- Mim Software Inc. v. Progenics Pharmaceuticals, Inc.Institution deniedPTAB · Oct 10, 2025 · IPR2025-00726 · APJ Annette R Reimers · IPR · Institution
The Board denied institution because the Petition did not adequately explain which of its three alternative constructions of “risk indices” applied to the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition and the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood of success in proving that at least 1 claim of the ’141 patent is unpatentable. 1” slip op. at 2
- BurdenDenied
“risk index” differ in several “particular details,” but those details matter and can make a difference in our patentability analysis, especially given Petitioner’s acknowledgment that there is no well-established ordinary and customary meaning for the term. In taking this “choose-your-own-adventure” approach to claim construction, Petitioner fails to satisfy the requirements of 37 C.F.R. § 42.104(b)(3)–(4), which specify the content of the petition. In particular, Rule 42.104(b)(3) requires the petition to identify “[h]ow the challenged claim is to be construed,” while Rule 42.104(b)(4) requires the petition to identify “[h]ow the construed claim is unpatentable” under either 35 U.S.C. § 102 or § 103. Moreover, by proposing these “choose-your-own-adventure” constructions, Petitioner obfuscates which circumstances each proposed construction should be applied. The Board does not find that alternative claim constructions are per se improper. Nonetheless, there must be reasoning to explain the circumstances under which each alternative construction should be applied. For example, Petitioner may assert one construction on the basis that a claim term should be construed as a means-plus-function term under 35 U.S.C. § 112(f), but also propose an alternative construction to be applied if the term is not found to be a means-plus-function term. However, Petitioner does not provide any rationale here for including three alternative constructions. Rather, Petitioner indicates there is no well-established ordinary and customary meaning for the term(s), and incorrectly contends that the three alternative constructions are not significantly different without explaining why three different constructions are being proposed or under what circumstances one construction should be applied over the other two constructions. slip op. at 7
Discretionary denialPatents in suitUS 11,894,141 - Mim Software Inc. v. Progenics Pharmaceuticals, Inc.Institution deniedPTAB · Oct 8, 2025 · IPR2025-00725 · APJ Christopher G Paulraj · IPR · Institution
The Board denied institution because the Petition failed to explain how the challenged claims should be construed or how the prior art rendered them unpatentable under the proposed constructions.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“III.CONCLUSION For the foregoing reasons, we determine that the Petition fails to satisfy the requirement of 37 C.F.R. § 42.104(b) to set forth how the challenged claims are to be construed. Accordingly, we decline to institute an inter partes review. IV.ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314, the Petition for an inter partes review is denied and no inter partes review is instituted.” slip op. at 10
- BurdenDenied
“particular details,” but those details matter and can make a difference in our patentability analysis, especially given Petitioner’s acknowledgment that there is no well-established ordinary and customary meaning for the term. In taking this “choose-your-own-adventure” approach to claim construction, Petitioner fails to satisfy the requirements of 37 C.F.R. § 42.104(b)(3)–(4), which specify the content of the petition. In particular, Rule 42.104(b)(3) requires the petition to identify “[h]ow the challenged claim is to be construed,” while Rule 42.104(b)(4) requires the petition to identify “[h]ow the construed claim is unpatentable” under either 35 U.S.C. § 102 or § 103. Moreover, by proposing these “choose-your-own-adventure” constructions, Petitioner obfuscates which claim construction the Board is being asked to apply, and under what circumstances each proposed construction should be applied. To be sure, we do not find that alternative claim constructions are per se improper. Nonetheless, there must be reasoning to explain the circumstances under which each alternative construction should be applied or an explanation of how the prior art renders the claims unpatentable under alternative constructions. For instance, Petitioner may assert one construction on the basis that a claim term should be construed as a meansplus-function term under 35 U.S.C. § 112(f), but also propose an alternative construction to be applied if the term is not found to be a means-plus- any rationale here for including three alternative constructions. Instead, Petitioner indicates there is no well-established ordinary and customary meaning for the term, and incorrectly contends that the three alternative constructions are not significantly different without explaining why three different constructions are being proposed or under what circumstances one construction should be applied over the other two constructions. slip op. at 7
Discretionary denialPatents in suitUS 11,424,035 - Mim Software Inc. v. Progenics Pharmaceuticals, Inc.Institution deniedPTAB · Oct 8, 2025 · IPR2025-00630 · APJ Christopher G Paulraj · IPR · Institution
The Board denied institution because the Petition failed to explain which of three alternative constructions of “risk map” applied or how the prior art met the claims under those constructions.
