- Charter Communications, Inc. v. Touchstream Technologies, Inc.Institution deniedPTAB · Feb 11, 2025 · IPR2024-01232 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any obviousness ground; it also found the petition time-barred.
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“later than one month after we initially instituted inter partes review in the Comcast IPR. See 37 C.F.R. § 42.122(b). As discussed above, however, inter partes review is no longer instituted in the Comcast IPR. Under these circumstances, we do not grant Petitioner’s Joinder Motion because there is no pending proceeding to join. See 35 U.S.C. § 315(c) (“If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition . . . that the Director . . . determines warrants the institution of an inter partes review.”). Petitioner’s Joinder Motion is denied.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed board ownDecided for patent owner
“least in part on a second message including at least one command in a second format.’” Pet. 4 (citing Ex. 1104, 168–173). The cited portion of the prosecution history shows that the applicant distinguished its claims from the prior art based on different first and second formats. The applicant argued in particular, Applicant submits that [the prior art] is completely silent with regard to “receiving, from the remote server device, a first message that includes at least one command in a first format, wherein the first message is received based at least in part on a second message including at least one command in a second format having been sent from the associated remote computing device.” In fact, [the prior art] never describes commands in different formats. . . . Ex. 1104, 170. Based on the applicant’s argument in this regard, we find that the prosecution history limits the scope of claim 1 to different first and second formats. In other words, the applicant’s argument during prosecution distinguishing its claims from the prior art based on different first and second formats overcomes the presumption based on claim differentiation that claim 1 encompasses first and second formats that are the same. See Fenner Invs., Ltd. v. Cellco P’Ship, 778 F.3d 1320, 1327 (Fed. Cir. 2015) (“Although claim differentiation is a useful analytic tool, it cannot . . . relieve any claim of limitations imposed by the prosecution history.”). Accordingly, claim 1 is limited to different first and second formats.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“argument and evidence. As discussed above in the claim construction section, the recited first and second formats are limited to different formats. See supra Part IV.A. To satisfy this aspect of limitation 1D under its theory, Petitioner needs to show that in Danciu the format of the control information sent from the remote control to the server is different from the format of the control information sent from the server to the controlled device. The cited disclosures in Danciu, however, do not teach or suggest that these formats are different. Nor does Petitioner explain adequately how Danciu’s disclosures teach or suggest the two formats are different. We recognize that the control information in Danciu may be “processed” or “repackaged,” as Petitioner asserts, but it is not clear that the control information is processed or repackaged such that the format of the control information sent from the remote control to the server and the format of the control information sent from the server to the controlled device are different. Petitioner does not rely on Mahajan to teach or suggest the recited first and second formats but relies on Mahajan instead as providing “implementation details for transmission of commands for controlling a client.” Pet. 27. Petitioner contends that its proposed combination of Danciu and Mahajan would have provided a system where “Danciu’s remote control would translate commands associated with a first type of media playing application to a generic format, transmit them to the controlled device, which would translate them to a command associated with a second type of media playing application for execution.” Id. at 31. In other words, the controlled device would receive the generic commands sent from the remote control and then translate the generic commands. It is not clear how the proposed combination in this way teaches or suggests the format of a command sent from the remote control to a server is different from the format of a command sent from the server to the controlled device.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Aldrey and Mahajan meets limitation 1D under Petitioner’s second theory. Petitioner only alleges that it would have been obvious to an ordinarily skilled artisan that Mahajan’s RTS Media Abstraction Module could operate at a server like Aldrey’s service provider network 103. Pet. 65. The Federal Circuit has explained that “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). Petitioner does not adequately explain why an ordinarily skilled artisan would have considered locating Mahajan’s abstraction module at a server, even if the abstraction module could operate at the server. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). We note Petitioner further argues that combining Mahajan and Aldrey would have provided a system where “Aldrey’s end terminal would translate commands associated with a first type of media playing application to a command associated with a second type of media playing application on a STB.” Pet. 66–67; see also id. at 66 (“Mahajan’s server-command teachings could be implemented on Aldrey’s end terminal remote control.”). Arguing that Aldrey’s end terminal would translate commands seems inconsistent with Petitioner’s earlier argument for locating Mahajan’s abstraction module (which translates commands) at Aldrey’s network service provider. See id. at 65–67. Moreover, it is not readily apparent how command translation by Aldrey’s end terminal––rather than Aldrey’s network service provider–– teaches or suggests the format of a command sent from the end terminal to the network service provider is different from the format of a command sent from the network service provider to the STB. Petitioner does not close these logical gaps.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,048,751 - RPX Corporation v. Applications In Internet Time, LLCRehearing deniedPTAB · Dec 4, 2020 · IPR2015-01750 · APJ Scott R Boalick · IPR · Rehearing
The Board denied RPX’s rehearing request, leaving in place the remand decision terminating the reviews because 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 / privityDecided 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 barDecided for patent owner
“III. ANALYSIS In the Final Decision on Remand, we determined that Petitioner had not shown, by a preponderance of the evidence, that Salesforce was not an RPI in these proceedings. Dec. 1–2, 6–7, 30–35, 40. As noted above, in light of this determination, we terminated the previously instituted inter partes reviews, and denied inter partes reviews under 35 U.S.C. § 315(b). Id. at 35, 40.” slip op. at 3
