- RPX Corporation v. Applications In Internet Time, LLCRehearing deniedPTAB · Dec 4, 2020 · IPR2015-01752 · APJ Scott R Boalick · IPR · Rehearing
The Board denied RPX’s rehearing request, leaving in place the determination that Salesforce was an RPI and the petitions were time-barred under § 315(b).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Thus, a request for rehearing is not an opportunity to present new arguments or evidence or merely to disagree with the panel’s assessment of the arguments or weighing of the evidence.” slip op. at 3
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“legally required for Salesforce to be a “beneficiary.” Req. Reh’g. 14. Further, Petitioner further asserts that we overlooked the authority cited by Petitioner that “‘behest’ means command, and that RPX cannot have acted as Salesforce’s representative unless RPX were appointed by Salesforce to so act.” Id. at 14–15. Petitioner asserts that the evidence, at most, demonstrates that RPX filed as a “mere volunteer to benefit Salesforce.” Id. at 15. We are not persuaded because Petitioner’s argument proposes that we apply a more narrow and rigid analysis of RPI than the one instructed by the Federal Circuit in these cases. As stated by the Federal Circuit, “[d]etermining whether a non-party is a ‘real party in interest’ demands a flexible approach that takes into account both equitable and practical considerations, with an eye toward determining whether the non-party is a clear beneficiary that has a preexisting, established relationship with the petitioner.” AIT, 897 F.3d at 1351; see also Dec. 4–5. Applying this flexible approach to the evidence of record, we determined that Salesforce is an RPI in these proceedings.” slip op. at 16
- PTAB / AIA Trials › §315(b) time barDenied
“In the Final Decision on Remand, we determined that Salesforce was a real party in interest (an “RPI”) in these proceedings, and the Petitions, therefore, were time-barred under 35 U.S.C. § 315(b). Dec. 35, 40. Based on that determination, we terminated the previously instituted inter partes reviews. Id. at 40. On October 9, 2020, RPX Corporation (“Petitioner”) filed a Request for Rehearing of the Board’s Final Decision on Remand. Paper 134 (“Req. Reh’g.”). Pursuant to our authorization, Patent Owner filed a Response (Paper 135, “PO Resp.”), and Petitioner filed a Reply (Paper 136, “Pet. Reply”). For the reasons discussed below, we deny Petitioner’s Request for Rehearing.” slip op. at 2
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for patent owner
“entitled to due process and the protections afforded by the Administrative Procedure Act. Pet. Reply 1 (citing SAS Inst., Inc. v. ComplementSoft, LLC, 825 F.3d 1341, 1351 (Fed. Cir. 2016)). We agree with Patent Owner, however, that all requirements of procedural due process have been met here. “The indispensable ingredients of due process are notice and an opportunity to be heard by a disinterested decision-maker.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015) (quoting Abbott Labs. v. Cordis Corp., 710 F.3d 1318, 1328 (Fed. Cir. 2013)).” slip op. at 4
Discretionary denialPatents in suitUS 7,356,482 - Banilla Games, Inc. v. Savvy Dog Systems, LLCInstitution deniedPTAB · Nov 19, 2020 · CBM2020-00014 · APJ Kevin W Cherry · CBM · Institution
The Board denied institution because the remaining claims did not establish that the patent claims a financial product or service, as required for CBM review.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2018). For reasons that follow, we determine that Petitioner has failed to show that the challenged patent qualifies as a covered business method patent. Accordingly, we decline to institute a covered business method patent review of the challenged claims.” slip op. at 2
- BurdenDecided for patent owner
“We agree with Patent Owner that the limitations “determining a winning combination” and “testing the game field . . . to ensure that a winning combination more valuable . . .” are not financial in nature. Beginning with “winning combination,” we agree with Patent Owner that “winning,” by itself, is not necessarily monetary in nature. Prelim. Resp. 28. Indeed, other games include the step of determining whether a combination is a “winning combination” or not without necessarily involving any kind of prize or payout. See id. at 29–30. Instead, as is shown in the ’223 patent, some additional step after the determination of who won is necessarily if there is going to be some monetary payout corresponding to the win. See Ex. 1001, Fig. 6 (showing Step 630 of “Redeem Payout and Credit Balance”), Fig. 8 (showing Step 820 of “Redeem Payout and Credit Balance”), 6:34–40 (explaining a player “may” redeem points earned in the game for cash). Petitioner identifies nothing in the