- 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 · Sep 10, 2014 · IPR2014-00336 · APJ Scott E Kamholz · IPR · Order
The Board granted the parties’ joint motion and terminated IPR2014-00336 as to all parties; it did not decide patentability.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The parties filed a joint motion to terminate the instant proceeding (Paper 13 (“Mot.”)), and a true copy of their written settlement agreement (Ex. 1005) made in connection with the termination, in accordance with 35 U.S.C. § 317 and 37 C.F.R. § 42.74(b). The parties also jointly requested that their settlement agreement be treated as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Mot. 2-3. For the reasons provided below, the joint motion to terminate is granted. The joint request that the settlement agreement be treated as business confidential information is also granted.” slip op. at 2
NonePatents in suitUS 8,622,984 - 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.