- PTAB · Feb 22, 2023 · IPR2019-01200 · APJ Lynne E Pettigrew · IPR · Remand
The Board granted the parties’ joint motion and terminated the remanded proceedings concerning claim 20 because the Board had not yet decided the remanded merits.
RulingsRemand decision- RemandGranted
“Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement, unless the Board already has decided the merits of the proceeding. PTAB Consolidated Trial Practice Guide, 86 (Nov. 2019).6 Here, although the Board already has issued a Final Written Decision, the Federal Circuit reversed the part of that decision addressing claim 20 of the ’552 patent and remanded to the Board for further proceedings regarding claim 20. The Board has not issued a decision on remand and, thus, has not decided the merits of the issues that were remanded to the Board. Under these circumstances, we determine it is appropriate to grant the Motion and terminate the proceedings.” slip op. at 3
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted in part
“The parties also jointly request that the Agreement be treated as business confidential information and be kept separate from the files of the ’552 patent and these proceedings. Req. 2. We have reviewed the Agreement, which contains confidential business information regarding the settlement terms, and we determine that good cause exists to treat the Agreement as business confidential information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) and keep it separate from the files of the ’552 patent and these proceedings. Accordingly, we grant this aspect of the parties’ Joint Request. The parties also “request that the Board order that in the event a person or entity makes a written request, as stated in 37 C.F.R. § 42.74(c)(1)-(2), for access to the settlement agreement, that any such written request be served upon Patent Owner and Petitioner on the day the written request is provided to the Board.” Req. 2. However, neither the statute nor the regulation provides for any such notification, and the parties have not provided any reason or special circumstance that would justify issuing an order that purports to impose an additional requirement. Accordingly, we deny that portion of the parties’ Joint Request.” slip op. at 4
NonePatents in suitUS 7,247,552 - PTAB · Feb 22, 2023 · IPR2019-01199 · APJ Lynne E Pettigrew · IPR · Remand
On remand, the Board terminated the proceedings after settlement because it had not decided the remanded merits concerning claim 20.
RulingsRemand decision- RemandGranted
“Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement, unless the Board already has decided the merits of the proceeding. PTAB Consolidated Trial Practice Guide, 86 (Nov. 2019).6 Here, although the Board already has issued a Final Written Decision, the Federal Circuit reversed the part of that decision addressing claim 20 of the ’552 patent and remanded to the Board for further proceedings regarding claim 20. The Board has not issued a decision on remand and, thus, has not decided the merits of the issues that were remanded to the Board. Under these circumstances, we determine it is appropriate to grant the Motion and terminate the proceedings.” slip op. at 3
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted in part
“The parties also jointly request that the Agreement be treated as business confidential information and be kept separate from the files of the ’552 patent and these proceedings. Req. 2. We have reviewed the Agreement, which contains confidential business information regarding the settlement terms, and we determine that good cause exists to treat the Agreement as business confidential information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) and keep it separate from the files of the ’552 patent and these proceedings. Accordingly, we grant this aspect of the parties’ Joint Request. The parties also “request that the Board order that in the event a person or entity makes a written request, as stated in 37 C.F.R. § 42.74(c)(1)-(2), for access to the settlement agreement, that any such written request be served upon Patent Owner and Petitioner on the day the written request is provided to the Board.” Req. 2. However, neither the statute nor the regulation provides for any such notification, and the parties have not provided any reason or special circumstance that would justify issuing an order that purports to impose an additional requirement. Accordingly, we deny that portion of the parties’ Joint Request.” slip op. at 4
NonePatents in suitUS 7,247,552 - PTAB · Feb 22, 2023 · IPR2019-01198 · APJ Lynne E Pettigrew · IPR · Remand
The Board granted the parties’ joint motion and terminated the remanded proceedings; it also granted in part their request to protect the settlement agreement.
