- Apple Inc. v. Memoryweb, LLCAll claims unpatentablePTAB · Jul 8, 2026 · PGR2022-00006 · APJ Jason M Repko · PGR · Remand
On remand, the Board held claims 1–59 unpatentable: claims 1–6, 8–37, 40–44, and 49–59 over A3UM under §103, and claims 6, 7, 38, and 39 for lack of written description under §112.
RulingsRemand decision- RemandOther
“On remand, the Board is to determine “[w]hether the alleged inconsistency in [Petitioner’s] treatment of map images compared to other first/second versions of claim elements supports rejecting [Petitioner’s] theory on claim-construction or other merits grounds is a matter for the Board to consider in the first instance on remand, constrained by any relevantly similar now-final findings of fact and conclusions of law in the ’020 PGR and related proceedings” (CAFC Dec. 16). Thus, the two issues on remand are (1) the construction of the second map image and (2) whether A3UM teaches or suggests the claimed “second map image” under that construction.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art in 2011 would have had (1) at least a bachelor’s degree in computer science, computer engineering, or electrical engineering, and (2) at least one year of experience designing graphical user interfaces for applications such as photo management systems. Pet. 12 (citing Ex. 1003 ¶¶ 44–46). In the Institution Decision and Final Written Decision, we applied Petitioner’s proposed definition. Inst. Dec. 12; FWD 30–31. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. PO Resp. 7. We continue to find that the skill level identified by Petitioner (Pet. 12) is consistent with the record. Thus, we use the same definition here that we used in the Institution Decision and Final Written Decision.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“c. Analysis We agree with Petitioner that the “second map image” should be construed as the map image in the second person view. Reply 5. Under Petitioner’s proposed construction, the terms “first” and “second” identify which person view that the map image is within. Id. The map image’s connection to the person view is important to how the user interacts with the interface because selecting the map image in one view does something different than selecting the map image in another, as recited in claims 14 and 46.” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Here, we disagree with Patent Owner’s argument because it is based on the premise that the second map image is different from the first in a way that is not reflected in the claims. See Section II.C.3 supra. Even if “the claims consistently use the terms ‘first’ and ‘second’ to refer to separate and distinct elements,” A3UM’s first and second map images are separate and distinct elements for at least the reason they are included in separate and distinct views in the interface. See Pet. 63; Reply 5. As discussed in Section II.C.3, the second map image is the map image in the second person view. Here, Petitioner sufficiently shows that A3UM provides the same functionality for each person, including displaying the person in the Faces view with their name within A3UM’s overall user interface. See Pet. 62 (citing Ex. 1003, ¶215; Ex. 1005, 418–420). Patent Owner does not dispute this. See PO Resp.; Sur-reply. For the same reasons why A3UM teaches the “first map image” with respect to a first person view recited in claims 1 and 31, Petitioner has shown that A3UM also teaches the “second map image” in the second person view. See FWD 53–56. In sum, Patent Owner’s arguments are unpersuasive because they are based on an incorrect claim construction, and Petitioner has shown that claims 13 and 45 are unpatentable. 5. Claims 14–16 and 46–48 Apart from the arguments analyzed above, Patent Owner does not present separate arguments directed to the subject matter of claims 14–16 burden to show that the challenged claims are unpatentable. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). We have reviewed Petitioner’s arguments and evidence submitted in connection with the remaining limitations and find them persuasive as they are consistent with and supported by the evidence of record. See Pet. 63–64. Thus, Petitioner has shown that claims 14–16 and 46–48 are unpatentable over A3UM.” slip op. at 14
Patent outcomesUS 11,017,020 unpatentableClaim construction§ 103 obviousness§ 112 disclosurePatents in suitUS 11,017,020 - Syngenta Crop Protection AG v. Inflexion Point Technologies, LLCInstitution deniedPTAB · Dec 1, 2025 · PGR2025-00045 · APJ Debra L Dennett · PGR · Institution
The Board denied institution because Petitioner did not show it was more likely than not that any challenged claim was unpatentable under the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority to determine whether to institute a post-grant review under 35 U.S.C. § 324. Institution of a post-grant review is authorized by statute only when “the information presented in the petition . . . would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). The burden is on Petitioner to show that the challenged patent is eligible for postgrant review. Mylan Pharms. Inc. v. Yeda Research & Dev. Co., PGR2016- 00010, Paper 9 at 10 (PTAB Aug. 15, 2016) (holding that the ultimate burden of persuasion remains with a petitioner to demonstrate that the challenged patent is eligible for post-grant review). Upon consideration of the Petition, Preliminary Response, and the cited evidence, we determine that Petitioner has not shown that it is more likely than not that any of the challenged claims are unpatentable. We thus determine to not institute a post-grant review of the ’027 patent based on the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“a Bachelor of Science degree in Agricultural or Mechanical Engineering with 2–4 years of practical, applied experience in the field of agricultural machinery, including systems integration and fluid handling and sprayer control systems, or equivalent experience. Prelim. Resp. 12 (citing Ex. 2001, ¶ 59). Patent Owner states that the differences in the asserted levels of ordinary skill should not change the outcome of the Petition. Id. For the purposes of this decision, we adopt Petitioner’s definition, which appears consistent with the level of skill shown in the prior art references of record and the ’027 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). Our analysis, however, would not change were we to adopt Patent Owner’s definition.