specification requiring that money be paid for just winning. Moreover, the ’223 patent makes clear that the games are intended broadly for “entertainment” and “amusement” and not just for gambling. See id. at 1:13–15 (explaining patent is related to “amusement and entertainment electronic gaming”). As Patent Owner explains, the ’223 patent expressly discusses the use of the games in Ohio, which prohibits gambling, but permits the use of games of skill for entertainment purposes. See Prelim. Resp. 52–58 (discussing Ohio’s laws in detail); Ex. 1001, 1:18–33 (describing Ohio’s laws prohibiting gambling, but allowing “games of skill”). Thus, at best, “winning combination” relates only to the possibility that a monetary payout could be received, not that a player necessarily will receive anything of monetary value for playing the game. This possibility is insufficient to meet the financial product or service requirement. See Unwired Planet, 841 F.3d at 1382 (noting “it cannot be the case that a patent covering a method and corresponding apparatuses becomes a CBM patent because its practice could involve a potential sale of a good or service” and “[i]t is not enough that a sale has occurred or may occur, or even that the specification speculates such a potential sale might occur”).” slip op. at 10
Discretionary denialPatents in suitUS 7,736,223 - 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 - Microsoft Corporation v. Science Applications International CorporationInstitution deniedPTAB · Feb 3, 2020 · IPR2019-01360 · APJ Jason M Repko · IPR · Institution
The Board denied the petitions because the government was Microsoft’s privy, making the petitions time-barred under § 315(b); it also exercised § 314(a) discretion to deny review.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“pre-existing substantive legal relationships between the parties” Under the second Taylor factor, the evidence shows a “pre-existing substantive legal relationship between” the government and Petitioner. “Qualifying relationships include, but are not limited to, preceding and succeeding owners of property, bailee and bailor, and assignee and assignor.” See Taylor, 553 U.S. at 894. “A common character of these relationships is that the two parties share a high degree of commonality of proprietary or financial interest.” AIT, 897 F.3d at 1352 (Reyna, J., concurring). The evidence here shows that the government and Petitioner share such interests. Before requesting inter partes review, the government had a preexisting, established relationship with Petitioner. In particular, Patent Owner has an ongoing infringement lawsuit against the government in the Court of Federal Claims. Pet. 3 (citing Ex. 1025, (“the Complaint”)). Petitioner entered into the Contract with the government to develop a system incorporating the allegedly infringing feature. Id. slip op. at 7
- PTAB / AIA Trials › §315(b) time barDenied
“C. SECTION 315(B) BARS INSTITUTION We have found that the government, a nonparty to the instant proceedings, is a privy of Petitioner. Under 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” The government was served with a complaint alleging infringement of the patents-at-issue in 2017. The instant Petitions were filed in July 2019, more than 1 year from the service of the complaint on the government. Accordingly, inter partes review may not be instituted under § 315(b).” slip op. at 13
- Other 314aInstitution denied discretionary otherDenied
“D. DISCRETIONARY DENIAL UNDER SECTION 314(A) Institution of inter partes review is discretionary. 35 U.S.C. § 314(a); SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with discretion on the question whether to institute review . . . .” (emphasis omitted)); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”); see also 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). “[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016). Even if Petitioner and the government were not in privity, we would exercise our discretion to deny review to avoid any concerns that the government is obtaining a benefit to which it is not permitted under Return Mail.” slip op. at 13
