- Mylan Pharmaceuticals Inc. v. Astrazeneca ABRehearing grantedPTAB · May 2, 2016 · IPR2015-01340 · APJ Rama G Elluru · IPR · Rehearing
The Board granted Mylan’s rehearing request and instituted IPR of claims 1, 2, 4, 6-22, 25-30, 32-37, and 39-42.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“II. ANALYSIS When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The applicable standard for a request for rehearing is set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. 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. We grant Petitioner’s request for rehearing and institute an inter partes review of claims 1, 2, 4, 6–22, 25–30, 32–37, and 39–42 of the ’186 patent for the reasons provided in the concurrently issued Decision on Institution. Paper 16.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“References Basis Claims challenged Ashworth I, Villhauer, Raag and, 1, 2, 4, 6–11, 25–28, § 103(a) Hanessian 32–35, 39, and 40 Ashworth I, Villhauer, Raag, 12–16, 29, 30, 36, 37, Hanessian, Bachovchin, and § 103(a) 41, and 42 GLUCOPHAGE Label Ashworth I, Villhauer, Raag, Hanessian, Bachovchin and, § 103(a) 12, 17, 18, and 22 XENICAL Label Ashworth I, Villhauer, Raag, Hanessian, Bachovchin, and § 103(a) 12, 19, 20, and 21” slip op. at 2
None - Dynamic Drinkware, LLC v. National Graphics, Inc.All claims unpatentablePTAB · Jan 27, 2016 · IPR2014-01162 · APJ Michael P Tierney · IPR · Final written decision
Claims 1–46 are unpatentable: claims 1, 2, 23, 24, and 27–29 as anticipated by Quadracci ’995; the remaining claims as obvious over the stated combinations.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“in the lenticular art “is one who has several years of work experience in the lenticular industry.” Ex. 1013 ¶ 11. Patent Owner’s declarant, Dr. Garcia, testifies that a person of ordinary skill in the art would have five or more years of experience in the lenticular lens industry or have an understanding of optical engineering including first and higher order geometric and physical optics principles. Ex. 2001 ¶ 13. The parties’ definitions of one of ordinary skill in the art are substantially the same and neither party states how any difference in the parties’ articulated levels of skill impacts the proceeding. For purpose of this decision, we hold that the level of ordinary skill in the art is reflected by the prior art of record, such that one of skill in the art would have had years of experience in the lenticular lens industry or had an understanding of optical engineering, including higher order geometric and physical optics principles. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“Patent Owner does not dispute the proposed constructions, except to state that, consistent with Petitioner’s definition of focal length, one of ordinary skill in the art would have understood that focal length in the ’467 refers to the “effective focal length” of the lens. PO Resp. 3–4. We adopt Petitioner’s proposed claim constructions as they are consistent with the Patent Owner’s use of the terms in the ’467 patent Specification. For example, the term gauge thickness is defined in the ’467 patent with reference to g2 of Fig. 1A and states that the thickness is measured from the outermost edge of the curved surface of the lens to the flat back surface of the lens. Ex. 1001, 2:27–33.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“describe . . . each and every claim limitation and enable one of skill in the art to practice an embodiment of the claimed invention without undue experimentation.” Am. Calcar, Inc. v. Am. Honda Motor Corp., 651 F.3d 1318, 1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009)).” slip op. at 8
- Expert testimonyPetitioner expert discountedPetitioner expert creditedDecided for patent owner
“Based on the evidence of record, we credit the ray tracing testimony of Mr. Raymond and are persuaded that the lenticular lens disclosure of Quadracci ’995 is enabling. Specifically, Dr. Garcia acknowledges that focal length formulas other than those recited in the ’467 patent were known in the art and Mr. Raymond demonstrates that, consistent with the teachings of Quadracci ’995, one of ordinary skill in the art could make the described lenses. c. Mr. Raymond’s Gauge Thickness and Focal Length Calculations Patent Owner states that Mr. Raymond’s thickness calculation in his first declaration is either wrong, or it uses an unacceptable index of refraction. Mr. Raymond, in his first declaration, testifies that using the general lens formulas described in the ’467 patent, he arrived at a gauge thickness of 3.4 mils. Ex. 1013 ¶¶ 26–28. Mr. Raymond, however, does not disclose the index of refraction that he used to determine the gauge thickness. Expert testimony that does not disclose the underlying data on which the opinion is based is entitled to little or no weight. 37 C.F.R. 42.65(a). As Mr. Raymond failed to disclose the index of refraction used in his calculations and provide support for his selected refraction index, we do not credit Mr. Raymond’s gauge thickness calculation in his first declaration with respect to Quadracci ’995. As discussed below, however, Mr.” slip op. at 14
Patent outcomesUS 6,424,467 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,424,467 - Avx Corporation v. Greatbatch Ltd.Adverse judgmentPTAB · Nov 19, 2015 · IPR2015-00713 · APJ Jon B Tornquist · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment and cancelled claims 1, 2, 8, 9, 23, 24, 30, and 31.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“proceeding. 37 C.F.R. § 42.73(b). Actions construed to be a request for adverse judgment include disclaimer of the involved application or patent and cancellation or disclaimer of a claim such that the party has no remaining claim in the trial. Id. In light of Patent Owner’s disclaimer of claims 1–44 of the ’077 patent, we determine that entry of judgment against Patent Owner with respect to claims 1, 2, 8, 9, 23, 24, 30, and 31 of the ’077 patent is appropriate.” slip op. at 2