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“Patent Owner contends that claim construction is necessary for the “seed-applied substance” term because Petitioner allegedly ignores the teaching of the specification in evaluating the term. Prelim. Resp. 12. Patent Owner points to the specification, which defines a “seed-applied substance” as “includ[ing] any composition applied to seeds prior to the seeds being planted (e.g., when the seed comes in contact with the soil in a field).” Id. at 13 (quoting Ex. 1001, 7:45-48). Patent Owner contends that the term means “a substance that is applied directly to the seed before the seed comes into contact with the soil in a field.” Id. (citing Ex. 2001, ¶ 55). According to Patent Owner, Petitioner erroneously uses a definition that “allows the ‘seedapplied substance’ to be applied to the seed (and soil) as the seed lay planted in the soil.’” Id. For the purpose of addressing Petitioner’s grounds, we use the definition of “seed-applied substance” provided in the ’027 patent, i.e., “any composition applied to seeds prior to the seeds being planted (e.g., when the seed comes in contact with the soil in a field).” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (“[A] patentee may choose to be his own lexicographer and use terms in a manner other than their ordinary meaning, as long as the special definition of the term is clearly stated in the patent specification or file history.”).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“3. Analysis Our analysis of whether Wagers discloses the limitation “individually applying the desired application amount of the selected type of the seed-applied substance to each seed as it is being delivered to the soil” is dispositive of Petitioner’s challenge to claim 1 as anticipated.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites GrahamPatents in suitUS 12,102,027 - Apple Inc. v. Carbyne Biometrics, LLCInstitution deniedPTAB · Aug 1, 2024 · IPR2024-00507 · APJ Jameson Lee · IPR · Institution
The Board denied institution because Apple did not show a reasonable likelihood of proving claims 2, 4–6, 12, 15, 21, 23–25, 31, and 34 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the contentions and the evidence of record before us, we conclude Petitioner has not shown a reasonable likelihood that it would prevail in establishing the unpatentability of at least one challenged claim of the ’105 patent. Accordingly, we decline to institute inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“The test for written description support is whether the application reasonably would have conveyed to one with ordinary skill in the art “the inventor possessed the invention at the time of that original disclosure.” Pandrol USA, LP v. Airboss Ry. Prods., Inc., 424 F.3d 1161, 1165 (Fed. Cir. 2005); see also Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991) (“the applicant must also convey with reasonable clarity to those skilled in the art that, as of the filing date sought, she or he was in possession of the invention”). The disclosure in the provisional application as cited by Patent Owner regarding policies is broad and does not convey with reasonable clarity what specifically are the policies, such as a policy for backup based on whether the first and second devices are of the same brand. The broad disclosure does not provide written description support for the narrow and specific limitation recited in independent claims 1, 18, and 25, i.e., “based at least in part on the first device being a same brand as a second device, initiating a backup, to the second device, of at least a portion of the at least one record.” Ex. 1001, 25:7–10, 26:30–32, 28:23–25.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art “would have had a bachelor’s degree in [] electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of authentication techniques, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 8 (citing Ex. 1003 ¶¶ 18–22). On this record, we adopt Petitioner’s statement of the level of ordinary skill in the art, except for the qualifier “at least” which applies to experience and which would improperly extend the scope of experience to the realm of an expert. It is supported by the testimony of Dr. McDaniel and not disputed by Patent Owner (Prelim. Resp. 11). Further, it appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“and assuming that Cheng discloses backing up of data from a first user device to a second, new user device, without any user service bureau in between, Petitioner has not shown sufficient motivation to combine the teachings of Kodama with the teachings of Kesanupalli and Cheng to account for the remainder of limitation [1.8], i.e., initiate the backup “based at least in part on the first device being a same brand as a second device.” Ex. 1001, 25:7–10. Petitioner explains:” slip op. at 40
§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 11,475,105 - Apple Inc. v. Carbyne Biometrics, LLCInstitution deniedPTAB · Aug 1, 2024 · IPR2024-00333 · APJ Jameson Lee · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was obvious over the asserted prior-art combinations.
