- PTAB · May 7, 2025 · IPR2021-00906 · APJ Jameson Lee · IPR · Remand
On remand, the Board denied the motion to amend with proposed substitute claims 69, 70, 77, and 78 because the ’872 application did not provide written-description support.
RulingsRemand decision- RemandOther
“for the Federal Circuit. Papers 75–78. On February 3, 2025, the Federal Circuit issued a decision in which it stated: “We vacate and remand the Board’s decision with regard to claims 69 and 77, and their dependent claims, but otherwise affirm.” Paper 80.3 The formal mandate from the Federal Circuit was issued on March 12, 2025. Paper 79.” slip op. at 3
- 112 supportMotion to amend, deniedDenied
“Per the Federal Circuit’s instruction, the “first message” must come before the “another message” and “message preceding the another message.” However, the “first message” identified by Patent Owner, i.e., the RRC Connection Setup message, occurs after what Patent Owner identifies as the “another message,” i.e., the RRC Connection Request message. That mismatching sequence is evident from Figure 15 reproduced above.” slip op. at 8
NonePatents in suitUS 7,580,388 - PTAB · Jul 28, 2023 · IPR2022-00483 · APJ Jon M Jurgovan · IPR · Final written decision
The Board cancelled original claims 1–18 and 20–22, but denied substitute claims 23–43 for lack of written-description support.
RulingsFinal written decision- 112 supportMotion to amend, deniedDenied
“37 C.F.R. §§ 42.121(b)(1) and (2). The patent owner bears the burden to show, by a preponderance of the evidence, that a motion to amend complies with these requirements. 37 C.F.R. § 42.121(d)(1). “[T]he motion [to amend] must set forth written description support for each proposed substitute claim as a whole, and not just the features added by the amendment.” Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15, 8 (PTAB Feb. 25, 2019) (precedential). B. Lack of Written Description Support” slip op. at 9
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot shown unpatentable
“the ’556 application does not provide written description support for the proposed substitute claims. For limitations 23e, 30e, and 37e of respective independent proposed claims 23, 30, and 37, Patent Owner points to paragraphs 11, 37, 60, 78, 83–85, 90, 109–113, 119–130, 150, and Figure 11 of the ’556 application as providing written description support. MTA 6–7, 10, 14–15; Reply 2–3. Reviewing these paragraphs, however, we find no description of the subject matter recited in limitation 23e, which recites “responsive to determining that the [first] variation of the soft information change how the hard information is displayed at the client device, determine a second variation of the soft information.” Nor do we find in those passages written description of the subject matter recited in the similar language of limitations 30e and 37e. Specifically, paragraphs 11 and 37 of the ’556 application address prediction of the response message expected from the client device (similar to limitations 23h–23j, 30h–30j, and 37h–37j, which were added in the MTA to the original claims of the ’759 patent). Paragraphs 60, 78, 83, and 84 describe specific ways to vary soft messaging to establish secondary communications between a server and a client device to detect the presence of a malicious application. Paragraph 85 describes a priori recording of soft information variations to create large sets of composite (hard and soft) messages to be transmitted together. Paragraph 85 also states that, alternatively, the hard and soft messages may be transmitted separately. Paragraph 90 mentions use of “spaghetti” code and soft formatting to make it difficult for malicious applications to alter, replace, or counterfeit in real time. Paragraphs 109 to 113 mention various ways to vary soft information and soft messaging, such as varying or selecting different characters sets, font type, color, or weight, and point sizes from session to session, and predicting the response from the client device to compare with the actual response. Paragraphs 119 to 125 and Figure 11 address soft messaging using un-rendered page elements, and paragraphs 126 to 130 describe soft messaging using graphical elements. Paragraph 150 discusses identifying compatible soft information and selecting a variation of soft information to prevent malicious applications from reverse engineering the soft messaging used to validate communications. None of these disclosures describe the “trial and error” or “testing” approach of limitations 23e, 30e, and 37e in which, responsive to determining that a first variation of the soft information changes how the hard information is displayed at the client device, the security processor creates a second variation of soft information (which is included in the message to the client device if it does not vary how the hard information is displayed—see limitations 23f–23g, 30f–30g, and 37f–37g) to prevent a malicious application from interacting with the hard information. Accordingly, Patent Owner fails to meet its burden to show that limitations 23e, 30e, and 37e of independent proposed substitute claims 23, 30, and 37, as presented in the Motion to Amend, have written description support in the ’556 application, as required under 37 C.F.R. § 42.121(b)(2).” slip op. at 11
§ 112 disclosurePatents in suitUS 10,230,759 - PTAB · Nov 19, 2014 · IPR2014-00308 · APJ Kristina M Kalan · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding after settlement, before a final decision on the merits.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner filed a Petition on December 27, 2013, and Patent Owner filed a Preliminary Response to the petition on April 14, 2014. The Board instituted inter partes review on July 10, 2014. Patent Owner filed a Patent Owner Response on September 10, 2014, but Petitioner has not yet filed a Reply. This proceeding has not resulted in a final decision on the merits.” slip op. at 3
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Based on the facts of the case, it is appropriate to terminate the proceeding as to both Petitioner and Patent Owner. Therefore, the joint motion to terminate and the joint motion to file the release agreement as business confidential information are granted. Accordingly, it is ORDERED that the joint motion to file the release agreement as business confidential information, to be kept separate from the patent file, is granted; FURTHER ORDERED that the joint motion to terminate the proceeding is granted; FURTHER ORDERED that the proceeding is terminated.” slip op. at 3
NonePatents in suitUS 5,825,891 - 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
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.