- 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)). In this case, Petitioner had ample opportunity to brief the issue of RPI. See Paper 28, Paper 29 (redacted version); Paper 38, Paper 37 (redacted version); Paper 98, Paper 95 (redacted version); Paper 100, Paper 104 (redacted version); Paper 101, Paper 102 (redacted version). Petitioner also had an opportunity to argue the issue of RPI in two oral hearings. See Paper 77, Paper 112, Paper 123 (redacted version). Moreover, in its Request for Rehearing, Petitioner had a chance to identify any matters it believes this panel misapprehended or overlooked in its Final Decision on Remand. Petitioner further had an opportunity to file a Reply to Patent Owner’s Response to its Request. Thus, both before and after this panel issued its Final Decision on Remand, Petitioner had notice and an opportunity to be heard on issues relevant to these cases on remand from the Federal Circuit. Finally, although a change in panel after remand from the Federal Circuit is not common, this panel, like the original panel, decided the merits of each case based on the entirety of the record. Stated another way, either panel would have decided the case after careful consideration of the same evidence. Nor can Petitioner complain that it lacked notice and an opportunity to be heard regarding the panel change – Petitioner received notice of the panel change both before and in the panel decision, and Petitioner’s Request for Rehearing and Board-authorized Reply gave it ample opportunity to be heard. Accordingly, we are not persuaded that the change in panel has prejudiced Petitioner in any way or violated Petitioner’s due process rights.” slip op. at 4
Discretionary denialPatents in suitUS 8,484,111 - Juniper Networks, Inc. v. Finjan, Inc.Rehearing deniedPTAB · Feb 27, 2020 · IPR2019-01403 · APJ Patrick M Boucher · IPR · Rehearing
The Board denied Juniper’s rehearing request, finding no abuse of discretion in denying institution because the petition was time-barred under § 315(b).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS The applicable standard for granting a request for rehearing of a petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party seeking rehearing has the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › §315(b) time barInstitution denied time barDecided for patent owner
“district court and the June 13, 2018 vacatur of that grant, we determined that “service occurred at a time authorized by the district court.” Dec. 6. In its Request, Petitioner contends that, because the district court originally granted leave to serve the complaint in “error,” “Patent Owner’s June 8, 2018 filing was not properly served and cannot start the clock on Petitioner’s one-year deadline.” Req. Reh’g 1. But in advancing this contention, Petitioner misconstrues the meaning of “properly served” in the context of the Board’s precedential decision in GoPro, Inc. v. 360Heros, Inc., IPR2018-01754, Paper 38 (PTAB Aug. 23, 2019) (precedential). In recognizing that a complaint “improperly served” does not trigger the § 315(b) time bar, the Precedential Opinion Panel in GoPro cites IpDatatel, LLC v. ICN Acquisition, LLC, IPR2018-01823, Paper 17 at 10–18 (PTAB Apr. 17, 2019) for the interpretation of “served” in § 315(b) as “requir[ing] compliance with Rule 4 of the Federal Rules of Civil Procedure.” GoPro at 14. Although we alerted the parties in our Decision that “we discern no evidence on this record that service failed to comply with Rule 4 of the Federal Rules of Civil Procedure,” Petitioner offers no evidence or argument in its Request that prompts us to reconsider that finding. See Dec. 6.” slip op. at 3
- Other 314aOther
“In this case, the Chief Judge has considered Petitioner’s suggestion for an expanded panel, but has determined that an expanded panel is not warranted.” slip op. at 2
Discretionary denialPatents in suitUS 7,418,731 - Sega Of America, Inc. v. Uniloc USA, Inc. And Uniloc Luxembourg S.A.Institution deniedPTAB · Jun 2, 2016 · IPR2016-00427 · APJ Donna M Praiss · IPR · Institution
The Board denied joinder and denied institution on all challenged claims and grounds because § 315(b) barred the time-barred petition without joinder.
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b). A motion for joinder should: (1) set forth the reasons why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the existing review; and (4) specifically address how briefing and discovery may be simplified. See, e.g., Kyocera Corp. v. Softview LLC, Case IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15).” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsOther
“weigh in favor of denying Petitioner’s Motion for Joinder. Petitioner previously filed a petition for inter partes review of the ’216 patent in IPR2014-01453 and a petition for a covered business patent review of the ’216 patent in CBM2014-00183. Sega of America, Inc. v. Uniloc USA, Inc., IPR2014-01453 (Paper 6); Sega of America, Inc. v. Uniloc USA, Inc., CBM2014-00183 (Paper 6). The earlier petitions were filed within one year of the date on which Petitioner was served with a complaint alleging infringement of the ’216 patent. Id. The grounds and arguments now asserted by Petitioner are substantially identical to the grounds presented in CBM2014-00183, which was denied, and could have been brought in IPR2014-01453, which was instituted. Petitioner did not include the asserted grounds in a petition for inter partes review until now. Nor has Petitioner explained sufficiently why the petition in IPR2014-01453 did not contain the grounds and arguments set forth in the Petition in this proceeding. Joinder may be authorized when warranted, but the decision to grant joinder is discretionary. 35 U.S.C. § 315(c). When exercising that discretion, the Board is mindful that patent trial regulations, including the rules of joinder, must be construed to secure the just, speedy, and inexpensive resolution of every proceeding. See 37 C.F.R. § 42.1 (b). In view of the facts and circumstances of this case, we determine that Petitioner has not met its burden to show that joinder would be appropriate, even if IPR2015-01207 had not been terminated.” slip op. at 5
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“is filed more than one year after the petitioner (or the petitioner’s real partyin-interest or privy) is served with a complaint alleging infringement of the patent, see 37 C.F.R. § 42.101(b), the one-year time bar does not apply to a request for joinder. 35 U.S.C. § 315(b) (stating that “[t]he time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c)” of 35 U.S.C. § 315); 37 C.F.R. § 42.122(b). In the present case, Petitioner was served with a complaint alleging infringement of the ’216 patent more than one year prior to filing the Petition in this proceeding. See Pet. 51; Ex. 1025. Thus, absent joinder of this proceeding with IPR2015-01207, institution of inter partes review is barred.” slip op. at 4
Discretionary denialPatents in suitUS 5,490,216
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.