RulingsInstitution decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“The test for written description support is whether the application reasonably would have conveyed to one with ordinary skill in the art “the inventor possessed the invention at the time of that original disclosure.” Pandrol USA, LP v. Airboss Ry. Prods., Inc., 424 F.3d 1161, 1165 (Fed. Cir. 2005); see also Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991) (“the applicant must also convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention”). The disclosure in the provisional application as cited by Patent Owner regarding policies is broad and does not convey with reasonable clarity what specifically are the policies, such as a policy for backup based on whether the first and second devices are of the same brand. The broad disclosure does not indicate possession by the inventor the narrow and specific limitation recited in independent claims 1, 18, and 25, i.e., “based at least in part on the first device being a same brand as a second device, initiating a backup, to the second device, of at least a portion of the at least one record.” Ex. 1001, 25:7–10, 26:30–32, 28:23–25. Patent Owner states: “A determination ‘based on’ policies and the identity of the device would have conveyed to a POSITA that the backup could have been based on a policy including the device being of the same brand as the second device.” Prelim. Resp. 46 (emphasis in original). The assertion is misplaced because it refers to what “could have been” a policy, rather than what policy the provisional application disclosure conveys the inventor actually possessed. What potentially “could have been” is mere speculation, not written description indicating possession.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Citing testimony from Dr. McDaniel, Petitioner asserts a person of ordinary skill in the art “would have had a bachelor’s degree in [] electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of authentication techniques, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 8 (citing Ex. 1003 ¶¶ 18–22). 9 The record does not include any evidence of secondary considerations of nonobviousness. On this record, we adopt Petitioner’s statement of the level of ordinary skill in the art, except for the qualifier “at least” which applies to experience and which would improperly extend the scope of experience to the realm of an expert. It is supported by the testimony of Dr. McDaniel and not disputed by Patent Owner (Prelim. Resp. 12). Further, it appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). C.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the contentions and the evidence of record before us, we conclude Petitioner has not shown a reasonable likelihood that it would prevail in establishing the unpatentability of at least one challenged claim of the ’105 patent. Accordingly, we decline to institute inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner asserts: Kodama recognizes “if data restoration is to be performed to a different product or a different manufacturer, the format and product proprietary information of data between the products will differ.” APPL-1010, [0157]. POSITA would recognize this differing format can create compatibility issues and thus would recognize an advantage of, and reason for, basing the initiation of data transfer to the second device on brand and thereby avoiding these compatibility issues as taught by Kodama. APPL- 1003, ¶190. Pet. 60. But the same brand requirement of Kodama is not provided to solve any problem with differing formats. Kodama states: At Step 1313 of the restoration processing, if data restoration is to be performed to a different product of a different manufacturer, the format and product proprietary information of data between the products will differ. Thus, before the restoration processing function of the online backup service system 0128 sends the data read at Step 1318 to the HDD recorder 0116, the data format is converted into the file format of the HDD recorder 0116 of the restoration destination. Ex. 1010 ¶ 157. Kodama does not describe format compatibility as presenting any problem. Requiring brand identity between the first device and the other devices of the user in Jakobsson ’351 to synchronize data among all of the user’s devices is also not an advantage. The devices of the user in Jakobsson ’351 are devices the user already owns, possesses, and uses. They are not a new device as in the case of Kodama, where a broken device may be expected to lead to the user acquiring a new device of the same brand as replacement. Petitioner provides no explanation as to why one would expect all of the user’s devices in Jakobsson ’351 would be of the same brand. Applying a same-brand requirement would substantially undermine and may even render inoperative Jakobsson ’351’s feature of synchronizing user data among all of the user’s devices. We do not see this result as either an advantage or an improvement.” slip op. at 51
§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 11,475,105 - Home Depot U.S.A., Inc. v. Lynk Labs, Inc.All claims unpatentablePTAB · Jul 31, 2024 · PGR2023-00016 · APJ Stephen E Belisle · PGR · Final written decision
Claims 1–3, 5, 7–10, 12, 14–17, and 19 are unpatentable based on lack of written description, indefiniteness, anticipation, and obviousness.
