- PTAB · Apr 1, 2014 · IPR2013-00420 · APJ Lynne E Pettigrew · IPR · Order
The Board granted the parties’ joint motion and terminated IPR2013-00420 as to all parties without issuing a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“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 Petitioner is met. Under 35 U.S.C. § 317(a), “[i]f 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).” Toyota is the sole petitioner in this review. The Board has discretion to terminate this review with respect to AVS as Patent Owner.” slip op. at 2
NonePatents in suitUS 7,202,776 - PTAB · Apr 1, 2014 · IPR2013-00423 · APJ Michael W Kim · IPR · Order
The Board granted the parties’ joint motion and terminated the review as to all parties without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“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 Petitioner is met. Under 35 U.S.C. § 317(a), “[i]f 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).” Toyota is the sole petitioner in this review. The Board has discretion to terminate this review with respect to AVS as Patent Owner.” slip op. at 2
NonePatents in suitUS 8,041,483 - PTAB · Apr 1, 2014 · IPR2013-00422 · APJ Michael W Kim · IPR · Order
The Board granted the parties’ joint motion and terminated IPR2013-00422 as to Toyota and AVS without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“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 Petitioner is met. Under 35 U.S.C. § 317(a), “[i]f 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).” Toyota is the sole petitioner in this review. The Board has discretion to terminate this review with respect to AVS as Patent Owner.” slip op. at 2
None - PTAB · Mar 28, 2014 · IPR2013-00412 · APJ Jameson Lee · IPR · Order
The Board granted the parties’ joint motion and terminated IPR2013-00412 as to Toyota and AVS without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“ORDER Termination of Proceeding 37 C.F.R. § 42.72 On March 26, 2014, the parties filed a joint motion to terminate this inter partes review with respect to both Petitioner (“Toyota”) and Patent Owner (“AVS”). Paper 35. Also on March 26, 2014, the parties filed a copy of their written settlement agreement covering Patent 6,738,697 involved in this inter partes review (Ex. 2001), and a joint request to have their settlement agreement treated as confidential business information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 36). The parties represent that there are no collateral agreements referred to in their settlement agreement. Paper 35, 1.” slip op. at 1
- PTAB / AIA Trials › §315(e) estoppelOther
“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 Petitioner is met. 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).” Toyota is the sole petitioner in this review. The Board has discretion to terminate this review with respect to AVS as Patent Owner.” slip op. at 2
NonePatents in suitUS 6,738,697 - PTAB · Mar 28, 2014 · IPR2013-00413 · APJ Barbara A Parvis · IPR · Order
The Board granted the joint motion and terminated IPR2013-00413 as to Toyota and AVS without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“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 Petitioner is met. 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).” Toyota is the sole petitioner in this review. The Board has discretion to terminate this review with respect to AVS as Patent Owner.” slip op. at 2
NonePatents in suitUS 6,738,697 - PTAB · Mar 26, 2014 · CBM2013-00005 · APJ Sally C Medley · CBM · Final written decision
Original claims 1–4 were cancelled at Patent Owner’s request; proposed substitute claims 5–8 were denied for insufficient written-description support and other motion-to-amend deficiencies.
RulingsFinal written decision- Adverse judgmentAdverse judgmentGranted
“consideration. In the motion, Markets-Alert requests cancellation of claims 1-4 and requests to add proposed claims 5-8. Mot. to Amend 1-2. The cancellation of claims 1-4 is not based on any contingency. There is no indication, for example, that the proposed claims 5-8 should be considered only if the original patent claims 1-4 are determined unpatentable. Rather, the substitute motion to amend leaves no doubt that Markets-Alert unequivocally requests cancellation of claims 1-4. None of the papers filed by Markets-Alert, once trial was instituted, indicates that Markets-Alert is 6 Markets-Alert was made aware of the Petitioner’s allegations that the patent owner response “is inappropriate as it merely contains arguments as to why the proposed substitute claims are patentable over the prior art.” Paper 41 at 2. Nonetheless, Markets-Alert did not seek authorization to file a substitute patent owner response. arguing for the patentability of claims 1-4. Bloomberg understood the record to mean that Markets-Alert seeks to cancel claims 1-4, not based on any contingency. Pet. Rep. 1 (“MA has unambiguously canceled each of the challenged ’357 Patent claims 1-4, upon which the Board instituted trial.”); Tr. 5:11-18. During oral argument, counsel for Markets-Alert indicated that Markets-Alert intended the cancellation of claims 1-4 to be contingent upon a Board determination as to the patentability with respect to claims 1-4. See, e.g., Tr. 22-26. When asked where in Markets-Alert’s papers did Markets- Alert indicate that cancellation of claims 1-4 was contingent on a Board’s determination with respect to the patentability of claims 1-4, counsel for Markets-Alert explained that there was no explicit indication of contingency. Tr. 25-26 (“JUDGE MEDLEY: And where did you – what you just said where is that, could you point us to where in your papers you make that type of contingency type argument? MR. CHOUNG: That’s where, Your Honor, I can’t say to you that we explicitly said that as a contingency.”). The only reasonable reading of the record is that the cancellation of original claims 1-4 was not contingent on anything. Because Markets-Alert requested cancellation of claims 1-4, not based on any contingency, Markets-Alert has waived any issues with respect to claims 1-4, and, therefore, we need not address the patentability of those claims. For these reasons, we grant Markets-Alert’s request to cancel claims 1-4.” slip op. at 11
