- Meta Platforms, Inc. / Instagram, Inc. et al. v. VL Collective IP LLCAll claims unpatentablePTAB · Dec 5, 2024 · IPR2023-00923 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 1–28 are unpatentable as obvious over the asserted combinations of Handley, Basturk, and PacketCable; Judge McKone dissented over the printed-publication findings.
RulingsFinal written decision- Expert testimonyOther
“broadly, how skilled artisans in the cable industry in 1999 shared information, is not based on her expertise and should not be given any weight. See Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 592, (1993) (“Presumably, this relaxation [in FED. R. EVID. 702] of the usual requirement of firsthand knowledge—a rule which represents ‘a ‘most pervasive manifestation’ of the common law insistence upon ‘the most reliable sources of information,’ ’ is premised on an assumption that the expert’s opinion will have a reliable basis in the knowledge and experience of his discipline.” (internal citation omitted)); FED. R. EVID. 701 (“If a witness is not testifying as an expert, testimony in the form of an opinion is limited to one that is: (a) rationally based on the witness’s perception.”). I would find that Dr. Hall-Ellis’s opinions are not based either on her expertise or her perception; thus, I would give her opinions no weight. As to matters within her expertise, Dr. Hall-Ellis testified that she searched the Wayback Machine and library cataloging resources (e.g., WorldCat) for PacketCable and did not find it as of December 1, 1999. 25:19–26:8, 36:13–15. She further testified that she has no knowledge of whether or how PacketCable was cataloged, on CableLabs’ website or elsewhere. Id. at 50:5–13, 51:10–52:8. This testimony is credible, as it is within her expertise. Thus, I believe Dr. Hall-Ellis that no sources typically consulted by librarians cataloged or recorded PacketCable in 1999. When her expertise is considered, all Dr. Hall-Ellis has been able to establish is that there is no evidence that PacketCable was stored or cataloged, in 1999, in the places where a librarian was apt to look.” slip op. at 108
- Skill levelOther
“VI. CLAIM CONSTRUCTION We interpret claim terms using “the same claim construction standard” slip op. at 8
- Obviousness (§103) › Analogous artAnalogous artUnpatentable
“Conclusion for Reasons to Combine We agree with Petitioner that Basturk teaches generating signatures “on-the-fly” as transmission proceeds in order to avoid slowing down the regular flow of data. Pet. 11 (quoting Ex. 1006, 12). We agree with Petitioner that Handley’s RTP protocol used for video conferences would benefit from Basturk’s protocol for high speed networks in order to provide secure video conferences as taught by Basturk. Id. (citing Ex. 1006, 5; Ex. 1003 ¶ 66). We agree with Petitioner that a person of ordinary skill in the art would have used Basturk’s technique of computing signatures “on-the-fly” with Handley’s internet conferencing architecture to provide the known benefits of transmitting data faster, reducing jitter, and reducing computing power. Id. at 10 (citing Ex. 1003 ¶ 64). We agree with Petitioner that Handley describes the need for providing authentication in a multicast environment, and that Basturk addresses this need as well as provides a solution. Id. at 12–13 (citing Ex. 1005, 13; Ex. 1006, 3; Ex. 1003 ¶ 68). We agree with Petitioner that modifying Handley’s RTP transport protocol to include Basturk’s known authentication method of generating signatures “on-the-fly” while transmitting data is “the mere application of a known technique to a piece of prior art ready for improvement.” Id. at 13 (citing Ex. 1003 ¶ 70); KSR, 550 U.S. at 417. In addition, we find that Dr. Houh’s testimony supports Petitioner’s reasons to combine Handley and Basturk. As discussed above, we find Dr. Houh’s testimony more persuasive than Dr. Stubblebine’s testimony because Dr. Houh’s testimony is supported by and consistent with the disclosures of Basturk and Handley. Dr. Houh testifies that generating a signature “on-the-fly” as data is being transmitted provides the benefits of transmitting data faster, reducing jitter, reducing computing power, and reducing latency in a live transmission. Ex. 1003 ¶ 64. We agree with Dr. Houh and find that a person of ordinary skill in the art, faced with the need to provide a signature at the application layer in Handley’s multimedia conferencing architecture as taught by Handley (Ex. 1005, 2, 13) while minimizing latency as taught by both Handley (Ex. 1005, 13–14) and Basturk (Ex. 1006, 7, 12), would have computed the signature “on-the-fly” as taught by Basturk (Ex. 1006, 7, 12) at the application layer of Handley to yield the benefits of authenticating data while minimizing latency as taught by Basturk. Ex. 1003 ¶¶ 63–70. Dr. Houh testifies that a person of ordinary skill in the art, in order to” slip op. at 40