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateUnpatentable
“B. Claims 1–20 of the ’705 Patent Petitioner argues that claims 1–20 of the ’705 patent have an effective” slip op. at 19
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not enabledUnpatentable
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
Patent outcomesUS 11,297,705 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · NautilusPatents in suitUS 11,297,705 - PTAB · Feb 23, 2024 · IPR2023-01285 · APJ Barry L Grossman · IPR · Institution
The Board instituted IPR on claims 1–17 on all asserted grounds, finding a reasonable likelihood that petitioner would prevail on at least one claim based on the ARES 6 Video.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityOther
“Based on the record before us, we need not resolve whether Mr. Alubbad is, or is not, a real party-in-interest (“RPI”) at this stage of the proceeding because there is no argument or evidence that determining Mr. Alubbab’s RPI status will impact the merits of this IPR proceeding. See Unified Patents, LLC v. Memoryweb, LLC, IPR2021-01413, Paper 76 at 5 (PTAB May 22, 2023) (a Director Review Decision vacating a Board determination and Order and stating “[t]he Board should not have determined whether [two companies] are RPIs in this proceeding given that determination was not necessary to resolve the proceeding.”). The Memoryweb decision further stated “[t]he Board can and should make a determination of the real parties in interest or privity in any proceeding in which that determination may impact the underlying proceeding, for example, but not limited to, a time bar under 35 U.S.C. § 315(b) or an estoppel under 35 U.S.C. § 315(e) that might apply.”). There is no argument or evidence of a time bar, estoppel, or other relevant event that may impact this IPR proceeding based on Mr. Alubbad’s status as a RPI.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The Supreme Court has held that a decision to institute under 35 U.S.C. § 314 may not institute on less than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 2
- BurdenInstituted
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“[A]t the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (designated precedential). “To qualify as a printed publication, a reference ‘must have been sufficiently accessible to the public interested in the art.’” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989)). “A reference will be considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.’” Id. (quoting Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008)). slip op. at 14
Claim construction§ 102 anticipation§ 112 disclosurePatents in suitUS 11,174,677 - Google LLC v. Jenam Tech, LLCInstitution deniedPTAB · Dec 8, 2023 · IPR2023-00928 · APJ Jason M Repko · IPR · Institution
The Board denied institution because the challenged claims were entitled to the 2010 priority date, making Morris not prior art and defeating the sole obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claims challenged in the Petition. Thus, we deny institution of inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“written-description requirement. Pet. 74. We disagree for two principal reasons. First, the paragraph explicitly describes a particular feature that is different from TCP: the ITP information may be in locations other than those specified by a particular version of TCP. Appl. ’454 ¶ 80. Second, Petitioner’s argument is based on a narrow reading that is divorced from the rest of the specification describing the invention’s purpose and scope: communication and cooperation between nodes. See Pet. 74. The nodes must communicate and cooperate because TCP has various” slip op. at 10
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)New argument disregardedDenied
“4 In an email to the Board on September 25, 2023, Petitioner requested authorization to file a four-page reply to Patent Owner’s Preliminary Response to address whether the claims fall within an exception of Gentry Gallery. Ex. 3001. Petitioner’s request was denied. Id. It may always be the case that a Petitioner disagrees with how Patent Owner characterizes the facts and law presented in the Petition. Our rules, however, provide for a Petitioner’s Reply only when good cause exists. 37 C.F.R. § 42.108(c). Petitioner failed to show good cause because the issues that Petitioner identified in its request could have been, but were not, addressed in the petition. See id.” slip op. at 13