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“support in an earlier-filed disclosure for which the benefit of the filing date of the earlier filed disclosure is sought. 37 C.F.R. § 42.221(b). The requirement that the motion to amend must set forth the support in the original disclosure of the patent is with respect to each claim, not for a particular feature of a proposed claim. In other words, it is not sufficient for a motion to amend only to address where a particular added term or phrase is found in the specification. The motion must account for the entire claim in showing where there is written description support for the claim. Markets-Alert’s substitute motion to amend does not set forth the support in the original disclosure of the patent for each claim that is added. Instead, the motion only addresses “language not previously contained in the Original Claims.” Mot. to Amend 5. For this reason alone, Markets-Alert’s request that proposed claims 5-8 be added to the ’357 patent is insufficient.” slip op. at 13
- 112 supportDenied
“support in an earlier-filed disclosure for which the benefit of the filing date of the earlier filed disclosure is sought. 37 C.F.R. § 42.221(b). The requirement that the motion to amend must set forth the support in the original disclosure of the patent is with respect to each claim, not for a particular feature of a proposed claim. In other words, it is not sufficient for a motion to amend only to address where a particular added term or phrase is found in the specification. The motion must account for the entire claim in showing where there is written description support for the claim. Markets-Alert’s substitute motion to amend does not set forth the support in the original disclosure of the patent for each claim that is added. Instead, the motion only addresses “language not previously contained in the Original Claims.” Mot. to Amend 5. For this reason alone, Markets-Alert’s request that proposed claims 5-8 be added to the ’357 patent is insufficient.” slip op. at 13
- ScopeDenied
“As set forth in 37 C.F.R. § 42.221(a)(2), a motion to amend may be denied where the amendment does not respond to a ground of unpatentability involved in the trial. Markets-Alert incorrectly states that proposed claim 5 and dependent claims 6 and 7 include all of the substantive limitations of claim 1 and that proposed independent claim 8 includes all of the structural and functional limitations of original claim 1. Mot. to Amend 2. In actuality, Markets-Alert removes certain features from original claims 1-4. For example, claim 1 recites “using the network of computers to periodically apply the user-specified watch data.” Claim 5 and independent claim 8 eliminate the requirement that the network of computers periodically apply the watch data. Claim 1 recites “causing a real-time notification by the network of computers to be provided to the user via a remote communications device.” Claim 5 and independent claim 8 eliminate the requirement that the notification be provided to the user. Markets-Alert does not explain how the removal of certain features is responsive to a ground of unpatentability. In order to be responsive to a ground of unpatentability, a proposed substitute claim only should add features to an original claim, absent an adequate explanation otherwise. For these reasons, Markets-Alert motion to amend fails to comply with 37 C.F.R. § 42.221(a)(2).” slip op. at 19
NonePatents in suitUS 7,941,357 - 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 - PTAB · Jul 22, 2013 · IPR2013-00260 · APJ Michael W Kim · IPR · Order
The Board granted the parties’ joint motion and terminated IPR2013-00260 as to all parties, before deciding whether to institute review.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). Oracle’s petition was filed on May 2, 2013, and Clouding has not yet filed its Preliminary Response. The Board has not yet determined whether an inter partes review should be instituted.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Accordingly, it is ORDERED that the joint motion to terminate IPR2013-00260 is GRANTED, and this proceeding is hereby terminated as to all parties including petitioner Oracle and patent owner Clouding; and FURTHER ORDERED that the parties’s joint request to have their settlement agreement treated as business confidential information under the 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is also GRANTED.” slip op. at 3
NonePatents in suitUS 5,825,891 - PTAB · Jul 22, 2013 · IPR2013-00089 · APJ Michael W Kim · IPR · Order
The Board granted the parties’ joint motion and terminated IPR2013-00089 as to all parties without a final written decision.
RulingsOther- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingOther
“The joint motion identifies other related litigation involving Patent 6,631,449 but not Oracle. The defendants in such other related litigation have not filed a petition for inter partes review of Patent 6,631,449. There is no pending motion by any third party for joinder with this inter partes review.” slip op. at 2
NonePatents in suitUS 6,631,449 - PTAB · Jul 22, 2013 · IPR2013-00091 · APJ Rama G Elluru · IPR · Order
The Board granted the joint motion and terminated the review as to all parties without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The Board determines that in the circumstances of this case it is appropriate to terminate review both as to petitioner Oracle and patent owner Clouding 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 IPR2013-00091 is GRANTED, and this inter partes review is hereby terminated as to all parties including petitioner Oracle and patent owner Clouding; and” slip op. at 3
NonePatents in suitUS 5,678,042
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.