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“All papers are available for public access by default. See 35 U.S.C. § 316(a)(1). A party may file a concurrent motion to seal, and the information at issue is sealed pending the motion’s outcome. 37 C.F.R. § 42.54. The standard for granting a motion to seal is “for good cause.” 37 C.F.R. § 42.54(a). For instance, we consider whether the movant has adequately shown that (1) the information sought to be sealed is truly confidential, (2) a concrete harm would result upon public disclosure, (3) there exists a genuine need to rely in the trial on the specific information sought to be sealed, and (4) on balance, an interest in maintaining confidentiality outweighs the strong public interest in having an open record. Argentum Pharms. LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 at 4 (PTAB Jan. 19, 2018) (Denying Motion to Seal) (informative). Confidential information includes, but is not limited to, commercial information. 37 C.F.R. § 42.54(7). Here, the information to be sealed includes a discussion of and direct quotations from the contract filed as Exhibit 2006. See Pet. Mot. to Seal 3–5; PO Mot. to Seal 1–2. The contract is not publicly available, it has been sealed in this proceeding, and it contains the details and financial terms of an agreement between Petitioner and the government. We are persuaded that the Motions demonstrate that the information sought to be sealed reflects Petitioner’s confidential business information and that “an interest in maintaining confidentiality outweighs the strong public interest in having an open record” here. See Argentum, Paper 27 at 4.” slip op. at 14
Discretionary denialPatents in suitUS 9,229,230 - Microsoft Corporation v. Science Applications International CorporationInstitution deniedPTAB · Feb 3, 2020 · IPR2019-01311 · APJ Jason M Repko · IPR · Institution
The Board denied the petitions because the government was Microsoft's privy and had been served with infringement complaints more than one year before filing; it also denied review under § 314(a).
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“The evidence here shows that the government and Petitioner share such interests. Before requesting inter partes review, the government had a preexisting, established relationship with Petitioner. In particular, Patent Owner has an ongoing infringement lawsuit against the government in the Court of Federal Claims. Pet. 3 (citing Ex. 1025, (“the Complaint”)). Petitioner entered into the Contract with the government to develop a system incorporating the allegedly infringing feature. Id. Therefore, both Petitioner and the government share a common interest in canceling the allegedly infringed claims.” slip op. at 7
- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“existing substantive legal relationship. This provides at least one ground of nonparty preclusion under Taylor. We further determine, as discussed below, that two other Taylor factors support our privity determination. 2. “where special statutory schemes foreclose successive litigation by the nonparty” A special statutory scheme applies here under 35 U.S.C. § 315(b), which bars institution of an IPR if a “privy of the petitioner is served with a complaint alleging infringement of the patent” more than one year before the petition was filed. Moreover, we note that the government, according to a recent Supreme Court case, is not a “person” that can file a Petition for inter partes review under 35 U.S.C. § 311. Return Mail, Inc. v. United States Postal Service, 139 S. Ct. 1853 (2019). Thus, Petitioner’s filings are the only filed Petitions from which the government could benefit, because the government could not file its own petition in light of the June 10, 2019, Return Mail decision.” slip op. at 11
- Other 314aInstitution denied discretionary otherDenied
“D. DISCRETIONARY DENIAL UNDER SECTION 314(A) Institution of inter partes review is discretionary. 35 U.S.C. § 314(a); SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with discretion on the question whether to institute review . . . .” (emphasis omitted)); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”); see also 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). “[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016). Even if Petitioner and the government were not in privity, we would exercise our discretion to deny review to avoid any concerns that the government is obtaining a benefit to which it is not permitted under Return Mail.” slip op. at 13
- ExcludeGranted
“All papers are available for public access by default. See 35 U.S.C. § 316(a)(1). A party may file a concurrent motion to seal, and the information at issue is sealed pending the motion’s outcome. 37 C.F.R. § 42.54. The standard for granting a motion to seal is “for good cause.” 37 C.F.R. § 42.54(a). For instance, we consider whether the movant has adequately shown that (1) the information sought to be sealed is truly confidential, (2) a concrete harm would result upon public disclosure, (3) there exists a genuine need to rely in the trial on the specific information sought to be sealed, and (4) on balance, an interest in maintaining confidentiality outweighs the strong public interest in having an open record.” slip op. at 14
Discretionary denialPatents in suitUS 7,787,012 - 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
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.