- 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 17, 2014 · CBM2013-00018 · APJ Sally C Medley · CBM · Order
The Board granted the parties’ joint motion to terminate the proceeding after settlement; it made no final patentability decision.
RulingsOther- RehearingOther
“FURTHER ORDERED that the proceeding is terminated; and FURTHER ORDERED that Patent Owner’s request for rehearing of the dismissal of Patent Owner’s Motion to Exclude (Paper 48) is dismissed as moot.” slip op. at 3
NonePatents in suitUS 7,426,481 - 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 - PTAB · Feb 10, 2014 · IPR2013-00171 · APJ Sally C Medley · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding without a final written decision on the merits.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedOther
“termination of this proceeding and that termination is proper because the issues raised during the trial have not been fully briefed and the Board has not yet decided the merits of the proceeding. The motion also indicates that prior to trial in the related litigation, PMC agreed to dismiss its claims of infringement of the asserted claims of the ’251 patent. Id. The Board instituted trial on July 25, 2013. Paper 9. At this juncture of the proceeding, the Board does not have before it full briefing on the trial issues and the Board has not entered a final decision. Based on the facts of this case, it is appropriate to enter judgment1 without rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.” slip op. at 2
NonePatents in suitUS 7,734,251 - PTAB · Dec 11, 2013 · IPR2013-00064 · APJ Sally C Medley · IPR · Order
The Board granted the parties’ joint motion and terminated IPR2013-00064 without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Based on the facts of this case, it is appropriate to enter judgment1 without rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. It is ORDERED that the joint motion to terminate IPR2013-00064 is granted; FURTHER ORDERED that the proceeding is terminated; and FURTHER ORDERED that the parties’ joint request that the settlement and licensing agreements be treated as business confidential information kept separate from the patent file, and made available only to Federal Government agencies on 1 A judgment means a final written decision by the Board, or a termination of a proceeding. 37 C.F.R. § 42.2. written request, or to any person on a showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is granted.” slip op. at 2
- Adverse judgmentOther
“Based on the facts of this case, it is appropriate to enter judgment1 without rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. It is ORDERED that the joint motion to terminate IPR2013-00064 is granted; FURTHER ORDERED that the proceeding is terminated; and FURTHER ORDERED that the parties’ joint request that the settlement and” slip op. at 2
NonePatents in suitUS 7,923,311
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.