RulingsInstitution decision- BurdenDenied
“particular details,” but those details matter and can make a difference in our patentability analysis, especially given that Petitioner acknowledges there is no well-established ordinary and customary meaning for the term. In taking this “choose-your-own-adventure” approach to claim construction, Petitioner fails to satisfy the requirements of 37 C.F.R. § 42.104(b)(3)–(4), which specify the content of the petition. In particular, Rule 42.104(b)(3) requires the petition to identify “[h]ow the challenged claim is to be construed,” while Rule 42.104(b)(4) requires the petition to identify “[h]ow the construed claim is unpatentable” under either 35 U.S.C. § 102 or § 103. Moreover, by proposing these “choose-your-own-adventure” constructions, Petitioner obfuscates which claim construction the Board is being asked to apply, and under what circumstances each proposed construction should be applied. To be sure, we do not find that alternative claim constructions are per se improper. Nonetheless, there must be reasoning to explain the circumstances under which each alternative construction should be applied or an explanation of how the prior art renders the claims unpatentable under alternative constructions. For instance, Petitioner may assert one construction on the basis that a claim term should be construed as a means- construction assuming the term is not found to be a means-plus-function term. Unlike this example, however, Petitioner does not provide any rationale here for including three alternative constructions. Instead, Petitioner indicates there is no well-established ordinary and customary meaning for the term, and summarily contends that the three alternative constructions are not significantly different without explaining why three different constructions are being proposed or under what circumstances one construction should be applied over the other two constructions. slip op. at 7
Discretionary denialPatents in suitUS 10,665,346 - Wiz, Inc. v. Orca Security Ltd.Institution deniedPTAB · May 5, 2025 · IPR2025-00092 · APJ Garth D Baer · IPR · Institution
The Board denied institution because Orca disclaimed all challenged claims 1–19 before institution.
RulingsInstitution decision- Adverse judgmentAdverse judgmentOther
“Under 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” and, if the statutory disclaimer is filed properly, “[n]o [IPR] will be instituted based on disclaimed claims.” A statutory disclaimer is “considered as part of the original patent” as of the date on which it is “recorded” in the USPTO. 35 U.S.C. § 253(a). “A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.” Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996); see also Raytheon Techs. Corp. v. General Elec. Co., 993 F.3d 1374, n.4 (Fed. Cir. 2021) (“Disclaimed claims are treated as if they never existed.”)” slip op. at 2
Discretionary denialPatents in suitUS 11,516,231 - Trend Micro Inc. v. Cupp Computing AsInstitution deniedPTAB · Jan 19, 2022 · PGR2021-00101 · APJ Garth D Baer · PGR · Institution
The Board denied post-grant review of claims 1, 7, 9, 16, 22, and 24 because the patent is not eligible for PGR as a pre-AIA patent.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Act (“AIA”)5 apply only to AIA patents, which are patents that have an effective filing date on or after March 16, 2013. See AIA §§ 3(n)(1); 6(f)(2)(A). Pre-AIA patents—those with effective filing dates before March 16, 2013—are not eligible for post-grant review.” slip op. at 6
Discretionary denialPatents in suitUS 10,951,632 - Trend Micro Inc. v. Cupp Computing AsInstitution deniedPTAB · Jan 19, 2022 · PGR2021-00100 · APJ Thomas L Giannetti · PGR · Institution
The Board denied post-grant review of claims 1, 9, 16, and 24 because the patent is pre-AIA and ineligible for post-grant review.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“III. ELIGIBILITY FOR POST-GRANT REVIEW The post-grant review provisions of the Leahy-Smith America Invents Act (“AIA”)4 apply only to AIA patents, which are patents that have an effective filing date on or after March 16, 2013. See AIA §§ 3(n)(1); 6(f)(2)(A). Pre-AIA patents—those with effective filing dates before March 16, 2013—are not eligible for post-grant review.” slip op. at 5
Discretionary denialPatents in suitUS 10,951,632 - Microsoft Corporation v. Litl, LLCInstitution deniedPTAB · 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 denialPatents in suitUS 8,577,957 - Google LLC v. Soverign Peak Ventures, LLCInstitution deniedPTAB · Oct 1, 2021 · IPR2021-00806 · APJ Garth D Baer · IPR · Institution
The Board denied institution on claims 1–3 because Patent Owner disclaimed all claims of the ’903 patent.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDenied
“We agree with Patent Owner. Under our rules, “[n]o inter partes review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e). Because we cannot institute trial on disclaimed claims, we do not institute an inter partes review of claims 1–3.” slip op. at 2
Discretionary denialPatents in suitUS 9,747,903 - Google LLC v. Videoshare LLCInstitution deniedPTAB · Mar 24, 2021 · CBM2020-00027 · APJ Thomas L Giannetti · CBM · Institution