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for patent owner
“Handley, Ex. 1005, qualifies as a prior art printed publication. I also disagree that Petitioner has shown that PacketCable qualifies as a prior art printed publication. Thus, I would not find that Petitioner has shown, by a preponderance of the evidence, that any claim of the ’682 is unpatentable. Accordingly, I dissent.” slip op. at 92
Patent outcomesUS 7,266,682 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,266,682 - Meta Platforms, Inc. / Instagram, Inc. et al. v. VL Collective IP LLCSome claims unpatentablePTAB · Dec 5, 2024 · IPR2023-00924 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 1–3, 5–7, 9–11, and 13–15 are unpatentable as obvious over Zhao; claims 4, 8, 12, and 16 are not shown unpatentable.
RulingsFinal written decision- BurdenFwd mixedMixed
“Decision is a final written decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as to the patentability of claims 1–16 of the ’980 patent. We determine Petitioner has shown by a preponderance of the evidence that claims 1–3, 5–7, 9–11, and 13–15 are unpatentable, and Petitioner has not shown by a preponderance of evidence that claims 4, 8, 12, and 16 are unpatentable.” slip op. at 2
- Expert testimonyOther
“being present in another image or comparing that probability to a detection threshold.”). Dr. Saber was consistent with this testimony on cross-examination. Ex. 1051, 167–251. When I weigh the evidence, I find it to be one-sided, with all of the expert testimony weighing against Petitioner or avoiding the issue altogether. Thus, I would not find that Petitioner has met its burden to prove, by a preponderance of the evidence, that Zhao teaches claim limitation 1e. Moreover, even if the Majority is correct about how Zhao’s RCR algorithm works, all that shows is that the detection of object presence in a previous image can be used to disambiguate segments (e.g., limbs) of an already detected object (e.g., a person), not that it can be used to detect the object in the image in the first place, as required by the claim language. For this additional reason, I would not find that Petitioner has met its burden.” slip op. at 84
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“2. Reasons for Obviousness Based on Zhao On a limitation-by-limitation basis, Petitioner’s contentions of” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“2. Reasons for Obviousness Based on Zhao On a limitation-by-limitation basis, Petitioner’s contentions of “obviousness” are primarily assertions of how a POSITA would have understood Zhao’s disclosures. For example, with regard to claim 1, Petitioner repeatedly asserts how “a POSITA would have understood Zhao” (Pet. 13, 18, 21, 27) and for each limitation contends that Zhao “disclosed or at least rendered obvious” (or a variation thereof) the limitation (id. at 13– 15, 17–18, 21, 23, 25–27). We will, accordingly, address these “obviousness” contentions when addressing the respective limitations.” slip op. at 25
Patent outcomesUS 7,436,980 mixed§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,436,980 - Google LLC v. Buffalo Patents, LLCAdverse judgmentPTAB · Dec 3, 2024 · IPR2023-01387 · APJ Mahshid D Saadat · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment after it disclaimed all challenged claims 1–16 and 19.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“II. Discussion Per 37 C.F.R. § 42.73(b), a party may request judgment against itself at any time during a proceeding. Also, actions which are construed to be a request for adverse judgement include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” Id. at § 42.73(b)(2). With the filing by Patent Owner of a statutory disclaimer of all challenged claims 1–16 and 19 in this proceeding, there are no remaining claims in this trial.” slip op. at 2