RulingsRemand decision- RemandGranted
“Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement, unless the Board already has decided the merits of the proceeding. PTAB Consolidated Trial Practice Guide, 86 (Nov. 2019).6 Here, although the Board already has issued a Final Written Decision, the Federal Circuit reversed the part of that decision addressing claim 20 of the ’552 patent and remanded to the Board for further proceedings regarding claim 20. The Board has not issued a decision on remand and, thus, has not decided the merits of the issues that were remanded to the Board. Under these circumstances, we determine it is appropriate to grant the Motion and terminate the proceedings.” slip op. at 3
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted in part
“business confidential information and be kept separate from the files of the ’552 patent and these proceedings. Req. 2. We have reviewed the Agreement, which contains confidential business information regarding the settlement terms, and we determine that good cause exists to treat the Agreement as business confidential information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) and keep it separate from the files of the ’552 patent and these proceedings. Accordingly, we grant this aspect of the parties’ Joint Request.” slip op. at 4
NonePatents in suitUS 7,247,552 - PTAB · Jun 30, 2022 · IPR2021-00361 · APJ Stephen E Belisle · IPR · Final written decision
Claims 1, 2, 5, 7, 14, and 17 are unpatentable as anticipated by Dukach and obvious over Dukach, alone or with Dunsmuir.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the invention of the ’613 patent, “would have had a Bachelor’s degree in computer science or a related field, and two years of work experience in operating systems, file systems, networks, and/or client-server applications, though additional education or work experience can make up for more or less formal education.” Pet. 20 (citing Ex. 1002 ¶ 31). Patent Owner does not present an alternative definition of the skilled artisan, and does not dispute Petitioner’s definition thereof. See generally PO Resp.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“skilled artisan to have its “ordinary and customary meaning[],” allegedly “a stream of data bytes that can be read and written (among other common operations).” PO Resp. 3. But as noted by Petitioner (Pet. Reply 3–4), the only intrinsic evidence cited by Patent Owner does not support its proposed construction in the context of the ’613 patent; rather, such evidence favors Petitioner. See PO Resp. 4 (citing Ex. 1001, 2:35–45 (a “‘file is accessed via the file descriptor’”), 2:46–3:7 (“‘the system calls that access files via file descriptors do not distinguish between a file on media and a communication channel’”)); see also PO Resp. 7 (“It is undisputed that file descriptors were conventionally ‘associated with’ files stored on media, communication channels, and even hardware devices.” (emphasis added)). Patent Owner also cites extrinsic evidence, namely, Dunsmuir (Ex. 1007), to support its proposed construction: “Conceptually, a file consists of a stream of data bytes followed by a logical end-of-file. … Because UNIX file I/O is performed through a uniform file interface, a program that can read and write files can read and write anything.” PO Resp. 4 (quoting Ex. 1007, 22). But as noted by Petitioner (Pet. Reply 4–6), Patent Owner does not explain why this “conceptual” meaning set forth in the generic context of programming interfaces in a UNIX operating system would apply in the specific context of the ’613 patent. See Pet. Reply 4 (“[Patent Owner’s] proposed construction is problematic because it is inconsistent with the specification of the ’613 patent.”). Patent Owner also does not explain what “among other common operations” means in the context of its own proposed construction. For the foregoing reasons, and those discussed below, we agree with Petitioner’s proposed construction of “file.” First, the claims of the ’613 patent support Petitioner’s proposed construction. For example, claim 1 recites that a “file” is accessed via a file descriptor. Ex. 1001, 14:55. Claim 5 recites a file descriptor being associated with “a communication channel” and determining with what file type the file descriptor is associated. Ex. 1001, 15:44–57. Together, these limitations show that a “file” is an entity assessed via a file descriptor, and such an entity includes, for example, a communication channel (i.e., per these claims, a communication channel is a type of file associated with a file descriptor). We find nothing in the claims, and Patent Owner does not direct us to anything in the claims, that supports limiting the term “file” only to a “stream of data bytes that can be read and written.”” slip op. at 20
