- PTAB · Mar 17, 2023 · IPR2022-01242 · APJ John R Kenny · IPR · Remand
On remand, the Board declined Fintiv denial and instituted review of claims 1–20 on all seven asserted obviousness grounds, finding a compelling challenge to claim 1 under Ground 1.
RulingsRemand decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“denial, and Fintiv Factor 1 is neutral. Collectively, the first five Fintiv Factors favor discretionary denial.” slip op. at 60
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“that Petitioner will prevail in its challenge to claim 1 under Ground 1. Thus, Petitioner has set forth a compelling, meritorious challenge that plainly leads to the conclusion that at least one claim is unpatentable (based on the current record).” slip op. at 74
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“that RF carriers, CDMA codes, TDMA time slots or other information defining and describing the way data is being transmitted do not include underlying data that is transmitted. In isolation, the phrase “not including underlying data that is being transmitted” could be subject to different interpretations. It could simply mean that data being transmitted by itself is not a radio resource, but the RF carrier transmitting the data could be a radio resource. Patent Owner makes clear, however, that this interpretation is not the intent of its construction by arguing that, under its construction, Hettstedt’s RF carriers are not radio resources because they have data modulated on them. Prelim. Resp. 24–27. Similarly, Patent Owner argues that Wu’s carriers are not radio resources because they have payload data encapsulated in them. Id. at 34; see also id. at 35. Patent Owner, however, cites nothing from the Specification that indicates RF carriers, CDMA codes, or TDMA time slots cease to be radio resources merely because data is modulated or encapsulated on them. Prelim. Resp. 12–18. Further, we see no such teaching in the Specification.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Wellington’s teachings to Hettstedt’s system to obviate the need for a human user to perform the load balancing (i.e., improve the system by making it automatic) as a threshold-based trigger avoids the need for the system to wait for user inputs. Ex. 1003 ¶ 130. Further, an ordinarily skilled artisan would naturally use a threshold for the trigger as taught by Wellington because a threshold is readily programmable and machine executable. Id. In addition, an ordinarily skilled artisan would have been motivated to implement Wellington’s teaching to improve the adaptability of Hettstedt’s system. Id. A benefit of a threshold-based trigger is that it allows a system to fine-tune the load balancing by adjusting the threshold. Id. Further, there is no need to reprogram significant software when using a threshold-based trigger. Id.” slip op. at 72
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 11,026,232 - 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 · May 12, 2015 · IPR2014-00242 · APJ Peter P Chen · IPR · Final written decision
The Board canceled claims 1–3, 5, and 6 and denied substitute claims 7–11 because the Patent Owner failed to establish written-description support for claim 10 and patentability over prior art for claims 7–9 and 11.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“Unlike examination, entry of the proposed substitute claims in an inter partes review is not automatic. As the moving party, Patent Owner must establish that it is entitled to the requested relief. See 37 C.F.R. § 42.20(c). In its Motion to Amend, Patent Owner bears the burden to show, inter alia, that a reasonable number of substitute claims is proposed, there is no broadening of scope, the proposed claims are supported adequately by the written description of the application as filed originally, and the proposed claims are patentable over the prior art. See 37 C.F.R. § 42.121; Idle Free Sys. Inc. v. Bergstrom, Inc., Case IPR2012-00027, slip op. at 5–6 (PTAB June 11, 2013) (Paper 26) (“Idle Free”). We address each of these requirements in turn.” slip op. at 10
- 112 supportDenied
“its Motion to Amend to set forth “[t]he support in the original disclosure of the patent for each claim that is added or amended,” and “[t]he support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.” The test for written description support is “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). The purpose of the written description requirement is to convey with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991).” slip op. at 12
- ScopeDecided for patent owner