NonePatents in suitUS 8,204,737 - Google LLC v. Buffalo Patents, LLCAdverse judgmentPTAB · Dec 3, 2024 · IPR2023-01386 · APJ Jameson Lee · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment after it disclaimed all challenged claims 1–12 and did not respond to the show-cause order.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“at any time during a proceeding. Also, actions which are construed to be a request for adverse judgement include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” Id. at § 42.73(b)(2). With the filing by Patent Owner of a statutory disclaimer of all challenged claims 1–12 in this proceeding, there are no remaining claims in this trial. Because Patent Owner did not respond to the Show Cause Order, we construe Patent Owner’s statutory disclaimer of all challenged claims 1–12 as a request for entry of adverse judgment against Patent Owner. The request is granted.” slip op. at 2
NonePatents in suitUS 6,904,405 - PTAB · Nov 29, 2024 · IPR2024-00133 · APJ Scott B Howard · IPR · Remand
On remand, the Board instituted IPR on claims 1–10 and all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Sturman and Ho.
RulingsRemand decision- RemandOther
“(“Decision Denying Institution” or “DDI”). Petitioner filed a request for Director Review and the Director vacated and remanded our Decision Denying Institution. Paper 11 (Petitioner’s Request for Director Review); Paper 12 (“Remand Dec.” or “Remand Decision”). Specifically, the Director directed that we: shall issue a new decision on institution resolving the claim construction of “a non-promotional background object.” Consistent with Phillips v. AWH Corp., 415 F.3d 1303, 1313–14 (Fed. Cir. 2005), the Board should resolve the proper meaning of that term by first assessing the intrinsic evidence, and then consulting extrinsic evidence if necessary. See, e.g., Samsung Elecs. Co., Ltd. v. Slyde Analytics, LLC, IPR2024-00040, Paper 14 at 7–8 (Vidal Aug. 2, 2024) (discussing the Phillips framework). The Board shall consider all remaining necessary issues, and determine whether to institute trial consistent with this decision. Id. at 7–8 (footnote omitted).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“d) Conclusion Regarding Claim 1 Based on the current record, there is a reasonable likelihood that Petitioner will prevail in demonstrating that claim 1 is unpatentable as obvious in view of Sturman and Ho. 4. Analysis of Claims 2–10 Because Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’089 patent is unpatentable, we institute on all grounds and all claims raised in the Petition. See 37 C.F.R. § 42.108(a). Therefore, at this stage of the proceeding, it is not necessary for us to provide an assessment of every challenge raised by Petitioner, especially, as in this case, when Patent Owner does not separately argue those claims. See Prelim. Resp. 26–36. Those challenges, in our view, are best left for trial after full development of the record.” slip op. at 42
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“draws a distinction between foreground and background objects. Specifically, the prosecution history makes it clear that foreground objects are “in the forefront of the game play as primary objects to be manipulated or used during game play” and that background objects are “outside the primary focus of game play and as unexpectedly interactive components.” Ex. 1002, 85. However, whether an object is “outside the primary focus of game play and as unexpectedly interactive components” is based solely on the subjective perspective of the user. That is, what one user may consider a primary focus or expected object, another might consider outside the primary focus and unexpected. As the Director made clear in the Remand Decision, it is “improper[]” to have a claim construction “based on the subjective perspective of a user.” Remand Dec. 7; see also Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1353 (Fed. Cir. 2001) (“We are not prepared to assign a meaning to a patent claim that depends on the state of mind of the accused infringer.”). Accordingly, we cannot and do not adopt that as our construction of the term background. Not finding a construction of “background” based on the intrinsic evidence, we turn to the extrinsic evidence. See Remand Dec. 7 (“[T]he Board should resolve the proper meaning of that term by first assessing the intrinsic evidence, and then consulting extrinsic evidence if necessary.” (emphasis added)). Specifically, as part of the Decision Denying Institution, we considered various dictionary definitions of the word “background.” According to those definitions, “background” refers to “[t]he part of a pictorial representation that appears to be in the distance and that provides relief for