- Asustek Computer, Inc. / Asus Computer International v. Avago Technologies General IP (Singapore) Pte. LtdRehearing grantedPTAB · Mar 8, 2017 · IPR2016-00647 · APJ Glenn J Perry · IPR · Rehearing
Granted petitioner’s request for reconsideration and added institution of the §102 Cioffi challenge to claims 8, 11, 12, 14, 15, 18, and 19.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“III. CONCLUSIONS For the foregoing reasons, we are persuaded that our Decision to Institute overlooked or misapprehended the matters discussed in this Decision, and that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail with respect to its challenge as to the patentability of claims 8, 11, 12, 14, 15, 18, and 19 as being anticipated by Cioffi. The Board has not made a final determination on the patentability of any challenged claims or the construction of any claim terms. Our final decision will be based on the record as fully developed during trial.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Upon review on rehearing, we are persuaded the Petition demonstrates sufficiently for purposes of institution that data and synchronization signals are multiplexed and encoded by MUX & ENCODER 43 in Cioffi’s Figure 3. Multiplexed sub-symbols are passed to modulator 45, which incorporates an inverse fast Fourier transform (IFFT). Based on this understanding of Cioffi, the detailed reading of claims 8, 11, 12, 14, 15, 18, and 19 on Cioffi at Petition pages 35–53, supported by the Lyon Declaration (Ex. 1003), presents a reasonable likelihood of Petitioner prevailing as to this challenge. We, therefore, modify our Decision on Institution to include this challenge.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Upon review on rehearing, we are persuaded the Petition demonstrates sufficiently for purposes of institution that data and synchronization signals are multiplexed and encoded by MUX & ENCODER 43 in Cioffi’s Figure 3. Multiplexed sub-symbols are passed to modulator 45, which incorporates an inverse fast Fourier transform (IFFT). Based on this understanding of Cioffi, the detailed reading of claims 8, 11, 12, 14, 15, 18, and 19 on Cioffi at Petition pages 35–53, supported by the Lyon Declaration (Ex. 1003), presents a reasonable likelihood of Petitioner prevailing as to this challenge. We, therefore, modify our Decision on Institution to include this challenge.” slip op. at 4
§ 102 anticipationPatents in suitUS 6,430,148 - PTAB · Dec 7, 2015 · IPR2015-01438 · APJ Michael R Zecher · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding before deciding whether to institute review of claims 1–3 and 8–12.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“they have settled their disputes regarding the ’104 patent. Paper 7, 2. The parties further represent that there are numerous related matters in the United States District Court for the Northern District of California that have been dismissed with prejudice or stayed pending final determination of two related inter partes reviews involving U.S. Patent No. 7,550,870 B2 (“the ’870 patent”). Id. at 3. Based on the joint requests filed by the parties in the two proceedings involving the ’870 patent, those cases have been terminated. Avocent Huntsville Corp. v. Cyber Switching Patents, LLC, Cases IPR2015-00690 & IPR2015-00725 (PTAB Dec. 7, 2015) (Paper 33 in each proceeding). Lastly, the parties do not represent that the ’104 patent is involved in any other proceedings before the Office. See generally id. at 2–4. Under these circumstances, we determine that it is appropriate to terminate this proceeding without rendering any further decisions. See 37 C.F.R. § 42.72.” slip op. at 2
NonePatents in suitUS 7,672,104 - Foursquare Labs, Inc. v. Silver State Intellectual Technologies, Inc.No claims unpatentablePTAB · May 26, 2015 · IPR2014-00159 · APJ Lynne E Pettigrew · IPR · Final written decision
Claim 1 was not shown unpatentable because Fraccaroli does not disclose all claim limitations arranged or combined in the same way.
