- 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 - PTAB · Oct 31, 2014 · IPR2014-00323 · APJ Brian J Mcnamara · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding under their settlement without issuing a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Paper 10. Patent Owner has not yet filed a Patent Owner Response and the parties have not taken any discovery. Paper 20, 1. In a telephone conference on October 23, 2014, the parties confirmed that there are no other written or verbal agreements between them concerning the patent that is the subject of this proceeding. 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; FURTHER ORDERED that the parties’ joint request that the settlement agreement be treated as business confidential information which shall be kept separate from the file of the involved patents under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is GRANTED.” slip op. at 2
NonePatents in suitUS 8,220,959 - PTAB · Jun 11, 2014 · IPR2014-00362 · APJ Sally C Medley · IPR · Order
The Board granted the parties’ joint motion to terminate the proceeding before institution and granted their request to keep the settlement agreement confidential.
RulingsOther- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingGranted
“§ 42.74, the parties filed a true copy of a settlement agreement along with a joint request to treat the settlement agreement as business confidential, to be kept separate from the patent file. In addition, the parties filed a joint motion to terminate the proceeding pursuant to 35 U.S.C. § 317. This case is in the preliminary proceeding1 stage; no institution of a trial has been made. Based on the facts of this case, it is appropriate to enter judgment.2 Therefore, the joint motion to terminate the proceeding is granted.” slip op. at 1
NonePatents in suitUS 6,306,141 - PTAB · Mar 31, 2014 · IPR2013-00241 · APJ Brian J Mcnamara · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding by settlement without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under these circumstances, we determine that it is appropriate to enter judgment1 and to 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; and FURTHER ORDERED that the parties’ joint request that the settlement agreement be treated as business confidential information which shall be kept separate from the file of the involved patents under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is GRANTED.” slip op. at 3
NonePatents in suitUS 6,370,954 - PTAB · Mar 31, 2014 · IPR2013-00254 · APJ Brian J Mcnamara · IPR · Order
The Board granted the parties’ joint motion to terminate the proceeding and their request to keep the settlement confidential, without issuing a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“It is, therefore, ORDERED that the joint motion to terminate the proceeding is GRANTED, and the proceeding is hereby terminated; and FURTHER ORDERED that the parties’ joint request that the settlement agreement be treated as business confidential information which shall be kept separate from the file of the involved patents under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is GRANTED.” slip op. at 3
NonePatents in suitUS 6,034,419 - PTAB · Mar 11, 2014 · IPR2013-00244 · APJ Brian J Mcnamara · IPR · Order
The Board granted the parties’ joint motion to terminate the instituted proceeding after settlement, without issuing a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“2013. Paper 12. However, this matter was in the preliminary stages at the time the parties moved to terminate and a Patent Owner Response has not yet been filed. In the Motion To Terminate, the parties indicate that there are no current litigations involving the subject U.S. Patent No. 8,419,214 B2. 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; FURTHER ORDERED that the parties’ joint request that the settlement agreement be treated as business confidential information which shall be kept separate from the file of the involved patents under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is GRANTED.” slip op. at 2
NonePatents in suitUS 8,419,214 - PTAB · Mar 11, 2014 · IPR2013-00238 · APJ Brian J Mcnamara · IPR · Order
The Board granted the parties’ joint motion, terminated the proceeding after settlement, and did not issue a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“to a settlement. On February 25, 2014, the Board authorized the parties to file a Joint Request To Terminate and a Joint Request to File the Settlement as Business Confidential under 37 C.F.R. 42.74(c). Paper 24. On February 27, 2014, the parties filed a Joint Motion Terminate and a Joint Request To Keep Paper Separate as Business Confidential Information. Paper 25. See 35 U.S.C. § 317; 37 C.F.R. § 42.72. With their Motion To Terminate and Seal, the parties also filed a copy of a written settlement agreement. Ex. 2009.” slip op. at 2
NonePatents in suitUS 8,220,959 - 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 - New Bay Capital, LLC v. Virnetx, Inc.Adverse judgmentPTAB · Nov 12, 2013 · IPR2013-00375 · APJ Sally C Medley · IPR · Adverse judgment
The Board granted New Bay’s unopposed motion to terminate and terminated the proceeding after construing its abandonment as a request for adverse judgment.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“an unopposed motion to terminate this proceeding, representing that New Bay “is abandoning the contest.” Paper 15 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 6,502,135
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.