the principal objects in the foreground.” Ex. 3002 (AMERICAN HERITAGE DICTIONARY); see also Ex. 3003 (“the scenery or ground behind something,” “the part of a painting representing what lies behind objects in the foreground”) (MERRIAM-WEBSTER DICTIONARY). Consistent with those dictionary definitions, we construe the term “background” to mean the part of a pictorial representation that is not in the foreground. The prosecution history provides more useful guidance as to what a “non-promotional” object is. As the applicant argued in the Amendment discussed above, a non-promotional object is one “which does not have an ‘area’ in which advertisements directly appear, but instead represents a ‘hot spot’ that, upon activation, causes ‘hidden promotional content’ to then appear.” Ex. 1002, 85–86. In other words, a non-promotional object does not display a promotional message unless the hotspot is activated. This understanding of the meaning of non-promotional is consistent with an earlier argument (Ex. 1002, 113–25) the applicant made during the prosecution of the ’089 patent.12 At that time, the applicant argued: In an exemplary embodiment, the location in-game may be represented by a non-promotional object, such as a blank chalk board depicted in the background of the gaming environment. See Applicant’s Specification at ¶ [0045]. Upon activating the hot spot (e.g., by throwing a dart at the chalk board), a promotional message may be drawn on the chalk board and displayed to the user. See id. In other words, Applicant’s amended claims 15 and 22, inter alia, may present promotional content once the game user activates, unknowingly, a “hot spot” associated with a non-promotional object—the non-promotional object is not an ordinary or visible place for advertisement, the 12 This argument was made on December 2, 2011, which is prior to the amendment adding the term background on July 15, 2013. Compare Ex. 1002, 117 (then pending claim 15 without the word “background”) with id. at 80 (amendment adding “background” to claim 15). user does not know that the object has a hidden hot spot, and the user does not know that activating the hidden “hot spot” will display promotional content. Ex. 1002, 122 (emphasis added).” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Moreover, even if we did consider only the specific references addressed in the Preliminary Response, we would not reach a different outcome. Patent Owner focuses on a high-level comparison of the references. See Prelim. Resp. 13–19. Such high-levels of similarity are to be expected as all of the references involve advertising in computer game programs. But such high-level similarity is not sufficient. See Juniper Networks, Inc. v. Swarm Tech. LLC, IPR2021-01445, Paper 15 at 16 (PTAB March 2, 2022) (Institution Decision) (“The issue is not just whether the same elements can be found in each of the references, but whether the elements function the same way. That is, even though Leong and Bates have the same elements, that does not mean that the elements interact with each other the same way or perform the same functions as recited in the claims.”); see also Advanced Bionics, IPR2019-01469, Paper 6 at 15 (holding that prior art is substantially the same if “Petitioner relies on [the new art] in substantially the same manner as the Examiner cited [the previous art] during prosecution such that [the new art] discloses substantially the same information as [the previous art] in relevant part.”); Nokia of Am. Corp. v. Alexander Soto, IPR2023-00680, Paper 18 at 7 (PTAB Mar. 28, 2024) (Vidal) (determining the Board erred when “rather than identify material, substantive overlap between the arguments presented in the Petitions and those previously presented to the Office, the Board’s analysis relied on its discussion of high-level similarities but lacked detailed reasoning”); Wolfspeed, Inc. v . The Trustees of Purdue University, IPR2022-00761, Paper 13 at 7 (PTAB Mar. 30, 2023) (Vidal) (vacating the Board’s decision when the “analysis of the first part of the Advanced Bionics framework did not consider sufficiently the material differences between” the art the Office previously considered and the art the Petition cited). Nor were any of Petitioner’s Reply arguments improper. We expressly authorized Petitioner to respond to Patent Owner’s arguments that the prior art relied on in the Petition was substantially the same as prior art that was considered. Ex. 3005 (Email from the Board to the parties) (“Petitioner is authorized to file a preliminary reply brief addressing 1) Patent Owner’s arguments under 35 U.S.C. 325(d). . . .”). Moreover, given the facts of this proceeding, it is not reasonable to require Petitioner to anticipate “substantially the same prior art” arguments and address them in the Petition. Accordingly, Petitioner’s argument is a proper reply argument. 