person’s real party in interest or privy has been sued for infringement of the patent or has been charged with infringement under that patent.” AIA § 18(a)(1)(B) (emphases added); see 37 C.F.R. § 42.302(a). Regarding this requirement, Petitioner does not allege that it has been charged with or sued for infringement, but instead contends that its” slip op. at 3
Discretionary denialPatents in suitUS 7,890,366
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.