RulingsFinal written decision- BurdenNot shown unpatentable
“example when reviewing an allegedly anticipating prior art reference. Reply 7 (citing Net MoneyIN, 545 F.3d at 1369 n.5). Nevertheless, we still must determine whether the reference discloses all of the limitations arranged or combined in the same way as recited in the claim, even while looking at the reference as a whole. See Net MoneyIN, 545 F.3d at 1371. Claim 1 is a method claim reciting specific steps. Limitation [f] recites the step of “receiving, from the user, additional data regarding the user, the additional data being related to the geographic location of the user.” In Fraccaroli, only the convention application includes this step, with the information in the event field corresponding to the “additional data” recited in the claim. See Ex. 1003, 8:57–9:5. For limitation [h], which recites the step of “receiving from the user an access list of possible requesters of the data and the additional data,” Petitioner relies on information provided by the user in Fraccaroli’s closest friend application, i.e., a list of known persons with whom the user wishes to share information. Pet. 30 (citing Ex. 1003, 8:44–48). Notably, Petitioner does not contend that the user in Fraccaroli’s convention application places the information center or registration desk on an access list. See Pet. 30–31; Tr. 60:7–11. Thus, the convention application does not include the step of receiving an “access list” from the user (limitation [h]), and the closest friend application does not include the step of receiving “additional data” from the user (limitation [f]). For limitation [j]—the step of providing location data and additional data to possible requesters on the access list—Petitioner cites Fraccaroli’s description of message signals sent after a match is made. Pet. 31–32. Petitioner contends that message signals containing information from a user’s matching profile are sent in any of the embodiments disclosed in Fraccaroli. Reply 13 (citing Ex. 1003, 10:40–67). Nevertheless, Fraccaroli does not describe a process that includes both the steps of receiving “additional data” from a user and receiving an “access list” from a user. Therefore, even if message signals are sent in all embodiments or applications described in Fraccaroli, the reference does not disclose a process in which message signals including “additional data” are sent to possible requesters on an “access list,” as set forth in limitation [j]. Accordingly, we find that Petitioner has not shown that Fraccaroli discloses all of the limitations arranged or combined in the same way as recited in claim 1 and, thus, has not shown that Fraccaroli anticipates claim 1.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“example when reviewing an allegedly anticipating prior art reference. Reply 7 (citing Net MoneyIN, 545 F.3d at 1369 n.5). Nevertheless, we still must determine whether the reference discloses all of the limitations arranged or combined in the same way as recited in the claim, even while looking at the reference as a whole. See Net MoneyIN, 545 F.3d at 1371. Claim 1 is a method claim reciting specific steps. Limitation [f] recites the step of “receiving, from the user, additional data regarding the user, the additional data being related to the geographic location of the user.” In Fraccaroli, only the convention application includes this step, with the information in the event field corresponding to the “additional data” recited in the claim. See Ex. 1003, 8:57–9:5. For limitation [h], which recites the step of “receiving from the user an access list of possible requesters of the data and the additional data,” Petitioner relies on information provided by the user in Fraccaroli’s closest friend application, i.e., a list of known persons with whom the user wishes to share information. Pet. 30 (citing Ex. 1003, 8:44–48). Notably, Petitioner does not contend that the user in Fraccaroli’s convention application places the information center or registration desk on an access list. See Pet. 30–31; Tr. 60:7–11. Thus, the convention application does not include the step of receiving an “access list” from the user (limitation [h]), and the closest friend application does not include the step of receiving “additional data” from the user (limitation [f]). For limitation [j]—the step of providing location data and additional data to possible requesters on the access list—Petitioner cites Fraccaroli’s description of message signals sent after a match is made. Pet. 31–32. Petitioner contends that message signals containing information from a user’s matching profile are sent in any of the embodiments disclosed in Fraccaroli. Reply 13 (citing Ex. 1003, 10:40–67). Nevertheless, Fraccaroli does not describe a process that includes both the steps of receiving “additional data” from a user and receiving an “access list” from a user. Therefore, even if message signals are sent in all embodiments or applications described in Fraccaroli, the reference does not disclose a process in which message signals including “additional data” are sent to possible requesters on an “access list,” as set forth in limitation [j]. Accordingly, we find that Petitioner has not shown that Fraccaroli discloses all of the limitations arranged or combined in the same way as recited in claim 1 and, thus, has not shown that Fraccaroli anticipates claim 1.” slip op. at 13
- RehearingRehearing, grantedGranted
“Subsequent to institution, Petitioner filed a Request for Rehearing, Paper 8, which we granted for the limited purpose of modifying our construction of one claim term, Paper 13 (“Reh’g Dec.”). Thereafter, Patent Owner filed a Patent Owner Response, accompanied by a Declaration of Dr. Craig Rosenberg. Paper 14 (“PO Resp.”). Petitioner filed a Reply to the Patent Owner Response, along with a Declaration of Mr. Chris Schmandt. Paper 17 (“Reply”); Ex. 1027. We held an oral hearing on February 24, 2015. A transcript of the oral hearing is included in the record. Paper 27 (“Tr.”).” slip op. at 2
Patent outcomesUS 7,343,165 not shown unpatentable§ 102 anticipationPatents in suitUS 7,343,165 - Mercedes-Benz USA, LLC / Mercedes-Benz U.S. International, Inc. v. Velocity Patent LLCAdverse judgmentPTAB · Jan 6, 2015 · IPR2014-01247 · APJ Peter P Chen · IPR · Adverse judgment