3. Conclusion Based on our consideration of Becton Dickinson factors (a), (b), and (d), we find that the same or substantially the same art or arguments were not previously presented to the Office. Thus, our analysis ends at this point, and we need not proceed to part two of the Advanced Bionics framework. See Advanced Bionics, IPR2019-01469, Paper 6 at 8. We therefore decline to exercise our discretion to deny institution based on 35 U.S.C. § 325(d).” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,688,089 - Apple Inc.InstitutedPTAB · Nov 25, 2024 · IPR2024-01399 · APJ Thu A Dang · IPR · Institution
The Board instituted review of claims 1–6, 8–15, and 17–20 on the petition’s grounds and granted Apple’s motion to join IPR2024-00782.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“As we explain above, Petitioner has shown a reasonable likelihood that it would prevail with respect to each of the claims challenged in the petition. Thus, Petitioner has shown that the Petition warrants institution.” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The Petition does not present any new grounds or issues. Joinder Mot. 1, 3–5. Petitioner agrees to the schedule in the Google IPR and, thus, has shown that the trial schedule is not likely to be affected by joinder. Id. at 3, 5–6. No changes in the schedule are anticipated or necessary, and the limited participation, if at all, of Petitioner will not impact the timeline of the ongoing trial. Petitioner has agreed to an “understudy” role, which will simplify matters in the ongoing Google IPR and will be an efficient use of resources. Id. at 3, 5–6. Petitioner will assume a primary role only if Google ceases to participate in the Google IPR. Id. at 6. Accordingly, we determine that Petitioner has met its burden of showing that we should exercise our discretion to join Petitioner to the Google IPR (IPR2024-00782).” slip op. at 8
NonePatents in suitUS 8,646,042 - PTAB · Nov 22, 2024 · IPR2024-00687 · APJ Lisa L Tsang · IPR · Institution
The Board instituted IPR on claims 1–4 and 7–12, finding a reasonable likelihood that claims 1–4 and 9 are anticipated by Winkler.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108. Upon consideration of the Petition and the Preliminary Response, we conclude that the information presented shows there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’017 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“contends a person of ordinary skill in the art (“POSITA”) “would have had at least a bachelor’s degree in electrical engineering or a similar field and at least two years of experience working with electrical circuits or electrical connectors, including power connectors. Additional relevant work experience can compensate for less education, and vice versa.” Pet. 19 (citing Ex. 1003 ¶¶ 24–26). At this juncture, Patent Owner does not dispute the level of ordinary skill in the art. Prelim. Resp. 7. For purposes of this Decision, we adopt the level of ordinary skill in the art as articulated by Petitioner because, based on the current record, it is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’017 patent and prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that the open-ended language “at least” expands the range of education and experience indefinitely with no upper bound. Therefore, we do not adopt this aspect of Petitioner’s formulation.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“At this juncture, we preliminarily agree with Patent Owner’s proffered claim construction. In particular, we agree with Patent Owner’s argument that the insulating barriers would be unable to be configured to “block[] substantially all through-air arcing paths between the first and second electrical contacts,” as claimed, unless they were electrically insulating. See Ex. 1001, 4:36–44. Moreover, as Patent Owner avers, our interpretation of “insulating” as it applies to the first and second insulating barriers should be the same as for the first and second housings. See Digital Biometrics, 149 F.3d at 1345 (“whatever interpretation we assign [to a word used in a claim] should encompass