- 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 25, 2014 · IPR2013-00016 · APJ Joni Y Chang · IPR · Final written decision
Claims 6, 7, 15, 17, and 18 were cancelled, and the motion to amend with substitute claims 19–23 was denied because MobileMedia did not establish the requirements for amendment or show patentability.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“nature. See Abbott Labs. v. Cordis Corp., 710 F.3d 1318, 1326 (Fed. Cir. 2013). A motion to amend claims in an inter partes review is not, itself, an amendment. As the moving party, MobileMedia bears the burden of proof to establish that it is entitled to the relief requested. 37 C.F.R. § 42.20(c). In sum, MobileMedia’s proposed substitute claims are not entered automatically, but only upon MobileMedia having demonstrated the patentability of the substitute claims.” slip op. at 5
- ScopeDenied
“statutory considerations under 35 U.S.C. § 316(b)—“the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted”—the Office promulgated 37 C.F.R. § 42.121 to set forth the standards and procedures for allowing a patent owner, in an inter partes review, to move to amend the patent “to cancel a challenged claim or propose a reasonable number of substitute claims.” As set forth in 37 C.F.R. § 42.121(a)(2), a motion to amend may be denied where the amendment does not respond to a ground of unpatentability involved in the trial.” slip op. at 15
- 112 supportDenied
“It is well settled that a limitation that uses the term “means for” creates a rebuttable presumption that the drafter intended to invoke § 112, ¶ 6. Personalized Media Commc’ns, LLC v. ITC, 161 F.3d 696, 703-04 (Fed. Cir. 1998). “This presumption can be rebutted where the claim, in addition to the functional language, recites structure sufficient to perform the claimed function in its entirety.” Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1375-76 (Fed. Cir. 2003). Therefore, in order to take the “means for determining a direction” limitation outside the bounds of § 112, ¶ 6, the claim must recite sufficient structure for performing the recited function. See Personalized Media, 161 F.3d at 704 (“In deciding whether [the] presumption has been rebutted, the focus remains on whether the claim as properly construed recites sufficiently definite structure to avoid the ambit of § 112, ¶ 6.”).” slip op. at 13
- Skill levelSkill level board ownOther
“Additionally, Dr. Madisetti does not proffer any evidence as to the level of ordinary skill in the art at the time of the invention, which is a necessary factual inquiry for determining obviousness. See Graham v. John Deere Co., 383 U.S. 1, 17-18. In fact, Dr. Madisetti’s testimony does not address the level of ordinary skill in the art at the time of the invention and what was known previously regarding a recognition sensor that provides a detection signal or other claim features added in the substitute claims. At least some explanations should have been provided as to why a person with ordinary skill in the art, applying his own knowledge and creativity, would not have found the substitute claims obvious. In sum, limiting the discussion to the references cited in the petition is insufficient to demonstrate patentability of the substitute claims over the prior art in general. Without having discussed the level of ordinary skill in the art, and what was known previously regarding the features added in the substitute claims, MobileMedia’s motion fails to demonstrate the patentability of the substitute claims.” slip op. at 23
Nonecites GrahamPatents in suitUS 6,441,828
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.