The Board granted Patent Owner’s request to cancel challenged claims 31 and 32 and entered adverse judgment against Patent Owner before institution.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“of claims 31 and 32 (Paper 19). Under 37 C.F.R. § 42.73(b), cancellation of all challenged claims leaving no remaining claims for trial is construed as a request for entry of adverse judgment. ORDER Accordingly, it is ORDERED that Patent Owner’s request to cancel claims 31 and 32 of U.S. Patent No. 5,954,781, is granted; and FURTHER ORDERED that adverse judgment is entered herein against Patent Owner.” slip op. at 2
NonePatents in suitUS 5,954,781 - PTAB · Sep 2, 2014 · IPR2014-00472 · APJ Glenn J Perry · IPR · Order
The Board granted the parties’ joint motion to terminate the preliminary IPR proceeding and terminated it without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“these circumstances, the Board determines that it is appropriate to enter judgment2 and terminate without rendering a final written decision under 37 C.F.R. § 42.72. ORDER It is, therefore, ORDERED that the joint motion to terminate this proceeding is GRANTED and the proceedings are hereby terminated; and FURTHER ORDERED that the settlement agreement shall be treated as business confidential information.” slip op. at 3
NonePatents in suitUS 7,096,358 - PTAB · Aug 25, 2014 · IPR2014-00582 · APJ Glenn J Perry · IPR · Order
The Board granted the parties’ joint motions and terminated the three proceedings before institution, without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Each of the captioned inter partes review cases is in its preliminary stage. The Petition in each of the captioned cases has not been granted. Under these circumstances, the Board determines that it is appropriate to enter judgment4 and terminate each of the trials without rendering a final written decision under 37 C.F.R. § 42.72.” slip op. at 3
NonePatents in suitUS 8,149,124 - PTAB · Aug 25, 2014 · IPR2014-00588 · APJ Glenn J Perry · IPR · Order
The Board granted the parties’ joint motions and terminated the proceedings before institution, without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Each of the captioned inter partes review cases is in its preliminary stage. The Petition in each of the captioned cases has not been granted. Under these circumstances, the Board determines that it is appropriate to enter judgment4 and terminate each of the trials without rendering a final written decision under 37 C.F.R. § 42.72.” slip op. at 3
NonePatents in suitUS 8,466,795 - PTAB · Aug 11, 2014 · IPR2014-00760 · APJ Glenn J Perry · IPR · Order
The Board granted the parties’ joint motions and terminated the proceedings as to all parties without issuing a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The parties have requested that these trial proceedings be terminated pursuant to a settlement. On August 6, 2014, the Board authorized2 the parties to file a Joint Motion to Terminate these proceedings along with a true copy of any and all settlement agreements between them related to the patent at issue. The parties filed in each case a Joint Motion to Terminate3 in accordance with 35 U.S.C. § 327(a) and 37 C.F.R. § 42.72. The parties also filed in each case a Joint Motion to Treat the Parties’ Settlement Agreement as Business Confidential4 pursuant to 35 U.S.C. § 317(b) and Rule 42.74. The settlement agreement5 purports to settle matters between the parties with respect to each of the patents at issue in this inter partes review. Each of the captioned inter partes reviews is in its preliminary stage. A decision on the respective Petitions6 has not yet been rendered. The parties have identified the following USPTO proceedings that are pending.” slip op. at 2
NonePatents in suitUS 8,048,032 - PTAB · Aug 11, 2014 · IPR2014-00763 · APJ Glenn J Perry · IPR · Order
The Board granted the parties’ joint motions and terminated the proceedings as to all parties under the settlement, without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“ORDER It is, therefore, ORDERED that the joint motions to terminate these proceedings are GRANTED and the proceedings are hereby terminated as to all parties including, Petitioners and Patent Owner; and FURTHER ORDERED that the parties’ joint requests that the settlement agreement, as filed in each case, be treated as business confidential information and kept separate from the file of the involved patent under the provisions of to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), are GRANTED.” slip op. at 4
NonePatents in suitUS 8,292,850 - ZTE (USA), Inc. v. Pragmatus Mobile LLCAdverse judgmentPTAB · Aug 11, 2014 · IPR2014-00670 · APJ Glenn J Perry · IPR · Adverse judgment
The Board granted the parties’ joint motion and terminated the proceeding by settlement before deciding the petition.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“The parties have requested that these trial proceedings be terminated pursuant to a settlement. On August 5, 2014, the Board authorized (Paper 8) the parties to file a Joint Motion to Terminate this proceeding along with a true copy of any and all settlement agreements between them related to the patent at issue. On August 8, 2014, the parties filed a Joint Motion to Terminate (Paper 9) in accordance with 35 U.S.C. § 327(a) and 37 C.F.R. § 42.72. The parties also filed a Joint Motion to Treat the Parties’ Settlement Agreement as Business Confidential pursuant to 35 U.S.C. § 317(b) and Rule 42.74 (Paper 10). The settlement agreement (Paper 11), marked “Confidential,” purports to settle matters between the parties with respect to the patent at issue in this inter partes review. This inter partes review is in its preliminary stage. A decision on the Corrected Petition (Paper 4) has not yet been rendered. The parties have not identified any other USPTO proceedings related to the patent at issue. Under these circumstances, the Board determines that it is appropriate to enter judgment1 and terminate the trial without rendering a final written decision under 37 C.F.R. § 42.72.” slip op. at 2
NonePatents in suitUS 8,466,795
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.