both uses because the same word appearing in the same claim should be interpreted consistently” (citation omitted)). Although “a patent’s written description can set forth more than one definition of a claim term,” we do not discern that to be the case here. See Pitney Bowes, 182 F.3d at 1310. The portions of the Specification of the ’017 patent that Patent Owner cites use “insulating” and its associated tenses to mean suppressing electrical arcing and protecting from electrical burns, i.e., electrically insulating. See, e.g., Ex. 1001, code (57), 1:58–2:3, 2:42–44, 3:2–6, 3:30–40, 3:63–4:10, cited in Prelim. Resp. 12–14. Accordingly, for purposes of this Decision, we interpret “insulating” as recited in the claims to mean “electrically insulating.”” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Petitioner’s reliance on the modified Figure 2 diagram not explicitly shown in Winkler is not per se improper, so long as the skilled artisan would have reasonably understood that that is what Winkler discloses. See Acoustic Tech., Inc. v. Itron Networked Solutions, Inc., 949 F.3d 1366, 1373 (Fed. Cir. 2020) (“In an anticipation analysis, the dispositive question is whether a skilled artisan would ‘reasonably understand or infer’ from a prior art reference that every claim limitation is disclosed in that single reference. . . . Expert testimony may shed light on what a skilled artisan would reasonably understand or infer from a prior art reference.” (citations omitted)). Dr. Eldering testifies that the diagram was “created based on FIG. 2 of Winkler and developed by taking the components of each half of the connector and recreating them in a separated state.” Ex. 1003 ¶ 80. On the current record, Patent Owner does not dispute Dr. Eldering’s testimony or that Petitioner’s diagram reflects what the skilled artisan would have reasonably understood by looking at Figure 2 of Winkler. See generally Prelim. Resp.” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,808,017 - Google LLC v. Proxense, LLCInstitution deniedPTAB · Nov 20, 2024 · IPR2024-01318 · APJ Thu A Dang · IPR · Institution
The Board denied institution on claims 1, 5, 6, 8–11, 13, and 14 because the related original petition had already been instituted, and denied joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“claims 1, 5, 6, 8–11, 13, and 14 of U.S. Patent No. 8,646,042 B1 (“the ’042 patent”) (Paper 1) and a Motion for Joinder (“Motion”) (Paper 3) to join Microsoft’s instituted proceeding in IPR2024-00573 (“Microsoft IPR”), along with a Notice Ranking Multiple Petitions (“Notice”) (Paper 4). Petitioner also acknowledges that it previously filed a petition (“Original Petition”) for inter partes review of claims 1–6, 8–15, and 17–20 of the ’042 patent in IPR2024-00782. Notice 1. Thus, Petitioner “requests that action on this motion be held in abeyance until, and only if, the Board declines to institute Petitioner’s Original Petition.” Id.; see also Motion 1. The Board has instituted an inter partes review of the ’042 patent in IPR2024-00782. See IPR2024-00782, Paper 13. That is, we have not declined to institute Petitioner’s Original Petition in IPR2024-00782. Id. Accordingly, the condition on which Petitioner’s Petition and Motion for Joinder is based, i.e., “in abeyance until, and only if, the Board declines to institute [in IPR2024-00782],” has not come to pass. Therefore, we deny the Petition and the Motion for Joinder.” slip op. at 2
- Parallel petitionsDenied
“Here, Petitioner acknowledges that it “has two concurrent petitions challenging the validity of the same patent.” Notice 1. Although Petitioner provides “a ranking of the petitions in the order in which it wishes the Board to consider the merits” and “a succinct explanation of the differences” (id.), Petitioner requests that “should the Board decide to institute only a single petition against the ’042 patent, . . . the Board institute Petitioner’s Original Petition (in IPR2024-00782).” Id. Since, as discussed above, the Board has instituted an inter partes review of the ’042 patent in IPR2024-00782, we deny the Petition and the Motion for Joinder in the current IPR.