§ 112 disclosurePatents in suitUS 10,986,217 - Google LLC v. Jenam Tech, LLCInstitution deniedPTAB · Dec 8, 2023 · IPR2023-00927 · APJ Jason M Repko · IPR · Institution
The Board denied institution because Morris was not prior art; the challenged claims were entitled to the February 27, 2010 priority date based on written-description support.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claims challenged in the Petition. Thus, we deny institution of inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“The test for written description “requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The specification must clearly allow persons of ordinary skill in the art to recognize that the inventor invented what is claimed and “reasonably” convey to those skilled in the art “that the inventor had possession of the claimed subject matter as of the filing date.” Id. The “level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“We disagree that the challenged claims are not entitled to February 27, 2010. Thus, Morris is not prior art, and Petitioner has not shown a reasonable likelihood of prevailing on any ground. Our analysis follows.” slip op. at 7
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“4 In an email to the Board on September 25, 2023, Petitioner requested authorization to file a four-page reply to Patent Owner’s Preliminary Response to address whether the claims fall within an exception of Gentry Gallery. Ex. 3001. Petitioner’s request was denied. Id. It may always be the case that a Petitioner disagrees with how Patent Owner characterizes the facts and law presented in the Petition. Our rules, however, provide for a Petitioner’s Reply only when good cause exists. 37 C.F.R. § 42.108(c). Petitioner failed to show good cause because the issues that Petitioner identified in its request could have been, but were not, addressed in the petition. See id.” slip op. at 13
§ 103 obviousness§ 112 disclosurePatents in suitUS 10,986,217 - Google LLC v. Jenam Tech, LLCInstitution deniedPTAB · Dec 7, 2023 · IPR2023-00925 · APJ Jason M Repko · IPR · Institution
The Board denied institution because Morris was not prior art: claims 1 and 16 were entitled to the ’454 application’s priority date, so the obviousness challenge did not meet the institution threshold.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claims challenged in the Petition. Thus, we deny institution of inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“We disagree for two principal reasons. First, the ’454 application explicitly describes a particular feature that is different from TCP: the ITP information may be in locations other than those specified by a particular version of TCP. Appl. ’454 ¶ 80. Second, Petitioner’s argument about the non-TCP features is based on a narrow reading of that limitation and is divorced from the rest of the specification describing the invention’s purpose and scope: communication and cooperation between nodes. See Pet. 70–71.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“We disagree that the challenged claims are not entitled to February 27, 2010. Thus, Morris is not prior art, and Petitioner has not shown a reasonable likelihood of prevailing on any ground. Our analysis follows.” slip op. at 7
§ 103 obviousness§ 112 disclosurePatents in suitUS 11,050,855 - Google LLC v. Jenam Tech, LLCInstitution deniedPTAB · Dec 7, 2023 · IPR2023-00926 · APJ Jason M Repko · IPR · Institution
The Board denied institution because Morris was not prior art: the challenged claims were entitled to the ’454 application’s priority date, so the petition showed no reasonable likelihood of unpatentability.
RulingsInstitution decision- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“We disagree for two principal reasons. First, the ’454 application explicitly describes a particular feature that is different from TCP: the ITP information may be in locations other than those specified by a particular version of TCP. Appl. ’454 ¶ 80. Second, Petitioner’s argument about the non-TCP features is based on a narrow reading of that limitation and is divorced from the rest of the specification describing the invention’s purpose and scope: communication and cooperation between nodes. See Pet. 64–65.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claims challenged in the Petition. Thus, we deny institution of inter partes review.” slip op. at 2
§ 112 disclosurePatents in suitUS 11,050,855
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.