NonePatents in suitUS 7,035,077 - Apple Inc. v. Virnetx Inc.All claims unpatentablePTAB · Jul 29, 2015 · IPR2014-00483 · APJ Karl D Easthom · IPR · Final written decision
Claims 1, 7, 8, 10, 12, 13, 15, and 17 are unpatentable as anticipated by Provino; claims 2–5 and 18 are unpatentable as obvious over Provino with Kosiur and Xu, respectively.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Apple Incorporated (“Petitioner”) also filed a Petition (Paper 2) seeking an inter partes review of claims 1–5, 7, 8, 10, 12, 13, 15, 17, and 18 of the ’274 patent pursuant to 35 U.S.C. §§ 311–319 in Case IPR2014- 00483 (“’483 IPR”). Noting that Microsoft Corporation’s Petition and Apple Incorporated’s Petition were substantially identical in material aspects, the Board instituted an inter partes review of claims 1–5, 7, 8, 10, 12, 13, 15, 17, and 18, and joined IPR2014-00483 with IPR2014-00403 pursuant to 35 U.S.C. § 315(c). See ’483IPR, Paper 11, 6–9.2 Thereafter, pursuant to a settlement agreement, the present proceeding was terminated with respect to Microsoft Corporation only. Paper 38.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed petitioner constructionDisclaimer not foundDecided for petitioner
“proceeding somehow limits the claims here that Patent Owner otherwise could have moved to amend under a broadest reasonable construction, Patent Owner’s arguments were not “unambiguous,” and do not “call for the application of prosecution history disclaimer.” See PO Resp. 17–18. There was no “express disclaimer,” Bigio, 381 F.3d at 1325, or “unambiguous disavowal[],” Grober, 686 F.3d at 1341.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“As the latter two sentences show, the ’274 patent Specification describes placing field hopping data (i.e., an address hopping technique, see id. at 46:64–47:11), into a payload portion of a data packet. The Specification does not tie “tunneled” packets into a specific requirement that requires a change in formatting––above and apart from any protocol formatting or structural change that may happen to, or does, occur by placing one type of data field (header) into another type of data field (payload). After discussing the insertion of the field hopping data into the payload portion, the Specification then describes that these “modified message packets preferably conform to the UDP protocol,” or “[a]lternatively . . . can conform to the TCP/IP protocol or the ICPM protocol.” Id. at 50:30–35. In other words, if there is a change in a protocol in these disclosed examples––for example, from one protocol format to a UDP protocol format––any change appears to come in preferred embodiments and after the packets have been modified (i.e., tunneled). Accordingly, based on the foregoing discussion, we modify our construction as set forth in the Institution Decision, such that “tunnel packeting” means “placing data or information from one field, such as a header, into another packet field, such as a payload, wherein the two fields normally have different structures or formats, or placing data structured in one format within the format of another protocol.”” slip op. at 22
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“In any event, to the extent it is material, the ’274 patent Specification employs the term “user’s computer” in a “conventional scheme . . . shown in FIG 25. A user’s computer 2501 includes a client application 2504 (for example a web browser) . . . .” Ex. 1001, 38:61–63. Although Patent Owner refers to this “conventional” computer as “another embodiment,” the ’274 patent Specification disparages the “conventional architecture” that employs a user’s computer, because it is not secure enough. See Ex. 1001, 39:4–13; PO Resp. 21. In general, the ’274 patent Specification states that “[t]he present invention” involves a “client computer” with a “client application” that “communicates with a server.” See Ex. 1001, 7:40–44. This description of “[t]he present invention” does not mention a “user’s computer.” Therefore, the ’274 patent Specification does not repeatedly treat a “client computer” and a “user’s computer” as the same. The broadest reasonable construction of a client computer is a computer associated with a client.” slip op. at 23
Patent outcomesUS 7,987,274 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,987,274 - Redfin Corporation v. Corelogic Solutions, LLCAdverse judgmentPTAB · Mar 16, 2015 · CBM2014-00027 · APJ Brian J Mcnamara · CBM · Adverse judgment
The Board granted Patent Owner’s motion for adverse judgment after disclaimer and ordered claims 2–4, 7–8, and 11–20 cancelled.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“concerning the status of this case. On March 12, 2015, we authorized Patent Owner to file a Motion for Adverse Judgment. On March 12, 2015, Patent Owner filed its Motion for Adverse Judgment, in which Patent Owner disclaimed claims 2–4, 7, 8, and 11–20. Paper 18. Having disclaimed all the claims involved in this proceeding, Patent Owner’s Motion for Adverse Judgment is GRANTED and claims 2–4, 7, 8, and 11–20 will be cancelled. ORDER In consideration of the above, it is ORDERED that Patent Owner’s Motion for Adverse Judgment is GRANTED; and FURTHER ORDERED, that claims 2–4, 7, 8 and 11–20 of U.S. Patent No. 5,361,201 shall be cancelled.” slip op. at 2
