- PTAB · Mar 17, 2023 · IPR2022-01242 · APJ John R Kenny · IPR · Remand
On remand, the Board declined Fintiv denial and instituted review of claims 1–20 on all seven asserted obviousness grounds, finding a compelling challenge to claim 1 under Ground 1.
RulingsRemand decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“denial, and Fintiv Factor 1 is neutral. Collectively, the first five Fintiv Factors favor discretionary denial.” slip op. at 60
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“that Petitioner will prevail in its challenge to claim 1 under Ground 1. Thus, Petitioner has set forth a compelling, meritorious challenge that plainly leads to the conclusion that at least one claim is unpatentable (based on the current record).” slip op. at 74
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“that RF carriers, CDMA codes, TDMA time slots or other information defining and describing the way data is being transmitted do not include underlying data that is transmitted. In isolation, the phrase “not including underlying data that is being transmitted” could be subject to different interpretations. It could simply mean that data being transmitted by itself is not a radio resource, but the RF carrier transmitting the data could be a radio resource. Patent Owner makes clear, however, that this interpretation is not the intent of its construction by arguing that, under its construction, Hettstedt’s RF carriers are not radio resources because they have data modulated on them. Prelim. Resp. 24–27. Similarly, Patent Owner argues that Wu’s carriers are not radio resources because they have payload data encapsulated in them. Id. at 34; see also id. at 35. Patent Owner, however, cites nothing from the Specification that indicates RF carriers, CDMA codes, or TDMA time slots cease to be radio resources merely because data is modulated or encapsulated on them. Prelim. Resp. 12–18. Further, we see no such teaching in the Specification.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Wellington’s teachings to Hettstedt’s system to obviate the need for a human user to perform the load balancing (i.e., improve the system by making it automatic) as a threshold-based trigger avoids the need for the system to wait for user inputs. Ex. 1003 ¶ 130. Further, an ordinarily skilled artisan would naturally use a threshold for the trigger as taught by Wellington because a threshold is readily programmable and machine executable. Id. In addition, an ordinarily skilled artisan would have been motivated to implement Wellington’s teaching to improve the adaptability of Hettstedt’s system. Id. A benefit of a threshold-based trigger is that it allows a system to fine-tune the load balancing by adjusting the threshold. Id. Further, there is no need to reprogram significant software when using a threshold-based trigger. Id.” slip op. at 72
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 11,026,232 - PTAB · Dec 6, 2017 · IPR2016-00320 · APJ Karl D Easthom · IPR · Final written decision
Claims 8–10 are unpatentable based on the instituted obviousness grounds after the Board reconsidered the record on rehearing.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“be heard regarding the allegedly new circuits set forth in specific paragraphs of the Baker Reply Declaration. No more was required. Accordingly, Patent Owner’s Motion is denied. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1081 (Fed. Cir. 2015) (“With no Board denial of concrete, focused requests before us, we are not prepared to find that [the appellant] was denied a meaningful opportunity to respond.”)24; Opp. 15 (“Patent” slip op. at 68
- RehearingOther
“Subsequently, Patent Owner filed a Request for Rehearing. Paper 41 (“Rehearing Request” or “Reh’g Req.”). Based on the Rehearing Request, the Board withdrew the First Final Written Decision as set forth in the Decision on Rehearing. Paper 42 (Withdrawal of Final Written Decision and Authorization of Sur-Reply) (“Rehearing Decision” or “Reh’g Dec.”). As set forth in the Rehearing Decision, we granted Patent Owner’s request for additional briefing in the form of a Sur-Reply (Paper 43). See Reh’g Dec. 5–6; Sur-Reply.” slip op. at 2
NonePatents in suitUS 6,169,503 - PTAB · Sep 23, 2014 · IPR2014-01007 · APJ Karl D Easthom · IPR · Order
The Board granted the parties’ joint motions and terminated each proceeding as to both parties without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Upon consideration of the parties’ contentions, we determine that terminating each of the proceedings with respect to both Petitioner and Patent Owner, at this early juncture, promotes efficiency and minimizes unnecessary costs. Based on the facts of these cases, it is appropriate to enter judgment in each case without rendering a final written decision.4 See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.” slip op. at 3
NonePatents in suitUS 8,635,583 - PTAB · Sep 23, 2014 · IPR2014-01001 · APJ Karl D Easthom · IPR · Order
The Board granted the parties’ joint motions to terminate all four proceedings and terminated each as to both parties, without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“with respect to both Petitioner and Patent Owner. Id. at 2–4. The parties submit that termination is appropriate because each “proceeding is in its infancy.” Id. at 4. Issues raised during the trial have not been briefed fully and the Board has not yet decided the merits of each proceeding. Id. Petitioner indicates that it will no longer participate even if the Board does not terminate the respective proceeding. Id. According to the parties, Congress and federal courts have expressed a strong interest in encouraging settlement in litigation. Id. at 3. In exercising our independent determination, we generally expect 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). Upon consideration of the parties’ contentions, we determine that terminating each of the proceedings with respect to both Petitioner and Patent Owner, at this early juncture, promotes efficiency and minimizes unnecessary costs. Based on the facts of these cases, it is appropriate to enter judgment in each case without rendering a final written decision.4 See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.” slip op. at 3