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“claims 1, 5, 6, 8–11, 13, and 14 of U.S. Patent No. 8,646,042 B1 (“the ’042 patent”) (Paper 1) and a Motion for Joinder (“Motion”) (Paper 3) to join Microsoft’s instituted proceeding in IPR2024-00573 (“Microsoft IPR”), along with a Notice Ranking Multiple Petitions (“Notice”) (Paper 4). Petitioner also acknowledges that it previously filed a petition (“Original Petition”) for inter partes review of claims 1–6, 8–15, and 17–20 of the ’042 patent in IPR2024-00782. Notice 1. Thus, Petitioner “requests that action on this motion be held in abeyance until, and only if, the Board declines to institute Petitioner’s Original Petition.” Id.; see also Motion 1. The Board has instituted an inter partes review of the ’042 patent in IPR2024-00782. See IPR2024-00782, Paper 13. That is, we have not declined to institute Petitioner’s Original Petition in IPR2024-00782. Id. Accordingly, the condition on which Petitioner’s Petition and Motion for Joinder is based, i.e., “in abeyance until, and only if, the Board declines to institute [in IPR2024-00782],” has not come to pass. Therefore, we deny the Petition and the Motion for Joinder.” slip op. at 2
Discretionary denialPatents in suitUS 8,646,042 - Google LLC v. Proxense, LLCInstitution deniedPTAB · Nov 20, 2024 · IPR2024-01319 · APJ Thu A Dang · IPR · Institution
The Board denied institution on claims 1–20 because Google’s conditional request was not triggered after its earlier petition was instituted; it also denied joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“claims 1–20 of U.S. Patent No. 9,679,289 B1 (“the ’289 patent”) (Paper 1) and a Motion for Joinder (“Motion”) (Paper 3) to join Microsoft’s instituted proceeding in IPR2024-00407 (“the Microsoft IPR”), along with a Notice Ranking Multiple Petitions (“Notice”) (Paper 4). Petitioner also acknowledges that it previously filed a petition (“Original Petition”) for inter partes review of claims 1–20 of the ’289 patent in IPR2024-00783. Notice 1. Thus, Petitioner “requests that action on this motion be held in abeyance until, and only if, the Board declines to institute Petitioner’s Original Petition.” Id.; see also Motion 1. The Board has instituted an inter partes review of the ’289 patent in IPR2024-00783. See IPR2024-00783, Paper 12. That is, we have not declined to institute Petitioner’s Original Petition in IPR2024-00783. Id. Accordingly, the condition on which Petitioner’s Petition and Motion for Joinder is based, i.e., “in abeyance until, and only if, the Board declines to institute [in IPR2024-00783],” has not come to pass. Therefore, we deny the Petition and the Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“claims 1–20 of U.S. Patent No. 9,679,289 B1 (“the ’289 patent”) (Paper 1) and a Motion for Joinder (“Motion”) (Paper 3) to join Microsoft’s instituted proceeding in IPR2024-00407 (“the Microsoft IPR”), along with a Notice Ranking Multiple Petitions (“Notice”) (Paper 4). Petitioner also acknowledges that it previously filed a petition (“Original Petition”) for inter partes review of claims 1–20 of the ’289 patent in IPR2024-00783. Notice 1. Thus, Petitioner “requests that action on this motion be held in abeyance until, and only if, the Board declines to institute Petitioner’s Original Petition.” Id.; see also Motion 1. The Board has instituted an inter partes review of the ’289 patent in IPR2024-00783. See IPR2024-00783, Paper 12. That is, we have not declined to institute Petitioner’s Original Petition in IPR2024-00783. Id. Accordingly, the condition on which Petitioner’s Petition and Motion for Joinder is based, i.e., “in abeyance until, and only if, the Board declines to institute [in IPR2024-00783],” has not come to pass. Therefore, we deny the Petition and the Motion for Joinder.” slip op. at 2
- Parallel petitionsDenied
“Here, Petitioner acknowledges that it “has two concurrent petitions challenging the validity of the same patent.” Notice 1. Although Petitioner provides “a ranking of the petitions in the order in which it wishes the Board to consider the merits” and “a succinct explanation of the differences” (id.), Petitioner requests that “should the Board decide to institute only a single petition against the ’289 patent, . . . the Board institute Petitioner’s Original Petition (in IPR2024-00783).” Id. Since, as discussed above, the Board has instituted an inter partes review of the ’289 patent in IPR2024-00783, we deny the Petition and the Motion for Joinder in the current IPR.” slip op. at 2
Discretionary denialPatents in suitUS 9,679,289 - Google LLC v. Proxense, LLCInstitution deniedPTAB · Nov 20, 2024 · IPR2024-01320 · APJ Thu A Dang · IPR · Institution
The Board denied institution on claims 1–20 because it had instituted Google's original petition in IPR2024-00784, and denied Google's motion for joinder.
