- PTAB · Oct 7, 2013 · IPR2013-00076 · APJ Brian J Mcnamara · IPR · Final written decision
The Board granted the parties’ joint motion, terminated the proceeding after settlement, and did not issue a final written decision on patentability.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“A decision by the Board to institute a trial was entered on July 22, 2013.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“to a settlement. On October 1, 2013, the Board authorized the parties to file a Joint Request To Terminate and a Joint Request to File the Settlement as Business Confidential under 37 C.F.R. 42.74(c). Paper No. 18. On October 2, 2013 the parties filed a Joint Motion Terminate And To Seal, Paper No. 19. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. With their Motion To Terminate and Seal the parties also filed a copy of a written settlement agreement. Paper No. 19, Ex. A.” slip op. at 2
NonePatents in suitUS 6,799,084 - PTAB · Jul 13, 2013 · IPR2013-00054 · APJ Howard B Blankenship · IPR · Rehearing
The Board denied rehearing of its refusal to institute review of claims 1-3, 5, 6, 10, 12-14, 16, 17, 21, 23-26, 28, 29, and 33 because the petition did not establish a reasonable likelihood of …
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Petitioner‟s allegations in the Petition did not comply with 37 C.F.R. § 42.104(b)(4)1, we should treat the Petition as incomplete under § 42.106(a)(1), issue a Notice of Incomplete Petition under § 42.106(b), and provide one month to correct the deficiency. Req. Reh‟g 1-2. We are not persuaded by the argument that Petitioner, having failed to meet its statutory burden of proof initially, should now be given a second opportunity on the merits based on supposed procedural deficiencies in the petition, as filed. Petitioner‟s argument confuses minimum procedural compliance with 35 U.S.C. § 312(a), necessary to obtain a filing date, with the statutory threshold requirements of § 314(a). Under the statute, the” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner has the burden of proving unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e). However, the USPTO determines whether a petition for inter partes review meets the minimum procedural requirements of the statute without regard to the substance or merits of the challenge.” slip op. at 3
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight. 37 C.F.R. § 41.65(a). The U.S. Court of Appeals for the Federal Circuit discounts expert testimony that is not based on the underlying facts or data:” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Sherman Decl. 51. Notably absent from the testimony is an explanation of how specific references might be combined to arrive at the claimed invention; e.g., by combining and applying specific teachings in the references to a claim. See ActiveVideo Networks, 694 F.3d at 1328 (“This testimony is generic and bears no relation to any specific combination of prior art elements. It also fails to explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does.”).” slip op. at 5
Claim construction§ 103 obviousnessPatents in suitUS 8,051,287
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.