“2. No Broadening of Scope Proposed substitute claims in an inter partes review “may not enlarge the scope of the claims of the patent.” 35 U.S.C. § 316(d)(3); see 37 C.F.R. § 42.121(a)(2)(ii). In its Motion to Amend, Patent Owner proposes claim 7 as a substitute for claim 1, claim 8 as a substitute for claim 2, claim 9 as a substitute for claim 3, claim 10 as a substitute for claim 5, and claim 11 as a substitute for claim 6. Mot. 1–5. Each claim includes all of the limitations of the corresponding challenged claim for which it is a substitute, and adds additional limitations. Id. No limitations from the challenged claims were deleted in the proposed substitute claims. Patent Owner asserts that the proposed substitute claims do not enlarge the scope of the claims of the ’047 patent. See Mot. 1. Petitioner does not dispute this assertion (“patent owner’s proposed substitute claims . . . add ancillary features”). Opp. 1. We are persuaded that each of the proposed substitute claims does not enlarge the scope of each of the challenged patent claims it intends to replace.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In the Decision to Institute, we determined that no explicit construction was necessary for any of the claim terms beyond their ordinary and customary meanings. Dec. to Inst. 8–9. Neither party has challenged that determination, and based on the record adduced during trial, we see no reason to provide an express construction for any term. For the proposed substitute claims, Patent Owner states that: Like the terms in the original claims, all of [the newly added claim terms in the proposed substitute claims] are simple [claim terms] whose ordinary meaning applies and for which no construction is required, with the possible exception of “member” and “group.” As explained in the specification (Ex. 1) at 3:2–4, “The present invention comprises a method . . . for allowing on-line communications with members of a group of recipients for whom the invention has been implemented.” In the context of proposed independent claim [7], the claimed invention requires that “said first computer system storing information about said plurality of members in a database.” Thus, in the context of the proposed amended claims[,] a “group” is a group of a plurality of members for whom the first computer system has stored information in a database. Mot. 7. Petitioner does not propose alternative constructions for the claim terms “member” or “group.” We cannot discern how the constructions proffered by Patent Owner add any clarity to the terms “member” and “group,” which are simple and commonly understood terms. We decline to provide an express construction for either “member” or “group.”” slip op. at 8
Claim construction§ 101 eligibility§ 103 obviousnesscites AlicePatents in suitUS 8,499,047 - PTAB · Sep 2, 2014 · IPR2014-00472 · APJ Glenn J Perry · IPR · Order
The Board granted the parties’ joint motion to terminate the preliminary IPR proceeding and terminated it without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“these circumstances, the Board determines that it is appropriate to enter judgment2 and terminate without rendering a final written decision under 37 C.F.R. § 42.72. ORDER It is, therefore, ORDERED that the joint motion to terminate this proceeding is GRANTED and the proceedings are hereby terminated; and FURTHER ORDERED that the settlement agreement shall be treated as business confidential information.” slip op. at 3
NonePatents in suitUS 7,096,358 - PTAB · Aug 18, 2014 · IPR2014-00841 · APJ Justin T Arbes · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding before deciding whether to institute inter partes review.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“On August 14, 2014, the parties filed a joint motion (Paper 10) to terminate the instant proceeding on the basis of a settlement reached by the parties. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. The parties also filed a copy of their written settlement agreement (Exhibit 1012) and requested in the joint motion that the settlement agreement be treated as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). The instant proceeding is still in the preliminary stages. Patent Owner has not yet filed a preliminary response and we have not yet determined whether to institute an inter partes review. The parties further represent that they have agreed to dismissal with prejudice of the pending district court case between the parties involving U.S. Patent No. 7,729,530 B2 (“the ’530 patent”). See Paper 10 at 2 (citing Ex. 1012). Although the parties identify a number of other pending district court cases where the ’530 patent is being asserted against other defendants, see Paper 4 at 2–3; Paper 8 at 1–2, given the status of this proceeding and the parties’ agreement, we determine that it is appropriate to terminate the proceeding without rendering a final written decision under 37 C.F.R. § 42.72.” slip op. at 2
NonePatents in suitUS 7,729,530 - PTAB · Jun 20, 2014 · IPR2014-00140 · APJ Sally C Medley · IPR · Order
The Board terminated IPR2014-00140 because an ex parte reexamination certificate had cancelled all challenged claims 1–14.
RulingsOther- Adverse judgmentAdverse judgmentOther
“The ultimate purpose of a trial is to determine if the challenged claims are unpatentable, and if the claims are determined to be unpatentable, to cancel the unpatentable claims. 35 U.S.C. § 318. The involved claims in this proceeding, however, have been cancelled through another proceeding. There is, therefore, no occasion to continue the trial. Based on the facts of this case, termination is appropriate. Accordingly, it is ORDERED that the proceeding is terminated.” slip op. at 2
NonePatents in suitUS 7,822,816 - 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.