RulingsInstitution decision- Parallel petitionsDenied
“claims 1–20 of U.S. Patent No. 10,073,960 B1 (“the ’960 patent”) (Paper 1) and a Motion for Joinder (“Motion”) (Paper 3) to join Microsoft’s instituted proceeding in IPR2024-00405 (“the Microsoft IPR”), along with a Notice Ranking Multiple Petitions (“Notice”) (Paper 4). Petitioner also acknowledges that it previously filed a petition (“Original Petition”) for inter partes review of claims 1–20 of the ’960 patent in IPR2024-00784. Notice 1. Thus, Petitioner “requests that action on this motion be held in abeyance until, and only if, the Board declines to institute Petitioner’s Original Petition.” Id.; see also Motion 1. The Board has instituted an inter partes review of the ’960 patent in IPR2024-00784. See IPR2024-00784, Paper 12. That is, we have not declined to institute Petitioner’s Original Petition in IPR2024-00784. Id. Accordingly, the condition on which Petitioner’s Petition and Motion for Joinder is based, i.e., “in abeyance until, and only if, the Board declines to institute [in IPR2024-00784],” has not come to pass. Therefore, we deny the Petition and the Motion for Joinder. Here, Petitioner acknowledges that it “has two concurrent petitions challenging the validity of the same patent.” Notice 1. Although Petitioner provides “a ranking of the petitions in the order in which it wishes the Board to consider the merits” and “a succinct explanation of the differences” (id.), Petitioner requests that “should the Board decide to institute only a single petition against the ’960 patent, . . . the Board institute Petitioner’s Original Petition (in IPR2024-00784).” Id. Since, as discussed above, the Board has instituted an inter partes review of the ’960 patent in IPR2024-00784, we deny the Petition and the Motion for Joinder in the current IPR.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingDenied
“claims 1–20 of U.S. Patent No. 10,073,960 B1 (“the ’960 patent”) (Paper 1) and a Motion for Joinder (“Motion”) (Paper 3) to join Microsoft’s instituted proceeding in IPR2024-00405 (“the Microsoft IPR”), along with a Notice Ranking Multiple Petitions (“Notice”) (Paper 4). Petitioner also acknowledges that it previously filed a petition (“Original Petition”) for inter partes review of claims 1–20 of the ’960 patent in IPR2024-00784. Notice 1. Thus, Petitioner “requests that action on this motion be held in abeyance until, and only if, the Board declines to institute Petitioner’s Original Petition.” Id.; see also Motion 1. The Board has instituted an inter partes review of the ’960 patent in IPR2024-00784. See IPR2024-00784, Paper 12. That is, we have not declined to institute Petitioner’s Original Petition in IPR2024-00784. Id. Accordingly, the condition on which Petitioner’s Petition and Motion for Joinder is based, i.e., “in abeyance until, and only if, the Board declines to institute [in IPR2024-00784],” has not come to pass. Therefore, we deny the Petition and the Motion for Joinder.” slip op. at 2
Discretionary denialPatents in suitUS 10,073,960
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.