NonePatents in suitUS 5,361,201 - Target Corporation v. Destination Maternity CorporationRehearing grantedPTAB · Feb 12, 2015 · IPR2014-00509 · APJ Lora M Green · IPR · Rehearing
The Board granted Target’s request for rehearing of the denial of institution, for the reasons given in the related IPR2014-00508 decision.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“our Decision Denying Joinder of the instant proceeding with IPR2013-00533 (Paper 18), as well as our Decision Denying Institution of Inter Partes Review (Paper 19). Paper 20 (“Request for Rehearing”). Patent Owner, Destination Maternity Corporation, was authorized to file an Opposition (Paper 22), to which Petitioner was authorized to file a Reply (Paper 23). For the reasons discussed in the Decision Granting Petitioner’s Request for Rehearing in related IPR2014-00508 (Paper 28), we grant the Request for Rehearing.” slip op. at 2
None - PTAB · Sep 4, 2014 · CBM2013-00042 · APJ Trevor M Jefferson · CBM · Order
The Board granted the joint motion to terminate the proceeding and the request to keep the settlement agreement confidential.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under 35 U.S.C. § 327(a), “[a] post grant review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” The parties stated in their motion that they have settled their dispute and have reached agreement to terminate this inter partes review and the co-pending litigation. Paper 40, 4. The parties further indicate that they have agreed to resolve all disputes between the parties related to US Patent No. 5,878,400. Paper 40, 4. The parties are reminded that the Board is not a party to the settlement, and may independently identify any question of patentability. 37 C.F.R § 42.74(a). Generally, however, the Board expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). The Board is persuaded that, under these circumstances, it is appropriate to terminate this proceeding without rendering a final written decision. 37 C.F.R. § 42.72.” slip op. at 2
NonePatents in suitUS 5,878,400 - PTAB · Feb 12, 2014 · IPR2013-00373 · APJ Jameson Lee · IPR · Order
The Board granted the joint motion and terminated the review as to Garmin, then exercised its discretion to terminate it as to Cuozzo without a final written decision.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedOther
“Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” The requirement for terminating review with respect to Garmin, as petitioner, is met. The Board instituted trial on December 18, 2013 (Paper 12), and has not yet, in this proceeding, rendered a decision on the merits with respect to the patentability of any involved claim. Also under 35 U.S.C. § 317(a), “If no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a).” Garmin is the sole petitioner. The Board has discretion to terminate this review with respect to the patent owner (“Cuozzo”).” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The Board determines that in the particular circumstances of this case it is appropriate to terminate review both as to petitioner Garmin and patent owner Cuozzo without rendering a final written decision See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. It is ORDERED that the joint motion to terminate this proceeding with respect to Garmin GRANTED; FURTHER ORDERED that the Board exercises its discretion to terminate this proceeding also with respect to Cuozzo; FURTHER ORDERED that this inter partes review is hereby terminated as to all parties including both petitioner Garmin International Inc. and Garmin USA Inc., and patent owner Cuozzo Speed Technologies LLC; and FURTHER ORDERED that the parties’s joint request to have their settlement agreement (Exhibit 1116) treated as business confidential information under the 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is GRANTED.” slip op. at 3
NonePatents in suitUS 6,778,074 - New Bay Capital, LLC v. Virnetx, Inc.Adverse judgmentPTAB · Nov 12, 2013 · IPR2013-00376 · APJ Sally C Medley · IPR · Adverse judgment
The Board granted New Bay Capital’s unopposed motion to terminate the proceeding and entered judgment after New Bay abandoned the contest.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“an unopposed motion to terminate this proceeding, representing that New Bay is abandoning the contest. Paper 16 at 1. New Bay’s abandonment of the contest is construed as a request for entry of adverse judgment. 37 C.F.R. § 42.73(b)(4); see” slip op. at 1
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“an unopposed motion to terminate this proceeding, representing that New Bay is abandoning the contest. Paper 16 at 1. New Bay’s abandonment of the contest is construed as a request for entry of adverse judgment. 37 C.F.R. § 42.73(b)(4); see” slip op. at 1
NonePatents in suitUS 7,490,151 - New Bay Capital, LLC v. Virnetx, Inc.Adverse judgmentPTAB · Nov 12, 2013 · IPR2013-00377 · APJ Sally C Medley · IPR · Adverse judgment
The Board granted New Bay Capital, LLC’s unopposed motion to terminate and entered judgment terminating the proceeding after New Bay abandoned the contest.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“an unopposed motion to terminate this proceeding, representing that New Bay is abandoning the contest. Paper 13 at 1. New Bay’s abandonment of the contest is construed as a request for entry of adverse judgment. 37 C.F.R. § 42.73(b)(4) );” slip op. at 1
NonePatents in suitUS 7,418,504
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.