NonePatents in suitUS 8,258,547 - PTAB · Sep 23, 2014 · IPR2014-00999 · APJ Karl D Easthom · IPR · Order
The Board granted the parties’ joint motions and terminated all four proceedings as to both parties without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The parties urge the Board to terminate each of these instant proceedings with respect to both Petitioner and Patent Owner. Id. at 2–4. The parties submit that termination is appropriate because each “proceeding is in its infancy.” Id. at 4. Issues raised during the trial have not been briefed fully and the Board has not yet decided the merits of each proceeding. Id. Petitioner indicates that it will no longer participate even if the Board does not terminate the respective proceeding. Id. According to the parties, Congress and federal courts have expressed a strong interest in encouraging settlement in litigation. Id. at 3. In exercising our independent determination, we generally expect 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). Upon consideration of the parties’ contentions, we determine that terminating each of the proceedings with respect to both Petitioner and Patent Owner, at this early juncture, promotes efficiency and minimizes unnecessary costs. Based on the facts of these cases, it is appropriate to enter judgment in each case without rendering a final written decision.4 See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.” slip op. at 3
NonePatents in suitUS 8,264,049 - PTAB · Aug 25, 2014 · IPR2014-00268 · APJ Karl D Easthom · IPR · Order
The Board granted the parties’ joint motion, terminated IPR2014-00268 without a final written decision, and ordered the settlement agreement treated as business confidential.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“termination of the proceeding and that termination is proper because the proceeding is at a preliminary stage. See Paper 26. As the motion notes, we instituted trial on May 19, 2014. Id.; Paper 17. At this preliminary stage in the proceeding, the record lacks full briefing on the trial issues.” slip op. at 2
NonePatents in suitUS 7,921,139 - PTAB · Aug 4, 2014 · CBM2014-00089 · APJ Brian J Mcnamara · CBM · Order
The Board granted the parties’ joint motion and terminated the proceeding after settlement, before institution and without a final written decision.
RulingsOther- Adverse judgmentAdverse judgmentGranted
“The parties have moved to terminate this proceeding in view of their settlement of their underlying litigation. A decision by the Board to institute a trial has not yet been entered. Thus, this matter was in the preliminary stages at the time the parties moved to terminate. U.S. Patent 8,346,894 B2, which is the subject of this proceeding, is also the subject of CBM2014-00097, CBM2014- 00101, IPR2014-00413 and IPR2014-00414. Those proceedings will not be affected by the termination of this covered business method patent review. Under these circumstances, the Board determines that it is appropriate to enter judgment1 and terminate the trial without rendering a final written decision. 37 C.F.R. § 42.72. It is, therefore, ORDERED that the joint motion to terminate the proceeding is GRANTED and the proceeding is hereby terminated;” slip op. at 2
NonePatents in suitUS 8,346,894 - PTAB · Jul 23, 2014 · IPR2014-00188 · APJ Karl D Easthom · IPR · Order
The Board granted the parties’ joint motions and terminated IPR2014-00188 without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“filed a joint motion to terminate the respective proceeding, along with a true copy of their written settlement agreement (Ex. 2001) and a release (Ex. 2002), made in connection therewith, in accordance with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). Paper 16.2 The parties also filed joint motions in each case to treat each settlement agreement and release as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 17.” slip op. at 2
NonePatents in suitUS 7,493,097 - PTAB · Jul 23, 2014 · IPR2014-00189 · APJ Karl D Easthom · IPR · Order
The Board granted the parties’ joint motions and terminated IPR2014-00188, IPR2014-00189, and IPR2014-00193 without final written decisions.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“filed a joint motion to terminate the respective proceeding, along with a true copy of their written settlement agreement (Ex. 2001) and a release (Ex. 2002), made in connection therewith, in accordance with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). Paper 16.2 The parties also filed joint motions in each case to treat each settlement agreement and release as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 17.” slip op. at 2
NonePatents in suitUS 7,493,097 - PTAB · Jul 23, 2014 · IPR2014-00193 · APJ Karl D Easthom · IPR · Order
The Board granted the parties’ joint motions and terminated IPR2014-00188, IPR2014-00189, and IPR2014-00193 without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“filed a joint motion to terminate the respective proceeding, along with a true copy of their written settlement agreement (Ex. 2001) and a release (Ex. 2002), made in connection therewith, in accordance with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). Paper 16.2 The parties also filed joint motions in each case to treat each settlement agreement and release as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 17.” slip op. at 2
NonePatents in suitUS 6,785,530
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.