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“in the abstract, discloses the claimed “indicator,” but rather the inclusion (or storage or presence) of that number in a list of monitored file descriptors discloses such a stored “indicator.” See, e.g., Pet. 49 (“[The skilled artisan] would have understood that, before the listen( ) call or the accept( ) call attempts to access a file using a file descriptor, it examines the file descriptor to determine if it is on the list of monitored file descriptors—the ‘indicators’ of a file type associated with the control pipe for services to be performed by the front end server.” (emphasis added)); Pet. 37–38 (“Dukach utilizes the presence or absence of a file descriptor’s number stored in a list of monitored file descriptors to indicate the file type associated with the file descriptor, which is how the ’613 patent describes indicating a file type by the indicator’s presence or absence in an indicator table.”); see also Pet. Reply 13 (“Petitioner contended in the Petition and maintains that it is the presence of a file descriptor’s number on the list of monitored file descriptors, not the file descriptor’s number itself, that teaches the claimed indicator.” (bold omitted)); cf. PO Resp. 9 (“[A]n ‘indicator’ . . . must reflect . . . an indication that such file descriptor is associated with a communication channel.”). Patent Owner also variously argues “Dukach does not disclose or” slip op. at 34
- Expert testimonyPetitioner expert creditedDecided for petitioner
“In our Institution Decision, we credited the foregoing and related testimony of Dr. Greenspun (Ex. 1002 ¶¶ 96–98), and noted that Patent Owner at that stage of the proceeding had not offered any evidence to rebut Dr. Greenspun’s testimony. Dec. 30–31. Despite that, as highlighted by Petitioner, Patent Owner still offers no evidence to rebut Dr. Greenspun’s testimony in this regard. See Pet. Reply 16 (“But in arguing all these [above arguments], [Petitioner] presents no rebuttal evidence—neither a deposition testimony of Dr. Greenspun, nor a rebuttal testimony by its own expert, nor any other evidence.”); see generally PO Resp. Instead, Patent Owner merely declares Dr. Greenspun’s testimony “conclusory” and tainted by “vague leap[s]” (see, e.g., PO Resp. 14), but yet makes such accusations against a technical declarant with nothing but attorney-argument. Regardless, for the same reasons given by Petitioner (see Pet. Reply 16–18), we disagree with Patent Owner and continue to credit Dr. Greenspun’s technical testimony as to the subject limitation. See Pet. Reply 16–18 (Petitioner explaining why “[Patent Owner’s] attorney argument is wrong”.). As noted above, Patent Owner variously argues Dukach does not disclose “storing” of the indicator at issue in this limitation. See generally PO Resp. 7–17. To summarize, we disagree with Patent Owner, and as explained above, are persuaded by Petitioner’s evidence, including the unrebutted testimony of Dr. Greenspun, that Dukach discloses storing information that points to a file type associated with a file descriptor. First, we are persuaded that, in Dukach, the presence or absence of a file descriptor’s number in the list of monitored file descriptors constitutes information that points to a file type associated with the file descriptor. See Pet. 37–40 (citing, inter alia, Ex. 1005, 11:5–40; Ex. 1002 ¶ 96; Ex. 1001, 11:12–42). Second, we also are persuaded that, in Dukach, the list of monitored file descriptors “needs to be maintained in memory such that it can be used by software to check an at-issue file descriptor’s presence or absence in the list,” which constitutes storing the indicator. Pet. Reply 16– 17 (quoting Ex. 1002 ¶ 97); see Pet. 40 (citing Ex. 1002 ¶ 97). Finally, even if Patent Owner were correct that Dukach does not disclose a particular embodiment in the ’613 patent (see, e.g., PO Resp. 15 (discussing an embodiment “only applicable for binary file types”)), the issue before us is not whether Dukach indeed discloses such an embodiment, but rather whether Dukach discloses the invention recited, for example, in claim 1, given the breadth (scope) of the limitations defining that invention.” slip op. at 37
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,560,613 - PTAB · Jun 20, 2014 · IPR2013-00520 · APJ Karl D Easthom · IPR · Order
The Board granted the parties’ joint motions and terminated both proceedings without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“involve challenges to U.S. Patent No. 7,128,617 B2 (“the ’617 Patent”), the parties filed a joint motion to terminate the respective proceeding, along with a true copy of their written settlement agreement, made in connection therewith, in accordance with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). Paper 21 (attaching Ex. 1018, written settlement agreement).2 The parties also filed a joint motion in each case to treat the settlement agreement as confidential business information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 22.” slip op. at 2
NonePatents in suitUS 7,128,617 - PTAB · Apr 4, 2014 · IPR2014-00015 · APJ Brian J Mcnamara · IPR · Order
The Board granted the parties’ joint motion to terminate the proceeding and their request to keep the settlement agreement confidential.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“A decision by the Board to institute a trial has not yet been reached. Therefore, this matter was in the preliminary stages at the time the parties moved to terminate. The parties have represented that the co-pending litigation, styled Yama Capital, LLC v. Canon, Inc. and Canon USA, Inc. 1:12-cv-07159, SDNY has been dismissed with prejudice. Joint Mandatory Notice (Paper 15). The parties have not identified any other related matters and have represented that they do not contemplate any further litigation concerning the’982 Patent in the foreseeable future. Paper 14. 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.” slip op. at 2
NonePatents in suitUS 6,069,982
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.