The Board denied institution of CBM review for claims 1–7 because the patent did not qualify as a covered business method patent; it did not reach the § 101 challenge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“covered business method patent review, the focus is on the claims. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1340 (Fed. Cir. 2016) (challenged patent eligible for review because the claims recited “an express financial component in the form of a subsidy” that was “central to the operation of the claimed invention”). Thus, “§ 18 (d)(1) directs us to examine the claims when deciding whether a patent is a CBM patent.” Blue Calypso, 815 F.3d at 1340. More specifically, the focus is on the claims to determine whether there is anything “explicitly or inherently financial in the construed claim language.” Id. The claims of the ’341 patent are directed to “[a] method for sharing video over a structured hierarchical network.” Ex. 1001, 25:14–15. We are not persuaded that this a financial activity. We agree with Patent Owner that the focus of the claims is video sharing technology. Prelim. Resp. 21. The claims describe a series of method steps for sharing video content involving servers and video files. Nowhere do the claims discuss or suggest obtaining payment or remuneration. Thus, the claims are unlike those in Blue Calypso, 815 F.3d 1331. In Blue Calypso, the claims expressly recited the term “subsidy,” which the Board construed as “financial assistance given by one to another.” Id. at 1339–40. The Federal Circuit explained that based on this understanding, the Board had concluded that the claims “were financial in nature” and instituted CBM review. Id. at 1340. The Federal Circuit agreed with the Board’s analysis and affirmed its decision to institute CBM patent review: “Significantly, Blue Calypso has not challenged the Board’s interpretation of subsidy as ‘financial assistance given by one to another.’” Id.” slip op. at 6
- BurdenDecided for patent owner
“covered business method patent review, the focus is on the claims. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1340 (Fed. Cir. 2016) (challenged patent eligible for review because the claims recited “an express financial component in the form of a subsidy” that was “central to the operation of the claimed invention”). Thus, “§ 18 (d)(1) directs us to examine the claims when deciding whether a patent is a CBM patent.” Blue Calypso, 815 F.3d at 1340. More specifically, the focus is on the claims to determine whether there is anything “explicitly or inherently financial in the construed claim language.” Id. The claims of the ’341 patent are directed to “[a] method for sharing video over a structured hierarchical network.” Ex. 1001, 25:14–15. We are not persuaded that this a financial activity. We agree with Patent Owner that the focus of the claims is video sharing technology. Prelim. Resp. 21. The claims describe a series of method steps for sharing video content involving servers and video files. Nowhere do the claims discuss or suggest obtaining payment or remuneration. Thus, the claims are unlike those in Blue Calypso, 815 F.3d 1331. In Blue Calypso, the claims expressly recited the term “subsidy,” which the Board construed as “financial assistance given by one to another.” Id. at 1339–40. The Federal Circuit explained that based on this understanding, the Board had concluded that the claims “were financial in nature” and instituted CBM review. Id. at 1340. The Federal Circuit agreed with the Board’s analysis and affirmed its decision to institute CBM patent review: “Significantly, Blue Calypso has not challenged the Board’s interpretation of subsidy as ‘financial assistance given by one to another.’” Id.” slip op. at 6
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Not reached
“E. Subject Matter Eligibility Under 35 U.S.C. § 101 Petitioner contends that the challenged claims are directed to an abstract idea that is not eligible subject matter for a patent under 35 U.S.C. § 101. Pet. 77. According to Petitioner, “[t]he claims recite the abstract idea of including advertising with appropriately formatted video.” Id. at 80. Patent Owner responds that Petitioner has failed to show that the claims recite ineligible subject matter. Prelim. Resp. 64. According to Patent Owner, “[t]he ’341 Patent claims recite specific steps that improve the functioning of a video server providing shared video files.” Id. Because we have determined that the ’341 patent does not qualify for covered business method patent review, we do not address whether the claims recite eligible subject matter under 35 U.S.C. § 101.” slip op. at 11
§ 101 eligibilityDiscretionary denialPatents in suitUS 10,362,341 - Keeper Security, Inc. v. Cumberland Systems LLCInstitution deniedPTAB · Nov 20, 2017 · CBM2017-00057 · APJ Kevin W Cherry · CBM · Institution
The Board denied institution on claims 1–19 because Petitioner did not show that the patent qualified as a covered business method patent.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“We agree with Patent Owner that Petitioner has failed to show adequately that the ’647 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,” to qualify as a covered business method patent. As we explained above, Secure Axcess requires a challenged patent to “have a claim that contains . . . a financial activity element.” Secure Axcess, 848 F.3d at 1381 (emphasis added). Petitioner fails to point to any element of claims of the ’647 patent that it contends meets the “financial activity element” required by Secure Axcess. Instead, it merely points to statements in the specification regarding potential applications for the claimed cryptographic algorithm. At best, Petitioner argues that the claimed encryption method can be for financial matters, such as securing e-commerce transactions, but this is not sufficient after the Federal Circuit’s guidance in both Unwired Planet and Secure Axcess. See id. Petitioner has simply failed to identify anything in the claims that are financial in nature.” slip op. at 9
Discretionary denialPatents in suitUS 8,023,647
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.